Autostore Technology as (a company incorporated under the laws of Norway) v Ocado Group Plc
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 11 June 2021 |
| Neutral Citation | [2021] EWHC 1614 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2020-000035 |
| Date | 11 June 2021 |
[2021] EWHC 1614 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
HIS HONOUR JUDGE Hacon
(Sitting as a Judge of the High Court)
Remotely via Microsoft Teams
Case No: HP-2020-000035
Mr. Vernon Flynn QC and Ms. Kathryn Pickard (instructed by Kirkland & Ellis LLP) for the Claimant/Respondent
Mr. Alan Maclean QC and Mr. Thomas Plewman QC (instructed by Powell Gilbert LLP) for the Defendants/Applicants
This is an application for an interim injunction to restrain the disclosure of information. The disclosure would be in proceedings in the United States.
The action in which the application is made is for infringement of six of the claimant's patents. The patents are all concerned with automated warehousing technology. The claimant is a Norwegian company which specialises in that field and which I will refer to as “AutoStore”.
The first to fifth defendants are all part of the Ocado group of companies. Ocado's online business in the retail of groceries and other products is known to many in this country, although its primary business is in the development of technology for the warehousing and distribution of goods ordered online.
The sixth defendant is a company which manufactures robots, or bots as they are called in the evidence. The fifth defendant is a customer and user of the sixth defendant's bots. Although the sixth defendant is not part of the Ocado group, for convenience I will refer to all the defendants collectively as “Ocado”.
The trial of this action is due to be heard in March 2022.
There are other disputes currently pending between the parties. First, AutoStore has brought a claim in the UKIPO seeking entitlement to patents owned by the fourth defendant. The Comptroller has declined to deal with the claim. Secondly, the patents in this action are the subject of opposition proceedings in the EPO. Thirdly, Ocado has brought a claim against AutoStore in the Landgericht of both Mannheim and Munich. Fourthly, AutoStore has brought a claim against Ocado in the District Court for the Eastern District of Virginia. Fifthly, Ocado has brought proceedings against AutoStore in the District Court for the Eastern District of Virginia and in the District Court for New Hampshire. Sixthly and finally, AutoStore has brought proceedings against Ocado before the International Trade Commission, or ITC, in the United States. It is the ITC proceedings which are of most immediate relevance.
In 2018 there took place discussions between the parties, mainly concerning the English litigation but they were also about the disputes or potential disputes worldwide, including prospective ITC proceedings.
There were three meetings, two in June 2018 and a third in July 2018, all held in London. The first and third were attended by English lawyers acting for their respective parties. The discussions continued in correspondence after July, up to November 2018, but did not lead to a resolution of any of the disputes.
Ocado has called the three meetings “the London Meetings”. Those meetings, taken together with the subsequent correspondence in 2018 have been called “the London Discussions”. Ocado asserts that the London Discussions were subject to without prejudice privilege under English law and were confidential. Ocado says that the same applies to the contents of documents generated for and about the London Meetings. Ocado calls these “the London Meeting Documents”.
It is common ground that AutoStore threatens to disclose in the US ITC proceedings information which formed part of the contents of the London Discussions. The relevant information has been set out in a written response from AutoStore in those proceedings. That pleaded response has not yet been disclosed to the judge hearing the ITC case but AutoStore has indicated that it intends to put the response before the judge and indeed to refer to the London Discussions and their contents in evidence and/or in submissions before the judge on 15th June, i.e. next Tuesday, today being Friday, 11th June.
On 28th May 2021, there was an ex parte application by Ocado in this court, which came before me. It was an application to hold the ring. Ocado sought an order restraining AutoStore from disclosing the contents of the London Discussions in the ITC proceedings, pending this hearing. AutoStore was given notice of the ex parte application, but elected not to appear. I imply no criticism. In the evidence in this application, Nicola Dagg, of Kirkland & Ellis International LLP, acting for AutoStore, cites a number of reasons why, in her view, Ocado was in serious breach of its duty of full and frank disclosure at the hearing on 28th May 2021. Be that as it may, on that day I made an order substantially as sought. This hearing is, in effect, the return date from that order.
The operative part of the order sought by Ocado now is as follows:
“Pending the hearing of the trial [alternatively, pending trial of the claim set out in the claim form to be issued and served], the claimant (whether acting through its directors, employees, subsidiaries, agents or legal representatives) shall be restrained from using any information arising from negotiations that took place between the parties in the period up to and including November 2018 in any proceedings, including before the US International Trade Commission.”
On 4th June 2021, Ocado filed another application notice which seeks permission to plead its case on without prejudice privilege and breach of confidence, either by way of a re-amendment to Ocado's Defence and Counterclaim or by way of service of a new claim form.
Simon Ayrton of Powell Gilbert LLP, who act for Ocado, has exhibited a draft re-amended Defence and Counterclaim in which Ocado sets out its case for an order restraining AutoStore from disclosing the contents of the London Discussions and the London Meeting Documents. The relief sought in the draft pleading goes further than the interim relief sought in that it would include an order restraining AutoStore from disclosing even the existence of the London Discussions.
In brief, in its draft pleading Ocado puts its case in two alternative ways. First, at the London Meetings it was agreed that the parties should not use the contents of the London Discussions or the London Meeting Documents in any legal proceedings, whether in the United Kingdom or elsewhere. It was an express or alternatively an implied term of the contract that it was governed by English law. Secondly and alternatively, the contents of the London Discussions and the London Meeting Documents are confidential and AutoStore owes Ocado an equitable duty of confidence not to disclose those contents in the ITC proceedings. The threatened disclosure of information in the US ITC proceedings would be both in breach of contract and in breach of confidence.
In this application, Vernon Flynn QC and Kathryn Pickard appear for AutoStore, Alan Maclean QC and Thomas Plewman QC for Ocado.
Before discussing the merits of Ocado's application, I will say something more about the background facts. Three of the patents in suit are UK designated European patents concerning a central cavity in robots of the type that handle merchandise in a warehouse. The central cavity is adapted to hold a storage bin. Three equivalent US patents are in suit in the US ITC proceedings. A parent of the US central cavity patents is US patent 9 862 579, which I will call “US '579”.
In the US ITC proceedings AutoStore alleges that Ocado has infringed five of its US patents, including the three US central cavity patents. One of the defences advanced by Ocado is a defence of equitable estoppel. Ocado argues that AutoStore gave Ocado assurances that Ocado did not infringe the central cavity patents and that AutoStore is now estopped from asserting infringement. AutoStore proposes to respond to this defence by saying that in the course of the London Discussions AutoStore provided Ocado with a document. In order to safeguard the claimed confidentiality in its contents, in this judgment I will refer to it as “the Document in Issue”. AutoStore wishes to rely on the Document in Issue in the ITC in support of a contention that Ocado was fully aware of AutoStore's stance on infringement, so there can be no estoppel.
It is common ground that the London Meetings were held on a without prejudice basis, although the nature and effect of that is not agreed. At that time, the English solicitors acting for AutoStore were Bristows LLP. On 6th July 2018, they sent to Powell Gilbert LLP an e-mail to which were attached materials to be used at the meeting on 25th July 2018. These materials were stated to be for the purposes of settlement negotiations only. They included the Document in Issue, which itself was marked on every page “ Confidential and without prejudice, provided for purposes of settlement negotiations only”. The agenda for the meeting of 25th July 2018 was similarly marked.
Powell Gilbert produced an attendance note of the meeting of 25th July, either on that day or shortly after the meeting. A copy was provided to AutoStore. The attendance note included this:
“SA stated that this meeting...
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