Multi-Jurisdiction Robot Wars: Injunctions And Without Prejudice Negotiations

• Published date: 08 July 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Marks & Clerk
• Author: Mr Marcus Riby-Smith and Ian Turner

Online retailer Ocado has been denied an interim injunction to restrain Autostore from referring to 2018 without prejudice discussions between the parties (or any related documents) at a US International Trade Commission ("ITC") hearing due to take place in August this year. The case is of interest both because it arose as part of multi-jurisdiction litigation with ongoing settlement negotiations and for the discussion of the relevant burden on the grant of an interim injunction in the circumstances. In this note, we set out some practical tips given that the judge decided that there was a high evidential burden on Ocado to justify its application.

The application was made as part of infringement proceedings relating to six UK designated European patents which Autostore asserts are infringed by Ocado's warehouse technology - this English action itself forming part of a series of patent disputes between these parties spanning multiple jurisdictions. In the related US ITC proceedings, AutoStore alleges that Ocado has infringed three US equivalent patents. These patents relate to a central cavity (adapted to hold a storage bin) in robots of the type that handle merchandise in a warehouse.

One of the defences advanced by Ocado in the ITC proceedings is a defence of equitable estoppel. Ocado argue that AutoStore gave assurances that Ocado did not infringe the central cavity patents and that AutoStore is now estopped from asserting infringement. AutoStore wishes to respond to this defence by relying on a specific document relating to 2018 discussions between the parties. Autostore assert that this document supports the contention that Ocado was fully aware of AutoStore's stance on infringement, thus precluding an estoppel based defence.

At the interim injunction application hearing, Ocado advanced its case on the basis that at the 2018 meetings it was contractually agreed that neither party should use the 2018 discussions or related documents in any legal proceedings. (An equitable duty of confidence had also been raised but Ocado dropped this point.)

It was agreed by the parties that in these circumstances the relevant burden was not the usual one set out by the House of Lords in American Cyanamid ([1975] AC 396), namely whether there is a "serious question" to be tried. Ocado submitted that because this was an instance in which the interim injunction would in all likelihood put an end to the action, the court should have regard to the underlying merits of...