DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

Case No. 3:17-cv-00939-WHA

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MICHAEL A. JACOBS (CA SBN 111664)

MJacobs@mofo.com 

ARTURO J. GONZÁLEZ (CA SBN 121490) 

AGonzalez@mofo.com 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Telephone: 415.268.7000 

Facsimile: 415.268.7522 

KAREN L. DUNN (Pro Hac Vice)

kdunn@bsfllp.com

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington DC 20005 

Telephone: 202.237.2727 

Facsimile: 202.237.6131 

WILLIAM CARMODY (Pro Hac Vice)

bcarmody@susmangodfrey.com 

SUSMAN GODFREY LLP 

1301 Avenue of the Americas, 32nd Floor 

New York, NY 10019-6023 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

NEEL CHATTERJEE (SBN 173985) 

nchatterjee@goodwinlaw.com

GOODWIN PROCTER LLP

135 Commonwealth Drive 

Menlo Park, California 94025 

Tel.: +1 650 752 3100 

Fax.: +1 650 853 1038 

Attorneys for Defendant 

OTTO TRUCKING LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v.

UBER TECHNOLOGIES, INC., OTTOMOTTO 

LLC; OTTO TRUCKING LLC, 

Defendants.

Case No. 3:17-cv-00939-WHA 

DEFENDANTS’ MOTION FOR 

SUMMARY JUDGMENT 

Date: September 20, 2017 

Time: 8:00 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William Alsup 

Trial Date: October 10, 2017 

UNREDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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NOTICE OF MOTION AND MOTION 

PLEASE TAKE NOTICE that on September 20, 2017 at 8:00 a.m., or as soon thereafter 

as the matter may be heard, in the United States District Court for the Northern District of 

California, San Francisco Courthouse, located at 450 Golden Gate Avenue, San Francisco, CA, in 

Courtroom 8 before the Honorable William Alsup, Defendants Uber Technologies, Inc., 

Ottomotto LLC will, and hereby do, move for summary judgment of non-infringement of United 

States Patent No. 9,368,936 (“the ’936 patent) and that Waymo’s alleged Trade Secret No. 9 is 

not a trade secret, and Otto Trucking LLC will, and hereby does, move for summary judgment 

that Otto Trucking cannot infringe the ’936 patent and has not misappropriated any alleged 

Waymo trade secret. 

Defendants’ motion is based on this Notice of Motion and Motion, the accompanying 

Memorandum of Points and Authorities, Declaration of James Haslim, Declaration of Brent 

Schwarz, Declaration of Esther Kim Chang, Declaration of Shane Brun, and all exhibits thereto, 

all documents in the Court’s file, any matters of which this Court may take judicial notice, and on 

such other written and oral argument as may be presented to the Court. 

Dated: August 31, 2017 MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs 

MICHAEL A. JACOBS 

Attorneys for Defendants UBER TECHNOLOGIES, 

INC. and OTTOMOTTO LLC 

Dated: August 31, 2017 GOODWIN PROCTER LLP

By: /s/ Neel Chatterjee 

NEEL CHATTERJEE 

Attorneys for Defendant OTTO TRUCKING LLC

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TABLE OF CONTENTS 

Page

DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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UBER’S MOTION FOR SUMMARY JUDGMENT .................................................................... 1 

INTRODUCTION .......................................................................................................................... 1 

STATEMENT OF THE ISSUES .................................................................................................... 1 

I. SUMMARY JUDGMENT SHOULD BE GRANTED ON THE ’936 PATENT .............. 2 

A. The ’936 Patent and Accused Product .................................................................... 2 

B. Uber Does Not Infringe the ’936 Patent Under the Doctrine of Equivalents ......... 5 

1. Dr. Wolfe’s DOE analysis is faulty as a matter of law ............................... 5 

2. DOE does not apply to the ’936 patent’s simple circuit ............................. 8 

3. Waymo has no remedy for any alleged infringement of the ’936 

Patent ........................................................................................................... 9 

II. SUMMARY JUDGMENT SHOULD BE GRANTED ON TS 9 ..................................... 10 

A. TS 9 Claims the Publicly Known, General Concept of 

 ........................................................................................... 10 

B. TS 9 Is Not A Trade Secret ................................................................................... 13 

CONCLUSION ............................................................................................................................. 15 

OTTO TRUCKING’S MOTION FOR SUMMARY JUDGMENT ............................................. 16 

I. DEFENDANT OTTO TRUCKING CANNOT INFRINGE THE ’936 PATENT 

AND HAS NOT MISAPPROPRIATED ANY WAYMO TRADE SECRET ................ 16 

A. Background ........................................................................................................... 16 

B. Otto Trucking Cannot Infringe Waymo’s ’936 Patent .......................................... 18 

C. Otto Trucking Has Not Misappropriated Any Waymo Trade Secret ................... 18 

D. Waymo’s Alternative Theories Against Otto Trucking Will Also Fail ................ 19 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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TABLE OF AUTHORITIES 

 Page(s) 

Cases

Ajaxo Inc. v. E*Trade Group Inc.

135 Cal. App. 4th 21 (2005) ...............................................................................................18, 19

Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,

811 F.3d 1334 (Fed. Cir. 2016) ...................................................................................................6

Apple Inc. v. Motorola, Inc.,

757 F.3d 1286 (Fed. Cir. 2014) ...................................................................................................9

AquaTex Indus., Inc. v. Techniche Sols.,

479 F.3d 1320 (Fed. Cir. 2007) ...........................................................................................5, 6, 8 

AquaWood, LLC v. Worldslide, LLC et al.,

No. CV 11-5611-JFW (Ex), slip op. (C.D. Cal. Oct. 31, 2012) ................................................18 

Beaulieu Group, LLC v. Bates,

2016 WL 7626471 (C.D. Cal. Oct. 18, 2016) ...........................................................................19 

ClearValue, Inc. v. Pearl River Polymers, Inc.,

668 F.3d 1340 (Fed. Cir. 2012) .................................................................................................14

Devex Corp. v. Gen. Motors Corp.,

667 F.2d 347 (3d Cir. 1981) ........................................................................................................9

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

535 U.S. 722 (2002) ....................................................................................................................8

Freedman Seating Co. v. Am. Seating Co.,

420 F.3d 1350 (Fed. Cir. 2005) ...................................................................................................8

He Nam You v. Japan,

150 F. Supp. 3d 1140 (N.D. Cal. 2015) ....................................................................................20 

JW Pharm. Corp. v. Michael Kahn & Prism Pharma Co.,

No. CV1201006JGBRZX, 2013 WL 12125751 (C.D. Cal. Mar. 11, 2013).............................20 

Moore U.S.A, Inc. v. Standard Register Co.,

229 F.3d 1091 (Fed. Cir. 2000) ...................................................................................................5

NetApp v. Nimble,

41 F. Supp. 3d 816 (N.D. Cal. 2014) ........................................................................................20 

Sage Prods., Inc. v. Devon Indus., Inc.,

126 F.3d 1420 (Fed. Cir. 1997) ...................................................................................................9

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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Stumbo v. Eastman Outdoors, Inc.,

508 F.3d 1358 (Fed. Cir. 2007) ...................................................................................................5

Tex. Instruments Inc. v. Cypress Semiconductor Corp.,

90 F.3d 1558 (Fed. Cir. 1996) .....................................................................................................5

Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,

520 U.S. 17 (1997) ......................................................................................................................5

Winston Research Corp. v. Minn. Min. & Mfg. Co.,

350 F.2d 134 (9th Cir. 1965) .....................................................................................................15

Statutes and Other Authorities 

35 U.S.C. § 271 ...............................................................................................................................18

Cal. Civ. Code § 2310 (West 2017) ................................................................................................20

Federal Rules of Civil Procedure 

Rule 30(b)(6) .............................................................................................................................13

Rule 56(a) ............................................................................................................................18, 19 

Restatement (Third) of Torts: Apportionment Liab. § 12 (2000) ...................................................20 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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TABLE OF ABBREVIATIONS 

Abbreviation Description 

3/31/17 Droz Dep. March 31, 2017 deposition of Pierre-Yves Droz 

8/3/17 Droz Dep. August 3, 2017 deposition of Pierre-Yves Droz. 

Damages Disclosure Plaintiff Waymo LLC’s Supplemental Initial Disclosure dated 

June 21, 2017 

Gassend Dep. August 16, 2017 deposition of Blaise Gassend 

Haslim Declaration of James Haslim in Support of Defendants’ Motion for 

Summary Judgment 

Infr. Contentions Exhibit C to Waymo’s Disclosure of Asserted Claims and 

Infringement Contentions 

McCann Dep. July 12, 2017 deposition of William McCann 

The ’936 patent U.S. Patent No. 9,368,936 

Uber Uber Technologies, Inc., Ottomotto LLC, and Otto Trucking LLC 

Wagner Rpt. Expert Report of Michael J. Wagner 

Wolfe Dep. Deposition of Andrew Wolfe, Ph.D. dated August 11, 2017 

Wolfe Rpt. Opening Expert Report of Dr. Andrew Wolfe, Ph.D. Concerning 

Defendants’ Infringement and Waymo’s Practice of U.S. Patent No. 

9,368,936 dated August 24, 2017 

Yang Declaration of Michelle Yang in Support of Defendants’ Motion for 

Summary Judgment 

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UBER’S MOTION FOR SUMMARY JUDGMENT 

INTRODUCTION

Waymo does not claim literal infringement of the ’936 patent, and Uber does not infringe 

any claim of the patent under the doctrine of equivalents because the claimed “diode” and Fuji’s 

resistor are not equivalent circuit elements. The ’936 patent specification clearly defines the 

function, way, and result of the “diode” in the claimed circuit. The specification states that, 

during the charging mode, the “diode” becomes forward biased to allow current to flow forward, 

and then reverse biased to restrict current from flowing backward, with the result of 

supercharging the capacitor. Waymo’s DOE analysis is defective as a matter of law because it 

ignores this stated function, way, and result and instead offers purported “functions” that are 

nowhere disclosed in the patent. Additionally, because Waymo’s damages expert provided no 

opinion that Waymo suffered damages as a result of Uber’s alleged infringement of the ’936 

patent, 

, the Court should, as a matter of law, rule that Waymo is entitled to no remedies. 

TS 9 is not a trade secret. Waymo broadly claims as a trade secret the use of 

. But FAC lenses for pre-collimating laser 

beams are indisputably well known, and Waymo engineers admitted that 

. In its preliminary injunction order, the Court warned Waymo that it “overreached 

in attempting to claim ownership over general principles and approaches in the field,” and noted 

that one of Waymo’s “supposed trade secret[s] is nothing more than Optics 101.” (Dkt. 426.) TS 

9 is yet another attempt to claim trade secret protection for general approaches in any engineer’s 

toolbox, and summary judgment should be granted. 

STATEMENT OF THE ISSUES 

1. Whether the claimed “diode” in the ’936 patent is equivalent to a resistor present 

in Uber’s Fuji firing circuit. 

2. Whether the Court should rule that Waymo is entitled to no remedies if Uber is 

found to infringe any claim of the ’936 patent. 

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3. Whether Waymo’s alleged Trade Secret No. 9 is a protectable trade secret. 

I. SUMMARY JUDGMENT SHOULD BE GRANTED ON THE ’936 PATENT 

A. The ’936 Patent and Accused Product 

All independent claims of the ’936 patent require a “diode” as part of a “charging path” of 

a laser diode firing circuit. Independent claim 1, for example, recites “a diode coupled to the 

voltage source via the inductor” and “wherein the charging path includes the inductor and the 

diode.”

The ’936 patent specification discloses the laser diode firing circuit shown below: 

(Yang Ex. 1, ’936 patent.) Circuit 500 includes, among other components, voltage source 502, 

inductor 510, diode 514, capacitor 516, laser diode 518, and transistor 520. (Id. at 17:47-64.)

The components of circuit 500 operate together to provide two modes: a charging mode and a 

discharge (emission) mode. (Id.) The two modes are shown in Figures 5C and 5D: 

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In the charging mode, transistor 520 is off, causing current to flow from voltage source 

502 through inductor 510 and diode 514 to capacitor 516; the current charges capacitor 516, 

which accumulates charge. (Id. at 18:19-22, 28-37.) In the emission mode, transistor 520 is on, 

causing capacitor 516 to drive current through laser diode 518, thereby “caus[ing] the laser diode 

518 to emit a pulse of light.” (Id. at 18:11-19.) As shown in Fig. 5C, diode 514 is in the charging 

mode path (shown by a dotted line); as shown in Fig. 5D, diode 514 is not in the discharge path. 

The specification discloses the function, way, and result of the “diode” in the claimed 

firing circuit. In the charging mode, diode 514 operates in forward and reverse biased states.

When diode 514 is forward biased, it “allows current flow and charge[s] the capacitor.” (Id. at 

18:35-37.) When the voltage on capacitor 516 exceeds the voltage between inductor 510 and 

diode 514 (i.e., node A 512), then diode 514 becomes reverse biased “to hold charge on the 

capacitor.” (Id. at 18:37-40.) As a result of the reverse biasing of diode 514, the voltage on 

capacitor 516 remains supercharged at twice the voltage of voltage source V1. (Id. at 18:60-67; 

see also 20:35-49.) Dr. Wolfe characterizes the specification similarly, stating that a diode allows 

current to flow in one direction when “forward biased” to initiate charging, but that “diode 514 

becomes reverse biased to block the current flow” to the inductor during the discharge cycle.

(Dkt. 1116-1 at 14-15.) (See also Yang Ex. 5, Wolfe Dep. 60:13-17 (when a diode is reverse 

biased, the “current is about [as] close to zero as anybody would care about.”).) 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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Waymo does not allege that Uber’s Fuji circuit includes a “diode” that is part of a 

“charging path.” 

The parties have proposed constructions of the claimed “diode.” Uber proposed that 

“diode” is “a two-terminal electronic device that allows the flow of current in one direction only.” 

(Dkt. 1233 at 10.) Waymo argues that no construction of “diode” is necessary, and the term 

should be accorded its plain meaning (Dkt. 1116 at 11-15), while its expert Dr. Wolfe proposed 

an alternate construction of “diode” as “[a] two-terminal electronic device that will conduct 

electricity much more easily in one direction than in the other.” (Dkt. 1116-1 at 20-21.) 

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(Yang Ex. 4, Wagner Rpt. ¶ 370.) 

B. Uber Does Not Infringe the ’936 Patent Under the Doctrine of Equivalents 

Although infringement under the doctrine of equivalents is a question of fact, summary 

judgment is proper “[w]here the evidence is such that no reasonable jury could determine two 

elements to be equivalent.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 

n.8 (1997). A patentee must establish “equivalency on a limitation-by-limitation basis” by 

“particularized testimony and linking argument” as to the insubstantiality of the differences 

between the claimed invention and the accused device or process. Tex. Instruments Inc. v. 

Cypress Semiconductor Corp., 90 F.3d 1558, 1566 (Fed. Cir. 1996). The function-way-result test 

“often suffice[s] to show the substantiality of the differences.” Id. “[A]ll claim limitations are 

not entitled to an equal scope of equivalents.” Moore U.S.A., Inc. v. Standard Register Co., 229 

F.3d 1091, 1106 (Fed. Cir. 2000). Ultimately, “many limitations warrant little, if any, range of 

equivalents.” Id.

The function-way-result test focuses on “an examination of the claim and the explanation 

of it found in the written description of the patent.” AquaTex Indus., Inc. v. Techniche Sols., 479 

F.3d 1320, 1326 (Fed. Cir. 2007) (citation omitted); see also Stumbo v. Eastman Outdoors, Inc.,

508 F.3d 1358, 1364 (Fed. Cir. 2007). 

1. Dr. Wolfe’s DOE analysis is faulty as a matter of law 

Waymo’s DOE theory is based solely on the function-way-result analysis of its expert, 

Dr. Wolfe. As explained above, the ’936 patent specification expressly describes the function, 

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way, and result of the “diode” in the claimed circuit. A proper function-way-result analysis must 

remain true to the patent claims and specification. AquaTex, 479 F.3d at 1326. Dr. Wolfe’s 

analysis fails because he ignores the specification’s teachings of the function, way, and result of 

the “diode” in the claimed circuit, and instead relies on purported “functions” that are nowhere 

disclosed in the patent. 

The function of the “diode” as described in the specification is to allow current to flow in 

one direction and restrict current from flowing in the reverse direction during the charging mode. 

(’936 patent, 5:9-16, 19-35.) The claim language itself (as well as Figures 5C and 5D) confirms 

that the diode operates during the charging mode (Claim 1: “charging path includes the inductor 

and the diode”), not during the discharge mode. The specification describes that the way to 

perform these functions is by forward biasing diode 514 to allow current to flow in one direction, 

and reverse biasing diode 514 to block current in the reverse direction. (Id.) The results of the 

identified functions are to allow current to supercharge capacitor 516 when diode 514 is forward 

biased and to hold that supercharge on capacitor 516 when diode 514 is reversed biased. (Id.; see

also id. at 18:28-43, 20:35-49.)

Dr. Wolfe ignores most of this. He identifies only one “primary” function of the claimed 

“diode”: “to allow electrical current to flow through from the voltage source, via the inductor, to 

the capacitor during a charge cycle.”1

 (Wolfe Rpt. ¶ 80.) But he ignores the reverse biased state 

of the “diode” described in the specification, and he disregards the way and result of the diode’s 

operation. Dr. Wolfe does not offer a theory of infringement in view of the function, way, and 

result described in the specification: 

x Function: Dr. Wolfe does not opine that the Fuji resistor performs the function of 

restricting current from flowing in the reverse direction during the charging 

mode, which is the stated function of the “diode” in the specification.

1

 If this were the only “primary” function of the diode, it would vitiate the “diode” from 

the claims, because Dr. Wolfe admitted that even a wire in place of the “diode” would meet the 

function of allowing “electrical current to flow” to the capacitor. (Yang Ex. 5, Wolfe Dep. at 

72:17-73:8.) See Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F. 3d 1334, 1342 (Fed. Cir. 

2016) (“an infringement theory [under doctrine of equivalents] fails if it renders a claim limitation 

inconsequential or ineffective”). 

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x Way: Dr. Wolfe does not opine that the resistor in Fuji blocks reverse current 

during the charging mode by way of becoming reversed biased. He admitted that 

when reverse biasing comes into play, “I agree that the reverse-bias property may 

be a meaningful difference between a diode and a resistor in some 

circumstances.” (Wolfe Rpt. ¶ 79 (emphasis added).) 

x Result: Dr. Wolfe does not argue that the Fuji resistor facilitates the capacitor in 

the Fuji circuit’s becoming supercharged, which is the stated result of the “diode” 

in the ’936 patent circuit. Dr. Wolfe argues only that the Fuji resistor causes 

current to flow into the capacitor. (Id. ¶ 84.)

Instead of focusing on the function, way, and result of the “diode” disclosed in the patent, 

Dr. Wolfe concocts purported “functions” of the diode during the discharge operation that are 

nowhere disclosed in the specification. Dr. Wolfe identifies a function of the “diode” that it 

“resists any current flow from the capacitor towards the inductor during a discharge cycle” 

(Wolfe Rpt. ¶ 81), by the way of its “effective resistance” (id. ¶ 91), with the result of ensuring 

that current flows out of the laser diode when the capacitor discharges (id. ¶ 94). 

Dr. Wolfe’s identified discharge functions of the “diode” are completely unsupported. 

The claim language itself and Figures 5C and 5D make clear that the “diode” is part of the 

charging path, not the discharge path. Dr. Wolfe admits that “[t]he claimed diode does not play a 

direct role in the claimed discharge operation.” (Yang Ex. 3, Wolfe Rpt. ¶ 81 (emphasis added).) 

Dr. Wolfe also admitted that the specification does not disclose any “effective resistance” of a 

diode that underpins his function-way-result analysis for the discharge operation. (Wolfe Dep. 

99:11-19 (“the specific value of the resistance is not taught as something that’s interesting to the 

operation of this device”) (emphasis added).) 

Dr. Wolfe’s faulty DOE theory is also defeated by his own proposed construction of the 

term “diode,” which reinforces that the claimed component allows current to flow forward while 

restricting its flow in reverse. Dr. Wolfe offered the following construction of “diode”: “a twoterminal electronic device that will conduct electricity much more easily in one direction than in 

the other.” (Dkt. 1116-1 at 20-21.) By acknowledging that the flow of electricity through the 

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diode is different depending on the direction of current, Dr. Wolfe’s construction incorporates the 

reverse biasing characteristic of the claimed “diode” as set forth in the specification. As noted 

above, Dr. Wolfe conceded that reverse biasing to restrict current is not a characteristic of a 

resistor. (Wolfe Rpt. ¶ 79.)

Dr. Wolfe’s application of the function-way-result analysis of the claimed “diode” is 

defective as a matter of law because he ignores the teaching of the specification. AquaTex, 479 

F.3d at 1326 (identification of “function” must focus on “an examination of the claim and the 

explanation of it found in the written description of the patent”). Because the Fuji resistor has a 

different function, performed in a different way, and yields a different result than the claimed 

“diode” as described in the ’936 patent specification, the resistor and “diode” cannot be 

equivalent as a matter of law. 

2. DOE does not apply to the ’936 patent’s simple circuit 

Waymo has provided no argument supporting why the DOE should even apply to a wellknown component like a diode in the simple circuit of the’936 patent. The doctrine of 

equivalents is based on the premise that claim language cannot always precisely capture the 

contours of an invention. The doctrine prevents a party from copying the claimed invention of 

another and making trivial modifications to avoid infringement: 

The language in the patent claims may not capture every nuance of 

the invention or describe with complete precision the range of its 

novelty. If patents were always interpreted by their literal terms, 

their value would be greatly diminished. Unimportant and 

insubstantial substitutes for certain elements could defeat the patent, 

and its value to inventors could be destroyed by simple acts of 

copying.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 US 722, 731 (2002). 

The claims of the ’936 patent, however, do not involve “nuances” that cannot be described 

with “complete precision.” (Id.) Rather, the claims describe a circuit with six well-known circuit 

elements: claim 1 includes a voltage source, inductor, diode, transistor, light-emitting element, 

and capacitor in a specific configuration. (’936 patent, 28:5-33.) These are simple, specific claim 

components and any variation of those components would have been foreseeable at the time of 

filing. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1360 (Fed. Cir. 2005). Thus, 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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Waymo’s attempt to employ the doctrine of equivalents to a straightforward circuit claim is a 

misapplication and misuse of the doctrine. See Sage Prods., Inc. v. Devon Indus., Inc., 126 F. 3d 

1420, 1425 (Fed. Cir. 1997) (“The claim at issue defines a relatively simple structural 

device....No subtlety of language or complexity of the technology, nor any subsequent change in 

the state of the art, such as later-developed technology, obfuscated the significance of this 

limitation at the time of its incorporation into the claim.”). 

3. Waymo has no remedy for any alleged infringement of the ’936 Patent 

Waymo has no basis for seeking a remedy for any alleged infringement in this case. 

Waymo’s damages expert, Mr. Wagner, did not identify any amount of damages for Uber’s 

alleged infringement of the ’936 patent. (Wagner Rpt. ¶ 370.) Waymo’s initial disclosures do 

not identify specific testimony upon which it expects to rely to prove that it is entitled to a 

reasonable royalty. (See Yang Ex. 6, Damages Disclosure.) Waymo represented that it would 

supplement its initial disclosures on computation of damages after July 28, 2017, but does not 

appear to have done so. (Dkt. 934 at 11:20-22.)

A judge may award a zero-amount reasonable royalty on summary judgment “if there is 

no genuine issue of material fact that zero is the only reasonable royalty.” Apple Inc. v. Motorola, 

Inc., 757 F.3d 1286, 1328 (Fed. Cir. 2014). Because Waymo has not identified any evidence or 

expert opinion supporting patent damages, Uber seeks a finding of zero damages for any patent 

infringement. See Devex Corp. v. Gen. Motors Corp., 667 F.2d 347, 361 (3d Cir. 1981) (“In the 

absence of any evidence as to what would constitute a reasonable royalty in a given case, a fact 

finder would have no means of arriving at a reasonable royalty, and none could be awarded.”) 

cited by Apple, 757 F.3d at 1328 (supporting possibility of a zero royalty award). 

Waymo also has no basis for seeking injunctive relief, 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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 Therefore, because Waymo has 

not identified any patent damages it seeks, and its claim for injunctive relief is moot, the Court 

should enter a finding of no remedies for Uber’s alleged infringement of the ’936 patent. 

II. SUMMARY JUDGMENT SHOULD BE GRANTED ON TS 9 

A. TS 9 Claims the Publicly Known, General Concept of 

TS 9 claims the broad concept of a used to 

(Dkt. 25-7 at 8.) Waymo does not claim that any part of this alleged trade secret prior to the 

words is secret. Nor can it: Waymo’s own ’922 patent discloses a LiDAR 

system with a plurality of laser diodes and plurality of PCBs, where each laser emits beams, and 

further discloses the use of a cylindrical lens to precollimate the emitted light along the fast axis. 

(Yang Ex. 7, Droz Dep. Ex. 1277, ’922 patent at 5:4-7, 5:16-26.) 

Waymo admits that TS 9 was not disclosed in any files allegedly downloaded by Anthony 

Levandowski or any other former Waymo employee. (Yang Ex. 8, Waymo 4th Suppl. Resp. to 

Uber’s 1st Set of Interrogs. at 199-201 (no “[m]isappropriated [f]iles” identified for TS 9).) 

Waymo’s Section 2019.210 Statement identifies its GBr LiDAR design as implementing TS 9’s 

claimed (Id. at 9.) Waymo’s 30(b)(6) designee Pierre-Yves Droz testified that 

the lens in question is a 

 (Yang Ex. 9, 3/31/17 Droz Dep. 69:18-24, 72:21-25.) Mr. Droz and Waymo 

engineer Will McCann admitted that the use of FAC lenses to pre-collimate a laser beam is well 

known and that FAC lenses are publicly sold by vendors. (Yang Ex. 10, 8/3/17 Droz Dep. 232:9-

18, 233:14-21; Ex. 11, McCann Dep. 206:8-209:7, 215:3-219:8; Ex. 12, McCann Dep. Ex. 1078 

(vendor diagram below); see also Ex. 13, UBER00238820 (vendor webpage).) 

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Mr. Droz also conceded that Waymo’s ’922 patent disclosed a “cylindrical lens” that “can precollimate laser beam 512 along fast axis 508.” (Yang Ex. 10, 8/3/17 Droz Dep. 236:15-238:2; 

Ex. 7, Droz Ex. 1277 at 15:35-37.) Public disclosures such as U.S. Patent No. 5,420,722 confirm 

that the use of FAC lenses in connection with laser diodes is not secret. As seen below, the ’722 

Patent discloses . The ’722 

Patent describes a “cylindrical microlens [that] is mounted directly to a laser diode,” “collecting 

laser light [] and shaping it into the desired degree of collimation.” (Dkt. 298-1, Lebby Sur-Reply 

Decl. ¶¶ 18-20; Yang Ex. 14, ’722 Patent, Abstract, 2:9-11.) 

Waymo U.S. Patent No. 5,420,722 

Mr. Droz and Mr. McCann testified that , 

as claimed in TS 9, t: 

McCann:

 

 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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Droz: 

(Yang Ex. 11, McCann Dep. 169:12-25, 172:14-19; Ex. 10, 8/3/17 Droz Dep. 231:24-232:5; see 

also Ex. 11, McCann Dep. 172:20-173:5, 216:25-217:4.) But both engineers also admitted that 

moving an optical lens to steer light is a known optical technique: 

McCann:

Q. Were you aware of so 

as to steer a beam of light? 

A. Yes.

Q. In what context were you aware of that? 

A. Well, I mean, I'm not an optical engineer, but, you know, when 

you move optical lens elements, it – it moves light around. So yes, 

you can.

Q. Would you say that’s a pretty fundamental known concept? 

A. That moving an optical element around moves light? Yes. 

That's the fundamentals of optics.

Droz: 

Q. So I’m – I’m not talking about any specific implementation, but 

the concept of, as you put it, 

. . . . That’s a fundamental concept, right, of optics?

A. So, I mean, moving a lens in front of something in optical, like, 

a focal plane, and that’s during – you know, is – is not

fundamental, but it’s something that’s known in optics.

(Yang Ex. 11, McCann Dep. 217:16-218:1 (emphasis added); Ex. 10, 8/3/17 Droz Dep. 230:8-20 

(emphasis added); see also Ex. 15, Gassend Dep. 173:18-174:2.) This comports with other public 

disclosures, such as U.S. Patent No. 8,559,107, which discloses that 

 when “the laser elements and collimation optic are slightly offset from each other,” such that 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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the “output profile may be offset.” (Yang Ex. 16, U.S. Patent No. 8,559,107 at 15:65-66, 16:2, 

Fig. 3.) Furthermore, the witness for LiDAR supplier Velodyne testified that 

 (Yang Ex. 17, Nestinger Dep. 60:9-63:4, 67:5-9, 

67:20-69:19, 70:3-5; Ex. 18, Nestinger Dep. Ex. 1963.) 

 (Yang Ex. 17, Nestinger Dep. 68:10-17.) 

. (Id. at 68:18-69:19.) 

B. TS 9 Is Not A Trade Secret 

With the admissions of Waymo’s own engineers, there is no genuine dispute that TS 9 

claims the known general approach of using an and is, 

therefore, not a trade secret. Waymo’s alleged trade secret is not about any purportedly 

downloaded files, nor a specific FAC lens shape, dimension, or lens equation.2

 Instead, Waymo 

claims the broad concept of a 

” (Dkt. 25-7 at 8.) But Waymo engineers, including Waymo’s Rule 30(b)(6) 

designee on TS 9, admit that FAC lenses for pre-collimating beams from laser diodes are well 

known. They further admit that there is no secret to how the FAC lenses 

 – the engineer just 

 is a general technique “known in optics.” It is undisputed 

that FAC lenses are publicly sold for pre-collimation of light from laser diodes. (See Yang Ex. 

2

 Waymo’s Offer of Proof points to similar in GBr3 and Fuji 

and a vendor’s comment that its price quote “aligned” with a previous “program” with Waymo, 

but Waymo’s Section 2019.210 Statement does not claim 

 (Compare Offer of Proof, Dkt. 1371-4 at 8 to Dkt. 25-7 at 8.) 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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12, McCann Ex. 1078; Ex. 13, UBER00238820.) Furthermore, the ’107 patent describes a fastaxis collimation optic mounted in front of laser emitters, and Figure 3 illustrates the trajectory of 

the emitted beams when the collimation optic is offset from the lasers. (Yang Ex. 16, ’107 patent 

at 11:29-32, 15:53-57, 15:65-66, Fig. 3 (row 2, column D below).)3

With multiple public references and admissions from Waymo’s witnesses, TS 9 is ripe for 

summary judgment. 

Waymo attempts to manufacture a dispute by arguing there is no public disclosure of a 

LiDAR system with a plurality of laser diodes on PCBs and 

. (Dkt. 1341-4 at 2-3.) But, as the Court has warned Waymo, “general engineering 

principles that are simply part of the intellectual equipment of technical employees” are not 

protectable trade secrets. (Dkt. 426 at 17 (citing Winston Research Corp. v. Minn. Min. & Mfg. 

Co., 350 F.2d 134, 139 (9th Cir. 1965)).) As admitted by Waymo’s engineers, 

 is Optics 101. (Yang Ex. 11, McCann Dep. 217:16-218:1; Ex. 10, 8/3/17 Droz 

Dep. 230:8-20; Ex. 15, Gassend Dep. 173:18-174:2.) Waymo’s own ’922 patent discloses a 

LiDAR system with multiple PCBs that uses FAC lenses. (See Yang Ex. 7, Droz Dep. Ex. 1277 

at 15:35-37.) In fact, at least one public disclosure, the ’722 patent, describes mounting a 

cylindrical lens directly to a laser diode in order to collimate the light with an 

 (See Yang Ex. 14, ’722 patent, Abstract, 2:9-11, Fig. 2.)

Waymo’s contention that laser diodes in LiDAR systems are different in some unnamed way 

3

 Though the ’107 patent describes the altering of a beam by a FAC lens as resulting in an 

“undesired trajectory,” an alleged trade secret is not a trade secret if all its elements are publicly 

disclosed by a reference, even if the reference “teaches away” from the alleged trade 

secret. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1346 (Fed. Cir. 2012) 

(affirming JMOL that alleged trade secret was not a trade secret). 

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demands, in effect, that LiDAR engineers who worked at Waymo be barred from 

 lest they be found liable for misappropriation. That Velodyne has been 

using 

 Waymo should not be allowed to claim this general approach, which is dictated by optics 

principles, as a trade secret. 

Waymo’s Opposition to Uber’s Precis and its Offer of Proof further confirms that its 

broad concept of cannot be a trade secret. Having previously 

admitted that TS 9 is not in any of the allegedly downloaded files, Waymo focuses its allegations 

on testimony by former Waymo engineers that knowledge of FAC lenses was “in my head” and 

affected by their “previous experience.” (Dkt. 1341-4 at 3; Dkt. 1371-4 at 8-9.) But by 

advancing such a broadly claimed trade secret, Waymo has overreached to cover general 

techniques that are in these engineers’ experience. A general approach “dictated by well known 

principles of physics . . . . [is] not ‘secret,’ for it consist[s] essentially of general engineering 

principles in the public domain and part of the intellectual equipment of technical employees.” 

Winston Research Corp., 350 F.2d at 139. Accordingly, summary judgment should be granted 

that TS 9 is not a trade secret. 

CONCLUSION 

For the foregoing reasons, the Court should grant Defendants’ Motion for Summary 

Judgment. 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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OTTO TRUCKING’S MOTION FOR SUMMARY JUDGMENT 

I. DEFENDANT OTTO TRUCKING CANNOT INFRINGE THE ’936 PATENT AND 

HAS NOT MISAPPROPRIATED ANY WAYMO TRADE SECRET 

Discovery is closed and Waymo has served its expert reports. The undisputed evidence 

shows Waymo has no legal basis to keep Otto Trucking in this case. Dr. Wolfe and Dr. 

Hesselink, Waymo’s experts, remain solely focused on Uber’s Spider and Fuji LiDAR systems. 

The undisputed facts show that Otto Trucking has never been involved in the development of, and 

has never used, either the Spider or Fuji system. Because Otto Trucking has never used or had 

access to the accused products, it is not possible, as a matter of law, for Otto Trucking to infringe 

the ’936 patent or to have misappropriated any Waymo trade secret. Accordingly, Otto Trucking 

is entitled to a summary judgment that it does not infringe the ’936 patent and that it has not 

misappropriated any Waymo trade secret. 

Waymo’s claims against Otto Trucking were flawed from the beginning when it claimed 

that Uber had acquired Otto Trucking. Even when Waymo learned that Otto Trucking was a 

separate company from Uber, Waymo pressed its baseless claims against Otto Trucking. But 

with discovery now complete, Waymo has no evidence of patent infringement or trade secret 

misappropriation against Otto Trucking. As a matter of law, it is time for Waymo’s sideshow 

against Otto Trucking to finally come to an end. 

A. Background

Waymo’s original claims against Otto Trucking were based solely on Waymo’s faulty 

allegation that Defendant Uber had acquired Otto Trucking. See Dkt. No. 23, ¶¶ 7, 16. Waymo’s 

First Amended Complaint (“FAC”) collectively defined Uber, Ottomotto and Otto Trucking as 

“Defendants” and did not include a single direct allegation against Otto Trucking. Although 

Waymo learned early in the litigation that Otto Trucking had not been acquired by Uber (see Dkt.

Nos. 265 at 1:13-14; 283 at 5:15-6:7), Waymo, and its experts, continue to this day to simply 

lump Otto Trucking in with Uber and Ottomotto in order to keep Otto Trucking in this case.

Otto Trucking is a limited liability company that has 

. See Declaration of Shane Brun in Support Otto Trucking’s 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

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Motion (“Brun Decl.”), Ex. 1 at 3:13-15, 5:13-15. Otto Trucking was formed on February 1, 

2016. Brun Decl. Ex. 2 at 6:19-22. Otto Trucking has two Managing Members, Lior Ron and 

Anthony Levandowski. Brun Decl., Ex. 1 at 3:13-15, 5:13-15. Neither Uber nor Ottomotto is a 

member of Otto Trucking, and neither has any ownership interest in Otto Trucking. Id.

As acknowledged by Waymo’s own expert, Michael J. Wagner, Otto Trucking is simply 

As explained by Lior Ron, 

, stated that “Otto Trucking is largely just 

an LLC” and 

 

Brun Decl., 4 Ex. 3 (Excerpt from Wagner Report) at 8. Otto Trucking has never had any 

involvement with the Spider or Fuji LiDAR systems. 

 Brun Decl., Ex. 1 at 3:26-4:1; Declaration of Brent Schwarz in 

Support of Otto Trucking’s Motion (“Schwarz Decl.”) at ¶ 2 . 

 Schwarz Decl. 

at ¶ 4. Neither the Spider nor Fuji LiDAR system has ever been installed or used in any way on 

any of the Leased Trucks. Schwarz Decl. at 6; Brun Decl., Ex. 1 at 4:11-14. 

Otto Transport LLC, a wholly owned subsidiary of Otto Trucking, 

 (the “Otto Transport Trucks”); 

. Id. at 4:5-6; Schwarz Decl. at ¶ 3. The Otto Transport Trucks 

Brun Decl., Ex. 1 at 4:9. 

. Id. at 4:9-11; Schwarz Decl. at ¶¶ 4-5.

. Id. at ¶ 5. Neither the Spider nor Fuji LiDAR system has ever been 

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installed or used in any way on any of the Otto Transport Trucks. Brun Decl. Ex. 1 at 4:11-14; 

Schwarz Decl. at ¶ 6. In fact, Otto Trucking has never made, used, offered for sale, sold, or 

imported into the U.S. either the Spider or Fuji LiDAR system. Schwarz Decl., ¶ 7. Waymo 

cannot dispute these facts. 

B. Otto Trucking Cannot Infringe Waymo’s ’936 Patent 

In its Infringement Contentions, Waymo accused only Uber’s Fuji LiDAR system of 

infringing the ’936 Patent. Brun Decl., Ex. 4(Plaintiff’s Disclosure of Asserted Claims and 

Infringement Contentions). Likewise, Dr. Wolfe’s report identifies only the Fuji LiDAR system 

as allegedly infringing the ’936 patent. Brun Decl., Ex. 5. It is undisputed, however, that Otto 

Trucking has never made, used, offered for sale, sold, or imported into the U.S. the Fuji LiDAR 

System, and thus cannot directly infringe the ’936 patent. See 35 U.S.C. § 2714

; see also

AquaWood, LLC v. Worldslide, LLC et al., No. CV 11-5611-JFW (Ex), slip op. at 14-15 (C.D. 

Cal. October 31, 2012) (granting summary judgment of noninfringement because “it is 

undisputed that AquaWood has never manufactured, imported, used, offered to sell, or sold any 

of the fifteen accused . . . products . . . .) Indeed, Dr. Wolfe offers no opinion or finding that Otto 

Trucking has made, used, offered for sale, sold, or imported the Fuji LiDAR System, or that Otto 

Trucking otherwise somehow infringes the ’936 patent. Waymo has not produced any other facts 

to show that Otto Trucking used, made, sold, offered for sale, or imported the Fuji LiDAR 

system. Otto Trucking is thus entitled to a judgment as a matter of law that it does not infringe 

the ’936 patent. See 35 U.S.C. § 271; F.R.C.P. 56(a); AquaWood, Case No. CV 11-5611-JFW 

(Ex) at 14. 

C. Otto Trucking Has Not Misappropriated Any Waymo Trade Secret

To prove its trade secret claims against Otto Trucking, Waymo must, among other things, 

show that a Waymo trade secret was disclosed to Otto Trucking under circumstances giving rise 

to an obligation not to use or disclose the secret to the detriment of Waymo, and that Otto 

Trucking either used the trade secret or disclosed it to a third party. See, e.g., Ajaxo Inc. v. 

4

 Waymo does not allege that Otto Trucking is indirectly infringing the ’936 patent. 

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E*Trade Group Inc. 135 Cal.App.4th 21, 66 (2005); CACI No. 4401. Like Waymo’s patent 

claim, Waymo’s misappropriation claim is based solely on Ottomotto’s and Uber’s development 

and use of the Spider and Fuji LiDAR systems. Specifically, Waymo discovery responses 

detailing the alleged misuse of its trade secrets point only to Ottomotto’s and Uber’s development 

and use of the Spider and Fuji LiDAR Systems. See Brun Decl., Ex. 6 at 143-147.5

 Likewise, the 

only alleged misuse of Waymo’s trade secrets identified by Dr. Hesselink are in connection with 

Ottomotto’s and Uber’s development and use of the Spider and Fuji LiDAR systems. Brun Decl., 

Ex. 7 at 4. These allegations, even when taken as true, cannot support a claim against Otto 

Trucking.

Like Waymo’s patent claim, the undisputed facts are that Otto Trucking was not involved 

in the development of, and has never used, either the Spider or Fuji LiDAR system. Dr. 

Hesselink offers no opinion or finding that Otto Trucking (not Uber or Ottomotto) has used either 

the Spider or Fuji LiDAR system or that Otto Trucking (not Uber or Ottomotto) otherwise 

somehow obtained or made use of any Waymo alleged trade secret. After scorching the earth in 

discovery, Waymo has adduced no evidence that any of its alleged trade secrets have been 

disclosed to Otto Trucking, or that Otto Trucking has acquired, used or disclosed to a third party 

any of those alleged trade secrets. For at least the above reasons, Otto Trucking is entitled to 

summary judgment in its favor on Waymo’s trade secret misappropriation claim. Beaulieu Group, 

LLC v. Bates, 2016 WL 7626471 (C.D. Cal. Oct. 18 2016) (granting summary judgment for 

Defendant former employee because “Plaintiff has presented no evidence that Defendant ever

used these secrets.”); see also Ajaxo, 135 Cal. App. at 66; CACI No. 4401; Fed. R. Civ. P. 56(a). 

D. Waymo’s Alternative Theories Against Otto Trucking Will Also Fail

Having conceded that it has no claim of infringement or misappropriation against Otto 

Trucking by its experts’ failure to present opinions on the matter, Waymo has suggested that it 

may pursue more exotic theories of liability to keep Otto Trucking in the case. For example, in 

opposing Otto Trucking’s earlier précis requesting permission to file a motion for summary 

5

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Interrogatory Responses. 

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judgment, Waymo argued that Otto Trucking is vicariously liable for, and has ratified, the alleged 

trade secret misappropriation of Mr. Levandowski. (Dkt. No. 752). These arguments do not 

survive even minimum scrutiny. 

As established above, Otto Trucking is simply a holding company that never accepted, or 

retained any benefit from, Waymo’s allegedly stolen trade secrets, and thus cannot be found to 

have ratified Mr. Levandowski’s alleged taking of those trade secrets. Cal. Civ. Code § 2310 

(West 2017); CACI No. 3710. Waymo’s vicarious liability argument would similarly fail. 

Vicarious liability may attach only when the alleged wrongful conduct is within the authority of 

the agent/employee. See CACI No. 3700, 3701; see also NetApp v. Nimble, 41 F.Supp.3d 816, 

835 (N.D. Cal. 2014). Here, Mr. Levandowski’s alleged taking of Waymo’s trade secrets 

occurred before Otto Trucking even existed, and thus such actions plainly could not be within Mr. 

Levandowski’s authority as a Managing Member of Otto Trucking. See, e.g., He Nam You v. 

Japan, 150 F.Supp.3d 1140, 1150 (N.D. Cal. 2015) (refusing to hold corporate defendants 

vicariously liable in a reverse corporate veil piercing and noting that none of the moving 

defendants existed during the time period when the alleged misconduct occurred.) 

Waymo has also advanced the theory that Otto Trucking is jointly and severally liable for 

Uber and Ottomotto’s alleged patent infringement and trade secret misappropriation. But because 

Otto Trucking had no involvement in the alleged infringement or misappropriation, Otto Trucking 

cannot be considered a joint tortfeasor in this case, and thus cannot be jointly and severally liable 

for Uber and Ottomotto’s alleged torts. See Restatement (Third) of Torts: Apportionment Liab. § 

12, (2000); JW Pharm. Corp. v. Michael Kahn & Prism Pharma Co., No. CV1201006JGBRZX, 

2013 WL 12125751, at *6 (C.D. Cal. Mar. 11, 2013) 

It remains to be seen exactly how Waymo presents these alternative theories. Otto 

Trucking will respond accordingly in its reply in support of this motion. In the meantime, for the 

reasons stated above, the Court should grant Otto Trucking’s motion for summary judgment that 

it does not infringe the ’936 patent and that it has not misappropriated any Waymo trade secret. 

Case 3:17-cv-00939-WHA Document 1470-1 Filed 09/05/17 Page 26 of 27
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

Case No. 3:17-cv-00939-WHA 21

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Dated: August 31, 2017 MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs 

MICHAEL A. JACOBS 

Attorneys for Defendants UBER TECHNOLOGIES, 

INC. and OTTOMOTTO LLC 

Dated: August 31, 2017 GOODWIN PROCTER LLP

By: /s/ Neel Chatterjee 

NEEL CHATTERJEE 

Attorneys for Defendant OTTO TRUCKING LLC

ATTESTATION OF E-FILED SIGNATURE 

I, Michael A. Jacobs, am the ECF User whose ID and password are being used to file 

Defendants’ Motion for Summary Judgment. In compliance with General Order 45, X.B., I 

hereby attest that Neel Chatterjee has concurred in this filing. 

Dated: August 31, 2017 /s/ Michael A. Jacobs 

MICHAEL A. JACOBS 

Case 3:17-cv-00939-WHA Document 1470-1 Filed 09/05/17 Page 27 of 27