1























































01980-00104/9513722.2 No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

QUINN EMANUEL URQUHART & SULLIVAN, LLP

 Charles K. Verhoeven (Bar No. 170151)

 charlesverhoeven@quinnemanuel.com

 David A. Perlson (Bar No. 209502)

 davidperlson@quinnemanuel.com

 Melissa Baily (Bar No. 237649)

 melissabaily@quinnemanuel.com

 John Neukom (Bar No. 275887)

 johnneukom@quinnemanuel.com

 Jordan Jaffe (Bar No. 254886)

 jordanjaffe@quinnemanuel.com

50 California Street, 22nd Floor

San Francisco, California 94111-4788

Telephone: (415) 875-6600

Facsimile: (415) 875-6700

Attorneys for WAYMO 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

PLAINTIFF WAYMO LLC’S NOTICE OF 

MOTION AND MOTION FOR PARTIAL 

SUMMARY JUDGMENT ON CERTAIN 

AFFIRMATIVE DEFENSES

Hearing:

Date: September 20, 2017

Time: 8:00 a.m.

Place: 8, 19th Floor

Judge: The Honorable William Alsup

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 1 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-2- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR A PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

TO DEFENDANTS UBER TECHNOLOGIES, INC., OTTOMOTTO LLC, AND OTTO 

TRUCKING LLC, AND THEIR COUNSEL OF RECORD: 

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 courtroom of the Honorable William Alsup at the United States 

District Court for the Northern District of California, 450 Golden Gate Avenue, San Francisco,

California, Plaintiff Waymo LLC ("Waymo") shall and hereby does move the Court for partial 

summary judgment against Defendants’ affirmative defenses of 

This motion is based on this notice of motion and supporting memorandum of points and 

authorities, reply briefing in further support of this motion and any supporting declarations and 

accompanying exhibits, as well as other written or oral argument that Waymo may present to the 

Court. 

DATED: August 31, 2017 QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Charles K. Verhoeven

Charles K. Verhoeven

Attorneys for Plaintiff Waymo LLC

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 2 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

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

WAYMO’S MOTION FOR A PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

TABLE OF CONTENTS

Page

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

I. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST DEFENDANTS’ 

WAIVER DEFENSE .............................................................................................................1

II. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S ESTOPPEL DEFENSE.................................................................................4

III. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S LACHES DEFENSE.....................................................................................6

IV. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S STATUTE OF LIMITATIONS DEFENSE .................................................6

V. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST UBER’S 

ACQUIESCENCE DEFENSE...............................................................................................7

VI. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S RELEASE DEFENSE...................................................................................7

VII. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST DEFENDANTS’ 

FAILURE-TO-MITIGATE DEFENSE .................................................................................8

VIII. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S PREEMPTION DEFENSE...........................................................................9

IX. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S UNCLEAN HANDS DEFENSE ..................................................................9

X. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S PROSECUTION HISTORY ESTOPPEL DEFENSE................................10

XI. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S RES JUDICATA DEFENSE ......................................................................10

CONCLUSION ................................................................................................................................10

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 3 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

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

WAYMO’S MOTION FOR A PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

TABLE OF AUTHORITIES

Page

Cases

Brand Energy & Infrastructure Servs., Inc. v. Irex Contracting Grp.,

No. CV 16-2499, 2017 WL 1105648 (E.D. Pa. Mar. 24, 2017) .................................................. 9

Celotex Corp. v. Catrett,

477 U.S. 317 (1986)..................................................................................................................... 1

Conoco, Inc. v. Energy & Envtl. Int’l, L.C.,

460 F.3d 1349 (Fed. Cir. 2006).................................................................................................. 10

In re Cover’s Estate,

188 Cal. 133 (1922)...................................................................................................................... 4

DRG/Beverly Hills, Ltd. v. Chopstix Dim Sum Cafe & Takeout III, Ltd.,

30 Cal. App. 4th 54 (1994)................................................................................................... 1, 2, 3

Harrison v. Frye,

148 Cal. App. 2d 626 (1957)........................................................................................................ 7

Hopkins v. Kedzierski,

225 Cal. App. 4th 736 (2014)....................................................................................................... 4

Hynix Semiconductor Inc. v. Rambus Inc.,

897 F. Supp. 2d 939 (N.D. Cal. 2012) ................................................................................... 9, 10

Jade Fashion & Co. v. Harkham Indus., Inc.,

229 Cal. App. 4th 635 (2014)....................................................................................................... 9

Jeong Soon v. Beckman,

234 Cal. App. 2d 33 (1965)........................................................................................................ 10

Lund v. Bally’s Aerobic Plus, Inc.,

78 Cal. App. 4th 733 (2000)......................................................................................................... 8

Magic Kitchen LLC v. Good Things Int’l Ltd.,

153 Cal. App. 4th 1144 (2007)..................................................................................................... 6

In re Marriage of Brinkman,

111 Cal. App. 4th 1281 (2003)..................................................................................................... 4

Micro Star v. Formgen Inc.,

154 F.3d 1107 (9th Cir. 1998)...................................................................................................... 2

Nelson v. Pima Cmty. Coll.,

83 F.3d 1075 (9th Cir. 1996)...................................................................................................... 10

New Hampshire v. Maine,

532 U.S. 742 (2001)..................................................................................................................... 5

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 4 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

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

WAYMO’S MOTION FOR A PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

Steinhart v. Cty. of Los Angeles,

47 Cal. 4th 1298 (2010)................................................................................................................ 5

Surrell v. Cal. Water Serv. Co.,

518 F.3d 1097 (9th Cir. 2008)...................................................................................................... 6

Waller v. Truck Ins. Exch., Inc.,

11 Cal. 4th 1 (1995)...................................................................................................................... 2

Cases

18 U.S.C. § 1836(d) .......................................................................................................................... 7

18 U.S.C. § 1838 ............................................................................................................................... 9

35 U.S.C. § 286 ................................................................................................................................. 7

Cal. Civ. Code § 1541 ....................................................................................................................... 8

Cal. Civ. Code § 3426.6 .................................................................................................................... 7

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 5 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-1- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

INTRODUCTION

In their respective Answers, both defendants asserted a laundry list of every affirmative 

defense they could think of in response to Waymo’s complaint. The facts did not then, and do not 

now, support defendants’ laundry list of affirmative defenses. In response to the précisletter briefing 

preceding this summary judgment motion, Defendants Uber and Ottomotto (collectively “Uber”) 

withdrew the following affirmative defenses: preemption, estoppel, license, and patent exhaustion. 

(Dkt. 1336-4 at 1.) With this concession, the remaining affirmative defenses for which Waymo seeks 

summary judgment are Uber’s defenses of acquiescence, waiver, failure to mitigate damages (Dkt. 

704 at 21-22) and Otto Trucking’s defenses of waiver, laches, estoppel, prosecution history estoppel, 

failure to mitigate damages, preemption, unclean hands, release, res judicata, statute of limitations 

(Dkt. 703 at 15-18).

1

Defendants bear the burden of proof on all these defenses, yet Defendants have not and cannot 

come forward with any evidence to support them. Indeed, despite Uber being permitted to serve 35 

interrogatories, Otto Trucking serving 25 interrogatories, and Defendants taking (to date) 50

depositions, Defendants have not even sought facts that would support any of these affirmative 

defenses, let alone discovered any facts that would support them. Thus, summary judgment should be 

granted against all these defenses in order to focus this case for trial. Celotex Corp. v. Catrett, 477 

U.S. 317, 322 (1986). 

I. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST DEFENDANTS’

WAIVER DEFENSE

“Waiver is the intentional relinquishment of a known right after full knowledge of the 

facts . . . .” DRG/Beverly Hills, Ltd. v. Chopstix Dim Sum Cafe & Takeout III, Ltd., 30 Cal. App. 4th 

54, 59 (1994). It is a stringent standard to meet: “The burden ... is on the party claiming a waiver of a 

 

1

 Otto Trucking’s MSJ Précis Opp. (Dkt. 1332-4) argues that “Waymo’s précis is confusing as it 

identifies the affirmative defenses asserted by Uber/Ottomotto, but includes Otto Trucking in its 

request.” (Otto Trucking MSJ Précis Opp. at 1.) This statement by Otto Trucking makes no sense. 

Waymo’s MSJ Précis (Dkt. 1301) expressly cited both Uber’s and Otto Trucking’s Answers (see id. at 

1 ¶ 1) and challenged various defenses asserted in one or both Answers. Any suggestion that 

Waymo’s MSJ Précis did not encompass Otto Trucking’s defenses is disingenuous. 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 6 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-2- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

right to prove it by clear and convincing evidence that does not leave the matter to speculation, and 

‘doubtful cases will be decided against a waiver.’” Waller v. Truck Ins. Exch., Inc., 11 Cal. 4th 1, 31

(1995) (ellipses in original, citation omitted). No reasonable factfinder could find that Defendants 

have met that stringent standard here. There is nothing in the record suggesting that Waymo 

intentionally relinquished its right to sue Defendants for trade secret misappropriation, much less that 

Waymo did so “after full knowledge of the facts.”

Uber argues that it has a plausible waiver defense because “Waymo knew, at least as of August 

18, 2016, that it was investigating Mr. Levandowski’s alleged downloading activity; that Levandowski 

had pursued a self-driving venture; and that [Uber] acquired Levandowski’s start-up. Waymo sat on 

these facts for months.” (Uber MSJ Précis Opp. (Dkt. 1336-4) at 2.) But this allegation fails to show 

waiver as a matter of law. Uber cannot show that merely “sitting on facts” creates a waiver because 

waiver must be “manifested by some overt act indicating an intention to abandon that right.” Micro 

Star v. Formgen Inc., 154 F.3d 1107, 1114 (9th Cir. 1998). Waymo’s purported “inaction” is thus 

insufficient on its own to show waiver.

Even if Waymo’s alleged inaction could be enough to create a waiver (it cannot), Uber’s 

waiver defense also fails because Uber cannot show that Waymo engaged in any inaction “after full 

knowledge of the facts.” DRG/Beverly Hills, 30 Cal. App. 4th at 59. Again, Uber argues that Waymo 

waived its trade secret rights by allegedly sitting on those rights for months after August 2016. (Uber 

MSJ Précis Opp. at 2.) But as Waymo has previously shown in connection with a similar “delay”

argument asserted by Uber, Waymo did not have evidence that Uber was using its trade secrets at 

least until December 2016, when Waymo was inadvertently copied on an email from one of Uber’s 

LiDAR component vendors showing a printed circuit board embodying several of Waymo’s trade 

secrets. (Dkt. 24 at 10-11; Dkt. 25-46; Dkt. 245-3 at 13-14.) Waymo filed suit just nine weeks later –

hardly an unreasonable length of time in which to authorize, prepare, and file a complex and highstakes lawsuit, a detailed trade secret list and a motion for preliminary injunction. Indeed, the Court

previously found that Uber’s delay argument “impeaches itself” in its Preliminary Injunction Order, 

finding further “that Waymo reasonably refrained from bringing suit until it discovered evidence 

indicating use, and that nothing about this course of action suggests a lack of urgency . . . .” (Dkt. 433 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 7 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

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

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

at 20.) Just as the purported “delay” did not show a lack of urgency then, it cannot now show that 

Waymo intended to relinquish its trade secret claims against Uber, as would be required to find a 

waiver. DRG/Beverly Hills, 30 Cal. App. 4th at 60 (“The pivotal issue in a claim of waiver is the 

intention of the party who allegedly relinquished the known legal right.”).

For its part, Otto Trucking alleges waiver based on the following pieces of evidence

concerning Mr. Levandowski, not Defendants, which occurred prior to Waymo’s discovery of its trade 

secret misappropriation claims against Defendants: (1) a bonus/equity payment2that Waymo made to 

Mr. Levandowski in August 2016; and (2) the supposed “warm” and “congratulat[ory]” words that 

Waymo CEO John Krafcik had for Mr. Levandowski, not Uber or Otto Trucking, in April 2016. (Otto 

Trucking MSJ Précis Opp. (Dkt. 1332-4) at 2-3.) But this payment to Levandowski pursuant to the 

terms of the 2012 Chauffeur bonus plan, made prior to Waymo’s discovery of Mr. Levandowski’s 

trade secret theft, hardly demonstrates “relinquishment” of any right to bring a trade secret case 

against Otto Trucking. And purportedly “warm” or “congratulatory” words to Mr. Levandowski made

months before Waymo discovered evidence showing that its trade secrets were being used by 

Defendants are categorically insufficient to show waiver of Waymo’s claims against Uber and Otto 

Trucking for trade secret misappropriation. 

Further, Otto Trucking does not and cannot show that Waymo took these actions “after full 

knowledge of the facts.” DRG/Beverly Hills, 30 Cal. App. 4th at 59. Waymo did not even know that 

Mr. Levandowski had downloaded files until roughly late September 2016. (Dkt. 1227-4.) And more 

importantly – given that the asserted waiver is against Waymo’s right to sue Defendants for trade 

secret misappropriation – Waymo did not learn that its trade secrets had been incorporated into any of 

Defendants’ systems until December 2016. (Dkt. 433 at 5.) Thus, Waymo did not have “full

knowledge of the facts” until at least that date. DRG/Beverly Hills, 30 Cal. App. 4th at 59 (emphasis 

added). It follows that any pre-December statements or actions taken by Waymo cannot waive 

Waymo’s trade secret rights.

 

2

 The parties have disputed the proper characterization of this payment to Mr. Levandowski, though 

resolving that nomenclature dispute is not relevant to this Motion. 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 8 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-4- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

II. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S ESTOPPEL DEFENSE

Uber has withdrawn its estoppel defense in response to Waymo’s précis. Otto Trucking, 

however, continues to assert this defense based on the same facts it used to support its assertion of 

waiver, collapsing the two in the relevant section of its MSJ Précis Opp. and calling it a 

“waiver/estoppel” defense. (Otto Trucking MSJ Précis Opp. at 1.) As Uber concedes, Otto 

Trucking’s evidence cannot establish an estoppel defense for the same reasons it cannot establish a 

waiver defense, and more.

Estoppel requires the following elements: “(1) The party to be estopped must know the facts; 

(2) he must intend that his conduct shall be acted upon, or must so act that the party asserting the 

estoppel had the right to believe that it was so intended; (3) the party asserting the estoppel must be 

ignorant of the true state of facts; and, (4) he must rely upon the conduct to his injury.” Hopkins v. 

Kedzierski, 225 Cal. App. 4th 736, 756 (2014). Like a waiver defense, the first element of an estoppel 

defense requires that the party to be estopped have full knowledge of the facts. In re Cover’s Estate, 

188 Cal. 133, 146 (1922) (“[T]o constitute an estoppel it must be made to appear that she [the person 

to be estopped] acted with full knowledge of all the material facts and circumstances and with full

knowledge of her rights . . . .”). Moreover, like a waiver defense, an estoppel defense must be 

established by clear and convincing evidence. In re Marriage of Brinkman, 111 Cal. App. 4th 1281, 

1289 (2003).

The first element, and by extension the second element, are quite obviously lacking. As 

explained above, Waymo did not have full knowledge of the facts when Mr. Krafcik made his 

“congratulatory” statements to Mr. Levandowski (not Otto Trucking) in April 2016 and when Waymo 

made its bonus/equity payment to Mr. Levandowski (not Otto Trucking) in August 2016. Waymo did 

not yet know that Mr. Levandowski had stolen Waymo’s files at that time, and it certainly did not 

know that the information in those files had made its way into any of Defendants’ LiDAR systems. 

Furthermore, absent any evidence that either Mr. Krafcik or Waymo knew that Waymo’s trade secrets 

were being misappropriated, Otto Trucking also cannot show that the asserted conduct was intended to 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 9 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-5- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

act as a free pass for Otto Trucking to do so going forward. Thus, the first and second elements of 

estoppel are clearly not met here. 

The final element of estoppel – reliance – is also clearly lacking. The alleged estoppel here 

would be that Otto Trucking supposedly relied on Waymo’s conduct to infer that Waymo would not 

file suit for trade secret misappropriation. But the pre-suit record conclusively belies this assertion, 

because it shows that all Defendants were hypersensitive to the likelihood that Waymo would file suit 

for trade secret misappropriation. Indeed, Defendants engaged in a months-long due diligence process 

between February and August 2016, a central purpose of which was to assess the likelihood that 

Uber’s acquisition of the Otto entities would cause Waymo to sue for trade secret misappropriation. 

(See Dkt. 566 at 2-5 (Judge Corley summarizing this due diligence process).) And the Court has 

found that the work-product and attorney-client privileges attach under the common interest doctrine 

of April 11, 2016, based on the representation made by Otto Trucking (and Uber) that they shared a 

joint common legal interest in defending against claims brought by Waymo.

3

 (Dkt. 731, 949.) Thus, 

Otto Trucking clearly did not rely on Waymo’s pre-suit conduct to infer that Waymo would not file 

suit.4 If any form of estoppel applies on these facts, it is Otto Trucking that should be estopped –

from asserting a defense that is premised on a position contrary to one it has previously taken in this 

litigation. New Hampshire v. Maine, 532 U.S. 742, 749 (2001) (finding the judicial estoppel doctrine 

“generally prevents a party from prevailing in one phase of a case on an argument and then relying on 

a contradictory argument to prevail in another phase”). 

 

3

 The indemnification agreement between the parties, and the results of the due diligence process –

which remain shielded by assertions of Fifth Amendment privilege, attorney-client privilege, work 

product protection, etc. pending the outcome of Mr. Levandowski’s appeals to the Federal Circuit –

further suggest that Otto Trucking was also not “ignorant of the true state of facts” such that the third 

estoppel element is not met either. 

4

 One other point deserves mention. The California Supreme Court has stressed that “[i]n general, 

the law ‘particularly’ disfavors estoppels ‘where the party attempting to raise the estoppel is 

represented by an attorney at law.’” Steinhart v. Cty. of Los Angeles, 47 Cal. 4th 1298, 1316 (2010). 

Here, both Defendants were represented by counsel during the aforementioned due diligence process. 

So estoppel is “particularly disfavor[ed]” here. Id. 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 10 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-6- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

III. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S LACHES DEFENSE

Summary judgment should also be granted against Otto Trucking’s laches defense. Here too, 

under the same fact pattern, Uber does not assert this defense – only Otto Trucking. To assert laches, 

“[a] defendant must demonstrate three elements to successfully assert a laches defense: (1) delay in 

asserting a right or a claim; (2) the delay was not reasonable or excusable; and (3) prejudice to the 

party against whom laches is asserted.” Magic Kitchen LLC v. Good Things Int’l Ltd., 153 Cal. App. 

4th 1144, 1157 (2007). Here, as explained above and as noted by the Court in its Preliminary 

Injunction Order, Waymo did not have the full facts underpinning its claims until December 2016 at 

the earliest, and Waymo filed suit just nine weeks later. (See Dkt. 433 at 20.) A nine-week delay can 

hardly be deemed “unreasonable,” particularly given the time that it took Waymo to authorize, 

prepare, and file a complex and high-stakes suit such as this one.

In any event, Otto Trucking cannot demonstrate any prejudice from Waymo’s alleged delay. It 

cannot show that it would have changed its conduct or pursued a different development path had 

Waymo sued nine weeks earlier. Indeed, while Otto Trucking alleges (incorrectly) that Waymo has 

been on constructive notice of its claims as early as August 2016, Otto Trucking cannot show that it 

would have changed its conduct even if Waymo had sued back in August 2016. 

Tellingly, the sole “explanation” of prejudice in Otto Trucking’s MSJ Précis Opp. is the 

conclusory statement that “[t]his delay was unreasonable and prejudicial . . . .” (Otto Trucking MSJ 

Précis Opp. at 3.) For an affirmative defense on which Otto Trucking bears the burden of proof, such 

a conclusory statement is clearly insufficient. Surrell v. Cal. Water Serv. Co., 518 F.3d 1097, 1103 

(9th Cir. 2008) (“Conclusory statements without factual support are insufficient to defeat a motion for 

summary judgment.”).

IV. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S STATUTE OF LIMITATIONS DEFENSE

As noted above, Waymo did not learn about Defendants’ trade secret misappropriation and 

patent infringement activity—which began roughly a year before Waymo filed suit, give or take a few 

months—until weeks before it filed suit. Waymo filed well within the three-year limitations period 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 11 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-7- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

that applies to claims under DTSA and CUTSA. See 18 U.S.C. § 1836(d); Cal. Civ. Code § 3426.6. 

Likewise, all of Defendants’ patent infringement occurred within the six-year damages window under 

35 U.S.C. § 286. Waymo’s claims carry no statute-of-limitations concerns.

V. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST UBER’S 

ACQUIESCENCE DEFENSE

Just as Otto Trucking bundles its waiver defense with its estoppel defense, Uber bundles its 

waiver defense with its acquiescence defense. (See Uber MSJ Précis Opp. at 2 (referring to 

“acquiescence/waiver”).) Here, it is Uber asserting a defense that Otto Trucking does not think is 

strong enough to include. But Uber’s acquiescence defense has no more merit than its waiver defense.

“The equitable defense of acquiescence arises where the complainant has acquiesced in the 

violation of the same type of restriction by third parties. Where the complainant has failed to enforce 

a similar equitable servitude against third parties, he has debarred himself from obtaining equitable 

relief against the defendant for subsequent violations of the same character.” Harrison v. Frye, 148 

Cal. App. 2d 626, 630 (1957). Uber does not even try to identify any circumstances in which Waymo 

has “acquiesced” to the misappropriation of its trade secrets by others. Thus, any acquiescence 

defense must fail. And to the extent Uber tries to argue that Waymo acquiesced through the acts it 

points to in relation to waiver and estoppel, those facts do not show Waymo “acquiesced” to anything, 

much less acquiesced to anything Uber or Otto Trucking did. As with waiver and estoppel, that 

argument is clearly meritless. 

VI. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S RELEASE DEFENSE

Just as Uber and Otto Trucking cannot show that Waymo waived its claims, Otto Trucking 

cannot show that Waymo released its claims. Here, on the same factual record, it is Uber this time 

that does not believe it has a release defense – only Otto Trucking asserts it. But there is no written 

document purporting to release any of Waymo’s claims against Otto Trucking (or Uber). And to the 

extent Otto Trucking argues that the conduct directed to Mr. Levandowski impliedly released any 

claims that Waymo had against Otto Trucking, an entity that Waymo did not even know existed prior 

to filing this lawsuit, this allegation is meritless. To constitute a valid release, “the release must be 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 12 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-8- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

clear, unambiguous and explicit in expressing the intent of the parties.” Lund v. Bally’s Aerobic Plus, 

Inc., 78 Cal. App. 4th 733, 738 (2000) (internal quotation marks omitted). Mr. Krafcik’s 

congratulatory comments and Waymo’s payment to Mr. Levandowski did not even mention 

Defendants, much les serve as a “clear, unambiguous and explicit” statement that Waymo was 

waiving its yet-to-be-discovered legal claims against Defendants. 

Moreover, if a purported release is not in writing, it must be supported by separate, new 

consideration. Cal. Civ. Code § 1541. The alleged congratulatory statements by Mr. Krafcik were 

wholly gratuitous and not supported by consideration at all, while the payment to Mr. Levandowski 

was part of a contract-based compensation program related to Mr. Levandowski’s work at Waymo. 

Levandowski provided no “new” consideration for either of those actions. For this reason as well, 

these actions cannot be construed as a release of Waymo’s claims against Defendants.

VII. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST DEFENDANTS’

FAILURE-TO-MITIGATE DEFENSE

Defendants have no evidence that Waymo failed to mitigate its damages, and therefore 

summary judgment should be granted against their failure-to-mitigate defense. To the extent 

Defendants argue that Waymo failed to mitigate damages by failing to sue as quickly as it could, this 

argument is unavailing. As explained above, Waymo brought suit within weeks of obtaining evidence 

of Defendants’ patent infringement and trade secret misappropriation. Because any “delay” in 

bringing suit was de minimis at most, there could be no failure-to-mitigate defense based on any 

alleged delay. 

There are also other reasons why the timing of Waymo’s suit cannot give rise to any failure-tomitigate defense. Waymo’s damages case does not involve a damages theory that would yield a 

different damages number depending on the particular timing of Waymo’s suit. Rather, Waymo bases 

its trade secret damages on the saved development costs and accelerated development timeline that 

Defendants were able to achieve through their use of Waymo’s trade secrets. Uber’s MSJ Précis Opp. 

argued that “[t]hese are precisely the type of damages that could have been mitigated with earlier 

notice as they affect the amount of time Uber allegedly benefited from using Waymo’s material to 

catch up on Waymo’s technological lead.” (Uber MSJ Précis Opp. at 3.) But this makes no sense. 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 13 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-9- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

The length of the head start created by Uber’s trade secret misappropriation does not depend on the 

timing of Waymo’s suit. For example, if Uber could have developed a suitable LiDAR system in ten 

years using legitimate means, and in three years by using Waymo’s trade secrets, then Uber’s trade 

secret misappropriation gave it a seven-year head start. That seven-year number would not change 

depending on when Waymo brings suit. It is based solely on the difference between the amount of 

time that it would take Uber to develop the relevant technology through legitimate versus illegitimate 

means.

VIII. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S PREEMPTION DEFENSE

Waymo’s Federal DTSA claim does not preempt its California-law CUTSA claim. See 18 

U.S.C. § 1838 (stating that DTSA does not preempt state-law claims or remedies); Brand Energy & 

Infrastructure Servs., Inc. v. Irex Contracting Grp., No. CV 16-2499, 2017 WL 1105648, at *7 n. 17 

(E.D. Pa. Mar. 24, 2017) (“Congress went out of its way to make clear that the DTSA does not 

preempt state trade secret laws.”) Thus, Otto Trucking’s (but not Uber’s) preemption defense 

presumably was directed to Waymo’s claim under the California Unfair Competition Law (UCL). 

This Court held that the UCL claim was indeed preempted by CUTSA, and therefore dismissed the 

UCL claim. (Dkt. 576.) With the UCL claim dismissed, there are no longer any remaining 

preemption concerns. Uber apparently agrees.

IX. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S UNCLEAN HANDS DEFENSE

An unclean hands defense requires Otto Trucking to prove that Waymo engaged in misconduct 

directly related to the claims that Waymo is asserting. Hynix Semiconductor Inc. v. Rambus Inc., 897 

F. Supp. 2d 939, 978 (N.D. Cal. 2012); Jade Fashion & Co. v. Harkham Indus., Inc., 229 Cal. App. 

4th 635, 654 (2014). There is no evidence of any such misconduct here. Otto Trucking’s MSJ Précis

Opp. argued only that “for a number of years, Waymo purchased Velodyne LiDAR systems . . . to the 

extent that any of Waymo’s purported trade secrets are also found in Velodyne LiDARs, Waymo may 

have misappropriated them from Velodyne or other third parties’ [sic] whose technology Waymo has 

purchased.” (Otto Trucking MSJ Précis Opp. at 3 (emphasis added).) But this is pure, baseless 

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 14 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-10- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

speculation. Otto Trucking has not and cannot come forward with any evidence that Waymo’s trade 

secrets were derived from Velodyne LiDAR systems, and it cannot proceed on an unclean hands 

defense founded on nothing more than baseless speculation. Nelson v. Pima Cmty. Coll., 83 F.3d 

1075, 1081-82 (9th Cir. 1996) (“[M]ere allegation and speculation do not create a factual dispute for 

purposes of summary judgment.”) On this same record, Uber does not even try to assert unclean 

hands. Furthermore, an unclean hands defense requires Otto Trucking to prove that the alleged 

misconduct caused prejudice. Hynix, 897 F. Supp. 2d at 978; Jeong Soon v. Beckman, 234 Cal. App. 

2d 33, 36 (1965). Otto Trucking has no evidence of prejudice. The unclean hands defense must fail.

X. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S PROSECUTION HISTORY ESTOPPEL DEFENSE

Like many of its other defenses, Otto Trucking’s (and not Uber’s) prosecution history estoppel 

defense is frivolous. The doctrine of prosecution history estoppel states that a patentee may have 

surrendered claim scope under the doctrine of equivalents by making patentability-related 

amendments or arguments during prosecution. Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 

1349, 1363 (Fed. Cir. 2006). Here, however, the ’936 Patent was allowed in the first Office Action. 

Thus, Waymo made no claim amendments or patentability arguments during prosecution at all. It 

logically follows that there is nothing that could create a prosecution history estoppel. Indeed, Otto 

Trucking has never identified any prosecution activity that allegedly creates a prosecution history 

estoppel.

XI. SUMMARY JUDGMENT SHOULD BE GRANTED AGAINST OTTO 

TRUCKING’S RES JUDICATA DEFENSE

Otto Trucking does not identify any possible basis for res judicata to apply. Nor can it. This is 

the first lawsuit in which Waymo (or any Waymo privy) has accused Defendants or their privies of 

trade secret misappropriation or patent infringement. Res judicata cannot apply under these facts and 

Otto Trucking’s refusal to abandon this frivolous defense should be disallowed. 

CONCLUSION

For the foregoing reasons, Waymo respectfully requests that the Court grant summary 

judgment against the aforementioned affirmative defenses.

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 15 of 16
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

01980-00104/9513722.2

-11- No. 3:17-cv-00939-WHA

WAYMO’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON AFFIRMATIVE DEFENSES

DATED: August 31, 2017 QUINN EMANUEL URQUHART & SULLIVAN, 

LLP

By /s/Charles K. Verhoeven

Charles K. Verhoeven

Attorneys for WAYMO LLC

Case 3:17-cv-00939-WHA Document 1418 Filed 08/31/17 Page 16 of 16