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WAYMO’S MEMORANDUM OF LAW IN SUPPORT OF ITS PROPOSED JURY INSTRUCTIONS

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, 

vs. 

UBER TECHNOLOGIES, INC.; 

OTTOMOTTO LLC; OTTO TRUCKING 

LLC, 

Defendants. 

CASE NO. 3:17-cv-00939 

PLAINTIFF WAYMO LLC’S 

MEMORANDUM OF LAW IN SUPPORT 

OF ITS PROPOSED JURY 

INSTRUCTIONS 

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WAYMO’S MEMORANDUM OF LAW IN SUPPORT OF ITS PROPOSED JURY INSTRUCTIONS

Plaintiff Waymo LLC (“Waymo”) submits this memorandum of law in support of its proposed 

jury instructions. 

I. INTRODUCTION 

Despite the large number of disputed instructions, the parties’ disputes are generally limited to 

several critical disputes that run across many of the instructions. First, and most critically, Defendants 

Uber, Ottomotto, and Otto Trucking have taken the position that the jury should not be instructed with

respect to Waymo’s Federal Defend Trade Secrets Act (“DTSA”) claims. Defendants’ contention is 

unsupported by the law and would amount to a grant of summary judgment on an independent claim. 

Second, Uber and Ottomotto have objected to the inclusion of any vicarious liability instructions, and 

Otto Trucking has limited its vicarious liability instructions only to misconduct by Anthony 

Levandowski. Waymo has consistently alleged that all of the Defendants are vicariously liable for 

Mr. Levandowski’s actions, and that each of the Defendants engaged in misappropriation via agents in 

addition to Mr. Levandowski. Failing to instruct the jury on these theories would be improper. 

II. ARGUMENT 

A. Coexisting DTSA and CUTSA Claims 

1. The Court Should Instruct the Jury on Waymo’s DTSA and CUTSA 

Trade Secret Misappropriation Claims (Disputed Instructions No. 11-

25, 27-31, and 45-51) 

 In its First Amended Complaint, Waymo asserts claims for trade secret misappropriation under 

both the Federal Defend Trade Secrets Act (“DTSA”) and the California Uniform Trade Secrets Act

(“CUTSA”). (See Dkt. 23 at ¶¶ 66-88.) Citing no authority to support their position, Defendants 

nonetheless argue that the Court should only instruct the jury on Waymo’s CUTSA claim. Defendants 

are wrong. 

 The Court should instruct the jury on both Waymo’s DTSA and CUTSA claims because: 

(1) Defendants’ objections are an improper attempt to bring an untimely and unauthorized motion to 

dismiss or motion for summary judgment; (2) courts permit plaintiffs to assert trade secret 

misappropriation claims under both the DTSA and state trade secret laws in the same case; and 

(3) because there are substantive distinctions between the DTSA and CUTSA, Waymo must be 

permitted to assert both of its claims before the jury. 

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WAYMO’S MEMORANDUM OF LAW IN SUPPORT OF ITS PROPOSED JURY INSTRUCTIONS

2. Defendants’ Objections to Waymo’s DTSA Instructions Constitute an 

Improper, Untimely and Unauthorized Attempt to Bring a Dispositive 

Motion 

If Defendants believe that, as a matter of law, Waymo is not entitled to assert trade secret 

misappropriation claims under both the DTSA and CUTSA, Defendants should have sought leave to 

file a motion to dismiss or motion for summary judgment as required by the Court’s Case 

Management Order. (See Dkt. 563 at ¶ 9.) Defendants never did so. Defendants should not be 

permitted to bring such an untimely motion now under the guise of jury instruction objections. The 

Court, therefore, should overrule Defendants’ objections to Waymo’s DTSA jury instructions on that 

ground alone. 

3. Courts Permit Plaintiffs to Assert Trade Secret Misappropriation 

Claims Under the DTSA and State Law 

 During the parties’ meet and confer, Defendants did not cite to a single decision in which a 

court held that a plaintiff is not entitled to assert trade secret misappropriation under both the DTSA 

and state law in the same case. To the contrary, courts do let plaintiffs assert those claims together in 

the same case. 

 As the Court is aware, the DTSA is the first federal law to create a private right of action for 

the misappropriation of trade secrets. The DTSA was formally enacted on May 11, 

2016. See Defend Trade Secrets Act of 2016, Pub. L. No. 114–153, § 2, 130 Stat. 376 (2016) 

(codified as amended at 18 U.S.C. § 1831 et seq.). According to Congress, “[t]he [DTSA]’s definition 

of misappropriation is modeled on the [Uniform Trade Secrets Act (“UTSA”)], versions of which 

have been adopted by 48 states.” H.R. REP. 114-529 House Report No. 114-529, at 5, DEFEND 

TRADE SECRETS ACT OF 2016, April 26, 2016. Congress went out of its way to make clear that the 

DTSA does not preempt state trade secret laws. Id. Rather, the DTSA merely provides “a 

complementary Federal remedy if the jurisdictional threshold for Federal jurisdiction is satisfied.” Id. 

The reason for creating such federal jurisdiction is that the states’ trade secrets laws “contain built-in 

limitations that make them not wholly effective in a national and global economy.” Id. at 4. 

 Federal Courts, including the Northern District of California, allow federal trade secret claims 

under the DTSA to be asserted alongside state law trade secret claims in the same case. See, e.g., 

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Henry Schein, Inc. v. Cook, 191 F. Supp. 3d 1072, 1077 (N.D. Cal. 2016) (granting plaintiff’s 

application for TRO where plaintiff claimed violations of both the DTSA and the CUTSA) (Tigar, J.); 

Mission Measurement Corp. v. Blackbaud, Inc., 216 F. Supp. 3d 915, 920 (N.D. Ill. 2016) (denying 

defendants’ motions to dismiss plaintiff’s parallel claims under the DTSA and Illinois state trade 

secret law on basis of adequate pleadings under both causes of action); Agilysys, Inc. v. Hall, No. 

1:16-CV-3557-ELR, 2017 WL 2903364, at *8 (N.D. Ga. May 25, 2017) (denying defendant’s motion 

to dismiss trade secret claims pursuant to both the DTSA and the Georgia Trade Secrets Act where 

plaintiff stated plausible claims under each cause of action); Syntel Sterling Best Shores Mauritius Ltd. 

v. Trizetto Grp., Inc., No. 15CV211LGSRLE, 2016 WL 5338550, at *6 (S.D.N.Y. 2016) (allowing 

addition of DTSA claim to plaintiff’s preexisting trade secret misappropriation claim under New York 

State law). Indeed, in the only case that has been tried to date under the DTSA, the jury was 

instructed and reached a verdict on plaintiffs’ DTSA and Pennsylvania state law trade secret 

misappropriation claims. See Dalmatia Imp. Grp., Inc. v. Foodmatch, Inc., No. CV 16-2767 (E.D. Pa. 

2017) (Dkt. 321, Order Entering Judgment on the Verdict). 

 Under these authorities, Waymo is entitled to assert both its DTSA and CUTSA claims at trial 

and, therefore, the jury should be instructed on both claims. 

4. The Jury Must Be Instructed on Both the DTSA and CUTSA Claims 

Because There Are Substantive Differences Between the Two Statutes 

 The jury should be instructed on both Waymo’s DTSA and CUTSA claims for the additional 

reason that there are important substantive differences between trade secret misappropriation claims 

brought under the DTSA and CUTSA. One such important difference is in the remedies available 

under the DTSA and the CUTSA.1 Specifically, the DTSA expressly permits a plaintiff to recover 

actual damages or reasonable royalty damages; whereas, under CUTSA, a plaintiff may only recover 

reasonable royalty damages if “neither damages nor unjust enrichment caused by misappropriation are 

provable.” Cal. Civ. Code § 3426.3(b). 

 

1

 As another example, unlike under the CUTSA, a plaintiff asserting a claim under the DTSA 

must prove that its asserted trade secrets are “related to a product or service used in, or intended 

for use in, interstate or foreign commerce.” 18 U.S.C.§ 1836(b)(1). 

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 The DTSA expressly permits a plaintiff to seek recovery of actual damages, unjust enrichment 

or reasonable royalty damages: 

(b) Private Civil Actions.— 

(3) Remedies.—In a civil action brought under this subsection with respect to the 

misappropriation of a trade secret, a court may— 

(B) award— 

(i)

 (I) damages for actual loss caused by the misappropriation of the trade secret; and 

 (II) damages for any unjust enrichment caused by the misappropriation of the trade 

secret that is not addressed in computing damages for actual loss; or 

 (ii) in lieu of damages measured by any other methods, the damages caused by the 

misappropriation measured by imposition of liability for a reasonable royalty for the 

misappropriator’s unauthorized disclosure or use of the trade secret . . . 

18 U.S.C. § 1836(b)(3). In contrast, CUTSA only permits a plaintiff to recover reasonable royalty 

damages if neither actual damages or unjust enrichment damages are provable: 

(a) A complainant may recover damages for the actual loss caused by 

misappropriation. A complainant also may recover for the unjust enrichment caused 

by misappropriation that is not taken into account in computing damages for actual 

loss. 

(b) If neither damages nor unjust enrichment caused by misappropriation are 

provable, the court may order payment of a reasonable royalty for no longer than the 

period of time the use could have been prohibited. 

Cal. Civ. Code § 3426.3; Ajax, Inc. v. E*Trade Financial Corp., 187 Cal. App. 4th 1295, 1310 (2010) 

(finding CUTSA only permits a plaintiff to recover reasonable royalty damages “where the defendant 

has made no actual profits and the plaintiff is unable to prove a specific loss”). Accordingly, under

the CUTSA, reasonable royalties are available only if actual damages or unjust enrichment “could not 

be proved.” See Atlantic Inertial Systems, Inc. v. Condor Pacific Industries, 2015 WL 3825318, at *4 

(C.D. Cal. 2015). 

 Because the remedy provisions in the DTSA are broader than those in the CUTSA, 

Defendants’ proposal—that the Court only instruct the jury on Waymo’s CUTSA claim—would 

improperly deprive Waymo of the ability to pursue all of its available remedies. The Court, therefore, 

should reject Defendants’ position and instruct the jury under both the DTSA and CUTSA. 

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WAYMO’S MEMORANDUM OF LAW IN SUPPORT OF ITS PROPOSED JURY INSTRUCTIONS

B. Vicarious Liability 

 Defendants object to Waymo’s Proposed Instructions that refer to agency theories of liability. 

(Proposed Instructions No. 6, 8, 19, 32, 35, 38, 39) However, as Waymo has repeatedly demonstrated 

in its pleadings, Uber, Ottomotto, and Otto Trucking misappropriated trade secrets from Waymo via 

Anthony Levandowski. (Dkt. Nos. 783, 784, 894, 1603). 

 Waymo further contends that the firms acting as agents for Uber (Morrison Foerster, Stroz 

Friedberg, and O’Melveny and Myers) committed misappropriation by acquisition as they knew or 

had reason to know that Levandowski, Ottomotto, and Otto Trucking used improper means to acquire 

proprietary, trade secret information, as well as other proprietary documents describing Waymo’s 

confidential trade secrets. See Declaration of Gary Brown (“Brown Decl.”); Deposition Transcript of 

Anthony Levandowski (“Levandowski Dep.”) at 20:9-24, 100:9-101:15, 115:3-16; Dkt. No. 883 at 

¶¶ 6-7.). 

 Defendants’ objections to inclusion of agency liability in the jury instructions are tantamount 

to an improper, untimely dispositive motion. Disposition of an entire cause of action should be sought 

pursuant to Rule 12 or Rule 56 of the Federal Rules of Civil Procedure, and not left to the jury 

instruction stage of pretrial. Moreover, questions of fact with regard to agency liability as between

these Defendants should be left to the trier of fact where, as here, facts are in dispute. 

 In short, the Court should overrule Defendants’ objections to Proposed Instructions that 

include agency theories of liability. 

1. Anthony Levandowski Was Ottomotto’s/Otto Trucking’s Agent, and 

Ottomotto/Otto Trucking Were Levandowski’s Agent in Transmitting 

Confidential Trade Secrets to Uber 

 A principal is liable to third parties for the frauds or other wrongful acts committed by its 

agent in and as a part of the transaction of the business of the agency. Daniels v. Select Portfolio 

Servicing, Inc., 246 Cal. App. 4th 1150, 1171−1172 (2016). Agency is the relation that results from 

the act of the principal, who authorizes the agent, to conduct one or more transactions with a third 

party or parties in effecting the purpose of the principal. L. Byron Culver & Associates v. Jaoudi 

Industrial & Trading Corp, 1 Cal. App. 4th 300, 304 (1991). Applying vicarious responsibility, 

Anthony Levandowski was Ottomotto’s and Otto Trucking’s agent, and Ottomotto and Otto Trucking 

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were Levandowski’s agent in transmitting confidential trade secrets that Levandowski stole from 

Waymo. Likewise, bad actions by Levandowski, Ottomotto, and Otto Trucking in retaining and 

transmitting confidential, proprietary trade secret information are imputed to Uber via agency theory,

as each was an agent of Uber as of the time they were acquired, and Uber knew or should have known 

that its agent or agents were misappropriating trade secrets from Waymo. See Droeger v. Welsh 

Sporting Goods Corp., 541 F.2d 790, 792 (9th Cir. 1976). 

 Simply put, an employee has a duty not to use or disclose trade secrets the employee acquired 

during the course of his employment. Blackbird Tecnhologies, Inc. v. Joshi, No. 5:15-CV-04272-EJD, 

2015 WL 5818067, at *1 (N.D. Cal. Oct. 6, 2015), appeal dismissed (Nov. 23, 2015). In breach of 

those duties, Levandowski and other former Waymo employees, on behalf of Uber and in 

coordination with other Uber employees, used stolen files to design and build LiDAR designs and 

systems that include information contained in and derived from Waymo’s trade secrets. See 

Levandowski Dep. at 20:9-24, 100:9-101:15, 115:3-16; see also Uber’s Response to Court Ordered 

Interrogatory No. 1, Dkt. No. 265-1. 

 Moreover, there is no disputing that Levandowski acted as the principal of Ottomotto and Otto 

Trucking, and benefitted from their sale to Defendants, and thus the acts of misappropriation taken by

those entities are imputed to him. See Levandowski Dep. at 20:9-24, 100:9-101:15, 115:3-16; see also 

Uber’s Response to Court Ordered Interrogatory No. 1, Dkt. No. 265-1. Likewise, Levandowski’s 

actions and acts of misappropriation engaged in as principal for Ottomotto and Otto Trucking are 

imputed to those entities, because they benefitted from Mr. Levandowski’s malfeasance. Finally, 

because Mr. Levandowski acted on behalf of Uber and in coordination with other Uber employees, 

Uber is liable because Levandowski acted within the scope of his agency in misappropriating 

Waymo’s trade secrets on behalf of Uber. 

 As the evidence will show, Uber was both the intended and actual beneficiary of 

Levandowski’s, Ottomotto’s and Otto Trucking’s misappropriation; thus, Uber must bear equal 

responsibility for their misappropriation. Respondeat superior ensures that the victim’s losses will be 

equitably borne by those who benefit from the enterprise that gave rise to the injury. Mary M. v. City 

of Los Angeles, 54 Cal. 3d 202, 209 (1991). In addition, by acquiring Ottomotto and hiring 

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Levandowski despite knowledge of the misappropriation, Uber ratified those acts and is responsible 

for their consequences. Ratification is the voluntary election by an entity to adopt in some manner as 

its own an act which was purportedly done on its behalf by a person or other entity, the effect of 

which, is to treat the act as if originally authorized. Rakestraw v. Rodrigues, 8 Cal. 3d 67, 73 (1972). 

 Therefore, all Defendants’ objections to Waymo’s proposed agency theory jury instructions 

should be overruled as to liabilities imputed as between Ottomotto, Otto Trucking, Uber and 

Levandowski. 

2. MoFo’s, Stroz’s, and O’Melveny’s Actions of Obtaining and Viewing 

Stolen Files and Documents Are Imputable to Defendants 

 A principal is liable to third parties for wrongful acts committed by its agent in and as a part of 

the transaction of the business of the agency. Daniels v. Select Portfolio Servicing, Inc., 246 Cal. 

App. 4th 1150, 1171−1172 (2016). 

 As outlined in prior submissions, there is compelling evidence that both MoFo and Stroz 

acquired the 14,000 files that Anthony Levandowski stole from Waymo, in their capacity as agents for 

Defendants. (See, e.g., Dkt. No. 894; Dkt. No. 566 at 2-3.) Similarly, O’Melveny and Myers in its 

representation of Otto Trucking, knew or should have known that Otto Trucking used improper means 

to acquire proprietary information, as well as other proprietary documents describing Waymo’s 

confidential trade secrets. Indeed, MoFo’s response to the Court’s Order to Show Cause expressly 

admits that MoFo received a copy of proprietary materials from Stroz. (Dkt. No. 883 at ¶¶ 6-7.) 

MoFo’s very involvement in the diligence performed by Stroz, and its acquisition of materials related 

to that diligence (Dkt. No. 715 at 2-3; Dkt. No. 885 at 2) is direct evidence that either stolen materials 

or descriptions of those materials are or were in MoFo’s possession. (See Dkt. No. 894.) 

 As set forth in Waymo’s Response to Interrogatories, the head of Defendants’ self-driving car 

program, Anthony Levandowski took from Waymo over 14,000 design files containing Waymo’s 

proprietary information, as well as other proprietary documents describing Waymo’s confidential 

trade secrets. See Declaration of Gary Brown (“Brown Decl.”); Deposition Transcript of Anthony 

Levandowski (“Levandowski Dep.”) at 20:9-24, 100:9-101:15, 115:3-16. The stolen files describe and 

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contain certain of Waymo’s asserted trade secrets including Trade Secret Nos. 1-8, 14-17, 19, 20, 38, 

39, 42, 43, 46, 48, 49, 62, 63, and 75-109 from Waymo’s List of Asserted Trade Secrets. See Dkt. No. 

25-7. 

 Here, there can be no dispute that Stroz, MoFo and O’Melveny were acting within the scope of 

their agency (as agents for Defendants) when they obtained and viewed the files that Levandowski 

stole from Waymo. Indeed, viewing these files was a central purpose of the “Due Diligence” process 

for which Stroz and MoFo were specifically retained, and the process by which O’Melveny and Myers 

acted on behalf of Otto Trucking. There also is an overwhelming inference that Defendants knew 

these files contained Waymo’s trade secrets. As Magistrate Judge Corley has explained, Stroz was 

specifically retained to investigate Levandowski’s “Bad Acts,” including “misappropriation of 

Waymo’s . . . trade secrets.” (Dkt. No. 566 at 2-3.) 

 As this Court has explained, “[t]he bottom line is the evidence indicates that Uber hired 

Levandowski even though it knew or should have known that he possessed over 14,000 confidential 

Waymo files likely containing Waymo’s intellectual property . . . . and that at least some of said 

information likely qualifies for trade secret protection.” (PI Order at 17:24-18:1.) Therefore, 

Defendants authorized Stroz, MoFo, and O’Melveny — as Defendants’ agents — to commit the tort 

of trade secret misappropriation by acquiring Waymo’s trade secrets embodied in the stolen files. 

 Therefore, Defendants’ objections to agency theory jury instructions should be overruled as to 

liabilities imputed between these entities. 

C. Specific Instructions 

1. Disputed Instruction No. 1 Re. CLAIMS AND DEFENSES 

The parties’ dispute here centers on the inclusion of mention that Waymo has brought claims 

under both California and Federal law and the impact those separate claims will have on the 

requirements for and recovery of damages. Specifically, requiring proof of unjust enrichment 

conflicts with the remedies portion of the DTSA, and omission of the availability of a reasonable 

royalty is similarly out of line with the statute. Waymo expects, however, that resolution of this 

dispute will flow from the Court’s determination of Defendants’ efforts to exclude Waymo’s DTSA 

cause of action. 

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Moreover, Waymo believes it important to inform the jury at this point that Waymo is the 

owner of information relating to its self-driving car technology, including its custom LiDAR systems 

that are used to enable the operation of fully self-driving vehicles. Waymo’s description of the 

general technology at issue should not be controversial and would aid the jury’s understanding of the 

following instructions. 

2. Disputed Instruction No. 2 Re. NUMBER OF WITNESSES 

Defendants have disagreed with this instruction as unnecessary, but have provided no 

substantive reason for its exclusion. As this Court instructed in Oracle v. Google, such an instruction 

is entirely proper. Case No. 3:10-cv-03561-WHA, Document 1928 at ¶¶ 5, 6 (Oracle v. Google Final 

Instructions). See also MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE 

DISTRICT COURTS OF THE NINTH CIRCUIT §1.14. 

3. Disputed Instruction No. 3 Re. FAILURE TO EXPLAIN OR DENY 

EVIDENCE 

Defendants have disagreed with this instruction as unnecessary, but have provided no 

substantive reason for its exclusion. As this Court instructed in Oracle v. Google, such an instruction 

is entirely proper. Case No 3:10-cv-03561-WHA Document 1928 at ¶ 9 (Oracle v. Google Final 

Instructions). 

4. Disputed Instruction No. 4 Re. COMPLIANCE WITH DISCOVERY 

ORDERS 

Waymo’s proposed instruction here is taken from its briefing on its Motion for and Order 

to Show Cause (Dkt. No 1502). The Court ordered Defendants to respond to Waymo’s motion 

(Dkt. No. 1515) and Defendants objected to Waymo’s proposed instruction on September 15, 

2017 (Dkt. No. 1586). Waymo incorporates its prior arguments by reference and expects this 

instruction to be resolved in connection with that motion practice. 

5. Disputed Instruction No. 5 Re. ADVERSE INFERENCES 

Waymo’s proposed instruction modifies the Court’s ruling after the July 26, 2017 hearing. See 

Dkt. 1535 (modified) (“As the undersigned judge explained during a hearing on July 26 (see Dkt. No. 

1050 at 99:1–13), the jury will be instructed, if the Fifth Amendment is invoked, that it may, but is not 

required to, draw inferences adverse to Levandowski based on his assertion of his Fifth Amendment 

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privilege. If any such adverse inference is drawn against Levandowski, then it will remain up to the 

jury to decide, as a separate question and based on all the other evidence in the case, whether the fact 

inferred is also adverse to one or more parties herein.”). Waymo disagrees with the specification of 

additional evidence and questions that the jury must consider and decide. Neither party has proposed 

instructions that would poll the jury as to this inquiry, and creating such a separate question would 

only create confusion. As there is no dispute that the jury may expand its adverse inference to 

encompass more than just Mr. Levandowski, Waymo submits that the more general instruction is 

appropriate. 

Waymo additionally objects to Defendants’ instruction as incorporating elements unsupported 

by this Court’s order. No characterization of why Mr. Levandowski invoked the Fifth Amendment is 

necessary, nor is any characterization about what topics he refused to testify about. Finally, 

Defendants’ instruction fails to recognize the Court’s clear ruling that any adverse inference may also 

be applied against one or more parties. 

6. Disputed Instruction No. 6 Re. CORPORATE LIABILITY 

Waymo’s proposed instruction comes directly from Ninth Circuit’s Model Instructions, as 

adopted by this Court in the Oracle v. Google matter. See MANUAL OF MODEL CIVIL JURY 

INSTRUCTIONS FOR THE DISTRICT COURTS OF THE NINTH CIRCUIT §4.2; Case No. 3:10-

cv-03561-WHA, Document 1928 at ¶ 15 (Oracle v. Google Final Instructions). 

Defendants dispute this instruction, but have provided no explanation other than their belief 

that it is unnecessary. Given the nature of the dispute, and the form of all parties, it is critical that the 

jury understand the way in which corporate entities take action. Moreover, Mr. Levandowski’s role 

within each of the Defendants, as well as evidence the jury will hear about principals at Uber 

necessitates an instruction that such corporate entities only act through their employees, agents, 

directors, or officers. 

7. Disputed Instruction No. 7 Re. TWO OR MORE PARTIES—

DIFFERENT LEGAL RIGHTS 

The parties’ disagreement here focuses only on how the Defendants will be described to the 

jury. Given Mr. Levandowski’s likely role at trial, and reference to him throughout these instructions, 

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Waymo believes it necessary to provide additional context surrounding Mr. Levandowski’s role at the 

various companies. Defendants have expressed no issue objection that Waymo’s characterization is 

incorrect in any way, only that it is unnecessary. 

In addition, Waymo objects to the statement that “Uber did not acquire Otto Trucking.” While 

Waymo understands this to be factually accurate as of the date of this filing, it ignores the option that 

Uber has to purchase Otto Trucking and the interrelationship between the two. Rather than include 

such additional information that would be needed to provide a complete picture to the jury, but which 

would also potentially be confusing, Waymo submits that the more appropriate course is to remain 

silent on this relationship. 

8. Disputed Instruction No. 8 Re. INTRODUCTION TO VICARIOUS 

RESPONSIBILITY 

Waymo and Otto Trucking have agreed as to the inclusion of this instruction while Uber has 

objected. As set forth above, Waymo has alleged that all three Defendants are vicariously liable for 

their respective agents. Instructing the jury on this critical point, and correct statement of the law, is 

necessary for Waymo to fairly proceed on its claims. 

9. Disputed Instruction No. 9 Re. PARTY HAVING POWER TO 

PRODUCE BETTER EVIDENCE 

Waymo’s proposed instruction comes directly from CACI 203 and should be an 

uncontroversial instruction. Defendants have offered no explanation other than disagreement as to the

necessity of the instruction. 

Contrary to Defendants’ undeveloped claim during the meet and confer process, the ability of 

each party to provide evidence, as measured against what evidence was actually provided, is likely to 

be a central issue of the trial. 

10. Disputed Instruction No. 10 Re. OUTLINE OF TRIAL 

The parties have agreed to withdraw this proposed instruction at this stage. 

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11. Disputed Instruction No. 11 Re. MISAPPROPRIATION OF TRADE 

SECRETS—INTRODUCTION 

The parties’ disagree on two primary issues. First, as discussed above, the parties disagree as 

to the inclusion of instructions regarding Waymo’s Federal DTSA claims. This impacts not only the 

actual statement of Waymo’s claims, but also the statements in Defendants’ instructions regarding 

unjust enrichment. Because Waymo can recover reasonable royalty damages under DTSA, inclusion 

of a statement here regarding only unjust enrichment, as Defendants propose, would only confuse the 

jury and would present an incorrect statement of law to the extent it suggests that unjust enrichment is 

a required element of each of Waymo’s trade secret misappropriation claims. 

Second, the parties disagree as to how the instructions should refer to Waymo’s trade secrets. 

Waymo proposes the more general characterization “information relating to its self-driving 

technology, including custom LiDAR systems that are used to enable the operation of fully selfdriving vehicles,” with “trade secrets” or “information” as a shorthand. Defendants’ proposal of 

Alleged Trade Secrets is not found in the model instructions and unfairly prejudices Waymo. 

12. Disputed Instruction No. 12 Re. MISAPPROPRIATION OF TRADE 

SECRETS—ESSENTIAL FACTUAL ELEMENTS – CALIFORNIA 

LAW 

As with Disputed Instruction No. 11, the parties’ dispute flows from Defendants’ claims of 

preemption of the DTSA by the CUTSA. Both parties have proposed instructions stemming from 

CACI 4401, but Waymo submits that the inclusion of elements 4 and 5, relating to unjust enrichment 

are more appropriately addressed in the context of damages. 

Second, Waymo objects to the use of “Alleged Trade Secrets” in the place of “trade secrets” or 

“information” as set forth infra. 

Third, to the extent that the Court would prefer to address elements 4 and 5 in this instruction, 

Defendants’ proposed instruction should be revised to reflect reasonable royalty damages, as well as 

unjust enrichment, consistent with the “harm” language of CACI 4401 and should be revised to 

include acquisition or use in element 5. 

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13. Disputed Instruction No. 13 Re. “TRADE SECRET” DEFINED – 

CALIFORNIA LAW 

The parties here only dispute the inclusion of the language “Under California law” and the 

description of Waymo’s information as “Alleged Trade Secrets.” 

The phrase “Under California law” is necessary to differentiate these instructions from those 

relating to the DTSA. As discussed above, using the phrase “Alleged Trade Secrets” to refer to 

Waymo’s trade secrets unfairly prejudices Waymo. 

14. Disputed Instruction No. 14 Re. GENERALIZED KNOWLEDGE 

Defendants’ proposed instructions that “[g]eneralized knowledge and skill that an employee 

learned on the job is not a trade secret” and “[m]atters of general knowledge in a trade or special 

knowledge of persons who are skilled in a trade are also not trade secrets” do not fit the facts of this 

case and are unnecessary and confusing. While Defendants may endeavor to prove that Waymo’s 

trade secrets are not actually trade secrets, the allegations central to this case are focused on the 

deliberate theft and misappropriation of Waymo’s trade secrets by Levandowski. Defendants’ 

proposed instruction inappropriately implies that the jury could ignore that theft in in light of what

Levandowski learned as a Waymo employee. This proposed instruction would give undue weight to 

what is already at best a specious argument in light of the facts of this case and would unduly 

prejudice Waymo. 

15. Disputed Instruction No. 15 Re. SECRECY REQUIREMENT – 

CALIFORNIA LAW 

The parties have stipulated as to this instruction. 

16. Disputed Instruction No. 16 Re. “INDEPENDENT ECONOMIC 

VALUE” EXPLAINED – CALIFORNIA LAW 

The parties have stipulated as to this instruction. 

17. Disputed Instruction No. 17 Re. REASONABLE EFFORTS TO 

PROTECT SECRECY – CALIFORNIA LAW 

The parties have stipulated as to this instruction. 

18. Disputed Instruction No. 18 Re. DECLARING TRADE SECRETS 

Defendants’ proposed instruction is not part of the CACI model instructions and is not justified 

by the cases Defendants cited. In Louisiana Pac. Corp. v. James Hardie Bldg. Prod., Inc., the Court 

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evaluated a very unusual and specific set of facts, and defined trade secret as: “(1) derived 

from independent economic value from not being generally known to the public, and (2) is the subject 

of efforts to maintain its secrecy,” which essentially tracks state statutory definitions. See 18 U.S.C. § 

1839(3); Cal. Civ.Code § 3426.1(d). Louisiana Pac. Corp. v. James Hardie Bldg. Prod., Inc., No. C12-3433 SC, 2013 WL 3483618, at *2 (N.D. Cal. July 8, 2013). The particularized facts of Louisiana 

Pac., involving a particular “inadvertent advertising campaign” and the results of that campaign as 

trade secrets is simply too narrow and idiosyncratic to be useful, and there is sufficient definition of 

trade secret similarly distilled from statutory language throughout the instructions already. 

Defendants further cite to EarthCam, Inc. v. Oxblue Corp., in support of this instruction, but 

this case just verbatim quotes the Georgia Trade Secrets Act, which itself simply codified the UTSA. 

Ga. Code Ann. § 10-1-761 (West 2017); EarthCam, Inc. v. Oxblue Corp., No. 15-11893, 2017 WL 

3188453, at *8 (11th Cir. July 27, 2017). Similarly, Defendants cite to Pollara v. Radiant Logistics 

Inc. in support of this instruction, but that California case discusses client lists, which are not germane

to the facts of this matter, and the case’s trade secret definition merely tracks the definition of trade 

secret from the CUTSA. Pollara v. Radiant Logistics Inc., No. CV 12-344 GAF (JEMX), 2014 WL 

12585781, at *1 (C.D. Cal. June 6, 2014) (citing Thompson v. Impaxx, 113 Cal. App. 4th 1425, 1430 

(2003)). Defendants also cite to PSC Indus. Outsourcing, LP v. Kodysz, which similarly tracks the 

CUTSA identically in language defining a trade secret, and also concerned client lists. PSC Indus. 

Outsourcing, LP v. Kodysz, No. 1:13-CV-0964, 2013 WL 3354452, at *3 (E.D. Cal. July 3, 2013). 

PSC Indus. Outsourcing also concludes that “what is or is not a ‘trade secret’ is question of fact, not 

merely a matter of labeling”, but does not offer any clear guide post as to how to evaluate that 

“question of fact.” Finally, Defendants’ citation to Hertz v. Luzenac Am. is unavailing, as the only 

distinction the case adds is that “merely refraining from publishing the purported secret is not enough” 

to constitute a trade secret. Hertz v. Luzenac Am., Inc., No. CIV. 04CV01961LTBCBS, 2006 WL 

1794736, at *2 (D. Colo. June 27, 2006). Accordingly, this instruction is unnecessary and should be 

not be given. 

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19. Disputed Instruction 19. Re. MISAPPROPRIATION BY 

ACQUISITION – CALIFORNIA LAW 

The parties here only dispute the inclusion of the language “Under California law” and the 

description of Waymo’s information as “Alleged Trade Secrets.” 

The phrase “Under California law” is necessary to differentiate these instructions from those 

relating to the DTSA. As discussed above, using the phrase “Alleged Trade Secrets” to refer to 

Waymo’s trade secrets unfairly prejudices Waymo. 

20. Disputed Instruction No. 20 Re. PASSIVE OR INADVERTENT 

RECEIPT 

Waymo disagrees with the inclusion of this instruction as it is unnecessary and improper in 

light of the clear definitions of misappropriation as set forth in the model instructions and 

statute. While Defendants may argue that possession of the stolen materials does not satisfy the 

statutory acquisition, use, or disclosure elements of trade secret misappropriation, an affirmative 

instruction as to one possible fact pattern that would not meet the statute is prejudicial. The issue here 

is that by including a set facts as definitively not misappropriation, without standards or rule language 

that can be used to consider or weigh the evidence or the facts of this case. 

Defendants cite Silvaco Data Sys. v. Intel Corp for the premise that “one who passively 

receives a trade secret, but neither discloses nor uses it, would not be guilty of misappropriation.” 

Silvaco Data Sys. v. Intel Corp., 184 Cal. App. 4th 210, 222 (2010), as modified on denial of reh’g

(May 27, 2010) disapproved of on other grounds by Kwikset Corp. v. Superior Court, 51 Cal. 4th 310 

(2011). The basis of this definition in this case stems from the Oxford English Distinction’s definition 

of acquiring a thing, which according to the dictionary requires “exertion to secure 

dominion.” Silvaco Data Sys., 184 Cal. App. 4th at 222, citing 1 Oxford English Dict. at 115 (2d ed. 

1989). A jury should be spared rule language based on semiotic interpretation of the word “acquire,” 

and instead, work with a definition which is based on more practical distinctions. 

Because this instruction relies upon an unnecessarily vague dictionary definition, and is 

unnecessary and improper in light of the clear definitions of misappropriation as set forth in the model 

instructions and statute, it should not be given. 

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21. Disputed Instruction No. 21. Re. MISAPPROPRIATION BY USE – 

CALIFORNIA LAW 

The parties dispute Otto Trucking should be included in this instruction. Notwithstanding Otto 

Trucking’s claims to the contrary, Waymo has alleged and continues to allege trade secret 

misappropriation by use against Otto Trucking. At a minimum, Otto Trucking is vicariously liable for 

Anthony Levandowski’s use of Waymo’s trade secrets, as described above. Including an instruction 

that excludes Otto Trucking with respect to use would be legally incorrect as to Waymo’s theories and 

highly confusing for the jury. Moreover, given Levandowski’s status as Otto Trucking’s managing 

member, it is virtually impossible to separate his actions in this area from those of Otto Trucking. 

Moreover, Defendants’ instruction inappropriately limits the universe of third parties involved 

in the misappropriation to Mr. Levandowski. 

22. Disputed Instruction No. 22. Re. DIFFERING PRODUCTS

Defendants do not dispute that Waymo’s instruction is a correct statement of law, they merely 

contend that no such instruction is necessary. Defendants are wrong. This instruction is necessary 

because Defendants repeatedly wrongly claim that, because their products differ in some respects 

from Waymo’s trade secrets, Waymo cannot show trade secret misappropriation. See Dkt. 330-3 at 3-

4. Waymo has every expectation that Defendants will continue this line of attack throughout trial and

the jury must understand that “use” encompasses more than using an exact copy of Waymo’s trade 

secret information. 

Waymo cites instructive case law on the necessity of instructing on similar products, as the law 

is clear that “finding misappropriation by use even though technology used in the offending new 

products was different” is appropriate where technical and functional aspects remain the same. 

InfoSpan, Inc. v. Emirates NBD Bank PJSC, 2015 WL 13357646 (C.D. Cal. May 6, 2015). Moreover, 

PMC, Inc. v. Kadisha stands for the premise that employing the confidential information in 

manufacturing, production, research, development, or marketing goods that embody the trade secret, 

or soliciting customers through the use of trade secret information, all constitute misappropriation by 

use, and therefore, a product need not be exactly the same to misappropriate so long as the methods 

borrowed have been employed going forward. 78 Cal. App. 4th 1368 (2000). In addition, in Speech 

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Tech. Assocs. v. Adaptive Commc’n Sys., Inc., the court found misappropriation even where the 

offending product had been redesigned, but retained many of the same functional aspects. ISpeech 

Tech. Assocs. v. Adaptive Commc’n Sys., Inc., 1994 WL 449032 (N.D. Cal. Aug. 16, 1994). In Verigy 

US, Inc. v. Mayder, the court found that an obvious evolution of a product based on trade secrets may 

nevertheless be the product of trade secret misappropriation. Verigy US, Inc. v. Mayder, 2008 WL 

564634 (N.D. Cal. Feb. 29, 2008). 

This instruction should be included because Defendants persistently attempt to argue a 

differing end product or technology cannot be an infringing product, and the case law is clear that a 

modified end product can be infringing when it retains the same basic features as the original. 

Therefore, Defendants’ objection to this claim should be overruled. 

23. Disputed Instruction No. 23. Re. INEVITABLE DISCLOSURE 

Defendants’ proposed instruction is inapplicable to the facts to be tried to the jury here and 

would only serve to confuse the jury. As an initial matter, the language that “[i]t is not enough for

Waymo to show that their employees would inevitably use the claimed trade secret in their work for 

Uber” inaccurately implies that no trade secret misappropriation would take place even were Waymo 

to prove that Levandowski stole Waymo’s trade secret information and used it in connection with his 

work at Uber. According to Defendants, if they can show that his work at Uber “inevitably” required 

the use of those trade secrets, that would operate as a defense to Waymo’s claims. That is not the law. 

Moreover, the language that “Waymo must show that Uber, Ottomotto, and Otto Trucking directly 

exploited Waymo’s claimed trade secret for their own advantage” would add additional elements to a 

trade secret misappropriation claim that are not found in the statute. While “exploitation” and 

“advantage” may have similar meaning to words actually set forth in the statute, their presence in the

jury instructions creates a new and unsupported element of misappropriation. 

Defendants cite Whyte v. Schlage Lock Co., 101 Cal. App. 4th 1443, 1458, 1463–64 (2002), 

for the premise that the inevitable disclosure doctrine is no longer valid law, but that does not mean

that an instruction on that issue is necessary. Waymo does not argue that Defendants have 

misappropriated its trade secrets because Levandowski and other former Waymo employees would 

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inevitably use the trade secrets they learned in their work at Waymo in their work at Uber. 

Accordingly, such an instruction would only confuse the jury and should not be given. 

24. Disputed Instruction No. 24 Re. MISAPPROPRIATION BY

DISCLOSURE – CALIFORNIA LAW 

Defendants have no basis to exclude this instruction from the jury. Waymo has accurately 

adapted CACI 4406, and Waymo intends to put forth evidence at trial that the Defendants are liable 

for trade secret misappropriation by disclosure. 

By way of example only, Ottomotto and Otto Trucking are both accused of disclosing 

Waymo’s trade secrets to Uber by way of Levandowski’s actions. Each entity knew or had reason to 

know that Waymo’s trade secrets were acquired improperly. This alone supports instructing the jury 

on this portion of the statute. 

25. Disputed Instruction No. 25 Re. IMPROPER MEANS OF 

ACQUIRING TRADE SECRET – CALIFORNIA LAW 

The parties have stipulated as to this instruction. 

26. Disputed Instruction No. 26. Re. CHANGING EMPLOYERS

Defendants’ proposed instruction, which is not in any of the model jury instructions, is 

unnecessary and duplicative on its face. Each of the DTSA and CUTSA defines those activities that 

give rise to liability for trade secret misappropriation. At best, this instruction merely reminds the jury 

that a former employee may not misappropriate trade secrets. But the far more likely scenario is that

the jury will be confused as to what behavior is permissible and what is not. 

Defendants’ citation to Whyte v. Schlage Lock Co.in support of this premise is not accurate, as 

the focus of the Whyte case is on the question of inevitable disclosure, not whether people are free to 

change jobs, which is redundant and tautological. Defendants also point to statutory support for this

claim, but Cal. Bus. & Prof. Code Section 16600 talks specifically about restraint of trade, and does 

not elaborate as this instruction does. This instruction should be struck for vagueness as well. 

27. Disputed Instruction No. 27 Re. MISAPPROPRIATION OF TRADE 

SECRETS—INTRODUCTION TO FEDERAL LAW 

As set forth above, the parties disagree as to the appropriateness of separate instructions on 

Waymo’s Federal and California law trade secret misappropriation claims. Upon rejection of 

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Defendants’ meritless position regarding preemption, Waymo respectfully submits that the jury be 

charged on both causes of action. 

Defendants last minute addition of an instruction that relates only to element of interstate 

commerce, fails to remedy the issue. Nor is there any support for porting a definition from the 

Federal Employers' Liability Act into the DTSA. Interstate commerce is readily understood from the 

face of the statute. 

28. Disputed Instruction No. 28 Re. TRADE SECRET DEFINED – 

FEDERAL LAW 

As set forth above, the parties disagree as to the appropriateness of separate instructions on 

Waymo’s Federal and California law trade secret misappropriation claims. Upon rejection of 

Defendants’ meritless position regarding preemption, Waymo respectfully submits that the jury be 

charged on both causes of action.

29. Disputed Instruction No. 29 Re. OWNERSHIP DEFINED – FEDERAL 

LAW 

As set forth above, the parties disagree as to the appropriateness of separate instructions on 

Waymo’s Federal and California law trade secret misappropriation claims. Upon rejection of 

Defendants’ meritless position regarding preemption, Waymo respectfully submits that the jury be 

charged on both causes of action.

30. Disputed Instruction No. 30 Re. MISAPPROPRIATION DEFINED – 

FEDERAL LAW 

As set forth above, the parties disagree as to the appropriateness of separate instructions on 

Waymo’s Federal and California law trade secret misappropriation claims. Upon rejection of 

Defendants’ meritless position regarding preemption, Waymo respectfully submits that the jury be 

charged on both causes of action.

31. Disputed Instruction No. 31 Re. IMPROPER MEANS DEFINED – 

FEDERAL LAW 

As set forth above, the parties disagree as to the appropriateness of separate instructions on 

Waymo’s Federal and California law trade secret misappropriation claims. Upon rejection of 

Defendants’ meritless position regarding preemption, Waymo respectfully submits that the jury be 

charged on both causes of action.

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32. Disputed Instruction No. 32 Re. DUTY TO EMPLOYER 

Defendants dispute this instruction, but it is a straight-forward and equitable instruction based 

soundly in common law tradition. Simply put, an employee has a duty not to use or disclose trade 

secrets the employee acquired during the course of his employment. For example, Blackbird 

Technologies, Inc. v. Joshi, established an employee’s fiduciary duty to his employer and issued a 

preliminary injunction against the use of stolen technology where it was taken in a breach of that duty. 

Blackbird Technologies, Inc. v. Joshi, No. 5:15-CV-04272-EJD, 2015 WL 5818067, at *4 (N.D. Cal. 

Oct. 6, 2015), appeal dismissed (Nov. 23, 2015). In light of this case law support and principles of

equity, this instruction should be included. 

33. Disputed Instruction No. 33 Re. COMBINATIONS AS TRADE 

SECRETS 

Defendants did not contend to Waymo that instruction 33 is an inaccurate statement of law; 

rather, Defendants’ position is that this body of case law only applies to those trade secrets which are 

comprised entirely of public elements organized in a secret way. This is an incorrect understanding of 

the law. On their face, each of the cases cited by Waymo as support for this instruction involve both

public and non-public information as part of a trade secret. See 02 Micro Int’l Ltd. v. Monolithic 

Power Sys., Inc., 399 F. Supp. 2d 1064, 1074 (N.D. Cal. 2005); Leatt Corp. v. Innovative Safety Tech., 

LLC, 2010 WL 1526382 at *6 (S.D. Cal. Apr. 15, 2010); SkinMedica, Inc. v. Histogen Inc., 869 F. 

Supp. 2d 1176, 1194 (S.D. Cal. 2012); United States v. Nosal, 844 F.3d 1024, 1042 (9th Cir. 2016); 

Verigy US, Inc. v. Mayder, 2008 WL 564634 at *5-6 (N.D. Cal. Feb. 29, 2008).

Given that Defendants have argued that Waymo’s trade secrets are not entitled to protection as 

a result of certain aspects allegedly being available to the public, this instruction is critical to protect 

Waymo’s rights under both the DTSA and CUTSA. 

34. Disputed Instruction No. 34 Re. WILLFUL AND MALICIOUS 

MISAPPROPRIATION OF TRADE SECRETS 

The parties’ dispute here centers on the inclusion of mention that Waymo has brought claims 

under both California and Federal law and the impact those separate claims will have on the 

requirements for and recovery of damages. Specifically, requiring proof of unjust enrichment 

conflicts with the remedies portion of the DTSA, and omission of the availability of a reasonable 

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royalty to be decided by the jury is similarly out of line with the statute. Waymo expects, however, 

that resolution of this dispute will flow from the Court’s determination of Defendants’ efforts to 

exclude Waymo’s DTSA cause of action. 

35. Disputed Instruction No. 35 Re. TORT LIABILITY ASSERTED 

AGAINST PRINCIPAL—ESSENTIAL FACTUAL ELEMENTS 

The parties dispute two aspects of this instruction. First, Otto Trucking has limited its 

vicarious liability instructions only to misconduct by Anthony Levandowski. Second, Uber and 

Ottomotto have objected to the inclusion of any vicarious liability instructions. As set forth above,

Waymo has consistently alleged that all of the Defendants are vicariously liable for Levandowski’s 

actions, and that each of the Defendants engaged in misappropriation via agents other than 

Levandowski. Failing to instruct the jury on these theories would be improper. 

36. Disputed Instruction No. 36 Re. EXISTENCE OF “AGENCY” 

RELATIONSHIP DISPUTED 

The parties dispute two aspects of this instruction. First, Otto Trucking has limited its 

vicarious liability instructions only to misconduct by Anthony Levandowski. Second, Uber and 

Ottomotto have objected to the inclusion of any vicarious liability instructions. As set forth above,

Waymo has consistently alleged that all of the Defendants are vicariously liable for Levandowski’s 

actions, and that each of the Defendants engaged in misappropriation via agents other than 

Levandowski. Failing to instruct the jury on these theories would be improper. 

37. Disputed Instruction No. 37 Re. SCOPE OF EMPLOYMENT 

Both Waymo and Uber object to the inclusion of this instruction. In particular, Waymo 

submits that this instruction is duplicative of more general liability instructions, including instruction 

No. 8. Inclusion of such an instruction only serves to unnecessarily lengthen the instructions at the

risk of confusion to the jury. 

Moreover, as set forth above, Otto Trucking’s instruction proposes that an agent need only act 

within the scope of his employment. Such a description of Levandowski is inappropriately limited. 

And, as set forth above, Waymo’s vicarious liability theories include agents other than Mr. 

Levandowski. 

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38. Disputed Instruction No. 38 Re. DUTY TO INFORM 

Waymo’s proposed instruction is drawn directly from the portions of the instruction approved 

in Droeger v. Welsh Sporting Goods Corp., 541 F.2d 790, 792 (9th Cir. 1976). Where, as here, 

Defendants have attempted to turn a blind eye to, and bury, Mr. Levandowski’s theft, an instruction 

informing the jury as to what knowledge may be imputed to a party by virtue of an agent is 

particularly critical. 

39. Disputed Instruction 39 Re. RATIFICATION 

The parties dispute two aspects of this instruction. First, Otto Trucking has limited its 

vicarious liability instructions only to misconduct by Anthony Levandowski. Second, Uber and 

Ottomotto have objected to the inclusion of any vicarious liability instructions. As set forth above,

Waymo has consistently alleged that all of the Defendants are vicariously liable for Levandowski’s 

actions, and that each of the Defendants engaged in misappropriation via agents other than 

Levandowski. Failing to instruct the jury on these theories would be improper. 

40. Disputed Instruction No. 40 Re. CAUSATION: SUBSTANTIAL 

FACTOR 

This instruction should not be included as it will only confuse the jury, and is not sufficiently 

precise to be useful in determining whether a misappropriator’s actions were a “substantial factor” in

causing harm. The test for a substantial factor in causation is that the link in causation must be based 

upon more than “conjecture and surmise.” Simpson v. United States, 224 F. Supp. 3d 180, 182 (D. 

Conn. 2016). This would not be helpful to any jury, as the test is too vague. 

41. Disputed Instruction No. 41 Re. BAD FAITH 

Defendants’ instruction is inappropriate in the case at bar. Defendants have not affirmatively 

pled bad faith, nor did they pursue counterclaims that would permit them to recover in this action. 

Instructing the jury on such a theory that could not survive post-trial motions or appeal would unfairly 

prejudice Waymo.

42. Stipulated Instruction No. 42 Re. AFFIRMATIVE DEFENSE—

INFORMATION WAS READILY ASCERTAINABLE BY PROPER 

MEANS 

The parties have stipulated as to this instruction. 

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43. Disputed Instruction No. 43 Re. AFFIRMATIVE DEFENSE -- 

MITIGATION OF DAMAGES 

Defendants’ instruction is inappropriate in the case at bar. Defendants have put forward no 

evidence that would support this theory and instructing the jury on this defense would only create 

confusion. 

44. Disputed Instruction No. 44 Re. OUTSIDE REVERSE VEIL 

PIERCING 

As set forth in Waymo’s opposition to Otto Trucking’s Motion for Summary Judgment, Otto 

Trucking’s insistence on relying on reverse-veil-piercing case law is wholly inapplicable to this case. 

(Dkt. No. 1526-3.) The outside reverse veil-piercing doctrine applies “when a third party outsider 

seeks to reach corporate assets to satisfy claims against an individual shareholder.” Postal Instant 

Press, Inc. v. Kaswa Corp., 162 Cal. App. 4th 1510, 1518 (2008); see also id. at 1523 (“the issue 

addressed by outside reverse piercing is the shareholder’s transfer of personal assets to the corporation 

to shield the assets from collection by a creditor of the shareholder. In other words, outside reverse 

piercing seeks to protect the judgment creditor from the shareholder’s fraudulent transfer of assets to 

the corporation.”). Here, Waymo is not seeking to seize Otto Trucking assets to satisfy a judgment 

against Levandowski. Instead, Waymo is simply holding Otto Trucking liable for Levandowski’s 

misappropriation in the first instance, under the doctrines of vicarious liability and ratification. 

Accordingly, no instruction regarding outside reverse-veil-piercing should be given. 

45. Disputed Instruction No. 45 Re. DAMAGES UNDER CALIFORNIA 

AND FEDERAL LAW 

As set forth above, Waymo has separate claims under the DTSA and CUTSA which afford 

Waymo separate remedies. Waymo submits that Instruction No. 45 is necessary to clarify for the jury 

that they must answer all damages questions, but that Waymo will not recover duplicative damages. 

46. Disputed Instruction No. 46 Re. REMEDIES FOR 

MISAPPROPRIATION OF TRADE SECRET 

The substantive difference between the parties instructions relates to the inclusion of the 

following paragraph: “If there was misappropriation but it did not cause Uber, Ottomotto, or Otto 

Trucking to be unjustly enriched, Waymo may still be entitled to a reasonable royalty for no longer 

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than the period of time the use could have been prohibited. However, I will calculate the amount of 

any royalty.” 

As set forth above, this is an incorrect statement of law as it relates to Waymo’s DTSA causes 

of action. Under the DTSA, Waymo is entitled to select its remedy from either a reasonable royalty 

or unjust enrichment. And Waymo is entitled to have the jury set that reasonable royalty. Defendants

do not dispute this other than to argue “preemption.”

47. Disputed Instruction No. 47 Re. UNJUST ENRICHMENT 

Waymo disputes the inclusion of the language: “Then subtract from that amount the 

defendants’ reasonable expenses, including the value of their own research and development.” At no 

point have any of the Defendants offered any evidence or testimony that would support an accounting 

of reasonable expenses. And none of Defendants’ experts include such reasonable expenses in their 

damages calculation. To instruct the jury on a theory wholly unsupported by Defendants’ experts and 

evidence would invite error.

48. Disputed Instruction No. 48 Re. REASONABLE ROYALTY – 

ENTITLEMENT 

The parties’ dispute appears to center over whether the Court or the jury determines the 

amount of the reasonable royalty. As set forth above in connection with Waymo’s response to 

Defendants’ “preemption” arguments, the provision of a reasonable royalty as determined by the jury 

is a critical distinction between the DTSA and CUTSA. The Seventh Amendment governs cases in 

federal court and provides that “[i]n Suits at common law, where the value in controversy shall exceed

twenty dollars, the right of trial by jury shall be preserved.” U.S. Const. amend. VII; see Fed. R. Civ. 

P. 38 (“The right of trial by jury as declared by the Seventh Amendment to the Constitution . . . is 

preserved inviolate.”). Unlike the CUTSA which reserves the determination of reasonable royalties 

for the Court by statute, there is a jury trial right for all remedies under the DTSA, including 

reasonable royalties. See, e.g., VIA Technologies, Inc. v. ASUS Computer Int’l, et al., Case No. 14-cv03586-BLF, 2017 WL 491172, at *2 (N.D. Cal. Feb. 7, 2017) (noting the “DTSA allows a jury to 

determine the monetary claims, where CUTSA reserves the determination of reasonable royalties for 

the judge”). In the only case that has been tried to date under the DTSA, the jury was instructed and 

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reached a verdict on plaintiffs’ DTSA and Pennsylvania state law trade secret misappropriation 

claims. See Dalmatia Imp. Grp., Inc. v. Foodmatch, Inc., No. CV 16-2767 (E.D. Pa. 2017) (Dkt. 321, 

Order Entering Judgment on the Verdict). 

Notably, despite the language of the CUTSA, at least one federal court has found that “the 

Seventh Amendment to the Constitution guarantees [the plaintiff] the right to a jury determination of 

reasonable royalties under the CUTSA” where the case is pending in federal court pursuant to 

diversity jurisdiction. De Lage Landen Operational Services, LLC v. Third Pillar Systems, LLC, Case 

No. 09-2439, 2011 WL 1627899, at *3 (E.D. Pa. Apr., 28, 2011). And, even if the issue of reasonable 

royalty damages under CUTSA were not triable as of right to the jury, the court may submit the issue 

of reasonable royalty damages to the jury for an advisory verdict. See Fed. R. Civ. P. 39(c); De Lage, 

2011 WL 1627899, at *3, n3. 

49. Disputed Instruction No. 49 Re. REASONABLE ROYALTY – 

DEFINITION 

Waymo’s proposed instructions on the definition of a reasonable royalty parallel those from 

the Model Patent Jury Instructions, and therefore, are straightforward and easy to calculate. This 

uncontroversial range of methods of calculating royalties is similar to the established history of 

calculating royalties frequently used in the Federal Circuit. See, e.g., Paice LLC v. Toyota Motor 

Corp., 504 F.3d 1293, 1314–15 (Fed. Cir. 2007). The idea of arriving at a standardized calculation of 

royalties should be desirable to both parties, as they question here is not whether to award a royalty, 

but rather, if one is to be awarded, how to do so. 

50. Disputed Instruction No. 50 Re. GEORGIA PACIFIC FACTORS 

Just as discussed with regard to Instruction No. 49, the idea of arriving at a standardized 

calculation of royalties should be desirable to both parties, as they question here is not whether to 

award a royalty, but rather, if one is to be awarded, how to do so. Use of a reasonable royalty 

determination, or the Georgia Pacific factors both offer sufficient flexibility to calculate royalties, as 

the question here is not whether to award a royalty, but rather, if one is to be awarded, how to do 

so. Both Instruction Nos. 49 and 50 offer well-accepted methods of calculating a reasonable royalty. 

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See Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified 

sub nom. Georgia-Pac. Corp. v. U.S. Plywood-Champion Papers, Inc., 446 F.2d 295 (2d Cir. 1971). 

51. Disputed Instruction No. 51 Re. EXEMPLARY DAMAGES FOR 

WILLFUL AND MALICIOUS MISAPPROPRIATION 

As set forth above, Waymo has separate claims under the DTSA and CUTSA which afford 

Waymo separate remedies. To the extent Defendants contend that the Court should award exemplary 

damages under the DTSA, that is clearly in error. The “remedies” provision of the DTSA provides: 

(3) In a civil action brought under this subsection with respect to the misappropriation of a 

trade secret, a court may: 

(B) award— 

(i)(I) damages for actual loss caused by the mis- appropriation of the trade secret; and 

(II) damages for any unjust enrichment caused by the misappropriation of the trade secret that 

is not addressed in computing damages for actual loss; or 

(III) in lieu of damages measured by any other methods, the damages caused by the 

misappropriation measured by imposition of liability for a reasonable royalty for the misappropriator’s 

unauthorized disclosure or use of the trade secret. . . . 

(C) if the trade secret is willfully and maliciously misappropriated, award exemplary damages 

in an amount not more than 2 times the amount of the damages awarded under subparagraph (B). 18 

U.S.C. § 1836(b)(3) 

The structure “a court may award” is identical for lost profits and unjust enrichment damages 

and for exemplary damages. There should be no dispute that lost profits and unjust enrichment 

damages are for the jury, and there is no basis to draw a distinction for exemplary damages under the 

Defend Trade Secrets Act. 

52. Disputed Instruction No. 52 Re. DAMAGES FROM MULTIPLE 

DEFENDANTS 

Defendants’ contention that comparative fault should be apportioned among the Defendants is 

wholly unsupported by any evidence or expert testimony. Instruction on this issue would only 

confuse the jury as to the damages to award to Waymo and lead to error. 

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53. Disputed Instruction No. 53 Re. AFFIRMATIVE DEFENSE—

UNCLEAN HANDS 

Waymo filed a Motion for Summary Judgment on Defendants’ unclean hands affirmative 

defense. (Dkt. 1418.) As set forth in Waymo’s briefing and at argument, there are no factual issues in 

dispute and this defense should be resolved on summary judgment. See Waymo’s Reply (Dkt. 1630) 

to Defendant’s Response (Dkt. 1525) to Waymo’s Motion for Summary Judgment (Dkt. 

1418). Furthermore, as this Court observed at the September 20, 2017 Hearing on Waymo’s motion, 

even if the Court does not dismiss the defense on summary judgment, the affirmative defense of 

unclean hands is an equitable remedy decided by the Judge. (9/20/17 Tr. at 49.) Thus, this instruction 

is unnecessary and should not be given. 

DATED: September 21, 2017 QUINN EMANUEL URQUHART & SULLIVAN, 

LLP 

By /s/ Charles K. Verhoeven 

Charles K. Verhoeven 

Attorneys for WAYMO LLC 

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