UBER’S LIST OF OPINIONS FOR CASE-IN-CHIEF AT TRIAL

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MICHAEL A. JACOBS (CA SBN 111664)

MJacobs@mofo.com 

ARTURO J. GONZÁLEZ (CA SBN 121490) 

AGonzalez@mofo.com 

ERIC A. TATE (CA SBN 178719) 

ETate@mofo.com 

RUDY Y. KIM (CA SBN 199426) 

RudyKim@mofo.com 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Telephone: 415.268.7000 

Facsimile: 415.268.7522 

KAREN L. DUNN (Pro Hac Vice) 

kdunn@bsfllp.com 

HAMISH P.M. HUME (Pro Hac Vice) 

hhume@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington DC 20005 

Telephone: 202.237.2727 

Facsimile: 202.237.6131 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v. 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC; OTTO TRUCKING LLC, 

Defendant. 

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

UBER’S LIST OF OPINIONS FOR 

CASE-IN-CHIEF AT TRIAL 

Trial Date: October 10, 2017 

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UBER’S LIST OF OPINIONS FOR CASE-IN-CHIEF AT TRIAL

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Pursuant to the Court’s June 7, 2017 Orders (Dkts. 562 and 563), Uber Technologies, Inc. 

and Ottomotto LLC (“Uber”) submit the following list of trial witnesses, both retained and nonretained, who are expected to give any opinion testimony in Uber’s case-in-chief at trial 

(including those who will also give fact testimony), as well as witnesses who are expected to give 

testimony that depends on their scientific, technical, or other specialized knowledge under 

Federal Rule of Evidence 702.1 Uber reserves the right to rely on and/or adopt any opinion 

testimony and/or witnesses identified by Otto Trucking LLC. 

I. RETAINED EXPERTS 

A. Dr. Paul McManamon 

Dr. McManamon is a retained expert witness for Uber. Uber expects to call Dr. 

McManamon to testify regarding (1) background information about the LiDAR and self-driving 

vehicle technology at issue in the case; (2) Uber’s defenses to Waymo’s trade secret 

misappropriation claims based on non-use, independent development, public knowledge, and/or 

the readily ascertainable nature of Waymo’s asserted trade secrets, including, without limitation, 

the asserted trade secrets identified by Waymo in its August 1, 2017 Notice Regarding Trade 

Secret Narrowing; (3) the technical value of the asserted trade secrets; (4) the time that it would 

take a competitor to replicate the asserted trade secrets from public information or to develop the 

asserted trade secrets without misappropriation; (5) potential design-arounds; and (6) LiDAR 

sensors offered by third parties. Dr. McManamon is also expected to respond to any opinions 

offered by any expert retained by Waymo relating to Waymo’s trade secret misappropriation. 

 

1

 Uber has identified expected subjects of expert testimony with as much specificity as is 

now possible. Discovery is ongoing, and Defendants may supplement this list of opinions based 

on information not currently known to Defendants. Furthermore, as discovery and trial 

preparation progresses, and before the deadline to disclose experts, Uber reserves its right to 

modify its roster of expert witnesses and the testimony they will provide, including adding or 

dropping witnesses, adding or dropping opinions to be offered, or modifying the distribution of 

subjects among the witnesses. For example, it may be the case that some of the topics associated 

with Professor David Lewin may be addressed by Professor Joshua Gans or Professor Gary 

Lawrence, or vice versa. Uber understands the purpose of this disclosure as identifying the 

expected subjects of expert testimony, as opposed to identifying the specific subjects that will be 

offered by specific experts. 

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UBER’S LIST OF OPINIONS FOR CASE-IN-CHIEF AT TRIAL

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B. Dr. Michael Lebby 

Dr. Lebby is a retained expert witness for Uber. Uber expects to call Dr. Lebby to testify 

about (1) background information about the electro-optical system technologies and designs at 

issue in the case; (2) Uber’s defenses to Waymo’s trade secret misappropriation claims based on 

non-use, independent development, public knowledge, and/or the readily ascertainable nature of 

Waymo’s asserted trade secrets, including, without limitation, asserted trade secrets identified by 

Waymo in its August 1, 2017 Notice Regarding Trade Secret Narrowing; (3) the technical value 

of the asserted trade secrets; (4) the time that it would take a competitor to replicate the asserted 

trade secrets from public information or to develop the asserted trade secrets without 

misappropriation; (5) potential design-arounds; (6) LiDAR sensors offered by third parties; and 

(7) the contents of the allegedly downloaded files. Dr. Lebby may also testify about the ’’936 

patent, including (1) the state of the art; (2) the level of a person of ordinary skill in the art at the 

time of filing of the three patents; (3) disclosed embodiments; (4) how a person of ordinary skill 

would interpret the claim language in view of the intrinsic record; (5) invalidity of the asserted 

claims; (6) non-infringement of the asserted claims; (7) non-infringing alternatives; and 

(8) potential design-arounds. Dr. Lebby is also expected to respond to any opinions offered by 

any expert retained by Waymo relating to Waymo’s trade secret misappropriation and patent 

infringement claims. 

C. Dr. Philip Hobbs 

Dr. Hobbs is a retained expert witness for Uber. Uber expects to call Dr. Hobbs to testify 

about (1) background information about the LiDAR, self-driving vehicle technology, and/or 

electro-optical system technologies and designs at issue in the case; (2) Uber’s defenses to 

Waymo’s trade secret misappropriation claims based on non-use, independent development, 

public knowledge, and/or the readily ascertainable nature of Waymo’s asserted trade secrets, 

including, without limitation, asserted trade secrets identified by Waymo in its August 1, 2017 

Notice Regarding Trade Secret Narrowing; (3) the technical value of the asserted trade secrets; 

(4) the time that it would take a competitor to replicate the asserted trade secrets from public 

information or to develop the asserted trade secrets without misappropriation; (5) potential 

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design-arounds; and (6) LiDAR sensors offered by third parties. Dr. Hobbs may also testify 

about the ’936 patent, including (1) the state of the art; (2) the level of a person of ordinary skill 

in the art at the time of filing of the three patents; (3) disclosed embodiments; (4) how a person of 

ordinary skill would interpret the claim language in view of the intrinsic record, (5) invalidity of 

the asserted claims; (6) non-infringement of the asserted claims; (7) non-infringing alternatives; 

and (8) potential design-arounds. Dr. Hobbs is also expected to respond to any opinions offered 

by any expert retained by Waymo relating to Waymo’s trade secret misappropriation and patent 

infringement claims. 

D. Kevin Faulkner and/or Robert DeCicco 

Uber expects to call Mr. Faulkner to testify about Uber’s efforts to investigate whether 

any Waymo downloaded material exists or has been used within Uber, such as the investigation 

by his firm Stroz Friedberg during the course of this litigation into whether any Waymo 

downloaded material exists on the computer systems of Uber. In addition to this fact testimony, 

Mr. Faulkner and/or Mr. DeCicco are expected to testify about (1) data collection methods and 

forensic techniques used to search the computer systems of Uber in this case; (2) the results of 

Stroz Friedberg’s investigation during the course of this litigation; (3) the types of files in the 

alleged Waymo downloaded materials; (4) the techniques applied by Stroz Friedberg to eliminate 

“false positives” from the search of the computer systems of Uber; (5) the results of the 

investigation of Uber’s computer systems; and/or (6) the adequacy of Uber’s efforts to search its 

computer systems, collect and review documents, and take other measures to locate any Waymo 

downloaded material at Uber. Mr. Faulkner and/or Mr. DeCicco are also expected to respond to 

any opinions offered by any expert retained by Waymo on these subjects, such as analysis of 

Waymo networks and logs.2

 

2

 Should the Stroz Friedberg due diligence report and other documents subject to 

Waymo’s motions to compel be produced pursuant to the Court’s June 8, 2017 and June 21, 2017 

Orders (Dkt. 566 and 670), Mr. Faulkner and/or Mr. DeCicco are expected to testify about any 

data collection methods and forensic techniques used in connection with the due diligence 

investigation and the adequacy of efforts to ensure that Waymo trade secrets and other intellectual 

property were not brought to Uber as a result of the Otto acquisition. 

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E. Retained Expert No. 6 

Uber expects to call Retained Expert No. 6 regarding the adequacy of Waymo’s measures to keep 

its alleged trade secrets confidential. 

F. Dr. David Lewin 

Uber expects to call Dr. Lewin to testify about relevant business practices, customs, and 

policies about: (1) ensuring that trade secrets and other intellectual property of third parties are 

not brought to a company by incoming employees (including, without limitation, employment 

agreements and instructions to employees); (2) employee exploration of other employment 

options while at one employer; (3) recruiting of employees by competitors; (4) use of technical 

knowledge in subsequent employment; (5) employee manuals and policies; (6) measures taken to 

protect the confidentiality of trade secrets; (7) employee mobility; (8) employee side businesses; 

(9) employment agreements; and (10) employee compensation practices, and the incentives 

created by those practices. Dr. Lewin also may opine on (11) Waymo, Uber’s, and Ottomotto’s 

customs and practices on these topics in light of any/all of the above, such as: (a) Uber and 

Ottomoto’s efforts to ensure that trade secrets and other intellectual property of Waymo was not 

brought by incoming employees; (b) Uber’s, Waymo’s, and/or Ottomoto’s employment and HR 

practices generally, including employee manuals and workplace policies, and policies related to 

protecting trade secrets; 3 (c) Uber’s, Waymo’s, and/or Ottomotto’s employee compensation and 

benefits, such as but not limited to stock incentive grants and bonus plans. Dr. Lewin is also 

expected to opine on (12) the supply of human talent, the importance of human talent and 

competition for that talent among companies in the relevant industries, and the way that 

competition for talent affected or contextualized the industry and facts relevant to this case. Dr. 

 

3

 Waymo has agreed to forego any reliance on its employment agreement for any purpose 

in this case unless Uber “opens the door.” Consistent with this agreement, Uber does not intend 

to offer any expert testimony on the use of Waymo’s employment agreements to demonstrate the 

reasonableness or unreasonableness of Waymo’s measures taken to protect the confidentiality of 

its alleged trade secrets. 

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Lewin is also expected to respond to any opinions offered by any expert retained by Waymo on 

these subjects. 4 

G. Gary Lawrence 

Uber expects to call Gary Lawrence to respond to any opinions that Waymo offers about 

mergers and acquisition practices, and to testify about Uber’s acquisition of Ottomotto as it 

compares to general merger and acquisition practices, including but not limited to: (a) intellectual 

property due diligence, (b) evaluation of potential litigation, and (c) indemnifications provided by 

parties to acquisitions.5 

H. Dr. Joshua Gans and/or Retained Expert No. 10 

Uber expects to call Dr. Joshua Gans and/or Retained Expert No. 10 to testify regarding 

any damages claimed by Waymo in connection with Waymo’s trade secret misappropriation and 

patent infringement claims. Dr. Gans and/or Retained Expert No. 10 is expected to testify 

regarding (1) the absence of actual damages; (2) the absence of lost profits; (3) a reasonable 

royalty, if any, for the use of relevant technology; (4) damages in the context of emerging 

technologies; (5) whether Waymo’s damages claim is speculative; (6) costs claimed by Waymo to 

develop the trade secrets and patents at issue; (7) relevant markets, market share, and/or market 

value; (8) issues and theories related to first mover and technological advantages; (9) importance 

of human talent and competition for same; (10) competition for human talent in high-tech 

industries; (11) costs to design around and/or redesign to avoid the trade secrets and patents at 

issue; (12) alternatives in the market place; (13) apportionment of value to the trade secrets and 

patents at issue; and (14) possible models for commercializing the technology at issue. These 

experts are also expected to testify regarding whether the patented features and purported trade 

secrets drive demand for Waymo’s products. These experts are also expected to respond to any 

 

4

 Fact witnesses may also provide opinion testimony on any of the issues identified above 

as associated with Dr. Lewin. 

5

 Should the Stroz Friedberg due diligence report and other documents subject to 

Waymo’s motions to compel be produced pursuant to the Court’s June 8, 2017 and June 21, 2017 

Orders (Dkt. 566 and 670), Mr. Lawrence is expected to testify about Uber’s due diligence efforts 

to ensure that Waymo trade secrets and other intellectual property would not be brought to Uber 

as a result of the Otto acquisition. 

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opinions or analyses offered by any expert retained by Waymo on the subject of damages and 

remedies. 

II. FACT WITNESSES WHO MAY GIVE EXPERT OPINION TESTIMONY 

A. James Haslim 

Mr. Haslim is a senior engineering manager at Uber. In addition to his other fact 

testimony, Mr. Haslim is expected to testify about public knowledge and/or engineering 

knowledge of general principles and approaches in LiDAR and related fields pertaining to 

features in Uber’s LiDARs that Waymo claims were based on misappropriated trade secrets. Mr. 

Haslim is also expected to testify regarding a software simulation of Uber’s Fuji firing circuit that 

he supervised. 

B. Scott Boehmke 

Mr. Boehmke is an engineering manager at Uber. In addition to his other fact testimony, 

Mr. Boehmke is expected to testify about public knowledge and/or engineering knowledge of 

general principles and approaches in LiDAR and related fields pertaining to features in Uber’s 

LiDARs that Waymo claims were based on misappropriated trade secrets. 

C. Gaetan Pennecot 

Mr. Pennecot is an engineer at Uber. In addition to his other fact testimony, Mr. Pennecot 

is expected to testify about public knowledge and/or engineering knowledge of general principles 

and approaches in LiDAR and related fields pertaining to features in Uber’s LiDARs that Waymo 

claims were based on misappropriated trade secrets. 

D. Daniel Gruver 

Mr. Gruver is a Senior Program Manager at Uber. In addition to his other fact testimony, 

Mr. Gruver is expected to testify about public knowledge and/or engineering knowledge of 

general principles and approaches in LiDAR and related fields pertaining to features in Uber’s 

LiDARs that Waymo claims were based on misappropriated trade secrets. 

E. Dr. John Bares 

Dr. Bares is an Operations Director at Uber. In addition to his other fact testimony, Dr. 

Bares is expected to testify about public knowledge and/or engineering knowledge of general 

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principles and approaches in LiDAR and related fields pertaining to features in Uber’s LiDARs 

that Waymo claims were based on misappropriated trade secrets. 

F. Florin Ignatescu 

Mr. Ignatescu is an engineer at Uber. In addition to his other fact testimony, Mr. 

Ignatescu is expected to testify about public knowledge and/or engineering knowledge of general 

principles and approaches in LiDAR and related fields pertaining to features in Uber’s LiDARs 

that Waymo claims were based on misappropriated trade secrets. Mr. Ignatescu is also expected 

to testify regarding a software simulation of Uber’s Fuji firing circuit that he conducted. 

G. Asheem Linaval 

Mr. Linaval is an engineer at Uber. In addition to his other fact testimony, Mr. Linaval is 

expected to testify about the types of files and file names routinely created by Altium, LT Spice, 

and SolidWorks software, and why hash or file name matches do not establish that such files 

came from Waymo. 

H. Eric Meyhofer 

Mr. Meyhofer is Head of the Advanced Technologies Group at Uber. In addition to his 

other fact testimony, Mr. Meyhofer is expected to testify about public knowledge and/or 

engineering knowledge of general principles and approaches in LiDAR and related fields 

pertaining to features in Uber’s LiDARs that Waymo claims were based on misappropriated trade 

secrets. 

I. William Treichler 

Mr. Treichler is an engineer at Uber. In addition to his other fact testimony, Mr. Treichler 

is expected to testify about public knowledge and/or engineering knowledge of general principles 

and approaches in LiDAR and related fields pertaining to features in Uber’s LiDARs that Waymo 

claims were based on misappropriated trade secrets. 

J. Jur van den Berg 

Dr. van den Berg is a senior software engineer at Uber. In addition to his other fact 

testimony, Dr. van den Berg is expected to testify about the value Ottomotto provided to Uber 

through Uber's acquisition of Ottomotto's engineering talent. 

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K. Soren Juelsgaard 

Mr. Juelsgaard is a director of hardware engineering at Uber. In addition to his other fact 

testimony, Mr. Juelsgaard is expected to testify about the value Ottomotto provided to Uber 

through Uber's acquisition of Ottomotto's engineering talent. 

L. Don Burnette 

Mr. Burnette is a senior software engineer at Uber. In addition to his other fact testimony, 

Mr. Burnette is expected to testify about the value Ottomotto provided to Uber through Uber's 

acquisition of Ottomotto's engineering talent. 

M. Witnesses from Velodyne or other Third-Party LiDAR Suppliers 

Witnesses from Velodyne or other third-party LiDAR suppliers may testify about public 

knowledge and/or engineering knowledge of general principles and approaches in LiDAR and 

related fields pertaining to LiDAR features of relevance to this case. 

Dated: August 3, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. Gonzalez

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

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