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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

WAYMO LLC,

Plaintiff,

 v.

UBER TECHNOLOGIES, INC.;

OTTOMOTTO LLC; and OTTO

TRUCKING LLC,

Defendants. /

No. C 17-00939 WHA

ORDER RE MOTIONS FOR

PARTIAL SUMMARY

JUDGMENT AND MOTION TO

STRIKE ASSERTED TRADE

SECRET NUMBER 96

(UNDER SEAL)

INTRODUCTION

In this action for trade secret misappropriation, all parties move for partial summary

judgment on select issues. Plaintiff’s motion is GRANTED IN PART and DENIED IN PART. 

Defendants’ motion is also GRANTED IN PART and DENIED IN PART. Defendants’ motions to

strike and for summary judgment as to asserted trade secret number 96 are GRANTED.

STATEMENT

The factual background of this action has been detailed in a prior order. In brief,

plaintiff Waymo LLC sued defendants Uber Technologies, Inc., Ottomotto LLC (collectively,

“Uber”), and Otto Trucking LLC for alleged misappropriation of trade secrets concerning Light

Detection and Ranging (LiDAR) technology that helps self-driving cars “see” their

surroundings. The centerpiece of Waymo’s case is its evidence that its former star engineer,

non-party Anthony Levandowski, downloaded over 14,000 confidential files from Waymo

immediately before leaving his employment there to start Ottomotto and Otto Trucking

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1

 For the benefit of the court of appeals and with apologies to the public, most record citations herein

are to the unredacted versions of the documents cited.

2

 Defendants also moved for summary judgment of noninfringement of Waymo’s United States Patent

No. 9,368,936, but Waymo’s dismissal of its patent claim moots that part of the motion (Dkt. No. 1593).

2

(collectively, “Otto”). Uber then acquired Ottomotto and hired Levandowski as the head of its

self-driving car efforts (Dkt. No. 426).1

By agreement of both sides, this action was set for a jury trial on October 10. After the

belated production of non-party Stroz Friedberg’s due diligence report on the Otto acquisition,

however, Waymo successfully moved to continue the trial date to December 4 (Dkt. No. 1954).

Waymo moves for partial summary judgment on certain affirmative defenses (Dkt. No.

1418). Uber moves for partial summary judgment that Waymo’s asserted trade secret number

nine is not a trade secret, and Otto Trucking moves for summary judgment that it has not

misappropriated any alleged Waymo trade secret (Dkt. No. 1423). All defendants also move for

partial summary judgment on Waymo’s asserted trade secret number 96 on multiple grounds,

including that it was inadequately disclosed (Dkt. Nos. 1514, 1518). The latter motion also

represents the final piece of defendants’ prior motion to strike certain trade secret claims (Dkt.

Nos. 1108, 1129), which has already been denied as to all challenged claims except asserted

trade secret number 96 (see Dkt. No. 1260 at 108:5–15, 110:13–111:3, 133:24–134:13).2

This order follows full briefing and oral argument. 

ANALYSIS

1. LEGAL STANDARD.

Summary judgment is appropriate when there is no genuine dispute of material fact and

the moving party is entitled to judgment as a matter of law. A genuine dispute of material fact

is one that “might affect the outcome of the suit under the governing law.” Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 247–48 (1986). In deciding a motion for summary judgment, the

court must believe the non-movant’s evidence and draw all justifiable inferences in their favor. 

Id. at 255. “The mere existence of a scintilla of evidence” or “some metaphysical doubt as to

the material facts” in the non-movant’s favor, however, will not suffice. Id. at 252, 260–61

(quoting Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)). 

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“Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Matsushita, 475 U.S. at 587 (quotation and

citation omitted).

2. WAYMO’S MOTION RE AFFIRMATIVE DEFENSES.

Waymo initially moved for summary judgment on eleven of defendants’ affirmative

defenses (Dkt. No. 1418). In their opposition brief, defendants waived all but two (Dkt. No.

1524-3 at 2). Only defendants’ failure-to-mitigate defense and Otto Trucking’s unclean hands

defense remain in dispute on this motion.

A. Failure to Mitigate.

Waymo contends defendants have no evidence that it failed to mitigate its damages

because (1) Waymo sued “within weeks of obtaining evidence of . . . trade secret

misappropriation,” i.e., the email dated December 13, 2016, from LiDAR component vendor

Gorilla Circuits (see Dkt. No. 426 at 5); (2) any “delay” in bringing suit was de minimis; and (3)

“[t]he length of the head start created by Uber’s trade secret misappropriation does not depend

on the timing of Waymo’s suit” (Dkt. No. 1418 at 8–9).

Defendants note that Waymo “began investigating a compromise of its alleged trade

secrets” months before receiving the Gorilla email, involved outside counsel in said

investigation by July and August 2016, “accelerated its investigation after learning about Uber’s

imminent acquisition of Ottomotto,” and internally discussed when to reach out to Uber about

its “potential concerns” (Dkt. No. 1524-3 at 16). Far from showing failure to mitigate, these

facts actually indicate that Waymo acted diligently by actively investigating its “potential

concerns” and “accelerat[ing] its investigation after learning about Uber’s imminent acquisition

of Ottomotto.” These facts do nothing to rebut Waymo’s point that it filed suit promptly after

receiving the Gorilla email that appeared to contain first evidence of actual trade secret

misappropriation by defendants.

As noted in the prior order granting provisional relief, defendants essentially “contend

that Waymo lacks sufficient evidence of use but simultaneously criticize Waymo for not suing

before it had any evidence of use” (Dkt. No. 426 at 19–20). This dissonance remains on full

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display in defendants’ opposition to the instant motion. For example, defendants specifically

argue that “Waymo has failed to meet its duty to mitigate by delaying in seeking injunctive

relief as to Otto Trucking” and in the very next paragraph claim “Waymo has no evidence that

Otto Trucking is involved in the development of LiDAR or that it has used the purported trade

secrets” (Dkt. No. 1524-3 at 15). Were this really true, it would be a mystery how or why

Waymo could or would have sought earlier relief.

Insinuations about Waymo’s ulterior motives, including that “Waymo did not care about

Mr. Levandowski or his companies” and “made the strategic choice to delay in suing Otto

Trucking until it could cobble together a way to sue Uber,” permeate the defense brief (see id. at

16). Such facts, if true, may bear on the merits of Waymo’s trade secret misappropriation

claims insofar as they may speak to the value of the asserted trade secrets. But they do not

further indicate, as defendants suggest, that Waymo had some prior opportunity to mitigate its

damages and squandered it by filing suit later rather than sooner. This order agrees with

Waymo that, taken as a whole, the record reflects only de minimis, if any, delay by Waymo in

bringing this action. 

Defendants have failed to show a genuine dispute of material fact on their failure-tomitigate defense because this record, taken as a whole, could not lead a rational trier of fact to

find for defendants on said defense as to any claim to be tried by a jury. Waymo’s motion for

summary judgment on this defense is GRANTED without prejudice to any future argument that,

as an equitable matter, Waymo’s timeliness (or lack thereof) in suing may somehow diminish

its entitlement to equitable relief.

B. Unclean Hands.

Unclean hands “closes the doors of a court of equity to one tainted with inequitableness

or bad faith relative to the matter in which he seeks relief.” Jarrow Formulas, Inc. v. Nutrition

Now, Inc., 304 F.3d 829, 841 (9th Cir. 2002) (quoting Precision Instrument Mfg. Co. v. Auto.

Maint. Mach. Co., 324 U.S. 806, 814 (1945)). As our court of appeals has said, “troubling”

actions and “hands [that] are not as ‘clean as snow’” do not necessarily rise to the level of

unclean hands. Id. at 842. Rather, “the defense of illegality or unclean hands is recognized

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only rarely, when the plaintiff’s transgression is of serious proportions and relates directly to the

subject matter of the . . . action” — for example, when a plaintiff “misused the process of the

courts by falsifying a court order or evidence.” Dream Games of Ariz., Inc. v. PC Onsite, 561

F.3d 983, 990–91 (9th Cir. 2009) (quotation omitted). “The application or rejection of the clean

hands doctrine in a given case is equitable in nature and within the discretion of the trial court.” 

Wash. Capitols Basketball Club, Inc. v. Barry, 419 F.2d 472, 478 (9th Cir. 1969). 

Here, Waymo contends Otto Trucking has no evidence that “Waymo engaged in

misconduct directly related to the claims that Waymo is asserting” (Dkt. No. 1418 at 9). In

response, Otto Trucking claims “Waymo has ‘sought at every turn to create the false

impression’ that its forensic investigation proved that Mr. Levandowski had stolen valuable

trade secrets from Waymo by downloading 14,000 files — the entire repository — from

Waymo’s SVN server,” citing evidence tending to show weaknesses in Waymo’s case (Dkt. No.

1524-3 at 13–14). For example, Otto Trucking points to Sasha Zbrozek, a Waymo engineer,

who told Waymo’s lawyers the downloaded files were “low-value” and added that “it was

regular practice for engineers” to download the entire SVN repository (ibid.), revelations that

had to be pried out of Waymo by Court order. Given this stonewalling, Otto Trucking argues,

Waymo’s “presentation of its case contrary to facts” constitutes unclean hands.

Since this equitable defense will have meaning only if Waymo ultimately prevails on the

merits, there is no need to reach it now. Indeed, it would be premature to decide the issue at

this stage, since litigation remains ongoing and further evidence of Waymo’s misconduct may

yet come to light. It is conceivable that Waymo might win at trial and then seek some equitable

relief, whereupon its own conduct in this litigation might loom large as an inequity and fairness

may (or may not) require moderation or even denial of any relief. Moreover, inasmuch as

Waymo’s motion relates specifically to a defense asserted by Otto Trucking, it is mooted by this

order, which grants summary judgment of no liability in favor of Otto Trucking. Thus, both

because it is premature and because it is moot, Waymo’s motion for summary judgment on the

defense of unclean hands is DENIED.

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3. UBER’S MOTION RE ASSERTED TRADE SECRET NUMBER NINE.

Both the California Uniform Trade Secrets Act and the federal Defend Trade Secrets

Act define “trade secret” as information that:

(1) Derives independent economic value, actual or potential, from

not being generally known to the public or to other persons who

can obtain economic value from its disclosure or use; and

(2) Is the subject of efforts that are reasonable under the

circumstances to maintain its secrecy.

CAL. CIV. CODE § 3426.1; see also 18 U.S.C. 1839. Here, Waymo’s asserted trade secret

number nine claims (Dkt. No. 25-7 at 8):

Defendants’ motion relies on a compilation of evidence from various sources to argue

that various subparts of Waymo’s asserted trade secret number nine are generally known in the

field. Defendants point out that Waymo’s own United States Patent No. 8,836,922 (Dkt. No.

23-1) disclosed at all relevant times “a LiDAR system comprising a transmit block comprising a

plurality of laser diodes, wherein said transmit block is comprised of a plurality of PCBs”

(see Dkt. No. 1419-4 at 10). They also quote the deposition testimony of Waymo’s engineers

for the proposition that using FAC lenses to is a well-known concept

in the field, as is the general notion that the lens in front of a light source can be 

 (see id. at 10–12). Finally, they point to Velodyne’s

commercially-available LiDAR system as an example of another LiDAR system that uses FAC

lenses to (see id. at 13).

None of the foregoing evidence conclusively shows that Waymo’s entire asserted trade

secret number nine was generally known to the public or in the field. The ’922 patent did not

disclose a “

.” 

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The same Waymo engineers quoted by defendants also testified to the effect that the strategy of

using FAC lenses to in a LiDAR system is not generally

known in the field (see Dkt. Nos. 1526-10 at 230:16–231:19; 1526-25 at 217:16–218:20). And

while Velodyne has used its FAC lenses to in its LiDAR systems (see

Dkt. No. 1526-28 at 68:7–69:6), Waymo contends this was used to 

, not to 

 in the first instance (see Dkt. No. 1526-4 at 16–17). For the latter purpose of

, it seems, Velodyne relies on the strategic 

 (see, e.g., Dkt. No. 1526-27 at

19). Additionally, Velodyne itself insists — albeit in general terms — that the relevant details

of its LiDAR system constitute trade secret information (Dkt. No. 1455).

In their reply brief, defendants seize upon Waymo’s explanation that the design claimed

in asserted trade secret number nine “stems in part from the fact that Waymo, unlike Velodyne,

positions multiple laser diodes on a single PCB, with multiple PCBs stacked in parallel” (see

Dkt. Nos. 1526-4 at 10, 1636-4 at 2 (emphasis added)). (Velodyne uses 

.) 

Defendants accuse Waymo of “acknowledg[ing] that it cannot bar its former engineers from

using multiple diodes on multiple PCBs” because of its ’922 patent, yet “seek[ing] to bar them

from including in such a design the basic optical concept of 

” (Dkt. No. 1636-4 at 2). But this reasoning merely begs the

question, i.e., whether Waymo’s use of FAC lenses to within

its patented LiDAR system is actually a “basic optical concept.” 

True, substantial parts of asserted trade secret number nine are encompassed by the ’922

patent. But it remains a question of fact whether or not Waymo’s use of FAC lenses to 

 was generally known to the public or in the field. For

example, both sides agree that Velodyne’s LiDAR system meets the definition of a LiDAR

system “comprising a transmit block comprising a plurality of laser diodes, wherein said

transmit block is comprised of a plurality of PCBs” (see Dkt. Nos. 1526-4 at 7, 1636-4 at 4 n.1). 

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Yet, as explained above, Velodyne’s LiDAR system is significantly different from Waymo’s,

including in how each system uses its FAC lenses to 

. In short, it remains possible that a LiDAR design might use that part of

asserted trade secret nine that is encompassed by the ’922 patent but nevertheless not arrive at

Waymo’s particular solution of using FAC lenses to .

Defendants also brush off the question of “whether Velodyne’s FAC design is public or

confidential,” urging instead that “the point is that the general concept of using an FAC to 

 is known in the LiDAR field, and follows fundamental principles of optics” (Dkt. No.

1636-4 at 4). This argument dismisses the evidence without responding to it. The point is that

whether or not Velodyne considers its design to be trade secret information may bear on

whether or not Waymo’s asserted trade secret number nine is generally known to the public or

in the field, as defendants contend. 

In summary, defendants’ arguments as to asserted trade secret number nine — including

whether or not Waymo’s asserted trade secret number nine encompasses no more than ordinary

concepts and skills inherent in the head of every LiDAR engineer, the degree to which

Waymo’s ’922 patent and Velodyne’s commercially-available LiDAR system disclose asserted

trade secret number nine, and whether or not Velodyne’s designs constitute sufficient evidence

that asserted trade secret number nine is generally known in the field — all present genuine

disputes of material fact. They are accordingly reserved for the jury, and defendants’ motion

for summary judgment that asserted trade secret number nine is not a trade secret is DENIED.

4. OTTO TRUCKING’S MOTION RE MISAPPROPRIATION.

Otto Trucking has never been involved in the development or use of LiDAR systems,

and exists simply as a holding company to own trucks equipped with Velodyne’s LiDAR

system (Dkt. No. 1419-4 at 16–20). Unlike Ottomotto, it has not been acquired by Uber and

remains a separate company. Waymo nevertheless seeks to preserve its trade secret

misappropriation claims against Otto Trucking by lumping it together with Uber and

Levandowski under various unpersuasive theories, which this order now discusses.

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A recurring problem in Waymo’s briefing must be addressed at the outset. Waymo

repeatedly suggests that Otto Trucking should be deemed automatically liable for trade secret

misappropriation by Levandowski. To give just a few non-exhaustive examples, Waymo

purports to identify “Otto Trucking’s role in the misappropriation” but goes on to recite only

that “a central figure in the misappropriation of Waymo’s trade secrets — Anthony Levandowski

— is Otto Trucking’s Executive Chairman, co-Managing Member, and largest stockholder”

(Dkt. No. 1526-4 at 19 (emphasis added)). Waymo also contends its claims “encompass Otto

Trucking’s acquisition — by way of Mr. Levandowski’s theft — of the asserted trade secrets

(id. at 21). And even Waymo’s supplemental offer of proof as to Otto Trucking relies primarily

on evidence of Levandowski’s misappropriation (see Dkt. No. 2055-3 at 2–7). In short,

Waymo’s case against Otto Trucking rests largely on — in Waymo’s words — its “very

existence as Mr. Levandowski’s company” (Dkt. No. 1526-4 at 23). 

To be very clear, whether or not Otto Trucking and Levandowski are, as a practical

matter, similarly situated or even interchangeable in some sense, they are not interchangeable

for purposes of this particular litigation. In a special way, this is a key limitation of Waymo’s

own making. To avoid having to arbitrate this case, Waymo has repeatedly represented to both

this Court and to the Federal Circuit that it has not sued Levandowski herein. By doing so,

Waymo has successfully avoided arbitration and kept its claims in a public court. It must keep

its word. Having made and benefitted from its strategic choice to not name Levandowski as a

defendant, Waymo may not renege and suggest that Otto Trucking — or any other defendant —

is somehow a stand-in for Levandowski, or that misappropriation by Levandowski is somehow

automatically transmogrified into misappropriation by Otto Trucking — or any other defendant

— such that Waymo need not separately prove the latter. This order evaluates Waymo’s

arguments on the instant motion through the lens of this foundational principle.

In its original opposition brief, Waymo contends Otto Trucking is vicariously liable for

Levandowski’s misappropriation because it failed to take adverse action against him after he

formed it. Moreover, Waymo claims, Levandowski’s possession of misappropriated trade

secrets will increase Otto Trucking’s value as an acquisition target for Uber. Thus, Waymo

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reasons, Otto Trucking “accepted and retained” the benefit of Levandowski’s misappropriation,

thereby ratifying his continued possession of Waymo’s trade secrets (see Dkt. No. 1526-4 at

20–25). But it is undisputed that Otto Trucking has no practical ability to take adverse action

against Levandowski. Waymo’s argument, if accepted, would mean that Otto Trucking must

always be deemed to have “ratified” whatever Levandowski has done, and it would be of no

moment for vicarious liability purposes that Otto Trucking has no meaningful choice in the

matter. For all intents and purposes, Waymo’s proposed theory of vicarious liability is

indistinguishable from automatic equivalence of Levandowski and Otto Trucking. Under either

approach, Waymo simply wants to be able to hold Otto Trucking liable by proving only that

Levandowski misappropriated its asserted trade secrets. As explained, this will not be allowed.

Otto Trucking’s potential future with Uber does not compel a different result. Insofar as

Waymo is relying on Otto Trucking’s possible future actions, those actions are not properly the

subject of the operative complaint in this litigation (although Waymo remains free to file

another lawsuit in the future if defendants’ future actions give rise to additional claims). With

respect to the trade secret misappropriation claims in this litigation, the plain text of CUTSA

and DTSA provide for liability only through acquisition, use, or disclosure of trade secret

information. Waymo cites no authority for its suggestion that Otto Trucking can be liable now

merely because it might benefit in the future from the misappropriation of other individuals and

entities. Indeed, this suggestion puts the cart before the horse. The question of whether a

defendant benefitted from trade secret misappropriation would typically be one of damages,

reached only after the misappropriation itself has been established in the first instance. 

Counting the mere possibility of such benefit as proof of misappropriation would turn this

sequence on its head and drastically expand the scope of liability under CUTSA and DTSA.

Waymo correctly notes that any effective injunctive relief against Uber may have to

include Otto Trucking as well, but incorrectly asserts that this practical fact bars summary

judgment as to liability (see Dkt. No. 1526-4 at 23). The effectiveness of injunctive relief is a

matter of remedies, not of liability.

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Waymo’s supplemental opposition brief similarly fails to raise a genuine issue of

material fact as to Otto Trucking’s liability for the claims at issue in this litigation. It

substantially overlaps with Waymo’s prior arguments and again relies heavily on evidence of

Levandowski’s misappropriation to state a case against Otto Trucking (see Dkt. No. 2055-3 at

2–9). It also summarizes evidence that Don Burnette, another co-founder and shareholder of

Otto Trucking, misappropriated trade secrets in motion planning software that Waymo had

sought to add as new claims late in the case (see id. at 9–10, 16). Those proposed new claims,

however, will not be added to our upcoming trial this year, so they do not justify preserving

Waymo’s current claims against Otto Trucking (although they may justify adding Otto

Trucking back in for a second trial later on if Waymo is eventually allowed to add in its

proposed new software misappropriation claims) (see Dkt. No. 2129). 

In its supplemental opposition brief, Waymo reiterates in one short paragraph that

“Levandowski possessed and retained accessed [sic] to Waymo trade secret information while

Mr. Levandowski was working at Otto Trucking,” “that trade secret information was used in

LiDAR development efforts by Mr. Levandowski and other individuals who were

simultaneously employed by Uber and Otto Trucking,” and “that work was done for the benefit

of accelerating development of autonomous driving in both cars and trucks” (Dkt. No. 2055-3 at

10–11). Waymo styles this as a showing of direct liability but provides no explanation or

authority for why this evidence against other individuals and entities adds up to a case against

Otto Trucking on Waymo’s current claims. This evidence fails to raise a genuine dispute of

material fact as to Otto Trucking’s liability.

In its supplemental opposition brief, Waymo also expands its vicarious liability and

ratification theories to include both Levandowski and Lior Ron, another co-founder and

shareholder of Otto Trucking. As to Levandowski, these theories are rejected for the same

reasons already stated. As to Ron, Waymo’s supplemental offer of proof cites the due diligence

report as evidence that Ron retained possession of some “confidential Waymo data.” 

Significantly, although Waymo describes this data in some detail — and states in later argument

that Ron possessed its trade secrets — it never points to specific evidence that the data retained

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by Ron actually included any of the asserted trade secrets at issue in this case (see id. at 4). 

Waymo also summarizes evidence that both Levandowski and Ron attempted to cover their

tracks and otherwise acted suspiciously during the due diligence process, but proffers no

evidence that any of this shady behavior related to or indicated trade secret misappropriation on

behalf of Otto Trucking (see id. at 4–5). In light of these deficiencies, Otto Trucking’s

“refus[al] to take any remedial actions” against Ron is of little significance (see id. at 13–14). 

In short, Waymo’s supplemental evidence regarding Ron’s actions fails to improve on its

vicarious liability and ratification theories (see id. at 11–16).

Finally, in another short paragraph of its supplemental opposition brief Waymo argues

that all defendants are jointly and severally liable “[r]egardless of the specific theory of liability

the jury may use to find Otto Trucking liable” because many of the same individuals involved

in Uber’s LiDAR-development efforts are also Otto Trucking employees, and Otto Trucking

stands to benefit in the future from Uber’s development efforts. Again, Waymo provides no

explanation or authority for why these assertions add up to a case against Otto Trucking on

Waymo’s current claims. Its blip about joint and several liability therefore fails to raise a

genuine dispute of material fact as to Otto Trucking’s liability.

In short, the record taken as a whole could not lead a rational jury to find Otto Trucking

liable on Waymo’s current trade secret misappropriation claims. Waymo’s strongest evidence

on misappropriation is about Levandowski, not about Otto Trucking, and as a result of its own

litigation strategy, Waymo cannot treat the two as fungible targets. Nor can it circumvent this

limitation of its own making by restyling its theory as one of vicarious liability, ratification, or

joint and several liability. With this foundational principle in mind, the remainder of Waymo’s

evidence against Otto Trucking fails to raise a genuine dispute of material fact that Otto

Trucking misappropriated any asserted trade secrets. Summary judgment is therefore proper as

to Waymo’s current claims for trade secret misappropriation against Otto Trucking.

That said, it remains a practical concern that, if Waymo prevails against Uber at trial,

any effective injunctive relief may have to include Otto Trucking as well. The Court will

therefore retain jurisdiction over Otto Trucking for the limited purpose of possibly facilitating

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such relief. To the foregoing extent, Otto Trucking’s motion for summary judgment is

GRANTED. Otto Trucking will not be a part of the upcoming trial this year.

5. DEFENDANTS’ MOTIONS RE ASSERTED TRADE SECRET NUMBER 96.

Pursuant to its case management responsibility as well as Section 2019.210 of the

California Code of Civil Procedure, which requires trade secrets to be identified “with

reasonable particularity” prior to discovery thereon, the Court required Waymo to disclose up

front its asserted trade secrets. (Otherwise, trade-secret plaintiffs are liable to get into the

accused files and conveniently assert that contents therein were trade secrets stolen from them.)

Waymo’s asserted trade secret number 96 claimed “the G[B]r3 PCB Transmit Board 

design schematics and layouts contained in folder ‘ .’” The rest of

Waymo’s disclosure added that, “[f]or example, these details [in the schematics] include unique

and unknown design characteristics such as the 

, the selection and layout of individual electrical components, and the required

manufacturing tolerances” (Dkt. Nos. 25-7 at 55). 

Prior to the instant motion for summary judgment, defendants had moved to strike

asserted trade secret number 96 as overbroad because “Waymo fails to identify with

particularity what specific aspects of the hundreds of components disclosed in the ‘detailed

engineering schematics’ it contends to be a trade secret” (Dkt. Nos. 1107-4 at 4, 1129). In

response, Waymo stated, “It is not clear how a trade secret disclosure that identifies one specific

PCB in one specific LIDAR design could be defined with any more ‘reasonable particularity’”

(Dkt. No. 1159-4 at 7). In other words, Waymo attempted to avoid the overbreadth problem by

insisting that its asserted trade secret claimed only the specific design of one specific PCB (see

also Dkt. No. 1491 at 32:3–4).

The judge personally examined the PCB schematic in question during a closed

demonstration. It became readily apparent that the schematic in question included hundreds of

components and specifications with no clue as to what part thereof might be considered trade

secret information. Worse, Waymo argued that its asserted trade secret number 96

encompassed not only the information contained in the schematic itself but also strategies or

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concepts “reflected” in the schematic (see, e.g., id. at 54:18–55:6). It also comprehended,

Waymo said, “unique and unknown design characteristics such as the 

, the selection and layout of individual electrical components, and the

required manufacturing tolerances” (Dkt. Nos. 25-7 at 55, 1260 at 113:10–21 (emphasis

added)). Such wide-ranging expanders compounded the misery in trying to place arms around

the breadth of asserted trade secret number 96.

This disclosure came nowhere near the required reasonable particularity. See Advanced

Modular Sputtering, Inc. v. Superior Court, 132 Cal. App. 4th 826, 836 (2005) (“The degree of

‘particularity’ that is ‘reasonable’ will differ, depending on the alleged trade secrets at issue in

each case.”). The vastness of Waymo’s disclosure was most unfair, for it placed defendants in

the untenable position of having to prove that hundreds of subparts of the design schematic —

and innumerable other strategies and concepts arguably “reflected” therein, as Waymo put it —

either did not qualify as trade secret information or were not used in defendants’ technology. 

See ibid. (“Where, as here, the alleged trade secrets consist of incremental variations on, or

advances in the state of the art in a highly specialized technical field, a more exacting level of

particularity may be required to distinguish the alleged trade secrets from matters already

known to persons skilled in that field.”) 

Waymo’s broad claim might have been forgiven had it accused defendants of

misappropriating the entire schematic lock, stock, and barrel. Its eventual accusation, however,

was exactly the opposite — seizing upon a seemingly-random subpart of a subpart and claiming

it had been misappropriated. When Waymo submitted its offer of proof as to defendants’

alleged misappropriation of trade secrets, it focused on one tiny portion of the schematic and

claimed that defendants copied it — but even that collapsed upon examination. Out of 

PCBs in Waymo’s LiDAR system, only one was even claimed to have been copied in any

respect into Uber’s LiDAR system. The only aspect of the PCB design supposedly copied was

the , nothing else. 

It soon turned out that even the supposed equivalence of the was untrue,

as will be explained in a moment. But the overbreadth of the disclosure itself was further

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amplified when read in the context of asserted trade secret number one, so the reader will please

bear with us as we revisit that history.

Waymo’s narrowed offer of proof as to asserted trade secret number 96 in large part

turned out to be merely a more detailed rendition of the evidence it had offered with respect to

asserted trade secret number one — which claimed the concept of on a

printed circuit board in a LiDAR system — at the provisional relief stage (compare Dkt. No.

1371-4 at 17–25 with Dkt. Nos. 25-61 at 8–11, 245-3 at 3–4). Significantly, the provisional

relief order had already specifically found that Waymo’s asserted trade secret number one was

“nothing more than Optics 101,” deleting that supposed “trade secret” from the case long before

the parties began to argue over asserted trade secret number 96 (see Dkt No. 426 at 16–17).

Defendants filed a supplemental brief pointing out that Waymo was essentially

attempting to circle back to claiming a concept. Waymo’s response

confirmed that it was attempting to reframe its claim over an entire printed circuit board

schematic to a claim over “its implementation of its and the resulting 

.” Waymo attempted to distinguish number 96 from number one by suggesting that the

former claimed its specific configuration rather than the general concept of

 (see, e.g., Dkt. No. 1449-4 at 3–4). Moreover, Waymo argued that its

disclosure was adequate as to asserted trade secret number 96 because it “identified this exact

PCB schematic, and identified for Defendants that one unique aspect of the schematic reflected

‘the ’” (id. at 4 (emphasis added)).

This raised problems. First, as explained, it effectively resurrected Waymo’s asserted

trade secret number one, previously rejected as nothing more than “Optics 101.” Second, it cast

into sharp relief the unreasonableness of Waymo’s initial disclosure. Although Waymo did list

the as one example of many “characteristics” encompassed by its

asserted trade secret, it would have been wholly unreasonable to expect defendants to discern,

from the complex schematic and from Waymo’s nonexclusive list of examples — not to

mention its expansion of the asserted trade secret to include “reflected” strategies and concepts

— that Waymo’s true focus in asserted trade secret number 96 all along was only on its 

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 In an optics system, the image corresponding to a linear object focused by a lens will lie on a curved

surface also called the Petzval surface.

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 or strategy. Third, and in a similar vein, Waymo’s retreat back to its

asserted trade secret number one actually exacerbated the unreasonableness of its disclosure. 

Even assuming for the sake of argument that defendants were obliged to guess what specific

component of the claimed schematic would emerge as the issue, the very last thing they could

be expected to guess would be something already deleted from the case.

To repeat, Waymo’s disclosure might still perhaps have been reasonably adequate had

Waymo presented evidence that defendants misappropriated its specific implementation (see

Dkt. No. 1159-4 at 6). But the PCB in question was not copied in its entirety, not even close. 

Nor, as it turns out, was the copied. The latter proved to be

conclusively different, and no jury could reasonably find otherwise.

For starters, Waymo’s PCB while Uber’s (see,

e.g., Dkt. No. 1357-3 at 24). The Court nevertheless asked both sides to provide detailed

comparisons of their strategies for both PCBs in question (and for all

PCBs in both LiDAR systems) (see Dkt. Nos. 1408, 1416). In response, Waymo submitted a

declaration by its hired expert Lambertus Hesselink (Dkt. No. 1456-3). In a series of parabolic

graphs, Dr. Hesselink compared the Petzval surfaces of Waymo and Uber’s respective transmit

lenses, even scaling for the discrepancy between their focal lengths — 120 mm versus 150 mm

— to maximize the overlap between the resulting parabolic graphs (id. ¶¶ 13–23).3

 

Two identical lenses, however, will always have identical Petzval surfaces — always. 

An overlay of Petzval surfaces proves nothing in this case. Waymo insists that “Prof.

Hesselink’s analysis shows that the lens material and lens shape do not meaningfully contribute

to the shape of the Petzval surface in the case of the two transmit boards under comparison,” so

“his analysis shows that the transmit lenses [are] substantially similar in terms of their overall

optical properties” (see, e.g., Dkt. No. 1634-4 at 18–19). But asserted trade secret number 96,

as broad as it is, has nothing to do with the “optical properties” of any transmit lens. Rather,

what supposedly matters is the along the Petzval surfaces,

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 This is consistent with other responses by both sides showing that their LiDAR systems share neither

similar nor a similar strategy (see, e.g., Dkt. Nos. 1458-5, 1461-5).

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which . Even with Dr.

Hesselink’s overlay of the scaled Petzval surfaces, however, it is apparent from his own graphs

that the where Waymo and Uber’s fall on the overlaid Petzval surface

do not overlap at all (see Dkt. No. 1456-3 ¶ 23).4

Nevertheless, Dr. Hesslink concluded (id. ¶ 24 (emphasis added)):

This comparison allows evaluation of whether the 

from the Uber system Waymo parabola. They do, as

reflected by the fact that the curves are quite similar. The 

 are similar as well, but not identical, reflecting that Uber

took a similar approach to Waymo in designing their .

In other words, Dr. Hesselink manufactured a visually-similar match between the Petzval

surfaces of Waymo and Uber’s respective transmit lenses, and then tried to suggest that this

visually-similar match in Petzval surfaces somehow translated to similar . 

And despite acknowledging that the are “not identical” even on the scaled and

overlaid curves, he parroted, with no additional analysis, Waymo’s unsupported litigation

position that Uber “took a similar approach to Waymo in designing their .”

To repeat, two identical lenses will always have identical Petzval surfaces — always. 

That proves nothing for Waymo. What matters with respect to asserted trade secret number 96

is Petzval surfaces the in Waymo and Uber’s respective LiDAR systems

. Of course, all somewhere on the Petzval surface —

otherwise they . But, as stated, Uber’s accused PCB while

Waymo’s claimed PCB (see, e.g., Dkt. No. 1357-3 at 24). Moreover, the 

of Uber’s did not overlap with any on Waymo’s claimed PCB, and the

 for each side produced dramatically different .

Dr. Hesselink’s emphasis on the similarity of the Petzval surfaces is a trick — smoke

and mirrors. His inexplicable leap from that similarity to the conclusion that Uber “took a

similar approach to Waymo in designing their ” — despite all the aforementioned

differences between the two sides’ approaches — renders his opinion unreliable,

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and thus inadmissible, under Federal Rule of Evidence 702 and Daubert v. Merrell Dow

Pharmaceuticals, Inc., 509 U.S. 579, 597 (1993). See Gen. Elec. Co. v. Joiner, 522 U.S. 136,

146 (1997) (a district court may exclude an expert opinion where “there is simply too great an

analytical gap between the data and the opinion proffered”). Moreover, his suggestion that the

overlap of the Petzval surfaces — which, of course, are visually similar — somehow constitutes

evidence that Uber misappropriated Waymo’s strategy would be grossly

misleading to the jury, more prejudicial than probative, and thus inadmissible under FRE 403 as

well. Dr. Hesselink’s opinion as to asserted trade secret number 96 is therefore STRICKEN.

In short, summary judgment is appropriate as to asserted trade secret number 96 because

(1) it was inadequately disclosed at the outset of this litigation, (2) Waymo’s evidence of

misappropriation by defendants relied upon an unreliable expert opinion that would be more

prejudicial than probative to the jury, (3) insofar as Waymo reformed its asserted trade secret to

resurrect asserted trade secret number one, it is rejected again as “Optics 101,” and (4) the

evidentiary record shows that even under Waymo’s reformed version of asserted trade secret

number 96, there is no genuine dispute of material fact that defendants use neither Waymo’s

 nor its strategy. Defendants’ motions to strike

and for summary judgment as to asserted trade secret number 96 are therefore GRANTED.

CONCLUSION

For the foregoing reasons, plaintiff’s motion is GRANTED IN PART and DENIED IN PART. 

Defendants’ motion is also GRANTED IN PART and DENIED IN PART. Defendants’ motions to

strike and for summary judgment as to asserted trade secret number 96 are GRANTED.

IT IS SO ORDERED.

Dated: October 30, 2017. 

WILLIAM ALSUP

UNITED STATES DISTRICT JUDGE

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