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WAYMO’S COUNTER-CRITIQUE OF TENTATIVE JURY INSTRUCTIONS ON TRADE SECRETS (DKT. 2010)

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 COUNTERCRITIQUE OF DEFENDANTS’ CRITIQUE 

AND PROPOSED ADDITIONS (DKT. 2076) 

TO TENTATIVE JURY INSTRUCTIONS 

ON TRADE SECRET 

MISAPPROPRIATION AND TENTATIVE 

SPECIAL VERDICT FORM (ON 

MISAPPROPRIATION CLAIMS) (DKT. 

2010)

Judge: The Honorable William Alsup

Trial Date: December 4, 2017

Case 3:17-cv-00939-WHA Document 2130 Filed 10/27/17 Page 1 of 7
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WAYMO’S COUNTER-CRITIQUE OF TENTATIVE JURY INSTRUCTIONS ON TRADE SECRETS (DKT. 2010)

Waymo submits the following counter-critique of Defendants’ critique and proposed additions 

(Dkt. 2076) (“Defendants’ Critique” or “DC”) to the TJIs and Form (Dkt. 2010).1 

I. INSTRUCTIONS ON MISAPPROPRIATION BY DISCLOSURE SHOULD BE 

GIVEN (TJI##2 & 9; FORM##1 & 2).

Under both the CUTSA and DTSA, misappropriation by disclosure is an independent basis for 

liability and damages. Dkt. 2077 at 1. Waymo has repeatedly asserted disclosure as a basis for 

liability, including in the Joint Proposed Pretrial Order. Dkt. 1725 at 1. The jury should be instructed 

accordingly. In response, Defendants argue that Waymo’s damages expert calculates damages solely

based on alleged use, and thus the jury may not award damages based on disclosure. DC at 1. But the 

expert reports are irrelevant, as expert testimony is not required for a jury to award damages:

In addition, expert testimony may not be necessary for the jury to award reasonable 

royalty damages. Courts have provided several criteria to determine whether a plaintiff 

is entitled to a reasonable royalty. See, e.g., LinkCo, Inc., 232 F.Supp.2d at 187, n. 

7; Georgia–Pacific Corp., 318 F.Supp. at 1120; Vermont Microsystems, 88 F.3d at 

151–52 (citing University Computing Co. v. Lykes–Youngstown Corp., 504 F.2d 518, 

539 (5th Cir.1974)) (“To approximate the parties’ agreement, had they bargained in 

good faith at the time of the misappropriation, the trier of fact should consider such 

factors as the resulting and foreseeable changes in the parties' competitive posture; the 

prices past purchasers or licensees may have paid; the total value of the secret to the 

plaintiff, including the plaintiff’s development costs and the importance of the secret to 

the plaintiff's business; the nature and extent of the use the defendant intended for the 

secret; and finally whatever other unique factors in the particular case which might 

have affected the parties’ agreement, such as the ready availability of alternative 

processes.”). These cases demonstrate that expert testimony is not required for a jury 

to award damages, although expert testimony may be a factor in their analysis. The 

Court finds that the jury can determine whether there is sufficient evidence the award 

of a lump-sum award or other royalty. Id.

Secure Energy, Inc. v. Coal Synthetics, LLC, 708 F. Supp. 2d 923, 933 (E.D. Mo. 2010) (Missouri 

UTSA case); see also Spin Master, Ltd. v. Zobmondo Ent., LLC, 2011 WL 13127349, at *10, n.22 

(C.D. Cal. Sept. 15, 2011) (subsequent history omitted) (quoting Secure Energy for the abovedescribed proposition). Moreover, the jury could reasonably conclude that Defendants’ disclosure of 

Waymo’s trade secrets was a substantial factor in causing Waymo to suffer the use-based damages 

calculated by Waymo’s damages expert. For example, the jury may reasonably conclude that 

 

1

 Unless otherwise noted, capitalized terms are as defined in Waymo’s Critique of the TJIs and 

Form (Dkt. 2077) and Waymo objects to each request and assertion of law or fact in Defendants’ 

Critique, reserving its right to assert additional objections when the Court specifies. Waymo also 

renews its request for the instructions Waymo proposed in the Joint PJIs.

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Ottomotto’s disclosure of a trade secret to Uber is a substantial factor in causing unjust enrichment 

damages based on Uber’s subsequent use. In that circumstance, the jury could consider Ottomotto’s 

disclosure as contributing to Uber’s unjust enrichment in more than a remote or trivial way, which is 

all that is required for liability. See TJI#15. 

II. INSTRUCTIONS ON MISAPPROPRIATION BY ACQUISITION SHOULD BE 

GIVEN (TJI##2, 9 & 12; FORM##1 & 2).

Misappropriation by acquisition is an independent basis for liability and damagesthat Waymo 

has pled. See Dkt. 2077 at 1-2. Moreover, as explained above, the jury does not need expert 

testimony to award damages based on misappropriation by acquisition, and may in fact base such a 

finding on expert testimony regarding use-based damages so long as it connects the acquisition to the 

use-based damages at issue. See supra § I. The jury should thus be instructed on acquisition. 

III. TJI#12 SHOULD BE GIVEN AND DEFENDANTS’ PROPOSED 

MODIFICATIONS SHOULD BE REJECTED (TJI#12).

TJI#12 is an important and necessary instruction to mitigate potential jury confusion, error, 

and prejudice to Waymo. Defendants argue that TJI#12 should not be given because (i) an agent’s 

knowledge of a trade secret cannot be imputed to a principal and (ii) acquisition is not properly before 

the jury. See DC at 2. Alternatively, Defendants argue that TJI#12 should be amended. These 

arguments should be rejected.

First, TJI#12 already reflects that Waymo bears the burden of proving that MoFo or Stroz 

acquired “a trade secret as an agent of a defendant....” Dkt. 2010 at 6 (“if Waymo proves...”)

(emphasis added). Defendants’ proposed amendment would place the additional burden on Waymo to 

show that MoFo or Stroz was “under an obligation to disclose the details of the Alleged Trade Secret 

to” a defendant. DC at 3 (emphasis added). Waymo has no burden under the law to prove the 

existence of such a positive obligation. Rather, as anticipated by TJI#12, if Waymo meets its burden

of proving an agency relationship, Defendants may counter with an affirmative defense—for which 

they bear the burden—that “the agent owes a duty to another not to disclose the fact to the principal.” 

Dkt. 824 at 1-2 (citation omitted) (emphasis in original). Defendants have provided no support for the 

proposition that Waymo should bear this burden, which runs contrary to the general rule this Court has 

previously noted. See DC at 3-4; see also 07/26/17 Hr’g Tr. at 23:10-13 (The Court: “Normally what

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WAYMO’S COUNTER-CRITIQUE OF TENTATIVE JURY INSTRUCTIONS ON TRADE SECRETS (DKT. 2010)

would happen is the jury is sitting over there. Waymo invokesthe general rule, puts the onus on you to 

prove the exception.”) (emphasis added); id. at 44:11 (The Court: “How are [Defendants] going to 

prove that [the agent’s revealing trade secret information to the Defendants] did not occur?”). 

Second, there is no need to “clarify” that Waymo bears the burden of proving that the materials 

received by Stroz or MoFo are trade secrets as TJI#12 already references “Alleged Trade Secrets” 

whose definition requires such proof. See TJI#2. Defendants’ proposal is repetitive and prejudicial.

Third, similarly, there is no need to modify TJI#12 to add “improperly” before “acquired”

because TJI#10 instructs the jury that “acquisition” can occur only through improper means. Again, 

Defendants’ proposal is unnecessary, repetitive, and prejudicial. 

Fourth, Defendants’ additional sentence describing “acquisition” as “pointed conduct by the 

Defendant intended to gain or obtain as its own, or to gain the ownership of, the trade secret” is 

unnecessary, confusing, and contrary to law. See DC 3-5 (emphasis added). It improperly focuses on 

the principal’s intent, rather than its agent’s, which is the point of imputation. Similarly, while 

Defendants may argue that possession of the stolen materials is not “acquisition,” instruction as to one 

possible fact pattern that might not constitute misappropriation is unnecessary and highly prejudicial. 

See Dkt. 1729 at 15 (addressing Joint JPI at 43—namely, Defendants’ proposed instruction on 

“passive or inadvertent receipt” of trade secret information). This is particularly true as Waymo 

contends that this instruction should include Mr. Levandowski as Defendants’ agent. See Joint JPIs at 

46-47. Most importantly, Defendants’ proposed addition—a dictionary definition cited by a court 

which was not instructing a jury—provides little clarity on the meaning of “acquires.” See DC at 4-5 

(quoting Silvaco Data Sys. v. Intel Corp., 184 Cal. App. 4th 210, 222–23 (Cal. Ct. App. 2010)

(subsequent history omitted)). Rather, it raises more questions regarding the definitions of “pointed 

conduct,” “gaining the ownership,” or even the term “acquire” itself. By contrast, TJI#10 actually 

defines “improper” acquisition—no more is necessary. 

Fifth, Defendants rely on Droeger v. Welsh Sporting Goods Corp., 541 F.2d 790 (9th Cir. 

1976), to argue that an agent’s knowledge cannot be imputed to a principal, DC at 2-3 (citing Dkt. 

1735 at 50–51; Dkt. 824 at 2–8), and imputation should only be found where there is actual 

communication of the trade secret to the principal, DC at 5-6. But Droeger is inapposite. Droeger

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WAYMO’S COUNTER-CRITIQUE OF TENTATIVE JURY INSTRUCTIONS ON TRADE SECRETS (DKT. 2010)

was decided 41 years ago under common law, before the enactment of the CUTSA, which specified

that both “acquisition” and “disclosure” are equal and alternate bases for liability. SeeCal. Civ. Code 

§ 3426.1(b)(1)-(2); see also 18 U.S.C. § 1839(5)(A)-(B) (equivalent under the DTSA). Defendants’ 

attempt to read out of the statute two of the three paths to misappropriation without winning, or even 

seeking summary judgment or judgment as a matter of law, must be rejected. See supra §§ I & II. In

addition, the agent in Droeger acquired the secret through legitimate means; the jury in Droeger did 

not find, as the jury may here, that the principal knew or should have known that its agent had 

acquired the trade secrets through improper means or disclosed the same. 541 F.2d at 791. And 

finally, Defendants’ reading would yield absurd results by, for instance, exempting from liability 

principals who expressly authorized their agents to acquire and/or disclose trade secrets to a third 

party (for money or otherwise), so long as the principals themselves did not actually receive them. 

That is not the law. 

IV. OTTO TRUCKING SHOULD NOT BE DELETED FROM TJI#13.

Otto Trucking should not be removed from TJI#13. Instead, “employees . . . of Otto 

Trucking” should be replaced by “founders, principals, or managing members of Otto Trucking” to 

reflect that Otto Trucking can be directly and vicariously liable for actions taken by those parties, see 

Dkt. 2056 at 1, 11-16. 

V. DEFENDANTS’ PROPOSAL REGARDING THE MEASURE OF RECOVERY 

MUST BE MODIFIED AND SHOULD CONFORM TO THE EVIDENCE (TJI#17).

Defendants’ proposed measure of recovery is flawed in several respects. First, it improperly

excludes an entire measure of recovery—namely, reasonable royalty damages available from the jury

under the DTSA. See Dkt. 2077 at 4-9. Second, instructing the jury to determine the “dollar” value of 

the benefit incorrectly and prejudicially implies that a defendant cannot be unjustly enriched other 

than by receipt of a direct pecuniary benefit. This is not the law, which also recognizes non-pecuniary

benefits, even if these are later boiled down by the jury to set amounts. Third, there is no need to 

depart from the first sentence of the 2017 edition of CACI 4410’s unjust enrichment instruction based 

on one unpublished 20-year old Federal Circuit opinion. CACI’s drafters had ample time to consider 

that opinion, and indeed, CACI 4410 already reflects that the benefit must be one “that would not have 

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WAYMO’S COUNTER-CRITIQUE OF TENTATIVE JURY INSTRUCTIONS ON TRADE SECRETS (DKT. 2010)

been achieved except for [defendant’s] misappropriation.” Moreover, Defendants apparently 

misunderstand Waymo’s position, as Waymo does not contend that unjust enrichment damages may

be based on unrealized, hypothetical benefits. See Waymo’s forthcoming Response to Dkt. 2050.

Fourth, even if the Court determines that University Computing v. Lykes-Youngstown, 504 F.2d 518

(5th Cir. 1974) and its progeny no longer apply under the CUTSA, and unjust enrichment is not 

measured from the time of first misappropriation, there is no indication that similar considerations 

apply to the DTSA. Accordingly, the Court should give separate instructions on the measure of 

damages under the CUTSA and DTSA. Finally, this instruction would be most useful to the jury if 

tailored to the evidence actually presented at trial. See Dkt. 2077 at 10. 

VI. DAMAGES SHOULD NOT BE ITEMIZED BY TRADE SECRET (TJI##16 & 18).

Trade secret damages do not need to be calculated on a trade secret-by-trade secret basis:

Defendants first argue that the damages award is speculative because there was no 

testimony regarding how to apportion damages on a trade secret-by-trade secret basis.

(Def.’s Mot. at 2.) In trade secrets claims, however, damages need not be calculated 

with absolute precision. Tri–Tron Int’l v. Velto, 525 F.2d 432, 437 (9th Cir.1975) 

(“The general rule that prohibits evidence of speculative profits does not apply to 

uncertainty as to the amount of the profits which would have been derived, but to 

uncertainty or speculation as to whether loss of profits was the result of the wrong and 

whether any such profits would have been derived at all.”) (emphasis added); see 

also Trade Secrets Practice in California (Cont.Ed.Bar 2nd ed.1996), § 12.20, pp. 438–

39 (“Although the plaintiff must prove damages, complete precision is not required.

Evidence of speculative profits, speculative lost profits, or speculation as to 

the existence of damages are improper, but once the existence of damages or lost 

profits has been established, the courts are much more lenient in determining 

the amount of damages.” (citations omitted). Damages need only rest on a “reasonable 

basis” (Tri–Tron, 525 F.2d at 436; see also Stott v. Johnston, 36 Cal.2d 864, 874, 229 

P.2d 348 (1951); American Loan Corp. v. California Commercial Corp., 211 

Cal.App.2d 515, 524, 27 Cal.Rptr. 243 (1963)), and unless “the amount is grossly 

excessive or monstrous, clearly not supported by the evidence, or based only on 

speculation or guesswork,” the jury’s award must be upheld. Los Angeles Memorial 

Coliseum Comm'n v. NFL, 791 F.2d 1356, 1360 (9th Cir.1986); see also Zhang v. Am. 

Gem Seafoods, Inc., 339 F.3d 1020, 1040 (9th Cir.2003).

ATS Prod. Inc. v. Ghiorso, 2012 WL 253315, at *1 (N.D. Cal. Jan. 26, 2012). Here, Form##5 and 6

already require jurors to apportion damages between (i) dollar amounts and (ii) days for each of three 

Defendants. Subdividing damages further by individual trade secret would compel jurors to compute 

damages in both dollars and days for nine trade secrets, with distinct awards for three companies—a 

total of fifty-four separate lines. A verdict form of this length and complexity is burdensome, 

confusing, and not required by law. 

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WAYMO’S COUNTER-CRITIQUE OF TENTATIVE JURY INSTRUCTIONS ON TRADE SECRETS (DKT. 2010)

DATED: October 27, 2017 QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Charles K. Verhoeven

Charles K. Verhoeven

Attorneys for WAYMO LLC

Case 3:17-cv-00939-WHA Document 2130 Filed 10/27/17 Page 7 of 7