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August 15, 2017 

The Honorable William Alsup 

United States District Judge 

United States District Court 

Northern District of California 

450 Golden Gate Avenue 

San Francisco, CA 94102 

Re: Waymo LLC v. Uber Technologies, Inc. et al., Case No. 3:17-cv-00939 

Dear Judge Alsup: 

Defendants Uber Technologies, Inc. and Ottomotto LLC (“Uber”) submit the attached letter 

requesting permission to file a motion for summary judgment. 

Respectfully submitted, 

Arturo J. González 

Counsel for Uber Technologies, Inc. 

and Ottomotto LLC 

cc: All Counsel of Record 

Special Master John Cooper 

 REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED 
Honorable William Alsup 

August 15, 2017 

Page Two 

dc-895854 

Pursuant to the Court’s June 7, 2017 Case Management Order (Dkt. 562 ¶ 9), Uber submits 

this precis requesting permission to file a motion for summary judgment (1) of noninfringement of the ’936 patent by a redesign of Fuji’s laser diode firing circuit; (2) of nonuse of Trade Secret No. (“TS”) 7 by a redesign of Fuji’s 

; and (3) that TS 9, TS 13, and TS 14 are not trade secrets. By Waymo’s own definition, 

the redesigned Fuji cannot meet the elements of the ’936 patent or TS 7, and Waymo 

witnesses admit that the claimed elements of TS 9, 13, and 14 are generally known. 

Resolution of these issues on summary judgment would streamline the case before trial. 

Non-infringement of the ’936 Patent. Fuji’s redesigned firing circuit will not infringe the 

’936 patent because it lacks the “inductor” required by all independent claims of the patent, 

which was an essential element that Waymo relied on to distinguish prior art during the 

prosecution of its patent. (Dkt. 23-3, ’936 patent at 28:5-30:35; Ex. 1, Notice of Allowance 

at 2.) In its Court-ordered Statement Regarding Patent Claims, Waymo contended that the 

 of Fuji’s firing circuit meets the “inductor” element of the ’936 patent. 

(Dkt. 825-4 at 4 (figure annotated by Waymo).) 

Without conceding infringement for any past designs, Uber has redesigned Fuji’s firing 

circuit such that it no longer includes the identified by Waymo and Fuji does not 

infringe even under Waymo’s contentions. (Ex. 2, Haslim Dep. 690:4-691:20; Ex. 3, Haslim 

Dep. Ex. 585.) The issue of non-infringement is therefore ripe for decision on summary 

judgment. See Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1308–09 (Fed. 

Cir. 2006) (“[N]othing more” required for summary judgment motion than “stating that the 

patentee had no evidence of infringement and pointing to the specific ways in which accused 

systems did not meet the claim limitations.”). With the removal of the , the 

redesigned Fuji firing circuit cannot meet the “inductor” limitations of the ’936 patent 

claims. 

Non-Use of TS 7. Uber has also redesigned Fuji’s transmit boards so that they could not use 

Waymo’s TS 7. (Ex. 2, Haslim Dep. 690:4-17, Ex. 3, Haslim Dep. Ex. 585.) TS 7 claims a 

LiDAR where the 
Honorable William Alsup 

August 15, 2017 

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.” (Dkt. 25-7 at 6.) As the Court noted, Waymo has retreated to claiming an 

 (Dkt. 426 at 3.) 

Uber contends that TS 7 is a generally known to the public or readily ascertainable, but, 

without conceding those issues, Uber has redesigned Fuji’s transmit PCBs to that the laser 

diodes are . This issue is ripe for summary judgment because, 

as the Court has noted, “there are, broadly speaking, only three possibilities — 

.” (Dkt. 426 at 13.) There can be no dispute that diodes 

 would not use TS 7. 

TS 9, TS 13, and TS 14 Are Not Trade Secrets. TS 9, TS 13, and TS 14 are not trade secrets 

because they are generally known or readily ascertainable from public information. These 

alleged trade secrets are ripe for summary judgment. Though Uber has identified multiple 

known art for TS 9, TS 13, and TS 14, one example for each is provided below. In 

particular, TS 13 and 14 are disclosed by Waymo’s own ’922 patent, which discloses the 

design of its LiDAR. (Dkt. 25-3 at 5.) 

TS 9 claims 

 (Dkt. 25-7 at 8.) As 

Waymo’s own 30(b)(6) designee Pierre Yves Droz conceded that the

 (Ex. 4, Droz Dep. 230:8-20, 232:9-18; see 

also Ex. 5, McCann Dep. 206:8-209:8, 217:16-218:1.) An example of such a public 

disclosure is U.S. Patent No. 5,420,722, which, as depicted below, discloses a “microlens” 

with identical positioning and functionality to , where 

 (Dkt. 298-1, Lebby 

Sur-Reply Decl. ¶¶ 18-20; Dkt. 309-6, ’722 patent.) 

Waymo U.S. Patent No. 5,420,722 

TS 14 claims the technique of by using 
Honorable William Alsup 

August 15, 2017 

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 (Dkt. 25-7 at 11.) Waymo’s 30(b)(6) designee-Droz admitted that 

, and Figure 4 of the ’922 patent discloses these or 

 (marked in red below, left). (Ex. 4, Droz Dep. 208:11-12, 297:12-298:6; see 

also id. at 208:11-12; see also Ex. 6, Ulrich Dep. 263:7-24; Ex. 7, Ulrich Dep. Ex. 1115, Fig. 

4.) Furthermore, U.S. Patent No. 4,244,109 discloses “photodiodes . . . mounted on the PCB 

in alignment with the two holes.” (Dkt. 298-1, Lebby Sur-Reply Decl. ¶¶ 65-66.) 

Excerpt from Fig. 4 of ’922 patent Excerpt from Fig. 3B of ’922 patent 

TS 13 claims the use of (Dkt. 25-7 at 11). Waymo’s 30(b)(6) designee 

Mr. Droz testified that and the “

.” (Ex. 4, Droz Dep. 192:1-5, 192:22-

24.) Mr. Droz also testified that TS 13’s claimed were used in Waymo’s 

GBr2. (Ex. 4, Droz Dep. 189:11-190:6, 191:17-20, 192:1-10; Ex. 6, Ulrich Dep. 255:11-

256:3, Ex. 7, Ulrich Dep. Ex. 1115, Fig. 3B.) The design is disclosed in the ’922 

patent. (Dkt. 25-3 at 5.) As illustrated above, Figure 3B of the ’922 patent discloses the use 

of that (marked in red) as claimed by TS 13. 

This Court has explained that “general engineering principles that are simply part of the 

intellectual equipment of technical employees” are not protectable trade secrets. (Dkt. 426 at 

17.) As this Court has noted regarding the instances of known art that defendants’ experts 

must identify, “[t]o prove a positive, one example will suffice.” Atmel Corp. v. Info. Storage 

Devices, Inc., 189 F.R.D. 410, 418 (N.D. Cal. 1999). With these examples of known art and 

admissions from Waymo’s witnesses, TS 9, 13, and 14 are ripe for summary judgment.