DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

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 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Telephone: 415.268.7000 

Facsimile: 415.268.7522 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, and OTTO TRUCKING LLC 

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, 

Defendants. 

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

DEFENDANTS’ UBER 

TECHNOLOGIES, INC., 

OTTOMOTTO LLC, AND OTTO 

TRUCKING LLC’S OPPOSITION TO 

PLAINTIFF WAYMO LLC’S 

MOTION FOR PRELIMINARY 

INJUNCTION 

Date: May 3, 2017 

Time: 7:30 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William H. Alsup 

Trial Date: October 2, 2017

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 1 of 32
TABLE OF CONTENTS 

Page 

DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

INTRODUCTION .......................................................................................................................... 1

FACTS ............................................................................................................................................ 3

I. UBER IS THE LEADER IN THE RIDE-SHARING INDUSTRY ................................... 3

II. UBER INDEPENDENTLY DEVELOPED ITS OWN LIDAR TECHNOLOGY ............ 3

III. UBER’S FUJI LIDAR IS SUBSTANTIALLY DIFFERENT FROM WAYMO’S 

 LIDAR ..................................................................................................................... 5

ARGUMENT .................................................................................................................................. 7

I. LEGAL STANDARD ......................................................................................................... 7

II. WAYMO IS UNLIKELY TO SUCCEED ON THE MERITS OF ITS TRADE 

SECRET MISAPPROPRIATION, PATENT INFRINGEMENT, AND UNFAIR 

BUSINESS PRACTICES CLAIMS ................................................................................... 7

A. Waymo Is Not Likely to Prevail on Its Trade Secrets Claims. ............................... 7

1. Defendants Did Not Improperly Acquire Any Alleged Confidential 

Information. ................................................................................................. 8

 ....................................................................... 14

B. Waymo Is Not Likely to Prevail On Its Patent Claims. ........................................ 16

1. Uber’s Fuji Design Does Not Infringe the ’922 Patent. ............................ 16

2. Uber’s Fuji Design Does Not Infringe the ’464 Patent. ............................ 17

III. WAYMO HAS FAILED TO SHOW IRREPARABLE INJURY. ................................... 17

A. There is No Presumption of Irreparable Harm. ..................................................... 18

B. Waymo Relies Solely on Speculative and Unsupported Harm. ............................ 19

C. Waymo’s Delay in Filing This Action Refutes the Alleged Irreparable 

Harm. ..................................................................................................................... 21

IV. THE BALANCE OF HARDSHIPS STRONGLY DISFAVORS AN 

INJUNCTION. .................................................................................................................. 22

V. THE PUBLIC INTEREST DISFAVORS AN INJUNCTION ......................................... 24

CONCLUSION ............................................................................................................................. 25

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 2 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

TABLE OF AUTHORITIES 

 Page(s) 

Cases 

AccuImage Diagnostics Corp. v. Terarecon, Inc., 

260 F. Supp. 2d 941 (N.D. Cal. 2003) ........................................................................................7 

Advanced Instructional Systems, Inc. v. Competentum USA, Ltd., 

No. 1:15CV858, 2015 WL 7575925 (M.D.N.C. Nov. 25, 2015) .............................................19 

Advanced Rotorcraft Tech., Inc. v. L-3 Commc’ns Corp., 

No. C 06-06470 WHA, 2007 WL 437682 (N.D. Cal. Feb. 6, 2007) ........................................24 

All. for the Wild Rockies v. Cottrell,

632 F.3d 1127, 1135 (9th Cir. 2011) ...........................................................................................7 

Am. Trucking Ass’ns, Inc. v. City of Los Angeles, 

559 F.3d 1046 (9th Cir. 2009) .....................................................................................................7 

Bayer Corp. v. Roche Molecular Sys., Inc., 

72 F. Supp. 2d 1111 (N.D. Cal. 1999) ................................................................................12, 22 

Blackmon v. Tobias, 

No. C 11-2853 SBA, 2011 WL 2445963 (N.D. Cal. June 16, 2011) .......................................21 

Bladeroom Grp. Ltd. v. Facebook, Inc., 

No. 5:15-cv-01370-EJD, 2015 WL 8028294 (N.D. Cal. Dec. 7, 2015) ...................................11 

Caribbean Marine Servs. Co. v. Baldrige, 

844 F.2d 668 (9th Cir. 1988) .....................................................................................................17 

Cent. Valley Gen. Hosp. v. Smith, 

162 Cal. App. 4th 501 (2008) .....................................................................................................9 

Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 

908 F.2d 951 (Fed. Cir. 1990) .....................................................................................................7 

Delphon Indus. LLC v. Int’l Test Sols., Inc.

No. 11-CV-1338-PSG, 2011 WL 4915792 (N.D. Cal. Oct. 17, 2011) .....................................20 

Dep’t of Parks & Recreation v. Bazaar Del Mundo Inc., 

448 F.3d 1118 (9th Cir. 2006) ...................................................................................................17 

eBay Inc. v. MercExchange, L.L.C., 

547 U.S. 388 (2006) ............................................................................................................18, 19 

Edwards v. Arthur Andersen LLP, 

44 Cal. 4th 937 (2008) ..............................................................................................................25 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 3 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

In re Excel Innovations, Inc., 

502 F.3d 1086 (9th Cir. 2007) ...................................................................................................19 

Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 

654 F.3d 989 (9th Cir. 2011) ...............................................................................................18, 19 

FLIR Sys., Inc. v. Parrish, 

174 Cal. App. 4th 1270 (2009) ...................................................................................................9 

Friends of the Wild Swan v. Weber, 

767 F.3d 936 (9th Cir. 2014) .....................................................................................................17 

Garcia v. Google, Inc., 

786 F.3d 733 (9th Cir. 2015) (en banc) .....................................................................................21 

GSI Tech., Inc. v. United Memories, Inc., 

No. C 13-1081 PSG, 2013 WL 12172990 (N.D. Cal. Aug. 21, 2013) .....................................18 

Hanginout, Inc. v. Google, Inc., 

54 F. Supp. 3d 1109 (S.D. Cal. 2014) .......................................................................................21 

Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 

736 F.3d 1239 (9th Cir. 2013) ...................................................................................................18 

Hiramanek v. Clark, 

No. C-13-0228 EMC, 2013 WL 5082640 (N.D. Cal. Sept. 13, 2013) .....................................21 

Hologic, Inc. v. Senorx, Inc., 

No. C-08-00133 RMW, 2008 WL 1860035 (N.D. Cal. Apr. 25, 2008) ...................................21 

Jack Guttman, Inc. v. Kopycake Enters., Inc., 

302 F.3d 1352 (Fed. Cir. 2002) ...................................................................................................7 

Kahala Franchising LLC v. Kim, 

No. CV 13-02933-MWF, 2013 WL 12086126 (C.D. Cal. July 10, 2013) ...............................18 

Kwan Software Eng’g, Inc. v. Foray Techs., LLC, 

No. C 12-03762 SI, 2013 WL 244999 (N.D. Cal. Jan. 22, 2013), 

aff’d, 551 F. App’x 298 (9th Cir. 2013) ....................................................................................21 

Lamb-Weston, Inc. v. McCain Foods, Ltd., 

941 F.2d 970 (9th Cir. 1991) .....................................................................................................19 

Larsen v. City of San Carlos, 

No. 14-CV-04731-JD, 2014 WL 5473515 (N.D. Cal. Oct. 28, 2014) ......................................21 

Lear, Inc. v. Adkins, 

395 U.S. 653 (1969) ..................................................................................................................24 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 4 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Leatt Corp. v. Innovative Safety Tech., LLC, 

No. 09-CV-1301-IEG (POR), 2010 WL 1526382 (S.D. Cal. Apr. 15, 2010) ..........................22 

Mazurek v. Armstrong, 

520 U.S. 968 (1997) ....................................................................................................................7 

McCormack v. Hiedeman, 

694 F.3d 1004 (9th Cir. 2012) ...................................................................................................24 

Mitigation Techs., Inc. v. Pennartz, 

No. ED CV 14-01954-AB, 2015 WL 12656936 (C.D. Cal. Mar. 13, 2015) ............................22 

Nationwide Life Ins. Co. v. Richards, 

541 F.3d 903 (9th Cir. 2008) .......................................................................................................2 

Netlist Inc. v. Diablo Techs. Inc, 

No. 13-CV-05962-YGR, 2015 WL 153724 (N.D. Cal. Jan. 12, 2015) ....................................19 

Oakland Tribune, Inc. v. Chronicle Publ’g Co., 

762 F.2d 1374 (9th Cir. 1985) ...................................................................................................21 

On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer, GMBH, 

386 F.3d 1133 (Fed. Cir. 2004) .................................................................................................11 

Perfect 10, Inc. v. Google Inc., 

2005 WL 4705034 (C.D. Cal. Sept. 30, 2005) ..........................................................................21 

Pixon Imaging, Inc. v. Empower Techs. Corp., 

No. 11-CV-1093-JM (MDD), 2011 WL 3739529 (S.D. Cal. Aug. 24, 2011) ..........................19 

Precision Automation, Inc. v. Tech. Servs., Inc.,

No. 07-CV-707-AS, 2007 WL 4480739 (D. Or. Dec. 14, 2007) ..............................................18 

Se. X-Ray, Inc. v. Spears, 

929 F. Supp. 2d 867 (W.D. Ark. 2013) .....................................................................................18 

Stanley v. Univ. of S. Cal., 

13 F.3d 1313 (9th Cir. 1994) .....................................................................................................20 

Sunbelt Rentals, Inc. v. Victor, 

No. C 13-4240 SBA, 2014 WL 492364 (N.D. Cal. Feb. 5, 2014) ........................................9, 25 

Titan Tire Corp. v. Case New Holland, Inc., 

566 F.3d 1372 (Fed. Cir. 2009) .................................................................................................16 

Trebro Mfg., Inc. v. Firefly Equip., LLC, 

748 F.3d 1159 (Fed. Cir. 2014) ...................................................................................................7 

V’Guara Inc. v. Dec, 

925 F. Supp. 2d 1120 (D. Nev. 2013) .......................................................................................18 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 5 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Whyte v. Schlage Lock Co., 

101 Cal. App. 4th 1443 (2002) .................................................................................................25 

Winston Research Corp. v. Minnesota Min. & Mfg. Co., 

350 F.2d 134 (9th Cir. 1965) ...............................................................................................12, 14 

Winter v. Nat. Res. Def. Council, Inc., 

555 U.S. 7 (2008) ..................................................................................................................7, 17 

Yamashita v. Wilbur-Ellis Co., 

No. C 06-01690 WHA, 2006 WL 1320470 (N.D. Cal. May 15, 2006) ..............................24, 25 

Zodiac Pool Sys., Inc. v. Aquastar Pool Prods., Inc., 

No. 13cv343-GPC (WMC), 2013 WL 690616 (S.D. Cal. Feb. 22, 2013) ................................20 

Statutes 

18 U.S.C. § 1836 ...............................................................................................................................7 

18 U.S.C. § 1839(5) ..........................................................................................................................8 

18 U.S.C. § 1839(6) ....................................................................................................................8, 11 

CAL. BUS. & PROF. CODE §§ 16600-16601 .....................................................................................25 

Cal. Civ. Code § 3426.1(a)..........................................................................................................8, 11 

Cal. Civ. Code § 3426.1(b) ...............................................................................................................8 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 6 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 1

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

INTRODUCTION 

Uber1 has been a visionary in the transportation industry since 2009, effectively creating 

the concept of ride-sharing and pioneering other innovative solutions in transportation. Since late 

2014, Uber has been one of the companies leading the charge in self-driving technology, 

investing hundreds of millions of dollars in unique technology and hiring the best and brightest in 

the field. Uber created a revolution in the ride-sharing space through hard work, creativity, and 

pride in its own innovation. It is this same philosophy and drive that Uber is now applying to its 

work on self-driving vehicles. 

Waymo’s2

 preliminary injunction motion is a misfire. Both of its central premises—that 

former Waymo employees brought thousands of confidential Waymo documents to Uber to build 

a copycat LiDAR and that Uber’s LiDAR closely mimics Waymo’s single-lens design—are 

demonstrably false. A search of Uber’s computers has not yielded any of the 14,000 files Waymo 

alleges that Uber misappropriated. Uber made sure to have policies and practices in place to 

prevent misappropriation, and these measures have worked. 

The self-proclaimed innovation of Waymo’s LiDAR is its single-lens design, touted by 

Waymo as a “game-changer.” Uber’s LiDAR design is fundamentally different; it is, instead, a 

four-lens design, with two lenses for transmitting laser light and two for receiving it. This fact 

alone demonstrates the misguided nature of Waymo’s request for “extraordinary and drastic 

relief.” Waymo took one Uber schematic (inadvertently sent to a Waymo employee) and made 

several assumptions based on that one document to conclude that Uber’s LiDAR used a 

single-lens design. Waymo could not be more wrong, and Uber’s design could not be more 

different. And no wonder—Uber’s LiDAR was developed by a different team, using a different 

beam pattern, and leveraging different know-how. 

And this is not the only fundamental difference between the two designs. Uber’s design 

uses two optical cavities, compared to just one cavity in Waymo’s unit. Importantly, Uber began 

developing its LiDAR design before it hired Anthony Levandowski. Waymo cannot show that 

 1

 “Uber” refers to Uber Technologies, Inc., Ottomotto LLC, and Otto Trucking LLC. 

2

 “Waymo” refers to Waymo LLC, Google Inc., and Alphabet Inc. 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 7 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 2

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Uber misappropriated Waymo’s trade secrets or infringed Waymo’s patents. A cursory 

inspection of Uber’s LiDAR and Waymo’s allegations fall like a house of cards. 

And there is more: Waymo has been sitting on the information that underpins its 

allegations of downloads of Waymo documents since October, but filed suit only in February and 

filed this motion only in March. Waymo’s delay militates strongly against granting an injunction. 

Moreover, there is no commercial urgency—Uber’s LiDAR is still in development, and 

 

To be sure, Uber finds itself in a complicated situation: it is unambiguously developing 

its own technology independent of Waymo, but its employee Mr. Levandowski is accused of 

downloading 14,000 files from Waymo before he joined Uber. Uber is blocked at this stage from 

providing an explanation against that accusation because Mr. Levandowski has asserted his Fifth 

Amendment constitutional rights. Faced with Mr. Levandowski’s assertion of his constitutional 

privileges, the Court has stated that it is considering entering an injunction. Such an injunction is 

not necessary against Uber because there is no evidence that any downloaded files ever made it 

onto Uber’s systems. Even if the Court disagrees as to the need for some injunction, given the 

current facts—and more to come after Uber conducts further searches, and Waymo deposes Uber 

employees who can attest to never seeing, much less using, Waymo files at Uber—the Court 

should not enjoin Uber’s independent research on important new technology. 

The Court also should not draw an adverse inference that Uber engaged in wrongdoing 

with respect to trade secrets by virtue of Mr. Levandowski’s assertion of his rights. Whether to 

draw an adverse inference is a question that must be examined on a “case-by-case basis under the 

microscope of the circumstances of that particular civil litigation.”3

 It is not permissible to draw 

an adverse inference unless there is “independent evidence of the fact about which” an individual 

declines to testify.4 The record here shows that no independent evidence of the alleged use of 

trade secrets exists. On the contrary, the record shows that Uber never possessed—and never 

used—any information Mr. Levandowski allegedly took from Waymo. 

 3 Nationwide Life Ins. Co. v. Richards, 541 F.3d 903, 912 (9th Cir. 2008). 4 Id. 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 8 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Finally, there is the other side of the equation—the harm to Uber and to the public—if 

Waymo’s motion is granted. To hinder Uber’s continued progress in its independent 

development of an in-house LiDAR that is fundamentally different than Waymo’s, when Uber 

has not used any of Waymo’s trade secrets, would impede Uber’s efforts to remain a viable 

business, stifle the talent and ingenuity that are the primary drivers of this emerging industry, and 

risk delaying the implementation of technology that could prevent car accidents. Ultimately, that 

would be harmful to the public. When all factors are considered, the scales of justice tilt heavily 

in favor of denying this motion. 

FACTS 

I. UBER IS THE LEADER IN THE RIDE-SHARING INDUSTRY 

Uber is the pioneer and recognized leader in the urban transportation business. It has the 

world’s largest ride-sharing network, serving more than 55 million monthly active riders in 

574 cities. (Chang Decl. ¶ 4.)5 Founded in 2009, Uber revolutionized transportation when it 

introduced its groundbreaking smartphone app. (Id.) What started as an app to request premium 

black cars in a few metropolitan areas is now changing the logistical fabric of cities around the 

world. (Id.) With the push of a button, riders can now reliably get an affordable ride across 

town.6 Uber has also made carpooling a reality, helping to reduce congestion and pollution. (Id.) 

Seeking to further its mission to deliver safe, accessible, and reliable transportation to the 

world, Uber has built one of the strongest autonomous vehicle engineering groups in the industry, 

leveraging the experience that comes from running ridesharing services in hundreds of cities and 

the data and intelligence that comes from doing 1.2 billion miles on the road every month. (Id.) 

II. UBER INDEPENDENTLY DEVELOPED ITS OWN LIDAR TECHNOLOGY 

In February 2015, Uber began building its autonomous vehicle engineering group by 

partnering with Carnegie Mellon University and establishing its Advanced Technologies Center 

(“ATC”) in Pittsburgh, Pennsylvania. Uber hired Scott Boehmke to research and develop 

autonomous vehicle technology. (Boehmke Decl. ¶ 2.) Mr. Boehmke was never employed by 

 5

(Chang Decl. Ex. 2, https://www.uber.com/our-story/.) 

6

(Chang Decl. Ex. 3 https://newsroom.uber.com/rethinking-transportation.) 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 9 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 4

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Waymo. (Id.) Mr. Boehmke began meeting with LiDAR sensor manufacturers in early 2015. 

(Id. ¶ 4.) On April 17, 2015, Mr. Boehmke prepared his first analysis of the field of view and 

beam spacing requirements for autonomous vehicles. (Id.) He quickly recognized that the 

vertical field of view and resolution requirements for a LiDAR were heavily dependent on the 

speed of the vehicle. (Id. ¶ 6.) As a result, he concluded that it might be necessary to adjust the 

angular spacing in the vertical dimension based on the speed of the vehicle. (Id.) 

In October 2015, Mr. Boehmke reviewed various LiDAR sensors, including 

which could be customized to create a , in which the 

laser diodes that . (Id. ¶ 8.) By 

November 2015, Mr. Boehmke had also decided to use separate lenses for the transmit and 

receive paths. (Id. ¶ 12.) 

By late 2015, Uber had decided to develop a customized LiDAR in partnership with 

—long before Uber’s acquisition of Mr. Levandowski’s company. (Id. ¶ 9.) Between 

November 2015 and March 2016, Mr. Boehmke worked on developing a custom beam pattern for 

a LiDAR suited for Uber’s automotive use. (Id.) In March 2016, Uber’s ATC entered into a 

contract with , which Uber 

would combine into a “dual stack” LiDAR to provide 64-channel resolution, based on Uber’s 

custom beam pattern. (Id.) , but during that time, 

Mr. Boehmke experimented with the positioning and orientation of lasers on as few boards as 

possible for an in-house LiDAR, to simplify alignment and calibration. (Id. ¶¶ 11, 13.) 

In August 2016, Uber acquired Ottomotto, a company co-founded by Anthony 

Levandowski, which originally focused on self-driving trucks. Uber acquired Ottomotto for its 

expert personnel, not trade secrets; in fact, all Ottomotto employees signed offer letters and 

attestations swearing that they would not bring any other company’s trade secrets to Uber or use 

them in connection with their Uber work. To be clear, Uber never had possession of or used any 

of Waymo’s trade secrets or the 14,000 files that Waymo alleges Mr. Levandowski downloaded. 

After Uber’s acquisition of Ottomotto, its existing ATC team merged with Ottomotto’s 

team to form the Advanced Technologies Group (“ATG”). A few months prior, Ottomotto had 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 10 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 5

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

acquired Tyto LiDAR, LLC (“Tyto”), a startup dedicated to developing remote sensing 

technologies for the geospatial industry. The Tyto team, which included James Haslim, who was 

never employed by Waymo, became part of Uber’s self-driving car team. (Haslim Decl. ¶¶ 2-3.) 

The newly minted ATG team at Uber decided to revisit the dual 32-channel diode-based 

LiDAR concept that Mr. Boehmke had worked on in late 2015 and early 2016, for its in-house 

mid-range LiDAR solution. (Boehmke Decl. ¶ 16.) This project was code-named “Fuji,” after 

Mount Fuji. (Haslim Decl. ¶ 5.) On November 4, 2016, Mr. Boehmke provided Mr. Haslim and 

his team with a custom beam pattern for Fuji, based on Mr. Boehmke’s earlier work. (Boehmke 

Decl. ¶ 18; Haslim Decl. ¶ 18.) 

During this development, Mr. Haslim and his team decided to use two cavities for Fuji, to 

allow two laser diodes—one from each cavity—to fire simultaneously. (Haslim Decl. ¶ 8.) The 

team first attempted to place all 32 laser diodes on a single transmit board. (Id. ¶ 11.) Through 

trial and error, they realized that 

 The position and orientation of the diodes on the transmit boards in Fuji were based on the 

custom beam spacing and angles provided by Mr. Boehmke. (Id. ¶ 18.) The Fuji design was 

largely the result of the collaboration between Mr. Boehmke and Mr. Haslim and their teams—

neither of whom ever worked for Waymo. (Boehmke Decl. ¶ 2; Haslim Decl. ¶ 3.) 

Although Uber is developing its own LiDAR, 

. Every single self-driving car that Uber has put on the road to 

date uses commercially available LiDAR sensors from third parties. (Haslim Decl. ¶ 21.) 

III. UBER’S FUJI LIDAR IS SUBSTANTIALLY DIFFERENT FROM WAYMO’S 

 LIDAR 

The Fuji LiDAR system that Mr. Haslim and Mr. Boehmke developed is dramatically 

different from Waymo’s LiDAR in numerous respects, beginning with the fact that is 

a monostatic system (single transmit/receive lens) while Fuji is a dual bistatic system (two 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 11 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 6

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

LiDAR cavities, each with separate transmit and receive lenses, for a total of four lenses). The 

chart below highlights some of the major differences between the systems (details are provided in 

the expert declarations of Dr. McManamon and Dr. Lebby): 

Comparison of Systems

 LiDAR Fuji LiDAR

Single lens aperture: Single shared 

lens for transmitted and received light. 

Single cavity: Overlapping transmit 

and receive paths in single cavity. 

Four lens apertures: Separate lenses for each 

of 2 transmit paths and 2 receive paths. 

Two cavities: Separate medium-range and longrange cavities, each with separate transmit and 

receive paths. 

 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 12 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 7

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

ARGUMENT 

I. LEGAL STANDARD 

A preliminary injunction is “an extraordinary and drastic remedy, one that should not be 

granted unless the movant, by a clear showing, carries the burden of persuasion.”7 To establish a 

right to a preliminary injunction, a plaintiff must demonstrate that: (1) it is likely to succeed on 

the merits; (2) it is likely to suffer irreparable harm absent preliminary relief; (3) the balance of 

equities tips in its favor; and (4) the injunction is in the public interest.8

“[A] plaintiff must prove each element of the preliminary injunction test to prevail at the 

district court.”9 “[T]he absence of an adequate showing on any one factor may suffice, on 

balance, to justify the denial of the injunction.”10 Likewise, the Ninth Circuit recognizes that 

Waymo must establish each of the four Winter factors to prevail on its motion for injunctive 

relief.11 A preliminary injunction is improper if the movant fails to establish likelihood of success 

on the merits or likelihood of irreparable harm.12 Here, Waymo fails on both counts. 

II. WAYMO IS UNLIKELY TO SUCCEED ON THE MERITS OF ITS TRADE 

SECRET MISAPPROPRIATION, PATENT INFRINGEMENT, AND UNFAIR 

BUSINESS PRACTICES CLAIMS 

A. Waymo Is Not Likely to Prevail on Its Trade Secrets Claims. 

Waymo alleges that Defendants misappropriated its proprietary and confidential 

information in violation of the California Uniform Trade Secrets Act (“CUTSA”) and the federal 

Defend Trade Secrets Act (“DTSA”). In order to demonstrate a likelihood of success on its trade 

secret claim under CUTSA or DTSA, a plaintiff must show both: (1) the existence of a trade 

secret and (2) misappropriation of the trade secret.13 Waymo cannot. 

To establish misappropriation, a plaintiff must establish “[d]isclosure or use of a trade 

 7 Mazurek v. Armstrong, 520 U.S. 968, 972 (1997) (emphasis in the original). 8 Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008); Am. Trucking Ass’ns, Inc. v. 

City of Los Angeles, 559 F.3d 1046, 1054 (9th Cir. 2009). 9 Trebro Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d 1159, 1166 (Fed. Cir. 2014). 10 Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 908 F.2d 951, 953 (Fed. Cir. 

1990). 11 All. for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011). 12 Jack Guttman, Inc. v. Kopycake Enters., Inc., 302 F.3d 1352, 1356 (Fed. Cir. 2002). 13 AccuImage Diagnostics Corp. v. Terarecon, Inc., 260 F. Supp. 2d 941, 950 (N.D. Cal. 

2003); see also 18 U.S.C. § 1836. 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 13 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 8

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

secret of another without express or implied consent” or “[a]cquisition of a trade secret of another 

by a person who knows or has reason to know that the trade secret was acquired by improper 

means.”14 The standards are identical under the DTSA.15 Moreover, under both the CUTSA and 

DTSA, independent derivation is a complete defense to alleged trade-secret misappropriation.16 

Waymo contends it obtained proof of the alleged misappropriation when it received a 

December 13, 2016 email with a drawing of an Uber printed circuit board. As demonstrated 

below, that email contains no such proof. 17 Rather, it reflects Uber’s independently developed 

design, and any similarities between the two systems are drawn from concepts that are publicly 

known or from techniques within the toolkit of one of skill in the art. 

1. Defendants Did Not Improperly Acquire Any Alleged Confidential 

Information. 

There is no evidence that Uber acquired—improperly or otherwise—the alleged trade 

secrets. First and foremost, Uber and its employees have never used any alleged confidential 

Waymo files from Mr. Levandowski or anyone else in the development of its LiDAR systems. 

Indeed, Waymo’s witnesses testified that 

 

Forensic analysis confirms that none of Waymo’s documents crossed over to Uber. 

(Faulkner Decl. ¶ 7.) Uber conducted 86 custodial interviews of former Waymo employees, 

which established that none of these employees was aware of any Waymo confidential 

information on Uber’s computer systems. Uber then conducted a search of all Uber-issued 

laptops belonging to former Waymo employees. (Id. ¶¶ 4-6.) In all, 106.5 terabytes of data were 

 14 Cal. Civ. Code § 3426.1(b). 15 See 18 U.S.C. § 1839(5); 18 U.S.C. § 1839(6). 16 Cal. Civ. Code § 3426.1(a) (“Reverse engineering or independent derivation alone shall not 

be considered improper means.”); see also 18 U.S.C. § 1839(6). 17 This email cannot be the smoking gun Waymo claims it is, because the assumptions Waymo 

draws from it are false. For instance, Waymo repeatedly argues that the architecture of the board 

necessitates a single-lens design, which Uber does not use. 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 14 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 9

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

imaged. (Id. ¶ 4.) Uber searched data belonging to Messrs. Levandowski, Kshirsagar, and 

Raduta, as well as that of seven other former Waymo employees who worked on Chauffeur or 

LiDAR sensors, for the approximately 14,000 filenames and hash values identified by Waymo as 

corresponding to allegedly downloaded files, as well as the filenames included in Waymo’s 

preliminary injunction papers. (Id. ¶ 5.) In addition, Uber used search terms derived from 

Waymo’s preliminary injunction papers. (Id. ¶ 6.) These searches did not reveal any confidential 

Waymo material on Uber’s systems. (Id. ¶ 7.) Moreover, Uber took strict precautions to ensure 

that no trade secrets belonging to a former employer would be brought to or used at Uber. 

(Morgan Decl. ¶¶ 5-6.) On these facts, Waymo is unable to meet its burden of showing that Uber 

improperly acquired Waymo’s trade secrets. 

Waymo tries to raise an inference of improper use by claiming that the employees 

downloaded files during the course of their employment at Waymo, but this is not an out-ofbounds practice for Waymo or Google employees. Indeed, the fact that Messrs. Levandowski, 

Kshirsagar, and Raduta had legitimate access to Waymo’s confidential information before their 

separation is insufficient to establish that they improperly acquired that information.18 

Mr. Kshirsagar, for example, explained that every single one of the files he accessed was 

done for legitimate purposes relating to his employment at Waymo.19 Specifically, 

Mr. Kshirsagar accessed two of the files at issue on his Waymo-issued laptop in order to prepare 

a transition memorandum for several of his successors. (Kshirsagar Decl. ¶¶ 10-11.) He prepared 

the memorandum at the direction of Tim Willis, ironically the very person who now accuses him 

of accessing the files improperly. (Kshirsagar Decl. ¶ 10.) The documents are referenced in the 

transition memorandum itself. (Id.) Mr. Kshirsagar accessed an additional file on his Waymo-

 18 See Cent. Valley Gen. Hosp. v. Smith, 162 Cal. App. 4th 501, 528–29 (2008) (mere 

possession of a trade secret does not constitute misappropriation); see also FLIR Sys., Inc. v. 

Parrish, 174 Cal. App. 4th 1270, 1279 (2009) (“Mere possession of trade secrets by a departing 

employee is not enough for an injunction.”). 19 Sunbelt Rentals, Inc. v. Victor, No. C 13-4240 SBA, 2014 WL 492364, at *7 (N.D. Cal. 

Feb. 5, 2014) (holding that “simple fact that [former employee] emailed himself . . . proprietary 

information” for the purpose of “ensuring that [former employer] properly paid him for all 

commissions owed,” “without more, does not show misappropriation” and did not warrant 

preliminary injunction). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 15 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 10

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

issued laptop for general educational purposes in the course of his work at Waymo. (Id. ¶ 13.) 

Mr. Kshirsagar then returned his Waymo laptop to the Waymo IT department when he left, and 

did not take it or the files with him. (Kshirsagar Decl. ¶¶ 11, 13 & Ex. 1.) Mr. Kshirsagar 

accessed two additional files on his Waymo-issued laptop that he then emailed to his personal 

mobile device to review them offline while he was still at Waymo for the purpose of fulfilling his 

duties to Waymo—a practice that Mr. Willis himself admits he engages in on occasion—and 

never once accessed those files after he left his employment at Waymo. (See Kshirsagar Decl. 

¶¶ 12-13; Chang Decl. Ex. 4, Willis Dep. 46:10–17.) 

Moreover, while Waymo makes much of the 14,000 files that Mr. Levandowski allegedly 

downloaded, Waymo admits that this represents the entire Waymo SVN repository, 

demonstrating that Mr. Levandowski did not “pick and choose” which files to download. Waymo 

further admits that 

Finally, Mr. Radu Raduta is only accused of . (Willis 

Decl. ¶ 10, ECF No. 24-16.) Like with Mr. Kshirsagar, what Waymo failed to tell the Court is 

that 

. (See Chang Decl. Ex. 5, Brown Dep. 39:11–19; 41:15–42:5.) None of those files were 

located on Mr. Raduta’s Uber-issued devices. (Faulkner Decl. ¶ 7.) Moreover, the 

 (Willis Decl. Exs. G–I, ECF Nos. 24-23, 

24-24, 24-25.) As this Court noted, there is no showing that these documents comprise trade 

secrets at all. (CMC Hr’g Tr. 7, Mar. 29, 2017, ECF No. 131.) 

 

Not a trade secret. In its motion, Waymo alleges that the 

 is a trade secret that “has not been disclosed to the public” and that Uber’s design, 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 16 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 11

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

as reflected in the December 13, 2016 email, contains such spacing and orientation. (Mot. 11.) 

The concept of , however, is expressly recited 

in Velodyne’s U.S. Patent No. 8,767,190 (the “’190 patent”), titled “High Definition LiDAR 

System.” The ’190 patent discloses that the density of laser diodes within a curved pattern around 

a central axis (i.e., a “fan pattern”) can be varied to achieve greater resolution at longer distances. 

(’190 patent at 5:56-57.) The patent states: “The density of emitter/detector pairs populated 

along the vertical FOV is intentionally variable.” (’190 patent at 6:45-46.) The patent further 

explains: “For some uses increased density is desirable to facilitate seeing objects at further 

distances and with more vertical resolution.” (Id. at 6:54-56.) 

. Because the concept of is 

in the public domain, Waymo cannot claim it as a trade secret.20

No misappropriation due to independent derivation. Waymo has failed to demonstrate 

that the is a trade secret, but even if it was 

shown to be a trade secret, Uber independently developed the 

 on its Fuji system, based on the

that Scott Boehmke developed, using parameters and calculations that he began developing in 

December 2015—before Mr. Levandowski had even left Waymo and before Uber’s acquisition of 

Otto.21 As Waymo’s Mr. Droz testified during deposition,

 (Chang Decl. Ex. 7, Droz 

Dep. 107:3-108:10.) Moreover, the on Uber’s Fuji transmit boards 

are not the same as those in Waymo’s boards. If Uber had copied Waymo’s design, the 

 20 Bladeroom Grp. Ltd. v. Facebook, Inc., No. 5:15-cv-01370-EJD, 2015 WL 8028294, at *4 

(N.D. Cal. Dec. 7, 2015) (“[i]t is well established that the disclosure of a trade secret in a patent 

places the information comprising the secret into the public domain.”); On-Line Techs., Inc. v. 

Bodenseewerk Perkin-Elmer, GMBH, 386 F.3d 1133, 1141 (Fed. Cir. 2004) (“After a patent has 

issued, the information contained within it is ordinarily regarded as public and not subject to 

protection as a trade secret.”) 21 Cal. Civ. Code § 3426.1(a); 18 U.S.C. § 1839(6) (independent derivation defense). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 17 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 12

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

—the result of painstaking, iterative testing and simulation—should 

be the same, but they are not. For these reasons, each of which independently negates Waymo’s 

trade secret claim, Waymo cannot show that it is likely to succeed on the merits of this claim. 

Not a trade secret due to prior public knowledge and use. Waymo also alleges that 

 is a trade secret. (Mot. 11, 15.) Waymo’s arrangement is one of a limited 

number of workable configurations for the transmit block of any 64-laser LiDAR system that a 

designer would evaluate in light of well-known design considerations, particularly the desire to 

reduce the size, cost, and complexity of the system. A “general approach” that is “dictated by 

well known principles of physics” is not protectable under accepted trade secret doctrine because 

such principles are not “secret”—they are instead “general engineering principles in the public 

domain and part of the intellectual equipment of technical employees.”22 

No misappropriation due to no use. Notwithstanding the obviousness of the 

configuration, and unlike Waymo’s , Uber’s Fuji system does not contain a 

transmit stack. Rather, the Fuji system comprises two separate LiDAR cavities, 

. Because there is no evidence of 

use of the transmit stack in Fuji, a preliminary injunction is improper.23

Additionally, the is different in the Fuji 

system from that of . The 64 diodes in the system are distributed in 

the following pattern: . Waymo claims that positioning the 

 is a trade secret. As noted, the of the Fuji system are 

independent transmit blocks and do not constitute a . However, considered 

 22 Winston Research Corp. v. Minnesota Min. & Mfg. Co., 350 F.2d 134, 139 (9th Cir. 1965). 23 Bayer Corp. v. Roche Molecular Sys., Inc., 72 F. Supp. 2d 1111 (N.D. Cal. 1999) (denying 

preliminary injunction where plaintiff failed to demonstrate “specific evidence of actual use”). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 18 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 13

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

together, the distribution of diodes across Fuji’s transmit PCBs is: (Haslim 

Decl. ¶ 13.) 

No misappropriation due to independent development. Not only does Fuji not use a 

, its design in each of two cavities was independently 

developed. As described previously, Mr. Haslim’s team decided to use in 

each of Fuji’s two cavities after realizing, through trial and error, that neither a

, as it was the most symmetric way of 

distributing . (Id.) Because Uber’s Fuji design is fundamentally 

different from Waymo’s design and because Uber independently developed its two-cavity, 

 design, Waymo cannot prevail on its trade secret claim. 

No misappropriation due to independent development and no use. Waymo alleges that 

the design of Uber’s Fuji transmit PCB was adapted from design files for Waymo’s 

. This allegation is based on a comparison of Waymo’s to a 

machine drawing of what is purportedly an Otto PCB that Waymo inadvertently received by 

email from the vendor . A comparison of the PCBs and a review of the Fuji 

development history make clear that the Fuji PCB was not adapted from the Waymo design. 

(Lebby Decl. ¶ 61.) 

First, as explained above, Fuji’s transmit PCBs and its for the 

transmit block were independently developed by Uber engineers who had no connection with the 

allegedly misappropriated Waymo confidential documents. 

Second, an inspection of the two PCBs side-by-side reveals numerous design differences, 

including: (1) different shape and curvature along the curved edge of the PCBs; (2) different 

 of the laser diodes; (3) different arrangement of the components behind the 

diodes; (4) different components and layouts on the side of the PCBs nearest the flat edge; and 

(5) different arrangement of holes in the PCBs. (Lebby Decl. ¶ 61.) 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 19 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 14

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Third, because the Fuji system has a

, the precise positioning and angles of the diodes on the transmit PCBs are different. (Id. 

¶ 62.) Fuji’s 

. (Id.) By contrast, the 

 design has a . (Id.) These differences in vertical 

FOV dictated a different design for the Fuji transmit PCBs. 

Not a trade secret due to prior public knowledge and use. Waymo alleges that the 

concept of is a trade secret. 

(Mot. 11, 14.) The is 

a known design choice in the fabrication of laser diode systems and has been disclosed in the 

public technical literature. For example, a textbook on the subject of semiconductor lasers 

illustrates and notes the technical concerns associated 

with each: “Overhang and underhang characterize the alignment between the diode laser die . . . 

and the mounting substrate. The consequence of overhang and underhang is ineffective heat 

conduction and blockage of light transmission, respectively.”24 In addition, a 2007 dissertation 

on laser diode systems describes a system in which laser diodes are deliberately 

, in order to avoid obstruction of the laser light—the 

very goal that Waymo aims to achieve with its alleged trade secret.25 Thus, Waymo cannot claim 

the as a trade secret.26

No misappropriation due to no use. Waymo claims as a trade secret the concept of 

 (Mot. 11, 15-16.) Uber’s Fuji transmit board, however, does not use 

 24 (LebbyDecl. Ex. 4, Xingsheng Liu et al., Packaging of High Power Semiconductor Lasers 

224 (2015).) 25 (Lebby Decl. Ex. 5, Christian Scholz, Thermal & Mech. Optimisation of Diode Laser Bar 

Packaging 28 (2007) (emphasis added).) 26 Winston Research Corp, 350 F.2d at 139 (“general engineering principles in the public 

domain and part of the intellectual equipment of technical employees” are not trade secrets). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 20 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 15

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

. Rather, it uses fiducial reference marks that are printed 

on the circuit board—a common technique in the fabrication of printed circuit boards and 

mounting of optical components on a circuit board. (Haslim Decl. ¶ 14.) Waymo’s witness 

Mr. Droz emphasized that

—something that Uber does not use the guide 

holes for. 

Not a trade secret due to public disclosure. Moreover, the use of for these 

purposes is not a protectable trade secret. The concept of 

 is as simple and as general as a Tinker Toy, 

and such general concepts dictated by basic scientific principles cannot be trade secrets. In fact, 

the concept of using in the LiDAR context has been known to 

the public since the 1970s, as conceded by Waymo’s witness 

 For example, a patent filed in 1976 describes a “means suitable for 

aligning and mounting a printed circuit board (PCB)” that involves mounting a “PCB [that] is 

provided with holes spaced apart to receive the supporting member pins” on top of a supporting 

member in which the “pins are spaced apart along a datum line or center line to which the PCB is 

to be aligned.”27 Similarly, a German patent application filed in 1980 described how “[p]rinted 

circuit boards that are stacked and compacted into multi-layer circuit boards require to be 

accurately aligned,” and the use of “bored holes” that “all the holes will have an exact relative 

position to one another.”28

Similarly, is a well-known concept in the 

field. For example, U.S. Patent No. 4,432,037, with a priority date of December 2, 1980, entitled 

“Multi-layer printed circuit board and method for determining the actual position of internally 

located terminal areas,” describes a “fitting or alignment system” that consists of “location holes 

which fix a reference point and a reference line from which the position determination of the 

 27 (Lebby Decl. Ex. 6, U.S. Patent No. 4,244,109 at 1:8-9, 1:65-68.) 28 (Lebby Decl. Ex. 7, German Pat. App. No. DE 3031103, Abstract.) 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 21 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 16

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

conductive patterns on the individual sheets [of printed circuit board layer] takes place.”29 In this 

known solution, the “conductive patterns of the individual inner layers” are “disposed on a 

nominally known position relative to the location system.” (See ’037 patent, Fig. 1, location 

holes 7 and 8.) Because the 

 was well-known to the public long before Waymo’s LiDAR systems were developed, 

Waymo cannot claim as a trade secret. 

B. Waymo Is Not Likely to Prevail On Its Patent Claims. 

To establish a likelihood of success on the merits of its patent infringement claims, 

Waymo bears the burden of showing that it will likely prove at trial that the accused devices 

infringe upon the patents.30 Here, because Uber has shown that it does not infringe the ’922 and 

’464 patents, a preliminary injunction should not be granted. 

1. Uber’s Fuji Design Does Not Infringe the ’922 Patent. 

Claim 131 of the’922 patent requires “an optical configuration that uses a common lens to 

both transmit and receive light beams, rather than using separate lenses for transmission and 

receipt.” (Mot. 16; Kintz Decl. ¶ 65, ECF No. 24-26.) Waymo characterizes the ’922 patent as 

disclosing a “fundamental single-lens architecture.” (Mot. 5.) 

Based on the layout of the laser diodes on Fuji’s PCB, Waymo assumes that Fuji must be 

using a common-lens system. (Kintz Decl. ¶¶ 65-74.) Waymo is wrong. In contrast to the ’922 

patent and Waymo’s design, Uber’s Fuji design does not use a single, common lens for both 

the transmit beam and receive beam. (Haslim Decl. ¶¶ 7, 9.) Rather, Fuji uses one lens for the 

outbound transmit beam and a separate lens for the inbound receive beam. (McManamon Decl. 

¶¶ 78-81, 86.) Because Fuji uses two separate lenses for the transmit and receive beam, it does 

not infringe claim 1 of the ’922 patent. 

Fuji also does not infringe claim 1 because it is missing other limitations required by the 

claim. For example, claim 1 requires “an interior space that includes . . . a transmit path, and a 

 29 ’037 patent at 1:52-60. 30 Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed. Cir. 2009). 31 Claim 13 of the ’922 patent depends from claim 1, and Uber’s Fuji design does not infringe 

claim 13 for the same reasons it does not infringe claim 1. 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 22 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

receive path.” Fuji does not have one interior space that contains both the transmit and receive 

path. Rather, each cavity of Fuji has two compartments—one interior space for the transmit path 

and a separate interior space for the receive path. (Id. ¶¶ 78-83; Haslim Decl. ¶ 9.) Further, Fuji 

does not use a “reflective surface” for the receive path – the light received from the lens is 

focused directly onto the receive board. 

2. Uber’s Fuji Design Does Not Infringe the ’464 Patent. 

The ’464 patent is a continuation of the ’922 patent and shares a common specification 

and figures. Like the ’922 patent, claim 132 of the ’464 patent requires “a common lens for both 

transmit and receive beams” and “an interior space that includes . . . a transmit path, and a receive 

path.” For the same reasons as stated above, Fuji does not satisfy these limitations and thus does 

not infringe claim 1 of the ’464 patent. (McManamon Decl. ¶¶ 95-96, 99-100.) 

In addition, claim 1 of the ’464 patent also requires that “the transmit path at least partially 

overlaps the receive path in the interior space between the transmit block and the receive block.” 

The Fuji design, however, contains a separate compartment for the transmit path and the receive 

path. Thus, the transmit and receive paths never overlap or intersect. (Id. ¶ 97; Haslim Decl. 

¶ 9.) 

III. WAYMO HAS FAILED TO SHOW IRREPARABLE INJURY. 

Waymo is not entitled to the extraordinary remedy it seeks because it has not and cannot 

demonstrate that without a preliminary injunction it will suffer irreparable harm in the five months 

between the Court’s hearing on its motion and the scheduled trial. Waymo delayed filing suit for 

roughly that same amount of time, and thus any alleged harm is not immediate. 

The Supreme Court has held “that plaintiffs seeking preliminary relief [must] demonstrate 

that irreparable injury is likely in the absence of an injunction.”33 To show this, Waymo must 

establish that the threatened injury is immediate, significant, and concrete or non-speculative.34 

 32 Claim 14 of the ’464 patent depends from claim 1, and Uber’s Fuji design does not infringe 

claim 14 for the same reasons it does not infringe claim 1. 33 Winter v. Nat. Def. Council, Inc., 555 U.S. 7, 22 (2008) (emphasis in original). 34 See Friends of the Wild Swan v. Weber, 767 F.3d 936, 946 (9th Cir. 2014) (immediate); 

Caribbean Marine Servs. Co. v. Baldrige, 844 F.2d 668, 674 (9th Cir. 1988) (non-speculative); 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 23 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 18

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Waymo has not satisfied this heavy burden. Rather, Waymo relies on: (1) a presumption 

of irreparable harm that both the Supreme Court and the Ninth Circuit have rejected; 

(2) speculative harm about market impact in a currently nonexistent market, in which 

; (3) an 

ambiguous statement in a Nevada DMV filing; and (4) conjectural concerns about public 

disclosure. Waymo’s arguments do not meet its burden of demonstrating that the allegedly 

threatened injury is likely, immediate, significant, and non-speculative. And Waymo’s claim of 

irreparable harm is fatally undermined by its lengthy delay in filing for relief almost one year 

after it became suspicious of the alleged conduct by Defendants. 

A. There is No Presumption of Irreparable Harm. 

Waymo broadly proclaims that “continued use of another party’s trade secrets generally 

creates irreparable harm” and that a “similar analysis applies to Defendants’ patent infringement.” 

(Mot. 20–22.) But the Supreme Court flatly rejected such a presumption in eBay Inc. v. 

MercExchange, L.L.C.,

35 where the Court held that it was error to assume that a permanent 

injunction should issue if patent infringement and validity were shown; instead, the plaintiff must 

satisfy the four-factor test. This holding has been extended to preliminary injunctions.36 

Following eBay, the Ninth Circuit held that any “presumption of irreparable harm” in 

copyright cases is likewise “dead,”37 and that the presumption is also “foreclose[d]” in trademark 

cases.38 Consistent with this precedent, federal courts within and outside the Ninth Circuit have 

easily rejected the presumption in trade secret cases as well.39 The cases Waymo cites to the 

 

Dep’t of Parks & Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1123–24 (9th Cir. 2006) 

(significant). 35 547 U.S. 388, 391–94 (2006). 36 Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 996 (9th Cir. 2011). 37 Id. at 995. 

38 Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239, 1249 (9th Cir. 2013). 39 GSI Tech., Inc. v. United Memories, Inc., No. C 13-1081 PSG, 2013 WL 12172990, at *11 

(N.D. Cal. Aug. 21, 2013) (“misappropriation of proprietary information alone does not create a 

presumption of irreparable harm”); V’Guara Inc. v. Dec, 925 F. Supp. 2d 1120, 1126 (D. Nev. 

2013) (“In light of [Flexible Lifeline], the Court declines to rely on such a presumption” in a 

trade-secret case.); Precision Automation, Inc. v. Tech. Servs., Inc., No. 07-CV-707-AS, 2007 WL 

4480739, at *7 (D. Or. Dec. 14, 2007) (refusing to apply presumption in case involving both trade 

secrets and patents); Kahala Franchising LLC v. Kim, No. CV 13-02933-MWF (FFMx), 

2013 WL 12086126, at *2 (C.D. Cal. July 10, 2013) (same); Se. X-Ray, Inc. v. Spears, 929 F. 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 24 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 19

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

contrary are inapposite (Mot. 20), because they either predate the Supreme Court’s decision in 

eBay or predate Flexible Lifeline or rely on precedent that does.40

B. Waymo Relies Solely on Speculative and Unsupported Harm. 

Waymo contends it will suffer irreparable harm if Uber is allowed to use Waymo’s 

intellectual property to gain a “critical edge” in the race “to become the first to offer a full suite of 

commercial self-driving services.” (Mot. 20–21.) But there is no evidence that Uber has 

commercialized this technology, or even that 

. Waymo merely speculates that this may happen. Such 

speculative injury is precisely the type of irreparable harm that this Circuit has flatly rejected as a 

basis for granting provisional relief.41 

Harm not imminent. Contrary to Waymo’s assertions that Uber’s “deploy[ment]” of its 

LiDAR technology in a “product launch” is “imminent” (Mot. 12), 

. (Haslim 

Decl. ¶ 22.) To date, Uber has never installed a LiDAR of its own design on a vehicle; instead, it 

uses commercially available technology from third parties, such as Velodyne, in all of its cars that 

are currently on the road. (Id. ¶ 21.) There simply is no risk that 

 

To support its claim of immediate harm, Waymo relies only on a September 2016 Nevada 

DMV filing,42 in which Otto stated that it had “developed in-house and/or currently deployed” a 

custom LiDAR system. Otto trucks deployed in Nevada, however, did not have any LiDAR on 

them at all, much less LiDAR developed in-house, as shown by pictures taken of an Otto truck 

 

Supp. 2d 867, 872 (W.D. Ark. 2013) (applying four-factor analysis to trade-secret claims, 

“making no presumptions as to irreparable harm.”). 40 Pixon Imaging, Inc. v. Empower Techs. Corp., No. 11-CV-1093-JM (MDD), 2011 WL 

3739529, at *6 n.7 (S.D. Cal. Aug. 24, 2011), relies on precedent that predates eBay and 

was issued only two days after Flexible Lifeline. The other, Advanced Instructional Systems, Inc. 

v. Competentum USA, Ltd., No. 1:15CV858, 2015 WL 7575925, at *4 (M.D.N.C. Nov. 25, 2015), 

fails to cite eBay altogether, instead relying on two district court cases from the 1990s. 

41 In re Excel Innovations, Inc., 502 F.3d 1086, 1098 (9th Cir. 2007). 42 The language was imprecise and ambiguous given the term “and/or.” Uber subsequently 

clarified this regulatory filing, explaining that “Otto has been developing its own LiDAR systems, 

but has not yet deployed an ‘[i]n-house custom built 64-laser’ in its autonomous vehicles.” 

(Chang Decl. Ex. 8.) (emphasis added). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 25 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 20

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

during its test runs. The cases in Waymo’s motion can be distinguished on this basis—they 

involved well-established markets.43 (Mot. 21.) Accordingly, Waymo cannot establish 

irreparable harm based on an unfounded concern over imminent commercialization.44 

No threat of disclosure of Waymo’s trade secrets. Waymo also argues that it will suffer 

irreparable harm because the absence of an injunction will “result in further disclosure” of its 

trade secrets. (Mot. 21.) (emphasis in original) This also is unsupported speculation. First, 

without any citation to evidence, Waymo claims that “Defendants have already begun making 

regulatory filings that reference Waymo’s trade secrets.” (Mot. 21.) That is false. To the extent 

Waymo is relying on the September 2016 Nevada DMV filing, that filing does not disclose any 

trade secrets, as it is publicly known that 

. (E.g., Droz Dep. 19:3-11 

 Waymo’s claim that unspecified future regulatory 

filings will contain Waymo’s trade secrets is the hallmark of speculation without evidence. 

Second, Waymo asserts that Defendants’ so-called “disrespectful” behavior leaves “little doubt 

that Defendants would not hesitate to throw Waymo’s trade secrets open to the general public” 

should it suit them. (Mot. 21.) This is attorney argument and nothing more.45 

Money damages are adequate. Finally, Waymo does not argue that money damages are 

inadequate to compensate it for any injury.46 Indeed, “[e]conomic damages are not traditionally 

considered irreparable because the injury can later be remedied by a damage award.”47 Waymo 

makes no attempt to explain why money damages would be inadequate to remedy any 

competitive injury. And courts have held that a decrease in market share and profits, such as that 

 43 Lamb-Weston, Inc. v. McCain Foods, Ltd., 941 F.2d 970 (9th Cir. 1991), involved the 

French-fries market and Netlist Inc. v. Diablo Techs. Inc, No. 13-CV-05962-YGR, 2015 WL 

153724 (N.D. Cal. Jan. 12, 2015), involved computer-server memory market. 44 Zodiac Pool Sys., Inc. v. Aquastar Pool Prods., Inc., No. 13cv343-GPC (WMC), 2013 WL 

690616, at *5 (S.D. Cal. Feb. 22, 2013) (holding no irreparable harm where product will not be 

sold imminently). 45 Tellingly, Waymo never even attempts to argue that it could win a preliminary injunction 

based on threatened, rather than actual, misappropriation. 46 Stanley v. Univ. of S. Cal., 13 F.3d 1313, 1320 (9th Cir. 1994) (holding that where 

monetary damages can compensate plaintiff, preliminary injunction is not justified). 47 Delphon Indus. LLC v. Int’l Test Sols., Inc. No. 11-CV-1338-PSG, 2011 WL 4915792, at 

*3 (N.D. Cal. Oct. 17, 2011). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 26 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 21

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

which Waymo fears, can be compensated monetarily.48 

C. Waymo’s Delay in Filing This Action Refutes the Alleged Irreparable Harm. 

Waymo’s claim of irreparable harm is fatally undermined by its delay in filing for relief. 

A “long delay before seeking a preliminary injunction implies a lack of urgency and irreparable 

harm.”49 An unreasonable delay can be a matter of months.50 Indeed, in multiple cases, Google 

itself has argued that even a four or five-month delay undermines a claim of irreparable harm.51 

In this inquiry, the proper focus is on the point in time when plaintiff was “aware, or 

should have been aware” of the alleged wrongdoing.52 When a plaintiff suspects wrongdoing, the 

clock has already started ticking.53 Here, that clock began to tick a year ago, if not earlier. 

Waymo’s 

 (Chang Decl. Ex. 5, Brown Dep. 11:2–4, 11:20–12:8.) 

 (Chang Decl. Ex. 5, Brown Dep. 47:23–49:4; Brown Decl. ¶ 22, ECF No. 24-2.) By 

August 2016, the departure of certain engineers had raised additional “suspicion[],” (Mot. 9), and 

Uber’s acquisition of Mr. Levandowski’s startup allegedly caused “grave concern.” (Compl. 

¶ 57, ECF No. 1.) By no later than October 2016—five months before Waymo filed its motion—

Waymo claims 

 

(Chang Decl. Ex. 5, Brown Dep. 31:21–32:21.) The same month, Waymo filed claims against 

 48 Hologic, Inc. v. Senorx, Inc., No. C-08-00133 RMW, 2008 WL 1860035, at *16–17 (N.D. 

Cal. Apr. 25, 2008). 49 Oakland Tribune, Inc. v. Chronicle Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985). 50 Larsen v. City of San Carlos, No. 14-CV-04731-JD, 2014 WL 5473515, at *3 (N.D. Cal. 

Oct. 28, 2014) (three months)); Hiramanek v. Clark, No. C-13-0228 EMC, 2013 WL 5082640, at 

*1 (N.D. Cal. Sept. 13, 2013) (one month). 51 Perfect 10, Inc. v. Google Inc., Google’s Opposition to Perfect 10’s Motion for Preliminary 

Injunction, 2005 WL 4705034, at *23 (C.D. Cal. Sept. 30, 2005); see also Garcia v. Google, Inc., 786 F.3d 733, 746 (9th Cir. 2015) (en banc); Hanginout, Inc. v. Google, Inc., 54 F. Supp. 3d 

1109, 1132–33 (S.D. Cal. 2014). 52 Kwan Software Eng’g, Inc. v. Foray Techs., LLC, No. C 12-03762 SI, 2013 WL 244999, 

at *8 (N.D. Cal. Jan. 22, 2013), aff’d, 551 F. App’x 298 (9th Cir. 2013). 53 See Blackmon v. Tobias, No. C 11-2853 SBA, 2011 WL 2445963, at *4 (N.D. Cal. 

June 16, 2011). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 27 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 22

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Mr. Levandowski in arbitration. (Gonzalez Decl. ISO Mot. to Compel Arbitration, Ex. 1, ECF 

No. 114-7.) Thus, the existence of the downloading Waymo alleges cannot be the basis for 

seeking emergency relief. Waymo waited five months after learning of that downloading before 

seeking relief. 

Waymo attempts to gloss over its delay by emphasizing a December 2016 email that 

allegedly contained “proof” of misappropriation and infringement in the form of images of a 

single Uber LiDAR circuit board. (Mot. 10.) But this email does not materially change what 

Waymo already concluded: Mr. Levandowski had allegedly exported files to a personal device 

that was not issued by Waymo, and he went to work for a competitor. Moreover, the December 

2016 email does not show that any alleged harm to Waymo is in any way “immediate.” It merely 

shows that Uber is working on a LiDAR system that Waymo (incorrectly) believes is similar to 

its LiDAR. That fact is vigorously disputed, but there is no dispute that Waymo has presented 

zero evidence that Uber is about to deploy an in-house-developed LiDAR system in the 

immediate future.54

IV. THE BALANCE OF HARDSHIPS STRONGLY DISFAVORS AN INJUNCTION. 

Even when a party, unlike Waymo here, has demonstrated likelihood of success of the 

merits, this Court has held that the “party must also show that the balance of hardships tip sharply 

in its favor in order to prevail on its motion for a preliminary injunction.”55 Where, as here, 

Waymo has neither shown likelihood of success on the merits nor irreparable harm, the burden is 

even greater. Waymo has not met this burden. 

Just as there is no presumption of irreparable harm, there is also no presumption of 

hardship simply because this is a case concerning intellectual property.56 As discussed above, 

there is no cognizable irreparable harm that Waymo would experience between now and the date 

 54 Waymo also points again to the September 2016 Nevada DMV filing. (Compl. ¶ 61.) The 

assertion that this generic and equivocal regulatory filing somehow constituted the “final piece of 

the puzzle” is simply implausible. 55 Bayer Corp. v. Roche Molecular Sys., Inc., 72 F. Supp. 2d 1111, 1120 (N.D. Cal. 1999) 

(Alsup, J.). 56 Mitigation Techs., Inc. v. Pennartz, No. ED CV 14-01954-AB (SPx), 2015 WL 12656936, 

at *8 (C.D. Cal. Mar. 13, 2015); Leatt Corp. v. Innovative Safety Tech., LLC, No. 09-CV-1301-

IEG (POR), 2010 WL 1526382, at *11 (S.D. Cal. Apr. 15, 2010). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 28 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 23

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

of trial that an injunction would forestall. Contrary to Waymo’s contention, it would not be 

“forced ‘to compete against its own patented invention,’” (Mot. 24), because 

 

(Haslim Decl. ¶ 22.). 

On the other hand, the burden in the intervening months on Uber would be substantial. 

First, Waymo overreaches in the scope of its requested injunction. As this Court noted twice in 

recent hearings, in the more than one hundred alleged “trade secrets” that Waymo seeks to enjoin 

Defendants from using (along with “any colorable variation”), Waymo overreaches and attempts 

to claim trade secret protection over clearly unprotectable material, such as commonplace 

knowledge about vendors and suppliers, techniques that are dictated by physics, and information 

disclosed in the prior art. By effectively prohibiting Defendants from using such technology and 

techniques, the injunction should would unfairly undermine and burden Defendants’ independent 

LiDAR development, which was built without any of Waymo’s trade secrets, and on which Uber 

has spent thousands of man-hours. (Haslim Decl. ¶ 20.) It would also limit the work of about 25 

employees. (Haslim Decl. ¶ 5.) Waymo admits that this outcome would be improper: “Waymo 

is not seeking to enjoin Defendants from pursuing self-driving car projects in toto.” (Mot. 23.) 

For example, one of the “trade secrets” that Waymo seeks to enjoin Uber from using is the 

 

(Jaffe Decl. Ex. 1, ¶ 93, ECF No. 25-7.) This Court has already noted that Waymo’s argument 

that (CMC Hr’g Tr. 7, Mar. 29, 2017, ECF No. 131 

(“[S]ome of the things in your motion are bogus. You’ve got things in there like 

as trade secrets. Come on. It undermines the whole thing.”). In other words, the injunction that 

Waymo seeks could theoretically prevent Uber from even 

 (Chang Decl. 

Ex. 4, Willis Dep. 87:22–88:12.) Barring such contact would be potentially devastating to Uber’s 

legitimate efforts to compete, and flies in the face of the requirement that any injunction must be 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 29 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 24

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

“no more burdensome to the defendant than necessary to provide complete relief to the plaintiffs” 

and “tailored to remedy the specific harm alleged.”57 

Second, Waymo incorrectly assumes that Uber could easily continue developing 

self-driving cars by acquiring LiDAR technology from third-party vendors. Existing vendors of 

LiDAR technology cannot keep up with demand for the quantities needed for testing, much less 

for commercial use. (Boehmke Decl. ¶¶ 11, 15, 16.) In fact, the impetus for Defendants to 

develop an in-house customized LiDAR was, in part, due to the difficulty in obtaining LiDAR 

sensors in sufficient quantities from commercial sources. , Uber’s primary supplier for 

the cars currently on the road, cannot meet the demand for its LiDARs. (Haslim Decl. ¶ 21.) The 

fact that there is “no readily available substitute” also tilts the balance of hardships in Defendants’ 

favor.58 

V. THE PUBLIC INTEREST DISFAVORS AN INJUNCTION 

Waymo acknowledges—as it must—that the public has a strong interest in promoting 

“competition and consumer choice” in the development and creation of a self-driving car 

marketplace. (Mot. 25.) As this Court has held, the best way to promote that public interest is by 

encouraging fair and vigorous competition in the use of ideas in this developing industry.59 

Uber has been a visionary and a pioneer in the transportation industry, essentially creating 

the concept of ride-sharing, offering economic opportunities for hundreds of thousands of drivers, 

and pioneering other innovative solutions in transportation. In that vein, Uber is competing 

vigorously but fairly to eliminate the number one cause of car accidents—human error. 

Especially where there is no risk of an imminent commercialization or deployment of the 

disputed technology, the public interest weighs against any injunction. 

The only public interest that Waymo argues would be furthered by a preliminary 

 57 McCormack v. Hiedeman, 694 F.3d 1004, 1019 (9th Cir. 2012). 58 Advanced Rotorcraft Tech., Inc. v. L-3 Commc’ns Corp., No. C 06-06470 WHA, 2007 WL 

437682, at *9 (N.D. Cal. Feb. 6, 2007). 59 Yamashita v. Wilbur-Ellis Co., No. C 06-01690 WHA, 2006 WL 1320470, at *8 (N.D. Cal. 

May 15, 2006); Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969) (“[T]he equities of the licensor do 

not weigh very heavily when they are balanced against the important public interest in permitting 

full and free competition in the use of ideas which are in reality a part of the public domain.”). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 30 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 25

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

injunction is “vindicating both trade secret and patent rights.” (Mot. 24.) But Uber has not 

impinged on Waymo’s trade secret and patent rights. Rather, Uber developed—and continues to 

develop—its own technology without the use of any of Waymo’s trade secrets and without 

infringing Waymo’s patents. (Supra at 3:23-6:28; 8:11-15:4.) Moreover, many of Waymo’s 

claimed “trade secrets” are known in the prior art, have been publicly disclosed, or are dictated by 

the laws of physics.60 The public’s interest is not served by an injunction preventing infringement 

that Waymo “has not shown has [occurred] or is likely to occur.”61

Moreover, as this Court has held, while there exists a public interest in protecting rights 

secured by valid patents, the public interest may be better served by purchasers “having access to 

competitive products, being able to determine which products better suit their needs, and 

receiving reduced prices due to the availability of competing products.”62 This is especially true 

here, where the overreaching scope of Waymo’s requested injunction would severely slow 

development of a competing LiDAR system, as it would even capture activity that builds on 

public material and prior art. (Supra at 10:25-11:10; 12:3-11; 14:6-18; 15:5-16:4; 23:3-24:9.) 

Finally, California has a strong public policy in favor of employee mobility and free 

competition.63 This is particularly important where talent and ingenuity is the primary resource 

that drives competition in the creation of a new industry. Waymo has presented no evidence that 

Mr. Levandowski—or anyone else at Uber—ever used the allegedly downloaded files. In the 

absence of such evidence, Waymo must argue that its technology for building autonomous cars 

might somehow be inevitably disclosed to Uber by virtue of talented individuals going to work 

there. But California has definitively rejected the “inevitable disclosure” doctrine.64 

CONCLUSION 

For these reasons, Waymo’s Motion for a Preliminary Injunction should be denied. 

 60 See declarations of Paul McManamon and Michael Lebby. 61 Sunbelt Rentals, Inc., 2014 WL 492364, at *11. 62 Yamashita, 2006 WL 1320470, at *8. 63 Edwards v. Arthur Andersen LLP, 44 Cal. 4th 937, 946 (2008); CAL. BUS. & PROF. CODE

§§ 16600-16601 (recognizing California’s “settled legislative policy in favor of open competition 

and employee mobility”). 64 Whyte v. Schlage Lock Co., 101 Cal. App. 4th 1443, 1463 (2002) (“Lest there be any doubt 

about our holding, our rejection of the inevitable disclosure doctrine is complete.”). 

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 31 of 32
DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

Case No. 3:17-cv-00939-WHA 26

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Dated: April 7, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. González 

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, and OTTO TRUCKING LLC

Case 3:17-cv-00939-WHA Document 177 Filed 04/07/17 Page 32 of 32