1























































01980-00104/9567528.1

JOINT PROPOSED JURY INSTRUCTIONS

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

JOINT PROPOSED JURY 

INSTRUCTIONS

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 1 of 135
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

01980-00104/9567528.1 1

sf-3824725

Disputed Instruction No. 1 Re. SUMMARY OF CONTENTIONS1 Offered by Waymo

To help you follow the evidence, I will give you a brief summary of the positions of the 

parties. This is an action for trade secret misappropriation relating to Waymo LLC’s self-driving 

car technology.

Waymo asserts that it is the owner of information relating to its self-driving car 

technology, including its custom LIDAR systems that are used to enable the operation of fully 

self-driving vehicles.

Waymo claims that this information includes nine separate trade secrets and that 

Defendants Uber Technologies, Inc., Ottomotto LLC, and Otto Trucking LLC misappropriated 

those trade secrets. “Misappropriation” means the improper acquisition, disclosure or use of the 

trade secrets.

Waymo has alleged trade secret misappropriation under California law and Federal law.

Waymo claims that Uber, Ottomotto, and Otto Trucking’s misappropriation caused Uber, 

Ottomotto, and Otto Trucking to be unjustly enriched. 

Waymo also claims that it is entitled to a reasonable royalty for Uber, Ottomotto, and 

Otto Trucking’s use of Waymo’s trade secrets.

Waymo has the burden of proving these claims.

Uber, Ottomotto, and Otto Trucking deny Waymo’s claims.

 

1

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS OF 

THE NINTH CIRCUIT §1.5.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 2 of 135
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

01980-00104/9567528.1 2

sf-3824725

Disputed Instruction No. 1 Re. SUMMARY OF CONTENTIONS2 Offered By Defendants

To help you follow the evidence, I will give you a brief summary of the positions of the 

parties.

The parties in the case are Waymo, Uber, Ottomotto, and Otto Trucking. Waymo is the 

plaintiff, which means Waymo filed the case. Uber, Ottomotto, and Otto Trucking are the 

defendants. 

You will hear about Anthony Levandowski during this trial. He is not a party in this 

case. 

Waymo claims that Uber, Ottomotto, and Otto Trucking have misappropriated nine of 

Waymo’s trade secrets. I will provide you with a list of the claimed trade secrets in a few 

minutes. 

Waymo claims that Uber, Ottomotto, and Otto Trucking’s misappropriation caused Uber, 

Ottomotto, and Otto Trucking to be unjustly enriched. Waymo has the burden of proving these 

claims.

Uber, Ottomotto, and Otto Trucking deny that Waymo has identified any trade secrets, or 

 

2

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS OF 

THE NINTH CIRCUIT §1.5.

To help you follow the evidence, I will give you a brief summary of the positions of the 

parties: 

The plaintiff asserts that [plaintiff’s claims]. The plaintiff has the burden of proving these 

claims. 

The defendant denies those claims [and also contends that [defendant’s counterclaims 

and/or affirmative defenses]]. [The defendant has the burden of proof on these 

[counterclaims and/or affirmative defenses.]] 

[The plaintiff denies [defendant’s counterclaims and/or affirmative defenses].]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 3 of 135
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

01980-00104/9567528.1 3

sf-3824725

that they have misappropriated any trade secrets.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 4 of 135
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

01980-00104/9567528.1 4

sf-3824725

Disputed Instruction No. 2 Re. NUMBER OF WITNESSES3 Offered By Waymo

The weight of the evidence as to a fact does not necessarily depend on the number of 

witnesses who testify. Nor does it depend on which side called witnesses or produced evidence. 

You should base your decision on all of the evidence regardless of which party presented it.

You are not required to decide any issue according to the testimony of a number of 

witnesses, which does not convince you, as against the testimony of a smaller number or other 

evidence, which is more convincing to you. The testimony of one witness worthy of belief is 

sufficient to prove any fact. This does not mean that you are free to disregard the testimony of 

any witness merely from caprice or prejudice, or from a desire to favor either side. It does mean 

that you must not decide anything by simply counting the number of witnesses who have 

testified on the opposing sides. The test is not the number of witnesses but the convincing force 

of the evidence.

 

3

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS OF 

THE NINTH CIRCUIT §1.14; Modified by Case 3:10-cv-03561-WHA Document 1928 at ¶¶5, 6 

(Oracle v. Google Final Instructions).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 5 of 135
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

01980-00104/9567528.1 5

sf-3824725

Disputed Instruction No. 2 Re. NUMBER OF WITNESSES Offered By Defendants

Uber objects to the inclusion of this general instruction as improper under the Guidelines 

for Trial and Final Pretrial Conference in Civil Jury Cases Before The Honorable William Alsup. 

Paragraph 2(b) of the Guidelines limits the joint set of proposed instructions to “instructions on 

substantive issues of law,” and excludes preliminary, general, and concluding instructions.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 6 of 135
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

01980-00104/9567528.1 6

sf-3824725

Disputed Instruction No. 3 Re. FAILURE TO EXPLAIN OR DENY EVIDENCE4 Offered 

By Waymo

In determining what inferences to draw from evidence you may consider, among other 

things, a party’s failure to explain or deny such evidence.

 

4

 Case 3:10-cv-03561-WHA Document 1928 at ¶9 (Oracle v. Google Final Instructions).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 7 of 135
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

01980-00104/9567528.1 7

sf-3824725

Disputed Instruction No. 3 Re. FAILURE TO EXPLAIN OR DENY EVIDENCE Offered 

By Defendants

Uber objects to the inclusion of this general instruction as improper under the Guidelines 

for Trial and Final Pretrial Conference in Civil Jury Cases Before The Honorable William Alsup. 

Paragraph 2(b) of the Guidelines limits the joint set of proposed instructions to “instructions on 

substantive issues of law,” and excludes preliminary, general, and concluding instructions. Uber 

also objects to this instruction as reflected in the accompanying Memorandum of Law.

This Court issued an Order requiring Defendants Uber, Ottomotto, and Otto Trucking to 

return to Waymo, by no later than March 31, 2017, all documents relating to any Waymo files 

taken by Anthony Levandowski from Waymo. The Court’s Order also required Defendants to 

disclose whether any of those documents had been destroyed. Defendants disobeyed that Order.

Uber and Ottomotto had in their control documents relating to the Waymo files taken by

Anthony Levandowski from Waymo, but did not disclose to Waymo or the Court that these 

documents existed. All three Defendants also knew that other documents relating to the taken 

Waymo files had been destroyed, but did not disclose that to Waymo or the Court. 

This Court issued a second Order requiring Defendants to return to Waymo, by no later 

than May 31, all documents relating to any Waymo files taken by Anthony Levandowski from 

Waymo. Uber and Ottomotto disobeyed that Order as well. As of the May 31 deadline, Uber and 

Ottomotto had in their control documents relating to files taken by Anthony Levandowski from 

Waymo, but did not disclose to either Waymo or the Court that these files existed.

On July 3, 2017, this Court issued a third Order, this time requiring Uber and Ottomotto’s 

agents at the law firm of Morisson & Foerster and their consulting firm Stroz Friedberg to show 

“why they are not in violation of orders herein” requiring production of documents relating to 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 8 of 135
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

01980-00104/9567528.1 8

sf-3824725

Waymo files taken by Mr. Levandowski from Waymo. In response to that Order, for the first 

time Uber and Ottomotto’s agent Morrison & Foerster revealed that it had possessed since March 

2017, before the deadline of the Court’s first Order, documents relating to Waymo files taken by 

Anthony Levandowski from Waymo. Morrison & Foerster said that it had received these 

documents from Uber and Ottomotto’s other agent, Stroz Friedberg, which had been in 

possession of them since March 2016. Morrison & Foerster’s possession of those documents 

should have been disclosed in response to the Court’s prior Orders, and Defendants disobeyed 

those Orders by failing to do so.

In addition, as part of its first Order, this Court also required Defendants Uber,

Ottomotto, and Otto Trucking to provide to Waymo and the Court, by no later than June 23, a 

complete and chronologically organized log of all oral and written communications – including 

meetings, phone calls, emails, and text messages – in which Anthony Levandowski discussed 

LiDAR with any of Defendants’ employees. Defendants disobeyed that Order too. As of the 

June 23 deadline, Defendants failed to disclose the existence of hundreds of communications 

between Defendants and Mr. Levandowski relating to LiDAR that Defendants knew or should 

have known existed.

Finally, on August 22, 2017, Uber and Ottomotto’s agent Stroz Friedberg revealed for the 

first time that it was storing 

from Mr. Levandowski that should have been disclosed much earlier. This late disclosure 

violated the Court’s prior Orders and the information should have been disclosed in response to 

the Court’s July 3, 2017 Order.

In determining the trustworthiness of Defendants’ witnesses, attorneys, and agents, you 

may, but are not required to, consider the fact that Defendants and their agents disobeyed these 

Court Orders to disclose the existence and destruction of documents relating to Waymo files that 

Anthony Levandowski took from Waymo and to disclose the existence of communications 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 9 of 135
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

01980-00104/9567528.1 9

sf-3824725

between Mr. Levandowski and Defendants’ employees relating to LiDAR.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 10 of 135
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

01980-00104/9567528.1 10

sf-3824725

Disputed Instruction No. 4 Re. COMPLIANCE WITH DISCOVERY ORDERS Offered By 

Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 11 of 135
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

01980-00104/9567528.1 11

sf-3824725

Disputed Instruction No. 5 Re. FIFTH AMENDMENT5 Offered By Waymo

During the testimony of Mr. Levandowski, you heard him invoke his Fifth Amendment 

privileges.

You may, but are not required to, draw adverse inferences based on his assertion of his 

Fifth Amendment privilege. 

 

5

 Dkt. 1535 (modified) (“As the undersigned judge explained during a hearing on July 26 (see 

Dkt. No. 1050 at 99:1–13), the jury will be instructed, if the Fifth Amendment is invoked, that it 

may, but is not required to, draw inferences adverse to Levandowski based on his assertion of his 

Fifth Amendment privilege. If any such adverse inference is drawn against Levandowski, then it 

will remain up to the jury to decide, as a separate question and based on all the other evidence in 

the case, whether the fact inferred is also adverse to one or more parties herein.”)

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 12 of 135
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

01980-00104/9567528.1 12

sf-3824725

Disputed Instruction No. 5 Re. FIFTH AMENDMENT6 Offered By Uber/Ottomotto

Every citizen has a right under our Constitution to assert the Fifth Amendment privilege 

to avoid furnishing evidence that might be used against him in a later criminal prosecution. There 

are sometimes reasons that a person who is not guilty of a crime may invoke the Fifth 

Amendment, and therefore the mere fact that the person invokes the right does not necessarily 

mean the person is guilty of a crime.

You have heard evidence that Anthony Levandowski invoked his Fifth Amendment right 

against self-incrimination as a basis for refusing to testify about anything that occurred from the 

time he started working for Google in 2007 to the present. Mr. Levandowski is not a party to 

this case, but he is a witness in this case. So long as it is reasonable and supported by the 

evidence, you are permitted to assume, but are not required to assume, that if Mr. Levandowski 

testified, his testimony would have been unfavorable to Mr. Levandowski.

 

6

7/26/2017 Hr’g Tr. 98:24–100:8, Dkt. 1050; Dkt. 1535; Baxter v. Palmigiano, 425 U.S. 308, 

318 (1976); Doe ex rel. Rudy-Glanzer v. Glanzer, 232 F.3d 1258, 1264 (9th Cir. 2000); 

Lefkowitz v. Turley, 414 U.S. 70, 77 (1973); Slochower v. Bd. of Higher Ed., 350 U.S. 551, 557–

58, (1956); Grunewald v. United States, 353 U.S. 391, 421–22 (1957); Ohio v. Reiner, 532 U.S. 

17, 20 (2001); Ullmann v. United States, 350 U.S. 422, 426–27 (1956); Lionti v. Lloyd's Ins. Co., 

709 F.2d 237, 244–45 (3d Cir. 1983) (Stern, J., dissenting); LiButti v. United States, 107 F.3d 

110, 120–21 (2d Cir. 1997); Brink’s Inc. v. City of N.Y., 717 F.2d 700, 715 (2d Cir. 1983) 

(Winter, J., dissenting); Harrell v. DCS Equip. Leasing Corp., 951 F.2d 1453, 1465 (5th Cir. 

1992); Veranda Beach Club v. W. Sur. Co., 936 F.2d 1364, 1374 (1st Cir. 1991); In re: TFTLCD (Flat Panel) Antitrust Litig., Case No. 07-md-01827, Dkt. No. 5536, at 88:9-19 (N.D. Cal. 

Apr. 25, 2012); In re Urethane Antitrust Litig., No. 04–1616–JWL, 2013 WL 100250, at *3 (D. 

Kan. Jan. 8, 2013); Cotton v. City of Eureka, No. C–08–04386 SBA (EDL), 2010 WL 2889498, 

at *4 (N.D. Cal. July 22, 2010); Sun Microsystems, Inc. v. Hynix Semiconductor, Inc., 622 F. 

Supp. 2d 890, 907 (N.D. Cal. 2009); Pure Power Boot Camp, Inc. v. Warrior Fitness Boot 

Camp, LLC, 813 F. Supp. 2d 489, 555 (S.D.N.Y. 2011); The Court’s Jury Instructions, Coquina 

Invs. v. Rothstein & TD Bank, N.A., No. 10-60786-Civ-Cooke/Bandstra (S.D. Fla. Jan. 19, 

2012), Dkt. 745 at 19–20; Court’s Instructions to the Jury, Sanchez v. Brokop, No. 04-cv-0134 

LCS/RLP (D.N.M. July 22, 2005), Dkt. 158 at 15; 4/14/2017 A. Levandowski Dep. Tr. 85:8–12, 

85:17–88:6; 8/22/2017 A. Levandowski Dep. 193:9–195:10.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 13 of 135
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

01980-00104/9567528.1 13

sf-3824725

Disputed Instruction No. 6 Re. CORPORATE LIABILITY7 Offered By Waymo

Under the law, corporations and limited liability companies are considered to be persons. 

They can only act through its employees, agents, directors, or officers. Therefore, a corporation 

or limited liability company is responsible for the acts of its employees, agents, directors, or 

officers performed within the scope of authority.

 

7

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS OF 

THE NINTH CIRCUIT §4.2; Case 3:10-cv-03561-WHA Document 1928 at ¶15 (Oracle v. 

Google Final Instructions).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 14 of 135
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

01980-00104/9567528.1 14

sf-3824725

Disputed Instruction No. 6 Re. CORPORATE LIABILITY Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 15 of 135
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

01980-00104/9567528.1 15

sf-3824725

Disputed Instruction No. 7 Re. TWO OR MORE PARTIES—DIFFERENT LEGAL 

RIGHTS8 Offered By Waymo

There are three defendants in this trial, Uber Technologies, Inc., Ottomotto LLC, and 

Otto Trucking LLC. You should decide the case against each defendant separately. Unless 

otherwise stated, the instructions apply to all parties.

Both Ottomotto and Otto Trucking were founded by Anthony Levandowski, who is a 

former Waymo employee. Uber has acquired Ottomotto and Mr. Levandowski is currently the 

managing member of Otto Trucking.

 

8

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS OF 

THE NINTH CIRCUIT §1.8.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 16 of 135
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

01980-00104/9567528.1 16

sf-3824725

Disputed Instruction No. 7 Re. TWO OR MORE PARTIES—DIFFERENT LEGAL 

RIGHTS9 Offered By Defendants

There are three defendants in this trial, Uber Technologies, Inc., Ottomotto LLC, and 

Otto Trucking LLC. You should decide the case against each defendant separately. Unless 

otherwise stated, the instructions apply to all parties.

Uber acquired Ottomotto. Uber did not acquire Otto Trucking.

 

9

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS OF 

THE NINTH CIRCUIT §1.8.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 17 of 135
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

01980-00104/9567528.1 17

sf-3824725

Disputed Instruction No. 8 Re. INTRODUCTION TO VICARIOUS RESPONSIBILITY10

Offered By Waymo and Otto Trucking

One may authorize another to act on his or her behalf in transactions with third persons. 

This relationship is called “agency.” The person giving the authority is called the “principal”; 

the person to whom authority is given is called the “agent.”

A principal is responsible for harm caused by the wrongful conduct of its agents while 

acting within the scope of their authority.

An agent is always responsible for the harm caused by his own wrongful conduct, 

whether or not the principal is also liable.

 

10

 CACI 3700.

[One may authorize another to act on his or her behalf in transactions with third persons. 

This relationship is called “agency.” The person giving the authority is called the 

“principal”; the person to whom authority is given is called the “agent.”]

[An employer/A principal] is responsible for harm caused by the wrongful conduct of 

[his/her/its] [employees/agents] while acting within the scope of their 

[employment/authority].

[An [employee/agent] is always responsible for harm caused by [his/her/ its] own wrongful 

conduct, whether or not the [employer/principal] is also liable.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 18 of 135
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

01980-00104/9567528.1 18

sf-3824725

Disputed Instruction No. 8 Re. INTRODUCTION TO VICARIOUS RESPONSIBILITY 

Offered By Uber/Ottomotto

Uber and Ottomotto contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 19 of 135
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

01980-00104/9567528.1 19

sf-3824725

Disputed Instruction No. 9 Re. PARTY HAVING POWER TO PRODUCE BETTER 

EVIDENCE11 Offered By Waymo

You may consider the ability of each party to provide evidence. If a party provided 

weaker evidence when it could have provided stronger evidence, you may distrust the weaker 

evidence.

 

11

 CACI 203

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 20 of 135
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

01980-00104/9567528.1 20

sf-3824725

Disputed Instruction No. 9 Re. PARTY HAVING POWER TO PRODUCE BETTER 

EVIDENCE Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 21 of 135
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

01980-00104/9567528.1 21

sf-3824725

Disputed Instruction No. 10 Re. OUTLINE OF TRIAL12 Offered By Waymo

Trials proceed in the following way: First, each side may make an opening statement. An 

opening statement is not evidence. It is simply an outline to help you understand what that party 

expects the evidence will show. A party is not required to make an opening statement.

The plaintiff will then present evidence, and counsel for the defendants may crossexamine. Then the defendants may present evidence, and counsel for the plaintiff may crossexamine.

After the evidence has been presented, I will instruct you on the law that applies to the 

case and the attorneys will make closing arguments.

After that, you will go to the jury room to deliberate on your verdict.

 

12

 MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE DISTRICT COURTS 

OF THE NINTH CIRCUIT §1.21.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 22 of 135
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

01980-00104/9567528.1 22

sf-3824725

Disputed Instruction No. 10 Re. OUTLINE OF TRIAL Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 23 of 135
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

01980-00104/9567528.1 23

sf-3824725

Dispute Instruction No. 11 Re. MISAPPROPRIATION OF TRADE SECRETS—

INTRODUCTION13 Offered By Waymo

This is an action for trade secret misappropriation relating to Waymo’s self-driving car 

technology.

Waymo is alleging claims for trade secret misappropriation against Uber, Ottomotto, and 

Otto Trucking under both California law and Federal law. Trial Exhibit __ is a list of what 

Waymo claims as its trade secrets. 

In support of its claims, Waymo asserts that it is the owner of information relating to its 

self-driving technology, including custom LIDAR systems that are used to enable the operation 

of fully self-driving vehicles.

Waymo claims that this information includes nine separate trade secrets and that Uber, 

Ottomotto, and Otto Trucking misappropriated those trade secrets. “Misappropriation” means 

 

13

 CACI 4400.

[Name of plaintiff] claims that [he/she/it] [is/was] the [owner/licensee] of [insert general 

description of alleged trade secret[s]].

[Name of plaintiff] claims that [this/these] [select short term to describe, e.g., information] 

[is/are] [a] trade secret[s] and that [name of defendant] misappropriated [it/them]. 

“Misappropriation” means the improper [acquisition/use/ [or] disclosure] of the trade 

secret[s].

[Name of plaintiff] also claims that [name of defendant]’s misappropriation caused 

[[him/her/it] harm/ [or] [name of defendant] to be unjustly enriched].

[Name of defendant] denies [insert denial of any of the above claims].

[[Name of defendant] also claims [insert affırmative defenses].]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 24 of 135
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

01980-00104/9567528.1 24

sf-3824725

the improper acquisition, use, or disclosure of the trade secrets.

Waymo seeks damages as a result of Uber, Ottomotto, and Otto Trucking’s trade secret 

misappropriation. 

Uber, Ottomotto, and Otto Trucking deny Waymo’s claims. Uber, Ottomotto, and Otto 

Trucking deny that any of the Alleged Trade Secrets is a trade secret, and deny that they 

misappropriated any of the Alleged Trade Secrets.

Uber, Ottomotto, and Otto Trucking also claim that they have independently developed 

the technology at issue.

Otto Trucking claims that has not ratified any actions of Anthony Levandowski and that 

it is not vicariously liable for his alleged actions.

Otto Trucking also claims that it has had no involvement in the development of Uber’s 

LiDAR systems, uses commercially available LiDAR systems instead, and therefore cannot be 

jointly and severally liable.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 25 of 135
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

01980-00104/9567528.1 25

sf-3824725

Dispute Instruction No. 11 Re. MISAPPROPRIATION OF TRADE SECRETS—

INTRODUCTION14 Offered By Defendants

Waymo claims that it is the owner of trade secrets relating to the use of LiDAR in selfdriving cars. Trial Exhibit __ is a list of what Waymo claims as its trade secrets. We will refer 

to this is as “the Alleged Trade Secrets.” 

Waymo claims that Uber, Ottomotto, and Otto Trucking misappropriated the Alleged 

Trade Secrets. “Misappropriation” means the improper use of the Alleged Trade Secrets. 15

Waymo also claims that Uber, Ottomotto, and Otto Trucking’s misappropriation caused 

them to be unjustly enriched.

Uber, Ottomotto, and Otto Trucking deny Waymo’s claims. Uber, Ottomotto, and Otto 

 

14

 CACI 4400.

[Name of plaintiff] claims that [he/she/it] [is/was] the [owner/licensee] of [insert general 

description of alleged trade secret[s]].

[Name of plaintiff] claims that [this/these] [select short term to describe, e.g., information] 

[is/are] [a] trade secret[s] and that [name of defendant] misappropriated [it/them]. 

“Misappropriation” means the improper [acquisition/use/ [or] disclosure] of the trade 

secret[s].

[Name of plaintiff] also claims that [name of defendant]’s misappropriation caused 

[[him/her/it] harm/ [or] [name of defendant] to be unjustly enriched].

[Name of defendant] denies [insert denial of any of the above claims].

[[Name of defendant] also claims [insert affırmative defenses].]

15 CACI 4400, Directions for Use (“To avoid confusion, instruct the jury only on the particular 

theory of misappropriation applicable under the facts of the case.”).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 26 of 135
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

01980-00104/9567528.1 26

sf-3824725

Trucking deny that any of the Alleged Trade Secrets is a trade secret, and deny that they 

misappropriated any of the Alleged Trade Secrets.

Uber, Ottomotto, and Otto Trucking also claim that they have independently developed 

the technology at issue.

Otto Trucking claims that it has not ratified any actions of Anthony Levandowski and 

that it is not vicariously liable for his alleged actions.

Otto Trucking also claims that it has had no involvement in the development of Uber’s

LiDAR systems, uses commercially available LiDAR systems instead, and therefore cannot be 

jointly and severally liable.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 27 of 135
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

01980-00104/9567528.1 27

sf-3824725

Disputed Instruction No. 12 Re. MISAPPROPRIATION OF TRADE SECRETS—

ESSENTIAL FACTUAL ELEMENTS – CALIFORNIA LAW16 Offered By Waymo

Waymo claims that Uber, Ottomotto, and Otto Trucking misappropriated trade secrets in 

violation of California Law. 

To succeed on this claim, Waymo must prove all of the following:

1. That Waymo owns one or more of the nine items identified as trade secrets by Waymo.

2. That one or more of the listed items were trade secrets at the time of the 

misappropriation;

3. That Uber, Ottomotto, and/or Otto Trucking improperly acquired, used, or disclosed one 

or more of the trade secrets.

I will address the damages available to Waymo in a separate instruction.

 

16

 CACI 4401.

[Name of plaintiff] claims that [name of defendant] has misappropriated a trade secret. To 

succeed on this claim, [name of plaintiff] must prove all of the following:

1. That [name of plaintiff] [owned/was a licensee of] [the following:][describe each item 

claimed to be a trade secret that is subject to the misappropriation claim];

2. That [this/these] [select short term to describe, e.g., information] [was/were] [a] trade 

secret[s] at the time of the misappropriation;

3. That [name of defendant] improperly [acquired/used/ [or] disclosed] the trade secret[s];

4. That [[name of plaintiff] was harmed/ [or] [name of defendant] was unjustly enriched]; and

5. That [name of defendant]’s [acquisition/use/ [or] disclosure] was a substantial factor in 

causing [[name of plaintiff]’s harm/ [or] [name of defendant] to be unjustly enriched].

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 28 of 135
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

01980-00104/9567528.1 28

sf-3824725

Dispute Instruction No. 12 Re. MISAPPROPRIATION OF TRADE SECRETS—

ESSENTIAL FACTUAL ELEMENTS – CALIFORNIA LAW17 Offered By Defendants

To succeed on its claim that Uber, Ottomotto, and Otto Trucking misappropriated the 

Alleged Trade Secrets, Waymo must prove all of the following:

1. That Waymo owned each claimed trade secret;

2. That the claimed trade secrets were secret at the time Waymo claims they were 

misappropriated;

3. That Uber, Ottomotto, or Otto Trucking improperly acquired or improperly used 

the trade secrets;

4. That Uber, Ottomotto, or Otto Trucking were unjustly enriched; and

5. That Uber’s, Ottomotto’s, or Otto Trucking’s use of the trade secrets was a 

 

17

 CACI 4401.

[Name of plaintiff] claims that [name of defendant] has misappropriated a trade secret. To 

succeed on this claim, [name of plaintiff] must prove all of the following:

1. That [name of plaintiff] [owned/was a licensee of] [the following:][describe each item 

claimed to be a trade secret that is subject to the misappropriation claim];

2. That [this/these] [select short term to describe, e.g., information] [was/were] [a] trade 

secret[s] at the time of the misappropriation;

3. That [name of defendant] improperly [acquired/used/ [or] disclosed] the trade secret[s];

4. That [[name of plaintiff] was harmed/ [or] [name of defendant] was unjustly enriched]; and

5. That [name of defendant]’s [acquisition/use/ [or] disclosure] was a substantial factor in 

causing [[name of plaintiff]’s harm/ [or] [name of defendant] to be unjustly enriched].

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 29 of 135
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

01980-00104/9567528.1 29

sf-3824725

substantial factor in causing Uber, Ottomotto, or Otto Trucking to be unjustly enriched. 18

 

18 CACI 4401, Directions for Use (“To avoid confusion, instruct the jury only on the particular 

theory of misappropriation applicable under the facts of the case.”).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 30 of 135
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

01980-00104/9567528.1 30

sf-3824725

Disputed Instruction No. 13 Re. TRADE SECRET” DEFINED – CALIFORNIA LAW19

Offered By Waymo

Under California law, to prove that Waymo’s information were/are trade secrets, Waymo 

must prove all of the following:

1. That the information was secret;

2. That the information had actual or potential independent economic value because it was 

secret; and

3. That Waymo made reasonable efforts to keep the information secret.

 

19

 CACI 4402.

To prove that the [select short term to describe, e.g., information] [was/ were] [a] trade 

secret[s], [name of plaintiff] must prove all of the following:

1. That the [e.g., information] [was/were] secret;

2. That the [e.g., information] had actual or potential independent economic value because 

[it was/they were] secret; and

3. That [name of plaintiff] made reasonable efforts to keep the [e.g., information] secret.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 31 of 135
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

01980-00104/9567528.1 31

sf-3824725

Disputed Instruction No. 13 Re. “TRADE SECRET” DEFINED – CALIFORNIA LAW20

Offered By Defendants

To prove that the Alleged Trade Secrets on its trade secret list is trade secret, Waymo 

must prove all of the following:

1. That the Alleged Trade Secret is secret;

2. That the Alleged Trade Secret had actual or potential independent economic value 

because it was secret; and

3. That Waymo made reasonable efforts to keep the Alleged Trade Secret secret.

 

20

 CACI 4402.

To prove that the [select short term to describe, e.g., information] [was/ were] [a] trade 

secret[s], [name of plaintiff] must prove all of the following:

1. That the [e.g., information] [was/were] secret;

2. That the [e.g., information] had actual or potential independent economic value because 

[it was/they were] secret; and

3. That [name of plaintiff] made reasonable efforts to keep the [e.g., information] secret.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 32 of 135
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

01980-00104/9567528.1 32

sf-3824725

Disputed Instruction No. 14 Re. GENERALIZED KNOWLEDGE Offered By Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 33 of 135
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

01980-00104/9567528.1 33

sf-3824725

Disputed Instruction No. 14 Re. GENERALIZED KNOWLEDGE21 Offered By Defendants

Generalized knowledge and skill that an employee learned on the job is not a trade secret. 

Matters of general knowledge in a trade or special knowledge of persons who are skilled in a 

trade are also not trade secrets. 

 

21 Whyte v. Schlage Lock Co., 101 Cal. App. 4th 1443 (2002) (rejecting doctrine of inevitable 

disclosure); DVD Copy Control Ass’n., Inc. v. Bunner, 116 Cal. App. 4th 241, 251 (2004) (“[I]n 

short, the test for a trade secret is whether the matter sought to be protected is information (1) 

that is valuable because it is unknown to others and (2) that the owner has attempted to keep

secret. The first element is the crucial one here: in order to qualify as a trade secret, the 

information ‘must be secret, and must not be of public knowledge or of a general knowledge in 

the trade or business.”’) (citations omitted); Winston Research Corp. v. 3M, 350 F.2d 134, 139 

(9th Cir. 1965) (“There was expert testimony that if a technician in the field were asked to design 

a machine having the time-displacement error achieved by the Mincom machine he would adopt 

the general approach of reducing the inertia of rotating parts and utilizing a wide band servo 

system — that this approach was dictated by well known principles of physics. It was therefore 

not protectable under accepted trade secret doctrine. It was not ‘secret,’ for it consisted 

essentially of general engineering principles in the public domain and part of the intellectual 

equipment of technical employees. Its disclosure could not be treated as betrayal of a confidence 

placed by Mincom in its technical employees.”); Diodes, Inc. v. Franzen, 260 Cal. App. 2d 244, 

253 (1968) (“the complainant should describe the subject matter of the trade secret with 

sufficient particularity to separate it from matters of general knowledge in the trade or of special 

knowledge of those persons who are skilled in the trade, and to permit the defendant to ascertain 

at least the boundaries within which the secret lies.”).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 34 of 135
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

01980-00104/9567528.1 34

sf-3824725

Stipulated Instruction No. 15 Re. SECRECY REQUIREMENT – CALIFORNIA 

LAW22

Under California law, the secrecy required to prove that something is a trade secret does 

not have to be absolute in the sense that no one else in the world possesses the information. It 

may be disclosed to employees involved in Waymo’s use of the trade secret as long as they are 

instructed to keep the information secret. It may also be disclosed to nonemployees if they are 

obligated to keep the information secret. However, it must not have been generally known to the 

public or to people who could obtain value from knowing it.

 

22

 CACI 4403.

The secrecy required to prove that something is a trade secret does not have to be absolute 

in the sense that no one else in the world possesses the information. It may be disclosed to 

employees involved in [name of plaintiff]’s use of the trade secret as long as they are 

instructed to keep the information secret. It may also be disclosed to nonemployees if they 

are obligated to keep the information secret. However, it must not have been generally 

known to the public or to people who could obtain value from knowing it.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 35 of 135
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

01980-00104/9567528.1 35

sf-3824725

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 36 of 135
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

01980-00104/9567528.1 36

sf-3824725

Stipulated Instruction No. 16 Re. “INDEPENDENT ECONOMIC VALUE” 

EXPLAINED – CALIFORNIA LAW23

Under California law, each claimed trade secret has independent economic value if it 

gives the owner an actual or potential business advantage over others who do not know the 

information and who could obtain economic value from its disclosure or use.

In determining whether information had actual or potential independent economic value 

because it was secret, you may consider the following:

a) The extent to which Waymo obtained or could obtain economic value from 

the information in keeping it secret;

 

23

 CACI 4412.

[Select short term to describe, e.g., Information] has independent economic value if it gives 

the owner an actual or potential business advantage over others who do not know the [e.g., 

information] and who could obtain economic value from its disclosure or use.

In determining whether [e.g., information] had actual or potential independent economic 

value because it was secret, you may consider the following:

(a) The extent to which [name of plaintiff] obtained or could obtain economic value from 

the [e.g., information] in keeping [it/them] secret;

(b) The extent to which others could obtain economic value from the [e.g., information] if [it 

were/they were] not secret;

(c) The amount of time, money, or labor that [name of plaintiff] expended in developing the 

[e.g., information];

(d) The amount of time, money, or labor that [would be/was] saved by a competitor who 

used the [e.g., information];

[(e) [Insert other applicable factors].] 

The presence or absence of any one or more of these factors is not necessarily 

determinative.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 37 of 135
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

01980-00104/9567528.1 37

sf-3824725

b) The extent to which others could obtain economic value from the information 

if it were not secret;

c) The amount of time, money, or labor that Waymo expended in developing the 

information;

d) The amount of time, money, or labor that Uber, Ottomotto and/or Otto 

Trucking would be or was by using the information;

The presence or absence of any one or more of these factors is not necessarily 

determinative.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 38 of 135
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

01980-00104/9567528.1 38

sf-3824725

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 39 of 135
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

01980-00104/9567528.1 39

sf-3824725

Stipulated Instruction No. 17 Re. REASONABLE EFFORTS TO PROTECT SECRECY –

CALIFORNIA LAW24

 

24

 CACI 4404.

To establish that the [select short term to describe, e.g., information] [is/ are] [a] trade 

secret[s], [name of plaintiff] must prove that [he/she/it] made reasonable efforts under the 

circumstances to keep it secret.

“Reasonable efforts” are the efforts that would be made by a reasonable [person/business] 

in the same situation and having the same knowledge and resources as [name of plaintiff], 

exercising due care to protect important information of the same kind. [This requirement 

applies separately to each item that [name of plaintiff] claims to be a trade secret.]

In determining whether or not [name of plaintiff] made reasonable efforts to keep the [e.g., 

information] secret, you should consider all of the facts and circumstances. Among the 

factors you may consider are the following:

[a. Whether documents or computer files containing the [e.g., information] were marked 

with confidentiality warnings;]

[b. Whether [name of plaintiff] instructed [his/her/its] employees to treat the [e.g., 

information] as confidential;]

[c. Whether [name of plaintiff] restricted access to the [e.g., information] to persons who had 

a business reason to know the information;]

[d. Whether [name of plaintiff] kept the [e.g., information] in a restricted or secured area;]

[e. Whether [name of plaintiff] required employees or others with access to the [e.g., 

information] to sign confidentiality or nondisclosure agreements;]

[f. Whether [name of plaintiff] took any action to protect the specific [e.g., information], or 

whether it relied on general measures taken to protect its business information or assets;]

[g. The extent to which any general measures taken by [name of plaintiff] would prevent the 

unauthorized disclosure of the [e.g., information];]

[h. Whether there were other reasonable measures available to [name of plaintiff] that 

[he/she/it] did not take;] 

[i. Specify other factor(s).] 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 40 of 135
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

01980-00104/9567528.1 40

sf-3824725

Under California law, to establish that Waymo’s information are trade secrets, Waymo 

must prove that it made reasonable efforts under the circumstances to keep the information 

secret. “Reasonable efforts” are the efforts that would be made by a reasonable business in the 

same situation and having the same knowledge and resources as Waymo, exercising due care to 

protect important information of the same kind. This requirement applies separately to each item 

that Waymo claims to be a trade secret.

In determining whether or not Waymo made reasonable efforts to keep the information 

secret, you should consider all of the facts and circumstances. Among the factors you may 

consider are the following:

a. Whether products, hardware, documents or computer files containing the 

information were marked with confidentiality warnings;

b. Whether Waymo instructed its employees to treat the information as confidential;

c. Whether Waymo restricted access to the information to persons who had a 

business reason to know the information;

d. Whether Waymo kept the information in a restricted or secured area;

e. Whether Waymo required employees or others with access to the information to 

sign confidentiality or nondisclosure agreements;

f. Whether Waymo took any action to protect the specific information, or whether it 

relied on general measures taken to protect its business information or assets;

g. The extent to which any general measures taken by Waymo would prevent the 

unauthorized disclosure of the information;

h. Whether there were other reasonable measures available to Waymo that it did not 

 

The presence or absence of any one or more of these factors is not necessarily 

determinative.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 41 of 135
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

01980-00104/9567528.1 41

sf-3824725

take;

The presence or absence of any one or more of these factors is not necessarily 

determinative.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 42 of 135
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

01980-00104/9567528.1 42

sf-3824725

Disputed Instruction No. 18 Re. DECLARING TRADE SECRETS Offered By Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 43 of 135
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

01980-00104/9567528.1 43

sf-3824725

Disputed Instruction No. 18 Re. DECLARING TRADE SECRETS25 Offered By 

Defendants

Merely declaring that something is confidential or a trade secret is not evidence that the 

information is the subject of efforts that are reasonable under the circumstances to maintain its 

secrecy.

 

25

 Louisiana Pac. Corp. v. James Hardie Bldg. Prods., Inc., No. C-12-3433 SC, 2013 WL

3483618, at *2 (N.D. Cal. July 8, 2013); EarthCam, Inc. v. Oxblue Corp., No. 15-11893, 2017 

WL 3188453, at *8 (11th Cir. July 27, 2017) (citing statute); Pollara v. Radiant Logistics Inc., 

No. CV 12-344 GAF (JEMx), 2014 WL 12585781, at *1 (C.D. Cal. June 6, 2014) (citing 

Thompson v. Impaxx, 113 Cal. App. 4th 1425, 1430 (2003)); PSC Indus. Outsourcing, LP v. 

Kodysz, No. 1:13-CV-0964, 2013 WL 3354452, at *3 (E.D. Cal. July 3, 2013) (“what is or is not 

a ‘trade secret’ is question of fact, not merely a matter of labeling”); Hertz v. Luzenac Am., Inc., 

No. 04-CV-01961-LTB-CBS, 2006 WL 1794736, at *2 (D. Colo. June 27, 2006).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 44 of 135
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

01980-00104/9567528.1 44

sf-3824725

Disputed Instruction 19. Re. MISAPPROPRIATION BY ACQUISITION – CALIFORNIA 

LAW26 Offered By Waymo

Under California law, Uber, Ottomotto, and/or Otto Trucking misappropriated Waymo’s 

trade secrets by acquisition if Uber, Ottomotto, and/or Otto Trucking acquired the trade secrets 

and knew or had reason to know that any person used improper means to acquire them.

 

26

 CACI 4405.

[Name of defendant] misappropriated [name of plaintiff]’s trade secret[s] by acquisition if 

[name of defendant] acquired the trade secret[s] and knew or had reason to know that 

[he/she/it/[name of third party]] used improper means to acquire [it/them].

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 45 of 135
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

01980-00104/9567528.1 45

sf-3824725

Disputed Instruction 19. Re. MISAPPROPRIATION BY ACQUISITION – CALIFORNIA 

LAW27 Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law). 

 

27

 CACI 4405.

[Name of defendant] misappropriated [name of plaintiff]’s trade secret[s] by acquisition if 

[name of defendant] acquired the trade secret[s] and knew or had reason to know that 

[he/she/it/[name of third party]] used improper means to acquire [it/them].

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 46 of 135
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

01980-00104/9567528.1 46

sf-3824725

Disputed Instruction No. 20 Re. PASSIVE OR INADVERTENT RECEIPT Offered By 

Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 47 of 135
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

01980-00104/9567528.1 47

sf-3824725

Disputed Instruction No. 20 Re. PASSIVE OR INADVERTENT RECEIPT28 Offered By 

Defendants

Passively or inadvertently receiving Waymo’s trade secrets is not evidence that Uber, 

Ottomotto, or Otto Trucking misappropriated Waymo’s trade secrets. Instead, you may only find 

that Uber, Ottomotto, or Otto Trucking misappropriated Waymo’s trade secrets if Waymo proves 

by a preponderance of the evidence that Uber, Ottomotto, or Otto Trucking undertook pointed 

conduct intended to secure dominion over Waymo’s trade secrets.

 

28

 Silvaco Data Sys. v. Intel Corp., 184 Cal. App. 4th 210, 222 (2010), as modified on denial of 

reh’g (May 27, 2010), overruled in part on other grounds by Kwikset Corp. v. Superior Court, 

51 Cal. 4th 310 (2011) (“To acquire a thing is, most broadly, to ‘receive’ or ‘come into 

possession of’ it. (1 Oxford English Dict. (2d ed. 1989), p. 115.) But the term implies more than 

passive reception; it implies pointed conduct intended to secure dominion over the thing, i.e., 

‘[t]o gain, obtain, or get as one’s own, to gain the ownership of (by one’s own exertions or 

qualities).” (See id. at p. 115 [‘acquisition’ as ‘[t]he action of obtaining or getting for oneself, or 

by one's own exertion’].) One does not ordinarily ‘acquire’ a thing inadvertently; the term 

implies conduct directed to that objective. The choice of that term over ‘receive’ suggests that 

inadvertently coming into possession of a trade secret will not constitute acquisition. Thus one 

who passively receives a trade secret, but neither discloses nor uses it, would not be guilty of 

misappropriation.”); see also CACI 4405 (citing to Silvaco).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 48 of 135
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

01980-00104/9567528.1 48

sf-3824725

Disputed Instruction No. 21. Re. MISAPPROPRIATION BY USE – CALIFORNIA LAW29

Offered By Waymo

Under California law, Uber, Ottomotto, and/or Otto Trucking misappropriated Waymo’s 

trade secrets by use if Uber, Ottomotto, and/or Otto Trucking used them without Waymo’s 

consent and did any of the following:

1. Acquired knowledge of the trade secrets by improper means; or

 

29

 CACI 4407.

[Name of defendant] misappropriated [name of plaintiff]’s trade secret[s] by use if [name of 

defendant]

1. used [it/them] without [name of plaintiff]’s consent; and

2. [did any of the following:]

2. [insert one or more of the following:]

2. [acquired knowledge of the trade secret[s] by improper means][./ ; or]

2. [at the time of use, knew or had reason to know that [his/her/its] knowledge of [name of 

plaintiff]’s trade secret[s] came from or through [name of third party], and that [name of 

third party] had previously acquired the trade secret[s] by improper means][./; or]

2. [at the time of use, knew or had reason to know that [his/her/its] knowledge of [name of 

plaintiff]’s trade secret[s] was acquired under circumstances creating a legal obligation to 

limit use of the [select short term to describe, e.g., information]][./; or]

2. [at the time of use, knew or had reason to know that [his/her/its] knowledge of [name of 

plaintiff]’s trade secret[s] came from or through [name of third party], and that [name of 

third party] had a duty to [name of plaintiff] to limit use of the [e.g., information]][./; or]

2. [Before a material change of [his/her/its] position, knew or had reason to know that [it 

was/they were] [a] trade secret[s] and that knowledge of [it/them] had been acquired by 

accident or mistake.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 49 of 135
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

01980-00104/9567528.1 49

sf-3824725

2. At the time of use, knew or had reason to know that its knowledge of Waymo’s trade 

secrets came from or through a third party or other defendant, and that the third party or 

other defendant had previously acquired the trade secrets by improper means; or

3. At the time of use, knew or had reason to know that its knowledge of Waymo’s trade 

secrets was acquired under circumstances creating a legal obligation to limit use of the 

information; or

4. At the time of use, knew or had reason to know that its knowledge of Waymo’s trade 

secrets came from or through a third party, and that third party had a duty to Waymo to 

limit use of the information.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 50 of 135
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

01980-00104/9567528.1 50

sf-3824725

Disputed Instruction No. 21. Re. MISAPPROPRIATION BY USE – CALIFORNIA LAW30

Offered By Defendants

Uber and/or Ottomotto misappropriated Waymo’s claimed trade secrets by use if they

used them without Waymo’s consent and did any of the following:

1. Acquired knowledge of the trade secrets by improper means; or

 

30

 CACI 4407.

[Name of defendant] misappropriated [name of plaintiff]’s trade secret[s] by use if [name of 

defendant]

1. used [it/them] without [name of plaintiff]’s consent; and

2. [did any of the following:]

[insert one or more of the following:]

[acquired knowledge of the trade secret[s] by improper means][./ ; or]

[at the time of use, knew or had reason to know that [his/her/its] knowledge of 

[name of plaintiff]’s trade secret[s] came from or through [name of third party], and that 

[name of third party] had previously acquired the trade secret[s] by improper means][./; or]

[at the time of use, knew or had reason to know that [his/her/its] knowledge of 

[name of plaintiff]’s trade secret[s] was acquired under circumstances creating a legal 

obligation to limit use of the [select short term to describe, e.g., information]][./; or]

[at the time of use, knew or had reason to know that [his/her/its] knowledge of 

[name of plaintiff]’s trade secret[s] came from or through [name of third party], and that 

[name of third party] had a duty to [name of plaintiff] to limit use of the [e.g., 

information]][./; or]

[Before a material change of [his/her/its] position, knew or had reason to know that 

[it was/they were] [a] trade secret[s] and that knowledge of [it/them] had been acquired by 

accident or mistake.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 51 of 135
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

01980-00104/9567528.1 51

sf-3824725

2. At the time of use, knew or had reason to know that its knowledge of Waymo’s trade 

secrets came from or through Anthony Levandowski, and that Anthony Levandowski had 

previously acquired the trade secrets by improper means.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 52 of 135
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

01980-00104/9567528.1 52

sf-3824725

Disputed Instruction No. 22. Re. DIFFERING PRODUCTS31 Offered By Waymo

Misappropriation by use of trade secrets occurs even if the defendants’ product differs in 

some respects from the trade secret.

 

31

 InfoSpan, Inc. v. Emirates NBD Bank PJSC, 2015 WL 13357646 (C.D. Cal. May 6, 2015); 

PMC, Inc. v. Kadisha, 78 Cal. App. 4th 1368 (2000); Speech Tech. Assocs. v. Adaptive Commc’n 

Sys., Inc., 1994 WL 449032 (N.D. Cal. Aug. 16, 1994); Verigy US, Inc. v. Mayder, 2008 WL 

564634 (N.D. Cal. Feb. 29, 2008). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 53 of 135
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

01980-00104/9567528.1 53

sf-3824725

Disputed Instruction No. 22. Re. DIFFERING PRODUCTS Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 54 of 135
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

01980-00104/9567528.1 54

sf-3824725

Disputed Instruction No. 23. Re. INEVITABLE DISCLOSURE Offered By Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 55 of 135
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

01980-00104/9567528.1 55

sf-3824725

Disputed Instruction No. 23. Re. INEVITABLE DISCLOSURE32 Offered By Defendants

To find misappropriation by use you must find that Uber, Ottomotto, and Otto Trucking 

actually used the claimed trade secret. It is not enough for Waymo to show that their employees 

would inevitably use the claimed trade secret in their work for Uber. Waymo must show that 

Uber, Ottomotto, and Otto Trucking directly exploited Waymo’s claimed trade secret for their 

own advantage.

 

32 Whyte v. Schlage Lock Co., 101 Cal. App. 4th 1443, 1458, 1463–64 (2002) (“Lest there be any 

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

Bus. & Prof. Code Section 16600.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 56 of 135
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

01980-00104/9567528.1 56

sf-3824725

Disputed Instruction No. 24 Re. MISAPPROPRIATION BY DISCLOSURE –

CALIFORNIA LAW33 Offered By Waymo

Under California law, Uber, Ottomotto, and/or Otto Trucking misappropriated Waymo’s 

trade secrets by disclosure if Uber, Ottomotto, and/or Otto Trucking disclosed any trade secret 

without Waymo’s consent and did any of the following:

1. Acquired knowledge of the trade secrets by improper means; or 

 

33

 CACI 4406.

[Name of defendant] misappropriated [name of plaintiff]’s trade secret[s] by disclosure if 

[name of defendant] 1. disclosed [it/them] without [name of plaintiff]’s consent; and

2. [did any of the following:]

2. [insert one or more of the following:]

2. [acquired knowledge of the trade secret[s] by improper means][./; or]

2. [at the time of disclosure, knew or had reason to know that [his/her/its] knowledge of 

[name of plaintiff]’s trade secret[s] came from or through [name of third party], and that 

[name of third party] had previously acquired the trade secret[s] by improper means][./; or]

2. [at the time of disclosure, knew or had reason to know that [his/her/its] knowledge of 

[name of plaintiff]’s trade secret[s] was acquired [insert circumstances giving rise to duty to 

maintain secrecy], which created a duty to keep the [select short term to describe, e.g., 

information] secret][./; or]

2. [at the time of disclosure, knew or had reason to know that [his/her/its] knowledge of 

[name of plaintiff]’s trade secret[s] came from or through [name of third party], and that 

[name of third party] had a duty to [name of plaintiff] to keep the [e.g., information] 

secret][./; or]

2. [Before a material change of [his/her/its] position, knew or had reason to know that [it 

was/they were] [a] trade secret[s] and that knowledge of [it/them] had been acquired by 

accident or mistake.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 57 of 135
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

01980-00104/9567528.1 57

sf-3824725

2. At the time of disclosure, knew or had reason to know that its knowledge of 

Waymo’s trade secrets came from or through a third party or other defendant, and 

that the third party or other defendant had previously acquired the trade secrets by

improper means; or

3. At the time of disclosure, knew or had reason to know that its knowledge of 

Waymo’s trade secrets was acquired by virtue of a third parties’ employment with 

Waymo, which created a duty to keep the information secret; or

4. At the time of disclosure, knew or had reason to know that its knowledge of 

Waymo’s trade secrets came from or through a third party and that third party had 

a duty to Waymo to keep the information secret.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 58 of 135
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

01980-00104/9567528.1 58

sf-3824725

Disputed Instruction No. 24 Re. MISAPPROPRIATION BY DISCLOSURE –

CALIFORNIA LAW Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 59 of 135
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

01980-00104/9567528.1 59

sf-3824725

Stipulated Instruction No. 25 Re. IMPROPER MEANS OF ACQUIRING TRADE 

SECRET – CALIFORNIA LAW34

Under California law, improper means of acquiring a trade secret or knowledge of a trade 

secret include, but are not limited to, theft, misrepresentation, breach or inducing a breach of a 

duty to maintain secrecy.

However, it is not improper to acquire a trade secret or knowledge of the trade secret by

any of the following:

1. Independent efforts to invent or discover the information;

2. Reverse engineering; that is, examining or testing a product to determine how it 

works, by a person who has a right to possess the product;

 

34

 CACI 4408.

Improper means of acquiring a trade secret or knowledge of a trade secret include, but are 

not limited to, [theft/bribery/misrepresentation/ breach or inducing a breach of a duty to 

maintain secrecy/ [or] wiretapping, electronic eavesdropping, [or] [insert other means of 

espionage]].

[However, it is not improper to acquire a trade secret or knowledge of the trade secret by 

[any of the following]:

[1. Independent efforts to invent or discover the information;]

[2. Reverse engineering; that is, examining or testing a product to determine how it works, 

by a person who has a right to possess the product;]

[3. Obtaining the information as a result of a license agreement with the owner of the 

information;]

[4. Observing the information in public use or on public display;] [or]

[5. Obtaining the information from published literature, such as trade journals, reference 

books, the Internet, or other publicly available sources.]]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 60 of 135
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

01980-00104/9567528.1 60

sf-3824725

3. Observing the information in public use or on public display; or

4 . Obtaining the information from published literature, such as trade journals, 

reference books, the Internet, or other publicly available sources.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 61 of 135
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

01980-00104/9567528.1 61

sf-3824725

Disputed Instruction No. 26. Re. CHANGING EMPLOYERS Offered By Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 62 of 135
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

01980-00104/9567528.1 62

sf-3824725

Disputed Instruction No. 26. Re. CHANGING EMPLOYERS35 Offered By Defendants

You have heard testimony that employees of Uber, Ottomotto, and Otto Trucking used to 

work for Google and/or Waymo. The mere fact that employees left Google or Waymo to work 

for one of these companies does not mean that they used Waymo’s trade secrets after they left 

Google or Waymo. Employees are allowed to change employers, and to apply their talents and 

skill sets in their new jobs. However, they may not use trade secrets that belong to their former 

employer.

 

35

 Whyte v. Schlage Lock Co., 101 Cal. App. 4th 1443, 1458, 1463–64 (2002) (“Lest there be 

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

Cal. Bus. & Prof. Code Section 16600.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 63 of 135
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

01980-00104/9567528.1 63

sf-3824725

Disputed Instruction No. 27 Re. MISAPPROPRIATION OF TRADE SECRETS—

INTRODUCTION TO FEDERAL LAW36 Offered By Waymo

Waymo has also brought a claim for misappropriation of trade secrets under Federal law. 

An owner of a trade secret that is misappropriated may also bring a civil action under 

Federal Law if the trade secret is related to a product or service used in, or intended for use in, 

interstate or foreign commerce.

To succeed on this claim, Waymo must prove all of the following:

1. That Waymo owns one or more of the nine items identified as trade secrets by Waymo;

2. That one or more of the listed items were trade secrets are related to a product or service 

used in, or intended for use in, interstate or foreign commerce; and

3. That Uber, Ottomotto, and/or Otto Trucking improperly acquired, used, or disclosed one 

or more of the trade secrets;

I will address the damages available to Waymo in a separate instruction.

 

36

 18 U.S.C. § 1836(b)(1).

(1) In general.--An owner of a trade secret that is misappropriated may bring a civil action 

under this subsection if the trade secret is related to a product or service used in, or 

intended for use in, interstate or foreign commerce.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 64 of 135
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

01980-00104/9567528.1 64

sf-3824725

Disputed Instruction No. 27 Re. MISAPPROPRIATION OF TRADE SECRETS—

INTRODUCTION TO FEDERAL LAW Offered By Defendants

Waymo has also brought a claim for misappropriation of trade secrets under a federal 

statute called the Defend Trade Secrets Act of 2016. If you find that Waymo has established by 

a preponderance of the evidence that Uber, Ottomotto, or Otto Trucking misappropriated any of 

Waymo’s nine trade secrets under state law, you should then consider whether Waymo has 

established by a preponderance of the evidence that “the trade secret is related to a product or 

service used in, or intended for use in, interstate or foreign commerce.”37

If you find that Uber, Ottomotto, and Otto Trucking misappropriated any of Waymo’s 

claimed trade secrets based solely upon acts of misappropriation taking place before May 11, 

2016, you may not find that Uber, Ottomotto, or Otto Trucking misappropriated that trade secret 

under federal law.38

“Interstate commerce” is commercial activity that crosses more than one country or state, 

such as the movement of goods from one state to another.39

 

37 18 U.S.C. 1836(b)(1) (“An owner of a trade secret that is misappropriated may bring a civil 

action under this subsection if the trade secret is related to a product or service used in, or 

intended for use in, interstate or foreign commerce.”). 

38 Avago Techs. U.S. Inc. v. Nanoprecision Prods., Inc., No. 16-cv-03737-JCS, 2017 WL

412524, at *8 (N.D. Cal. Jan. 31, 2017)(“The DTSA applies to ‘any misappropriation of a trade 

secret ... for which any act occurs on or after the date of the enactment of [the] Act.” (quoting 

Defend Trade Secrets Act of 2016, PL 114-153, May 11, 2016, 130 Stat. 376. The date of 

enactment was May 11, 2016.)). 

39 CACI 2900, FELA – Essential Factual Elements ([“‘Interstate commerce’ is commercial 

activity that crosses more than one country or state, such as the movement of goods from one 

state to another.”]).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 65 of 135
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

01980-00104/9567528.1 65

sf-3824725

Disputed Instruction No. 28 Re. TRADE SECRET DEFINED – FEDERAL LAW40 Offered 

By Waymo

Under Federal law, the term “trade secret” includes all forms and types of scientific, 

technical, or engineering information, including patterns, plans, compilations, program devices, 

formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, 

whether tangible or intangible, and whether or how stored, compiled, or memorialized 

physically, electronically, graphically, photographically, or in writing if the owner thereof has 

taken reasonable measures to keep such information secret; and the information derives 

independent economic value, actual or potential, from not being generally known to, and not 

being readily ascertainable through proper means by, another person who can obtain economic 

value from the disclosure or use of the information.

 

40

 18 U.S.C.A. § 1839.

(3) the term “trade secret” means all forms and types of financial, business, scientific, 

technical, economic, or engineering information, including patterns, plans, compilations, 

program devices, formulas, designs, prototypes, methods, techniques, processes, 

procedures, programs, or codes, whether tangible or intangible, and whether or how 

stored, compiled, or memorialized physically, electronically, graphically, photographically, 

or in writing if--

(A) the owner thereof has taken reasonable measures to keep such information secret; and

(B) the information derives independent economic value, actual or potential, from not 

being generally known to, and not being readily ascertainable through proper means by, 

another person who can obtain economic value from the disclosure or use of the 

information;

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 66 of 135
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

01980-00104/9567528.1 66

sf-3824725

Disputed Instruction No. 28 Re. TRADE SECRET DEFINED – FEDERAL LAW Offered 

By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 67 of 135
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

01980-00104/9567528.1 67

sf-3824725

Disputed Instruction No. 29 Re. OWNERSHIP DEFINED – FEDERAL LAW41 Offered By 

Waymo

Under Federal law, the term “owner”, with respect to a trade secret, means the person or 

entity in whom or in which rightful legal or equitable title to, or license in, the trade secret is 

reposed.

 

41

 18 U.S.C.A. § 1839.

(4) the term “owner”, with respect to a trade secret, means the person or entity in whom or 

in which rightful legal or equitable title to, or license in, the trade secret is reposed;

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 68 of 135
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

01980-00104/9567528.1 68

sf-3824725

Disputed Instruction No. 29 Re. OWNERSHIP DEFINED – FEDERAL LAW Offered By 

Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 69 of 135
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

01980-00104/9567528.1 69

sf-3824725

Disputed Instruction No. 30 Re. MISAPPROPRIATION DEFINED – FEDERAL LAW42

Offered By Waymo

Under Federal law, the term “misappropriation” means acquisition of a trade secret of 

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

 

42

 18 U.S.C.A. § 1839.

(5) the term “misappropriation” means--

(A) acquisition 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; or

(B) disclosure or use of a trade secret of another without express or implied consent by a 

person who--

(i) used improper means to acquire knowledge of the trade secret;

(ii) at the time of disclosure or use, knew or had reason to know that the knowledge of the 

trade secret was--

(I) derived from or through a person who had used improper means to acquire the trade 

secret;

(II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade 

secret or limit the use of the trade secret; or

(III) derived from or through a person who owed a duty to the person seeking relief to 

maintain the secrecy of the trade secret or limit the use of the trade secret; or

(iii) before a material change of the position of the person, knew or had reason to know 

that--

(I) the trade secret was a trade secret; and

(II) knowledge of the trade secret had been acquired by accident or mistake;

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 70 of 135
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

01980-00104/9567528.1 70

sf-3824725

improper means.

Misappropriation also includes disclosure or use of a trade secret of another without 

express or implied consent by a person who used improper means to acquire knowledge of the 

trade secret or at the time of disclosure or use, knew or had reason to know that the knowledge of 

the trade secret was derived from or through a person who had used improper means to acquire 

the trade secret; acquired under circumstances giving rise to a duty to maintain the secrecy of the 

trade secret or limit the use of the trade secret; or derived from or through a person who owed a 

duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the 

trade secret.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 71 of 135
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

01980-00104/9567528.1 71

sf-3824725

Disputed Instruction No. 30 Re. MISAPPROPRIATION DEFINED – FEDERAL LAW 

Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 72 of 135
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

01980-00104/9567528.1 72

sf-3824725

Disputed Instruction No. 31 Re. IMPROPER MEANS DEFINED – FEDERAL LAW43

Offered By Waymo

Under Federal law, the term “improper means” includes theft, bribery, misrepresentation, 

breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic 

or other means. Improper means does not include reverse engineering, independent derivation, 

or any other lawful means of acquisition.

 

43

 18 U.S.C.A. § 1839.

(6) the term “improper means”--

(A) includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty 

to maintain secrecy, or espionage through electronic or other means; and

(B) does not include reverse engineering, independent derivation, or any other lawful 

means of acquisition; and

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 73 of 135
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

01980-00104/9567528.1 73

sf-3824725

Disputed Instruction No. 31 Re. IMPROPER MEANS DEFINED – FEDERAL LAW 

Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 74 of 135
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

01980-00104/9567528.1 74

sf-3824725

Disputed Instruction No. 32 Re. DUTY TO EMPLOYER44 Offered By Waymo

Under both Federal and California law, an employee has a duty not to use or disclose 

trade secrets that the employee acquired during the course of his or her employment. This duty 

survives the termination of the employment relationship.

 

44

 Blackbird Tecnhologies, Inc. v. Joshi, No. 5:15-CV-04272-EJD, 2015 WL 5818067, at *4 

(N.D. Cal. Oct. 6, 2015), appeal dismissed (Nov. 23, 2015)

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 75 of 135
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

01980-00104/9567528.1 75

sf-3824725

Disputed Instruction No. 32 Re. DUTY TO EMPLOYER Offered By Waymo

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 76 of 135
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

01980-00104/9567528.1 76

sf-3824725

Disputed Instruction No. 33 Re. COMBINATIONS AS TRADE SECRETS45 Offered By 

Waymo

Under both Federal and California law, combinations of public information from a 

variety of different sources when combined in a novel way can be a trade secret. It does not

matter if a portion of the trade secret is generally known, or even that every individual portion of 

the trade secret is generally known, as long as the combination of all such information is not 

generally known.

 

45

 02 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 399 F. Supp. 2d 1064 (N.D. Cal. 2005); 

Leatt Corp. v. Innovative Safety Tech., LLC, 2010 WL 1526382 (S.D. Cal. Apr. 15, 2010); 

SkinMedica, Inc. v. Histogen Inc., 869 F. Supp. 2d 1176 (S.D. Cal. 2012); United States v. Nosal, 

844 F.3d 1024 (9th Cir. 2016); Verigy US, Inc. v. Mayder, 2008 WL 564634 (N.D. Cal. Feb. 29, 

2008).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 77 of 135
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

01980-00104/9567528.1 77

sf-3824725

Disputed Instruction No. 33 Re. COMBINATIONS AS TRADE SECRETS Offered By 

Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 78 of 135
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

01980-00104/9567528.1 78

sf-3824725

Disputed Instruction No. 34 Re. WILLFUL AND MALICIOUS MISAPPROPRIATION 

OF TRADE SECRETS46 Offered By Waymo

If you decide that Uber, Ottomotto, and/or Otto Trucking have misappropriated a trade 

secret of Waymo under either California or Federal law, you will be asked on your verdict form 

to indicate whether such misappropriation was willful and malicious. Waymo must prove that 

Uber, Ottomotto, and/or Otto Trucking acted willfully and maliciously by clear and convincing 

evidence.

“Willfully” means that Uber, Ottomotto, and/or Otto Trucking acted with a purpose or 

willingness to commit the act or engage in the conduct in question, and the conduct was not 

 

46

 18 U.S.C.A. § 1836; CACI 4411.

If you decide that [name of defendant]’s misappropriation caused [name of plaintiff] harm, 

you must decide whether that conduct justifies an award of punitive damages. The 

purposes of punitive damages are to punish a wrongdoer for the conduct that harmed 

[name of plaintiff] and to discourage similar conduct in the future.

In order to recover punitive damages, [name of plaintiff] must prove [by clear and 

convincing evidence] that [name of defendant] acted willfully and maliciously. You must 

determine whether [name of defendant] acted willfully and maliciously, but you will not be 

asked to determine the amount of any punitive damages. I will calculate the amount later.

“Willfully” means that [name of defendant] acted with a purpose or willingness to commit 

the act or engage in the conduct in question, and the conduct was not reasonable under the 

circumstances at the time and was not undertaken in good faith.

“Maliciously” means that [name of defendant] acted with an intent to cause injury, or that 

[name of defendant]’s conduct was despicable and was done with a willful and knowing 

disregard for the rights of others. 

“Despicable conduct” is conduct so vile, base, or wretched that it would be looked down on 

and despised by ordinary decent people. [Name of defendant] acted with knowing disregard 

if [he/she/it] was aware of the probable consequences of [his/her/its] conduct and 

deliberately failed to avoid those consequences.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 79 of 135
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

01980-00104/9567528.1 79

sf-3824725

reasonable under the circumstances at the time and was not undertaken in good faith.

“Maliciously” means that Uber, Ottomotto, and/or Otto Trucking acted with an intent to 

cause injury, or that Uber and/or Otto Trucking’s conduct was despicable and was done with a 

willful and knowing disregard for the rights of others. 

“Despicable conduct” is conduct so vile, base, or wretched that it would be looked down 

on and despised by ordinary decent people. Uber, Ottomotto, and/or Otto Trucking acted with 

knowing disregard if it was aware of the probable consequences of its conduct and deliberately 

failed to avoid those consequences.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 80 of 135
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

01980-00104/9567528.1 80

sf-3824725

Disputed Instruction No. 34 Re. WILLFUL AND MALICIOUS MISAPPROPRIATION 

OF TRADE SECRETS47 Offered By Defendants

If you decide that Uber, Ottomotto, or Otto Trucking misappropriated the alleged trade 

secrets and caused Waymo harm, you must decide whether that conduct justifies an award of 

punitive damages. The purposes of punitive damages are to punish a wrongdoer for the conduct 

that harmed Waymo and to discourage similar conduct in the future.

In order to recover punitive damages, Waymo must prove by clear and convincing 

evidence that Uber, Ottomotto, or Otto Trucking acted willfully and maliciously. You must 

determine whether Uber, Ottomotto, or Otto Trucking acted willfully and maliciously, but you 

 

47

 CACI 4411.

If you decide that [name of defendant]’s misappropriation caused [name of plaintiff] harm, 

you must decide whether that conduct justifies an award of punitive damages. The 

purposes of punitive damages are to punish a wrongdoer for the conduct that harmed 

[name of plaintiff] and to discourage similar conduct in the future.

In order to recover punitive damages, [name of plaintiff] must prove [by clear and 

convincing evidence] that [name of defendant] acted willfully and maliciously. You must 

determine whether [name of defendant] acted willfully and maliciously, but you will not be 

asked to determine the amount of any punitive damages. I will calculate the amount later.

“Willfully” means that [name of defendant] acted with a purpose or willingness to commit 

the act or engage in the conduct in question, and the conduct was not reasonable under the 

circumstances at the time and was not undertaken in good faith.

“Maliciously” means that [name of defendant] acted with an intent to cause injury, or that 

[name of defendant]’s conduct was despicable and was done with a willful and knowing 

disregard for the rights of others. 

“Despicable conduct” is conduct so vile, base, or wretched that it would be looked down on 

and despised by ordinary decent people. [Name of defendant] acted with knowing disregard 

if [he/she/it] was aware of the probable consequences of [his/her/its] conduct and 

deliberately failed to avoid those consequences.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 81 of 135
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

01980-00104/9567528.1 81

sf-3824725

will not be asked to determine the amount of any punitive damages. I will calculate the amount 

later.

“Willfully” means that the party acted with a purpose or willingness to commit the act or 

engage in the conduct in question, and the conduct was not reasonable under the circumstances at 

the time and was not undertaken in good faith.

“Maliciously” means that the party acted with an intent to cause injury, or that Uber’s, 

Ottomotto’s, or Otto Trucking’s conduct was despicable and was done with a willful and 

knowing disregard for the rights of others. “Despicable conduct” is conduct so vile, base, or 

wretched that it would be looked down on and despised by ordinary decent people. Uber, 

Ottomotto, or Otto Trucking acted with knowing disregard if it was aware of the probable 

consequences of its conduct and deliberately failed to avoid those consequences.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 82 of 135
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

01980-00104/9567528.1 82

sf-3824725

Disputed Instruction No. 35 Re. TORT LIABILITY ASSERTED AGAINST 

PRINCIPAL—ESSENTIAL FACTUAL ELEMENTS48 Offered By Waymo

Waymo claims that it was harmed by the misappropriation of one or more of defendants’ 

agents.

Waymo also claims that Uber, Ottomotto, and/or Otto Trucking is responsible for the 

harm caused by the trade secret misappropriation because a third party was acting as its agent in 

connection with the trade secret misappropriation.

If you find that the trade secret misappropriation harmed Waymo, then you must decide 

whether Uber, Ottomotto, and/or Otto Trucking is responsible for the harm. 

Uber, Ottomotto, and/or Otto Trucking is responsible if Waymo proves both of the 

following:

1. That a third party was Uber, Ottomotto, and/or Otto Trucking’s agent; and

 

48

 CACI 3701.

[Name of plaintiff] claims that [he/she] was harmed by [name of agent]’s [insert tort theory, 

e.g., “negligence”].

[Name of plaintiff] also claims that [name of defendant] is responsible for the harm because 

[name of agent] was acting as [his/her/its] [agent/employee/[insert other relationship, e.g., 

“partner”]] when the incident occurred.

If you find that [name of agent]’s [insert tort theory] harmed [name of plaintiff], then you 

must decide whether [name of defendant] is responsible for the harm. [Name of defendant] 

is responsible if [name of plaintiff] proves both of the following:

1. That [name of agent] was [name of defendant]’s [agent/employee/ [insert other 

relationship]]; and

2. That [name of agent] was acting within the scope of [his/her] [agency/employment/[insert 

other relationship]] when [he/she] harmed [name of plaintiff].

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 83 of 135
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

01980-00104/9567528.1 83

sf-3824725

2. That the third party was acting within the scope of their agency within the scope of its 

agency when it harmed Waymo.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 84 of 135
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

01980-00104/9567528.1 84

sf-3824725

Disputed Instruction No. 35 Re. TORT LIABILITY ASSERTED AGAINST 

PRINCIPAL—ESSENTIAL FACTUAL ELEMENTS49 Offered By Otto Trucking

Waymo claims that it was harmed by Mr. Levandowski’s misappropriation of trade 

secrets.

Waymo also claims that Otto Trucking is responsible that harm because Mr. 

Levandowski was acting as its agent when the misappropriation of trade secrets occurred. 

If you find that the trade secret misappropriation harmed Waymo, then you must decide 

whether Otto Trucking is responsible for the harm if Waymo proves both the following. 

1. That Mr. Levandowski was Otto Trucking’s agent; and

2. That Mr. Levandowski was acting within the scope of his agency when he harmed 

Waymo.

 

49

 CACI 3701.

[Name of plaintiff] claims that [he/she] was harmed by [name of agent]’s [insert tort theory, 

e.g., “negligence”].

[Name of plaintiff] also claims that [name of defendant] is responsible for the harm because 

[name of agent] was acting as [his/her/its] [agent/employee/[insert other relationship, e.g., 

“partner”]] when the incident occurred.

If you find that [name of agent]’s [insert tort theory] harmed [name of plaintiff], then you 

must decide whether [name of defendant] is responsible for the harm. [Name of defendant] 

is responsible if [name of plaintiff] proves both of the following:

1. That [name of agent] was [name of defendant]’s [agent/employee/ [insert other 

relationship]]; and

2. That [name of agent] was acting within the scope of [his/her] [agency/employment/[insert 

other relationship]] when [he/she] harmed [name of plaintiff].

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 85 of 135
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

01980-00104/9567528.1 85

sf-3824725

Disputed Instruction No. 35 Re. TORT LIABILITY ASSERTED AGAINST 

PRINCIPAL—ESSENTIAL FACTUAL ELEMENTS Offered By Uber/Ottomotto

Uber and Ottomotto contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 86 of 135
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

01980-00104/9567528.1 86

sf-3824725

Disputed Instruction No. 36 Re. EXISTENCE OF “AGENCY” RELATIONSHIP 

DISPUTED50 Offered By Waymo

Waymo claims that one or more third parties were Uber, Ottomotto, and/or Otto 

Trucking’s agent and that Uber, Ottomotto, and/or Otto Trucking is therefore responsible for the 

agent’s conduct.

If Waymo proves that Uber, Ottomotto, and/or Otto Trucking gave one or more third 

parties authority to act on its behalf, then that third party was Uber, Ottomotto, and/or Otto 

Trucking’s agent. This authority may be shown by words or may be implied by the parties’ 

conduct. This authority cannot be shown by the words of the third party alone.

 

50 CACI 3705

[Name of plaintiff] claims that [name of agent] was [name of defendant]’s agent and that 

[name of defendant] is therefore responsible for [name of agent]’s conduct.

If [name of plaintiff] proves that [name of defendant] gave [name of agent] authority to act 

on [his/her/its] behalf, then [name of agent] was [name of defendant]’s agent. This 

authority may be shown by words or may be implied by the parties’ conduct. This 

authority cannot be shown by the words of [name of agent] alone.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 87 of 135
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

01980-00104/9567528.1 87

sf-3824725

Disputed Instruction No. 36 Re. EXISTENCE OF “AGENCY” RELATIONSHIP 

DISPUTED51 Offered By Otto Trucking

Waymo claims that Mr. Levandowski was Otto Trucking’s agent and that Mr. 

Levandowski is therefore responsible for Mr. Levandowski’s conduct.

If Waymo proves that Otto Trucking gave Mr. Levandowski authority to act on its behalf, 

then Mr. Levandowski was Otto Trucking’s agent. This authority may be shown by words or 

may be implied by the parties’ conduct. This authority cannot be shown by the words of Mr. 

Levandowski alone.

 

51 CACI 3705

[Name of plaintiff] claims that [name of agent] was [name of defendant]’s agent and that 

[name of defendant] is therefore responsible for [name of agent]’s conduct.

If [name of plaintiff] proves that [name of defendant] gave [name of agent] authority to act 

on [his/her/its] behalf, then [name of agent] was [name of defendant]’s agent. This 

authority may be shown by words or may be implied by the parties’ conduct. This 

authority cannot be shown by the words of [name of agent] alone.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 88 of 135
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

01980-00104/9567528.1 88

sf-3824725

Disputed Instruction No. 36 Re. EXISTENCE OF “AGENCY” RELATIONSHIP 

DISPUTED Offered By Uber/Ottomotto

Uber and Ottomotto contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 89 of 135
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

01980-00104/9567528.1 89

sf-3824725

Disputed Instruction No. 37 Re. SCOPE OF EMPLOYMENT Offered By Waymo and 

Uber

Waymo and Uber contend that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 90 of 135
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

01980-00104/9567528.1 90

sf-3824725

Disputed Instruction No. 37 Re. SCOPE OF EMPLOYMENT52 Offered By Otto Trucking

Waymo must prove that Mr. Levandowski was acting within the scope of his 

authorization when Waymo was harmed.

Conduct is within the scope of authorization if:

(a) It was reasonably related to the kinds of tasks that the agent was employed to 

perform; or

(b) It is reasonably foreseeable in light of the principal’s business or the agent’s 

responsibilities.

 

52 CACI 3720

[Name of plaintiff] must prove that [name of agent] was acting within the scope of [his/her] 

[employment/authorization] when [name of plaintiff] was harmed.

Conduct is within the scope of [employment/authorization] if:

(a) It is reasonably related to the kinds of tasks that the [employee/ agent] was employed to 

perform; or

(b) It is reasonably foreseeable in light of the employer’s business or the 

[agent’s/employee’s job] responsibilities.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 91 of 135
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

01980-00104/9567528.1 91

sf-3824725

Disputed Instruction No. 38 Re. DUTY TO INFORM53 Offered By Waymo

If you find that a third party was an agent for Uber, Ottomotto, and/or Otto Trucking, 

each agent is under a duty to inform that defendant as to all those matters which each would want 

to know about any trade secrets misappropriated from Waymo. Uber, Ottomotto, and/or Otto 

Trucking are presumed to know all that its agent or agents knew concerning the 

misappropriation, whether that agent actually told Uber, Ottomotto, and/or Otto Trucking or 

not.”

 

53

 Droeger v. Welsh Sporting Goods Corp., 541 F.2d 790, 792 (9th Cir. 1976).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 92 of 135
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

01980-00104/9567528.1 92

sf-3824725

Disputed Instruction No. 38 Re. DUTY TO INFORM Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 93 of 135
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

01980-00104/9567528.1 93

sf-3824725

Disputed Instruction 39 Re. RATIFICATION54 Offered By Waymo

Waymo also claims that Uber, Ottomotto, and/or Otto Trucking is responsible for the 

harm caused by a third party’s conduct because Uber, Ottomotto, and/or Otto Trucking approved 

of that conduct after it occurred. If you find that a third party harmed Waymo, you must decide 

whether Uber, Ottomotto, and/or Otto Trucking approved that conduct.

To establish its claim, Waymo must prove all of the following:

1. That a third party, although not authorized to do so, purported to act on behalf of Uber, 

Ottomotto, and/or Otto Trucking;

2. That Uber, Ottomotto, and/or Otto Trucking learned of that third party’s unauthorized 

conduct, and all of the material facts involved in the misappropriation, after it occurred; 

and

3. That Uber, Ottomotto, and/or Otto Trucking then approved that third party’s conduct.

 

54

 CACI 3710.

[Name of plaintiff] claims that [name of defendant] is responsible for the harm caused by 

[name of agent]’s conduct because [name of defendant] approved that conduct after it 

occurred. If you find that [name of agent] harmed [name of plaintiff], you must decide 

whether [name of defendant] approved that conduct. To establish [his/her] claim, [name of 

plaintiff] must prove all of the following:

1. That [name of agent], although not authorized to do so, purported to act on behalf of 

[name of defendant];

2. That [name of defendant] learned of [name of agent]’s unauthorized conduct, and all of 

the material facts involved in the unauthorized transaction, after it occurred; and

3. That [name of defendant] then approved [name of agent]’s conduct. 

Approval can be shown through words, or it can be inferred from a person’s conduct. 

[Approval can be inferred if [name of defendant] voluntarily keeps the benefits of [name of 

agent]’s unauthorized conduct after [he/she/it] learns of it.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 94 of 135
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

01980-00104/9567528.1 94

sf-3824725

Approval can be shown through words, or it can be inferred from a person’s conduct. 

Approval can be inferred if Uber, Ottomotto, and/or Otto Trucking voluntarily kept the benefit of 

the third party’s misappropriation after they learned of it.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 95 of 135
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

01980-00104/9567528.1 95

sf-3824725

Disputed Instruction 39 Re. RATIFICATION Offered By Otto Trucking

Waymo also claims that Otto Trucking is responsible for the harm caused by Mr. 

Levandowski’s conduct because Otto Trucking approved of that conduct after it occurred. If you 

find that a third party harmed Waymo, you must decide whether Otto Trucking approved that 

conduct.

To establish its claim, Waymo must prove all of the following:

1. That Mr. Levandowski, although not authorized to do so, purported to act on behalf of 

Otto Trucking;

2. That Otto Trucking learned Mr. Levandwoski’s unauthorized conduct after it occurred; 

and

3. That Otto Trucking then approved Mr. Levandowski’s conduct.

Approval can be shown through words, or it can be inferred from a person’s conduct. 

Approval can be inferred if Otto Trucking voluntarily kept the benefit of Mr. Levandowski’s 

unauthorized misconduct after it learned of it.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 96 of 135
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

01980-00104/9567528.1 96

sf-3824725

Disputed Instruction 39 Re. RATIFICATION Offered By Uber/Ottomotto55

Uber and Ottomotto contend that no such instruction should be given (see corresponding 

memorandum of law).

 

55 CACI 3710.

[Name of plaintiff] claims that [name of defendant] is responsible for the harm caused by 

[name of agent]’s conduct because [name of defendant] approved that conduct after it 

occurred. If you find that [name of agent] harmed [name of plaintiff], you must decide 

whether [name of defendant] approved that conduct. To establish [his/her] claim, [name of 

plaintiff] must prove all of the following:

1. That [name of agent], although not authorized to do so, purported to act on behalf of 

[name of defendant];

2. That [name of defendant] learned of [name of agent]’s unauthorized conduct, and all of 

the material facts involved in the unauthorized transaction, after it occurred; and

3. That [name of defendant] then approved [name of agent]’s conduct. 

Approval can be shown through words, or it can be inferred from a person’s conduct. 

[Approval can be inferred if [name of defendant] voluntarily keeps the benefits of [name of 

agent]’s unauthorized conduct after [he/she/it] learns of it.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 97 of 135
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

01980-00104/9567528.1 97

sf-3824725

Disputed Instruction No. 40 Re. CAUSATION: SUBSTANTIAL FACTOR Offered By 

Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 98 of 135
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

01980-00104/9567528.1 98

sf-3824725

Disputed Instruction No. 40 Re. CAUSATION: SUBSTANTIAL FACTOR56 Offered By 

Defendants

A substantial factor in causing harm is a factor that a reasonable person would consider to 

have contributed to the harm. It must be more than a remote or trivial factor. It does not have to 

be the only cause of the harm.

Conduct is not a substantial factor in causing harm if the same harm would have occurred 

without that conduct. 

 

56 CACI, Guide for Using Judicial Council of California Civil Jury Instructions, at p. 2 

(“Substantial Factor: The instructions frequently use the term ‘substantial factor’ to state the 

element of causation, rather than referring to ‘cause’ and then defining that term in a separate 

instruction as a ‘substantial factor.’ An instruction that defines ‘substantial factor’ is located in 

the Negligence series. The use of the instruction is not intended to be limited to cases involving 

negligence.”; CACI 430:

A substantial factor in causing harm is a factor that a reasonable person would consider to 

have contributed to the harm. It must be more than a remote or trivial factor. It does not 

have to be the only cause of the harm. 

[Conduct is not a substantial factor in causing harm if the same harm would have occurred 

without that conduct.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 99 of 135
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

01980-00104/9567528.1 99

sf-3824725

Disputed Instruction No. 41 Re. BAD FAITH Offered By Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 100 of 135
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

01980-00104/9567528.1 100

sf-3824725

Disputed Instruction No. 41 Re. BAD FAITH57 Offered By Defendants

If you decide that Uber, Ottomotto, or Otto Trucking did not misappropriate any of 

Waymo’s asserted trade secrets, you must then decide whether Waymo made or pursued any 

claims in bad faith. 

“Bad faith” means that a claim of misappropriation superficially appears to have merit 

but there is no evidence to support the claim, and Waymo possessed “subjective bad faith.” 

There is rarely direct evidence of subjective bad faith. Instead, you may infer that Waymo 

possessed subjective bad faith if the shortcomings of a claim were identified prior to or during 

the course of the case and Waymo decided to go forward with the claim despite being unable to 

respond to the shortcomings; if Waymo abandoned a claim; or if Waymo intended to cause 

unnecessary delay, made or pursued a claim to harass, or harbored other improper motives in 

making or pursing a claim. You may also infer Waymo possessed subjective bad faith as a result 

of its conduct in the case. 

In deciding whether Waymo made or pursued a claim of misappropriation in bad faith, 

you may not consider whether Waymo’s mere suspicion that Uber, Ottomotto, or Otto Trucking 

misused or might misuse information that Waymo alleged was a trade secret in its Amended 

Complaint.

 

57 Cal. Civ. Code § 3426.4 (“If a claim of misappropriation is made in bad faith, ... or willful and 

malicious misappropriation exists, the court may award reasonable attorney’s fees and costs to 

the prevailing party.”); see also GSI Tech., Inc. v. United Memories, Inc., No. 5:13-cv-01081-

PSG, 2016 WL 3035699, at *2 (N.D. Cal. May 26, 2016) (rejecting plaintiff’s arguments “that 

the court committed prejudicial error by not trying bad faith separately”; court “ruled that the bad 

faith contention [under § 3426.4] would be presented to the jury”)

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 101 of 135
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

01980-00104/9567528.1 101

sf-3824725

Stipulated Instruction No. 42 Re. AFFIRMATIVE DEFENSE—INFORMATION WAS 

READILY ASCERTAINABLE BY PROPER MEANS58

Uber did not misappropriate Waymo’s trade secrets if Uber, Ottomotto, or Otto Trucking 

proves that the information was readily ascertainable by proper means at the time of the alleged 

acquisition or use.

There is no fixed standard for determining what is “readily ascertainable by proper 

means.” In general, information is readily ascertainable if it can be obtained, discovered, 

developed, or compiled without significant difficulty, effort, or expense. For example, 

information is readily ascertainable if it is available in trade journals, reference books, or 

published materials. On the other hand, the more difficult information is to obtain, and the more

time and resources that must be expended in gathering it, the less likely it is that the information 

is readily ascertainable by proper means.

 

58

 CACI 4420:

[Name of defendant] did not misappropriate [name of plaintiff]’s trade secret[s] if [name of 

defendant] proves that the [select short term to describe, e.g., information] [was/were] 

readily ascertainable by proper means at the time of the alleged [acquisition/use/ [or] 

disclosure]. 

There is no fixed standard for determining what is “readily ascertainable by proper 

means.” In general, information is readily ascertainable if it can be obtained, discovered, 

developed, or compiled without significant difficulty, effort, or expense. For example, 

information is readily ascertainable if it is available in trade journals, reference books, or 

published materials. On the other hand, the more difficult information is to obtain, and the 

more time and resources that must be expended in gathering it, the less likely it is that the 

information is readily ascertainable by proper means.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 102 of 135
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

01980-00104/9567528.1 102

sf-3824725

Disputed Instruction No. 43 Re. AFFIRMATIVE DEFENSE -- MITIGATION OF 

DAMAGES59 Offered By Waymo

If Uber, Ottomotto, or Otto Trucking misappropriated trade secrets and the 

misappropriation caused harm, Waymo is not entitled to recover damages for harm that Uber 

proves Waymo could have avoided the harm with reasonable efforts or expenditures. You may

consider the timing of the lawsuit in connection with deciding whether Waymo mitigated its 

damages.

 

59

 CACI 358

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 103 of 135
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

01980-00104/9567528.1 103

sf-3824725

Disputed Instruction No. 43 Re. AFFIRMATIVE DEFENSE -- MITIGATION OF 

DAMAGES60 Offered By Defendants

If Uber, Ottomotto, or Otto Trucking misappropriated trade secrets and the 

misappropriation caused harm, Waymo is not entitled to recover damages for harm that Uber 

proves Waymo could have avoided the harm with reasonable efforts or expenditures. You may

consider the timing of the lawsuit in connection with deciding whether Waymo mitigated its 

damages.

 

60

 CACI 358

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 104 of 135
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

01980-00104/9567528.1 104

sf-3824725

Disputed Instruction No. 44 Re. OUTSIDE REVERSE VEIL PIERCING Offered By 

Waymo and Uber

Waymo and Uber contend that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 105 of 135
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

01980-00104/9567528.1 105

sf-3824725

Disputed Instruction No. 44 Re. OUTSIDE REVERSE VEIL PIERCING61 Offered By 

Otto Trucking

Waymo has filed a lawsuit against Otto Trucking. Under California law, a business 

entity is usually not held liable for the conduct of its members, managers, officers, beneficial 

owners, trustees, or other related business entities. However, under the doctrine of “reverse veil 

piercing”, a business entity may be held liable for the conduct of its members, managers, 

officers, beneficial owners, trustees, or other related entities. 

To hold Otto Trucking liable for Mr. Levandowski’s conduct, you must prove both of the 

following:

1. Waymo has no alternative adequate remedies; and 

2. No innocent shareholders would be harmed by the piercing

 

61 Postal Instant Press, Inc. v. Kaswa Corp., 162 Cal.App.4th 1510 (2008)

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 106 of 135
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

01980-00104/9567528.1 106

sf-3824725

Disputed Instruction No. 45 Re. DAMAGES UNDER CALIFORNIA AND FEDERAL 

LAW Offered By Waymo

As I have described, Waymo has brought claims for trade secret misappropriation under 

both California and Federal law.

Waymo is entitled to damages under either California or Federal law but will not recover 

damages under both theories.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 107 of 135
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

01980-00104/9567528.1 107

sf-3824725

Disputed Instruction No. 45 Re. DAMAGES UNDER CALIFORNIA AND FEDERAL 

LAW Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 108 of 135
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

01980-00104/9567528.1 108

sf-3824725

Disputed Instruction No. 46 Re. REMEDIES FOR MISAPPROPRIATION OF TRADE 

SECRET62 Offered By Waymo

If Waymo proves that Uber, Ottomotto, and/or Otto Trucking misappropriated any of its 

trade secrets under either California or Federal law, then Waymo is entitled to recover damages 

if the misappropriation caused Uber, Ottomotto, and/or Otto Trucking to be unjustly enriched.

 

62

 CACI 4409.

If [name of plaintiff] proves that [name of defendant] misappropriated [his/her/its] trade 

secret[s], then [name of plaintiff] is entitled to recover damages if the misappropriation 

caused [[name of plaintiff] to suffer an actual loss/ [or] [name of defendant] to be unjustly 

enriched]. [If [name of defendant]’s misappropriation did not cause [[name of plaintiff] to 

suffer an actual loss/ [or] [name of defendant] to be unjustly enriched], [name of plaintiff] 

may still be entitled to a reasonable royalty for no longer than the period of time the use 

could have been prohibited. However, I will calculate the amount of any royalty.]

18 U.S.C.A. § 1836.

(B) award--

(i)(I) damages for actual loss caused by the misappropriation of the trade secret; and

(II) damages for any unjust enrichment caused by the misappropriation of the trade secret 

that is not addressed in computing damages for actual loss; or

(ii) in lieu of damages measured by any other methods, the damages caused by the 

misappropriation measured by imposition of liability for a reasonable royalty for the 

misappropriator's unauthorized disclosure or use of the trade secret;

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 109 of 135
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

01980-00104/9567528.1 109

sf-3824725

Disputed Instruction No. 46 Re. REMEDIES FOR MISAPPROPRIATION OF TRADE 

SECRET63 Offered By Defendants

If Waymo proves that Uber, Ottomotto, or Otto Trucking misappropriated its trade 

secrets, then Waymo is entitled to recover damages if the misappropriation was a substantial 

factor in causing Uber, Ottomotto, or Otto Trucking to be unjustly enriched. In this case the type 

of damages that Waymo is seeking is called unjust enrichment. 

If there was misappropriation but it did not cause Uber, Ottomotto, or Otto Trucking to 

be unjustly enriched, Waymo may still be entitled to a reasonable royalty for no longer than the 

period of time the use could have been prohibited. However, I will calculate the amount of any 

royalty.

 

63

 CACI 4409.

If [name of plaintiff] proves that [name of defendant] misappropriated [his/her/its] trade 

secret[s], then [name of plaintiff] is entitled to recover damages if the misappropriation 

caused [[name of plaintiff] to suffer an actual loss/ [or] [name of defendant] to be unjustly 

enriched]. 

[If [name of defendant]’s misappropriation did not cause [[name of plaintiff] to suffer an 

actual loss/ [or] [name of defendant] to be unjustly enriched], [name of plaintiff] may still be 

entitled to a reasonable royalty for no longer than the period of time the use could have 

been prohibited. However, I will calculate the amount of any royalty.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 110 of 135
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

01980-00104/9567528.1 110

sf-3824725

Disputed Instruction No. 47 Re. UNJUST ENRICHMENT64 Offered By Waymo

Uber, Ottomotto, and/or Otto Trucking were unjustly enriched if its misappropriation of 

Waymo’s trade secrets caused Uber, Ottomotto, and/or Otto Trucking to receive a benefit that 

they otherwise would not have achieved.

To decide the amount of any unjust enrichment, you must determine the value of Uber, 

Ottomotto, and/or Otto Trucking’s benefit that would not have been achieved except for its 

misappropriation. 

Your award must be based upon evidence, and not upon speculation, guesswork or 

conjecture.65

 

64

 CACI 4410.

[Name of defendant] was unjustly enriched if [his/her/its] misappropriation of [name of 

plaintiff]’s trade secret[s] caused [name of defendant] to receive a benefit that [he/she/it] 

otherwise would not have achieved.

To decide the amount of any unjust enrichment, first determine the value of [name of 

defendant]’s benefit that would not have been achieved except for [his/her/its] 

misappropriation. Then subtract from that amount [name of defendant]’s reasonable 

expenses[, including the value of the [specify categories of expenses in evidence, such as 

labor, materials, rents, interest on invested capital]]. [In calculating the amount of any unjust 

enrichment, do not take into account any amount that you included in determining any 

amount of damages for [name of plaintiff]’s actual loss.]

65 Instruction in O2 Micro Int’l Ltd. v. Monolithic Power Systems, Inc., 2000 WL 35634755 

(N.D. Cal. 2000); MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR THE 

DISTRICT COURTS OF THE NINTH CIRCUIT §5.1.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 111 of 135
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

01980-00104/9567528.1 111

sf-3824725

Disputed Instruction No. 47 Re. UNJUST ENRICHMENT66 Offered By Defendants

If you decide there was misappropriation, Uber, Ottomotto, and Otto Trucking were 

unjustly enriched if their misappropriation of Waymo’s trade secrets caused them to receive a 

benefit that they otherwise would not have achieved.

To decide the amount of any unjust enrichment, first determine the value of the 

defendants’ benefit that would not have been achieved except for its misappropriation. Then 

subtract from that amount the defendants’ reasonable expenses, including the value of their own 

research and development. 

Your award must be based upon evidence, and not upon speculation, guesswork or 

conjecture.67

 

66

 CACI 4410.

[Name of defendant] was unjustly enriched if [his/her/its] misappropriation of [name of 

plaintiff]’s trade secret[s] caused [name of defendant] to receive a benefit that [he/she/it] 

otherwise would not have achieved.

To decide the amount of any unjust enrichment, first determine the value of [name of 

defendant]’s benefit that would not have been achieved except for [his/her/its] 

misappropriation. Then subtract from that amount [name of defendant]’s reasonable 

expenses[, including the value of the [specify categories of expenses in evidence, such as 

labor, materials, rents, interest on invested capital]]. [In calculating the amount of any unjust 

enrichment, do not take into account any amount that you included in determining any 

amount of damages for [name of plaintiff]’s actual loss.]

67 Instruction in O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., No. C 00-4071 CW, 2000 

WL 35634755 (N.D. Cal. 2000); MANUAL OF MODEL CIVIL JURY INSTRUCTIONS FOR 

THE DISTRICT COURTS OF THE NINTH CIRCUIT § 5.1.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 112 of 135
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

01980-00104/9567528.1 112

sf-3824725

Disputed Instruction No. 48 Re. REASONABLE ROYALTY – ENTITLEMENT68 Offered 

By Waymo

Under California and Federal law, Waymo may recover the damages caused by the 

misappropriation measured by imposition of a reasonable royalty for the misappropriator's 

unauthorized acquisition or use of the trade secret. 

Waymo will not recover damages for both unjust enrichment and a reasonable royalty. 

However, if you find Uber, Ottomotto, and/or Otto Trucking liable for trade secret 

misappropriation, you should determine reasonable royalty damages in addition to your 

determination of unjust enrichment damages.

 

68

 Model Patent Jury Instructions for the Northern District of California 5.6

If [patent holder] has not proved its claim for lost profits, or has proved its claim for lost 

profits for only a portion of the infringing sales, then [patent holder] should be awarded a 

reasonable royalty for all infringing sales for which it has not been awarded lost profits 

damages.

18 U.S.C.A. § 1836.

(B) award--

(i)(I) damages for actual loss caused by the misappropriation of the trade secret; and

(II) damages for any unjust enrichment caused by the misappropriation of the trade secret 

that is not addressed in computing damages for actual loss; or

(ii) in lieu of damages measured by any other methods, the damages caused by the 

misappropriation measured by imposition of liability for a reasonable royalty for the 

misappropriator's unauthorized disclosure or use of the trade secret;

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 113 of 135
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

01980-00104/9567528.1 113

sf-3824725

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 114 of 135
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

01980-00104/9567528.1 114

sf-3824725

Disputed Instruction No. 48 Re. REASONABLE ROYALTY – ENTITLEMENT Offered 

By Defendants69

Defendants contend that no such instruction should be given (see corresponding memorandum of 

law).

Disputed Instruction No. 49 Re. REASONABLE ROYALTY – DEFINITION70 Offered By 

Waymo

 

69 Model Patent Jury Instructions for the Northern District of California 5.6

If [patent holder] has not proved its claim for lost profits, or has proved its claim for lost 

profits for only a portion of the infringing sales, then [patent holder] should be awarded a 

reasonable royalty for all infringing sales for which it has not been awarded lost profits 

damages.

18 U.S.C. § 1836.

(b)(3) Remedies.—In a civil action brought under this subsection with respect to the 

misappropriation of a trade secret, a court may--

(B) award--

(i)(I) damages for actual loss caused by the misappropriation of the trade secret; and

(II) damages for any unjust enrichment caused by the misappropriation of the trade secret 

that is not addressed in computing damages for actual loss; or

(ii) in lieu of damages measured by any other methods, the damages caused by the 

misappropriation measured by imposition of liability for a reasonable royalty for the 

misappropriator's unauthorized disclosure or use of the trade secret;

CACI 4409, Directions For Use –Stating that under California Uniform Trade Secret Act, 

“[b]oth the statute and case law indicate that the question of a reasonable royalty should 

not be presented to the jury.”

70

 Model Patent Jury Instructions for the Northern District of California 5.7

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 115 of 135
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

01980-00104/9567528.1 115

sf-3824725

 

A royalty is a payment made to a patent holder in exchange for the right to make, use or 

sell the claimed invention. This right is called a “license.” A reasonable royalty is the 

payment for the license that would have resulted from a hypothetical negotiation between 

the patent holder and the infringer taking place at the time when the infringing activity 

first began. In considering the nature of this negotiation, you must assume that the patent 

holder and the infringer would have acted reasonably and would have entered into a 

license agreement. You must also assume that both parties believed the patent was valid 

and infringed. Your role is to determine what the result of that negotiation would have 

been. The test for damages is what royalty would have resulted from the hypothetical 

negotiation and not simply what either party would have preferred.

A royalty can be calculated in several different ways and it is for you to determine which 

way is the most appropriate based on the evidence you have heard. One way to calculate a 

royalty is to determine what is called an “ongoing royalty.” To calculate an ongoing 

royalty, you must first determine the “base,” that is, the product on which the infringer is 

to pay. You then need to multiply the revenue the defendant obtained from that base by 

the “rate” or percentage that you find would have resulted from the hypothetical 

negotiation. For example, if the patent covers a nail, and the nail sells for $1, and the 

licensee sold 200 nails, the base revenue would be $200. If the rate you find would have 

resulted from the hypothetical negotiation is 1%, then the royalty would be $2, or the rate 

of 0.01 times the base revenue of $200. By contrast, if you find the rate to be 5%, the 

royalty would be $10, or the rate of 0.05 times the base revenue of $200. These numbers 

are only examples, and are not intended to suggest the appropriate royalty rate.

Instead of a percentage royalty, you may decide that the appropriate royalty that would 

have resulted from a hypothetical negotiation is a fixed number of dollars per unit sold. If 

you do, the royalty would be that fixed number of dollars times the number of units sold.

If the patent covers only part of the product that the infringer sells, then the base would 

normally be only that feature or component. For example, if you find that for a $100 car, 

the patented feature is the tires which sell for $5, the base revenue would be $5. 

[However, in a circumstance in which the patented feature is the reason customers buy the 

whole product, the base revenue may be the value of the whole product.]70 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 116 of 135
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

01980-00104/9567528.1 116

sf-3824725

A royalty is a payment made in exchange for the right to use the claimed trade secrets. 

This right is called a “license.” A reasonable royalty is the payment for the license that would 

have resulted from a hypothetical negotiation between the owner of the trade secret and the 

misappropriator taking place at the time when the misappropriation first began. In considering 

the nature of this negotiation, you must assume that the trade secret owner and the 

misappropriator would have acted reasonably and would have entered into a license agreement. 

 

[In this case the [ ] patent covers only one component of the product that [alleged infringer] 

uses or sells. It is [patent holder]’s burden to demonstrate what value that component has 

added to the desirability of the product as a whole and to separate the value of the patented 

contribution from the value of other parts of the product that are not attributable to the 

patented invention.]

[In this case, [patent holder] [accused infringer] has introduced evidence of licenses 

between [licensees] and [licensors]. The royalty rate in one or more of those licenses may 

be considered if it helps to establish the value that is attributable to the patented invention 

as distinct from the value of other features of [alleged infringer’s] product.]70

The ultimate combination of royalty base and royalty rate must reflect the value 

attributable to the infringing features of the product, and no more. When the accused 

infringing products have both patented and unpatented features, measuring this value 

requires you to identify and award only the value of the patented features.

Another way to calculate a royalty is to determine a one-time lump sum payment that the 

infringer would have paid at the time of the hypothetical negotiation for a license covering 

all sales of the licensed product, both past and future. This differs from payment of an

ongoing royalty because, with an ongoing royalty, the licensee pays based on the revenue of 

actual licensed products it sells. When a one-time lump sum is paid, the infringer pays a 

single price for a license covering both past and future infringing sales. 

It is up to you, based on the evidence, to decide what type of royalty is appropriate in this 

case for the life of the patent. 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 117 of 135
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

01980-00104/9567528.1 117

sf-3824725

You must also assume that both parties believed the trade secret owner to be in possession of 

valid trade secrets. Your role is to determine what the result of that negotiation would have been. 

The test for damages is what royalty would have resulted from the hypothetical negotiation and 

not simply what either party would have preferred.

Waymo and Uber have both proposed a one-time lump sum payment that the 

misappropriator would have paid at the time of the hypothetical negotiation for a license 

covering all use of the claimed trade secrets, both past and future. When a one-time lump sum is 

paid, the misappropriator pays a single price for a license covering both past and future 

infringing use.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 118 of 135
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

01980-00104/9567528.1 118

sf-3824725

Disputed Instruction No. 49 Re. REASONABLE ROYALTY – DEFINITION Offered By 

Defendants

Defendants contend that no such instruction should be given (see corresponding memorandum of 

law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 119 of 135
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

01980-00104/9567528.1 119

sf-3824725

Disputed Instruction No. 50 Re. GEORGIA PACIFIC FACTORS71 Offered By Waymo

 

71

 AIPLA’s Model Patent Jury Instructions 11.15

In determining the amount of a reasonable royalty, you may consider evidence on any of 

the following factors, in addition to any other evidence presented by the parties on the 

economic value of the patent:

1. Any royalties received by the licensor for the licensing of the patent-in-suit, 

proving or tending to prove an established royalty. 

2. The rates paid by [the Defendant] to license other patents comparable to the 

[abbreviated patent number] patent. 

3. The nature and scope of the license, as exclusive or non-exclusive, or as 

restricted or non-restricted in terms of its territory or with respect to whom 

the manufactured product may be sold.

4. The licensor’s established policy and marketing program to maintain its 

right to exclude others from using the patented invention by not licensing 

others to use the invention, or by granting licenses under special conditions 

designed to preserve that exclusivity. 

5. The commercial relationship between the licensor and the licensee, such as 

whether or not they are competitors in the same territory in the same line of 

business. 

6. The effect of selling the patented product in promoting sales of other 

products of the licensee; the existing value of the invention to the licensor as a 

generator of sales of its non-patented items; and the extent of such collateral 

sales. 

7. The duration of the [abbreviated patent number] patent and the term of the 

license. 

8. The established profitability of the product made under the [abbreviated 

patent number] patent; its commercial success; and its current popularity. 

9. The utility and advantages of the patented invention over the old modes or 

devices, if any that had been used for achieving similar results. 

10. The nature of the patented invention; the character of the commercial 

embodiment of it as owned and produced by the licensor; and the benefits to 

those who have used the invention. 

11. The extent to which [the Defendant] has made use of the invention; and any 

evidence that shows the value of that use. 

12. The portion of the profit or of the selling price that may be customary in the 

particular business or in comparable businesses to allow for the use of the 

invention or analogous inventions. 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 120 of 135
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

01980-00104/9567528.1 120

sf-3824725

In determining the amount of a reasonable royalty, you may consider evidence on any of 

the following factors, in addition to any other evidence presented by the parties on the economic 

value of the claimed trade secrets:

1. Any royalties received by the licensor for the licensing of the claimed trade 

secrets, proving or tending to prove an established royalty. 

2. The rates paid by the Defendants to license other trade secrets comparable to the 

claimed trade secrets. 

3. The nature and scope of the license, as exclusive or non-exclusive, or as restricted 

or non-restricted in terms of its territory or with respect to whom the 

manufactured product may be sold.

4. The licensor’s established policy and marketing program to maintain its right to 

exclude others from using the claimed trade secrets by not licensing others to use 

the invention, or by granting licenses under special conditions designed to

 

13. The portion of the profit that arises from the patented invention itself as 

opposed to profit arising from unpatented features, such as the 

manufacturing process, business risks, or significant features or 

improvements added by the accused infringer. 

14. The opinion testimony of qualified experts.

15. The amount that a licensor and a licensee (such as [the Defendant]) would 

have agreed upon (at the time the infringement began) if both sides had been 

reasonably and voluntarily trying to reach an agreement; that is, the amount 

which a prudent licensee—who desired, as a business proposition, to obtain a 

license to manufacture and sell a particular article embodying the patented 

invention—would have been willing to pay as a royalty and yet be able to 

make a reasonable profit and which amount would have been acceptable by 

a patentee who was willing to grant a license.

16. Any other economic factor that a normally prudent business person would, 

under similar circumstances, take into consideration in negotiating the 

hypothetical license.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 121 of 135
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

01980-00104/9567528.1 121

sf-3824725

preserve that exclusivity. 

5. The commercial relationship between the licensor and the licensee, such as 

whether or not they are competitors in the same territory in the same line of 

business. 

6. The effect of selling products using claimed trade secrets in promoting sales of 

other products of the licensee; the existing value of the invention to the licensor as 

a generator of sales of its non-trade secret items; and the extent of such collateral 

sales. 

7. The duration of the claimed trade secrets and the term of the license. 

8. The established profitability of the product made under claimed trade secrets; its 

commercial success; and its current popularity. 

9. The utility and advantages of the claimed trade secrets over the old modes or 

devices, if any that had been used for achieving similar results. 

10. The nature of the claimed trade secrets; the character of the commercial 

embodiment of it as owned and produced by the licensor; and the benefits to those 

who have used the claimed trade secrets. 

11. The extent to which the Defendants have made use of the claimed trade secrets; 

and any evidence that shows the value of that use. 

12. The portion of the profit or of the selling price that may be customary in the 

particular business or in comparable businesses to allow for the use of the claimed 

trade secrets or analogous trade secrets. 

13. The portion of the profit that arises from the claimed trade secrets themselves as 

opposed to profit arising from non-trade secret features, such as the 

manufacturing process, business risks, or significant features or improvements 

added by the accused infringer. 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 122 of 135
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

01980-00104/9567528.1 122

sf-3824725

14. The opinion testimony of qualified experts.

15. The amount that a licensor and a licensee (such as the Defendants) would have 

agreed upon (at the time the use of the claimed trade secrets began) if both sides 

had been reasonably and voluntarily trying to reach an agreement; that is, the 

amount which a prudent licensee—who desired, as a business proposition, to 

obtain a license to manufacture and sell a particular article embodying the 

patented invention—would have been willing to pay as a royalty and yet be able 

to make a reasonable profit and which amount would have been acceptable by a

licensor who was willing to grant a license.

Any other economic factor that a normally prudent business person would, under similar 

circumstances, take into consideration in negotiating the hypothetical license.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 123 of 135
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

01980-00104/9567528.1 123

sf-3824725

Disputed Instruction No. 50 Re. GEORGIA PACIFIC FACTORS Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law).

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 124 of 135
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

01980-00104/9567528.1 124

sf-3824725

Disputed Instruction No. 51 Re. EXEMPLARY DAMAGES FOR WILLFUL AND 

MALICIOUS MISAPPROPRIATION72 Offered By Waymo

If you find that Uber, Ottomotto, and/or Otto Trucking misappropriated Waymo’s trade 

 

72

 CACI 4411

If you decide that [name of defendant]’s misappropriation caused [name of plaintiff] harm, 

you must decide whether that conduct justifies an award of punitive damages. The 

purposes of punitive damages are to punish a wrongdoer for the conduct that harmed 

[name of plaintiff] and to discourage similar conduct in the future. 

In order to recover punitive damages, [name of plaintiff] must prove [by clear and 

convincing evidence] that [name of defendant] acted willfully and maliciously. You must 

determine whether [name of defendant] acted willfully and maliciously, but you will not be 

asked to determine the amount of any punitive damages. I will calculate the amount later.

“Willfully” means that [name of defendant] acted with a purpose or willingness to commit 

the act or engage in the conduct in question, and the conduct was not reasonable under the 

circumstances at the time and was not undertaken in good faith.

“Maliciously” means that [name of defendant] acted with an intent to cause injury, or that 

[name of defendant]’s conduct was despicable and was done with a willful and knowing 

disregard for the rights of others. 

“Despicable conduct” is conduct so vile, base, or wretched that it would be looked down on 

and despised by ordinary decent people. [Name of defendant] acted with knowing disregard 

if [he/she/it] was aware of the probable consequences of [his/her/its] conduct and 

deliberately failed to avoid those consequences.

18 U.S.C.A. § 1836.

(C) if the trade secret is willfully and maliciously misappropriated, award exemplary 

damages in an amount not more than 2 times the amount of the damages awarded under 

subparagraph (B); and

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 125 of 135
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

01980-00104/9567528.1 125

sf-3824725

secrets under either California or Federal law and that their conduct was willful and malicious, 

you must determine what amount of exemplary damages Waymo is entitled to recover. 

Exemplary damages are intended to punish the defendant and deter misappropriation of trade 

secrets. You may determine an amount of exemplary damages up to two times the amount 

awarded as actual damages for misappropriation of trade secrets.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 126 of 135
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

01980-00104/9567528.1 126

sf-3824725

Disputed Instruction No. 51 Re. EXEMPLARY DAMAGES FOR WILLFUL AND 

MALICIOUS MISAPPROPRIATION73 Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law) but offer this alternative formulation should the Court rule otherwise.

 

73 CACI 4411

If you decide that [name of defendant]’s misappropriation caused [name of plaintiff] harm, 

you must decide whether that conduct justifies an award of punitive damages. The 

purposes of punitive damages are to punish a wrongdoer for the conduct that harmed 

[name of plaintiff] and to discourage similar conduct in the future. 

In order to recover punitive damages, [name of plaintiff] must prove [by clear and 

convincing evidence] that [name of defendant] acted willfully and maliciously. You must 

determine whether [name of defendant] acted willfully and maliciously, but you will not be 

asked to determine the amount of any punitive damages. I will calculate the amount later.

“Willfully” means that [name of defendant] acted with a purpose or willingness to commit 

the act or engage in the conduct in question, and the conduct was not reasonable under the 

circumstances at the time and was not undertaken in good faith.

“Maliciously” means that [name of defendant] acted with an intent to cause injury, or that 

[name of defendant]’s conduct was despicable and was done with a willful and knowing 

disregard for the rights of others. 

“Despicable conduct” is conduct so vile, base, or wretched that it would be looked down on 

and despised by ordinary decent people. [Name of defendant] acted with knowing disregard 

if [he/she/it] was aware of the probable consequences of [his/her/its] conduct and 

deliberately failed to avoid those consequences.

18 U.S.C. § 1836.

(b)(3)(C) if the trade secret is willfully and maliciously misappropriated, award exemplary 

damages in an amount not more than 2 times the amount of the damages awarded under 

subparagraph (B); and

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 127 of 135
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

01980-00104/9567528.1 127

sf-3824725

If you decide that Uber, Ottomotto, and/or Otto Trucking’s misappropriation caused 

Waymo harm, you must decide whether that conduct justifies an award of punitive damages. 

The purposes of punitive damages are to punish a wrongdoer for the conduct that harmed 

Waymo and to discourage similar conduct in the future.

In order to recover punitive damages, Waymo must prove by clear and convincing 

evidence that Uber, Ottomotto, and/or Otto Trucking acted willfully and maliciously. You must 

determine whether Uber, Ottomotto, and/or Otto Trucking acted willfully and maliciously, but 

you will not be asked to determine the amount of any punitive damages. I will calculate that 

amount later.

“Willfully” means that Uber, Ottomotto, and/or Otto Trucking acted with a purpose or 

willingness to commit the act or engage in the conduct in question, and the conduct was not 

reasonable under the circumstances at the time and was not undertaken in good faith.

“Maliciously” means that Uber, Ottomotto, and/or Otto Trucking acted with an intent to 

cause injury, or that Uber, Ottomotto, and/or Otto Trucking’s conduct was despicable and was 

done with a willing and knowing disregard for the rights of others. “Despicable conduct” is 

conduct so vile, base, or wretched that it would be looked down on and despised by ordinary 

decent people. Uber, Ottomotto, and/or Otto Trucking acted with knowing disregard if they

were aware of the probable consequences of their conduct and deliberately failed to avoid those 

consequences.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 128 of 135
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

01980-00104/9567528.1 128

sf-3824725

Disputed Instruction No. 52 Re. DAMAGES FROM MULTIPLE DEFENDANTS Offered 

By Waymo

Waymo contends that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 129 of 135
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

01980-00104/9567528.1 129

sf-3824725

Disputed Instruction No. 52 Re. DAMAGES FROM MULTIPLE DEFENDANTS74

Offered By Defendants

In this case, Waymo seeks damages from more than one defendant. You must determine 

the liability of each defendant to Waymo separately.

If you determine that more than one defendant is liable to Waymo for damages, you will 

be asked to find Waymo’s total damages and the comparative fault of each defendant.

In deciding on the amount of damages, consider only Waymo’s claimed losses. Do not 

attempt to divide the damages among the defendants. The allocation of responsibility for 

payment of damages among multiple defendants is to be done by the court after you reach your 

verdict.

 

74 CACI 3933

In this case, [name of plaintiff] seeks damages from more than one defendant. You must 

determine the liability of each defendant to [name of plaintiff] separately.

If you determine that more than one defendant is liable to [name of plaintiff] for damages, 

you will be asked to fin [name of plaintiff]’s total damages [and the comparative fault of 

[[name of plaintiff]/each defendant/ [and] other nonparties]].

In deciding on the amount of damages, consider only [name of plaintiff]’s claimed losses. 

Do not attempt to divide the damages [between/among] the defendants. The allocation of 

responsibility for payment of damages among multiple defendants is to be done by the 

court after you reach your verdict.

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 130 of 135
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

01980-00104/9567528.1 130

sf-3824725

Disputed Instruction No. 53 Re. AFFIRMATIVE DEFENSE—UNCLEAN HANDS 

Offered By Defendants

Defendants contend that no such instruction should be given (see corresponding 

memorandum of law). 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 131 of 135
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

01980-00104/9567528.1 131

sf-3824725

Disputed Instruction No. 53 Re. AFFIRMATIVE DEFENSE—UNCLEAN HANDS75

Offered By Otto Trucking

Otto Trucking claims as a defense that Waymo’s misconduct precludes its enforcement of 

Waymo’s claims. To establish this defense, Otto Trucking must prove that Waymo’s conduct 

was unconscionable and resulted in prejudice to Otto Trucking. 

Waymo’s misconduct must be intimately connected with Waymo’s claims and of such a 

prejudicial nature that it would unfair to allow Waymo to rely on its claim. 

 

75 Final Jury Instructions, GSI Techs. Inc. v. United Memories Inc., et al., No. 5:13-cv-01081-

PSG (N.D. Cal. Nov. 22, 2015), Dkt. No. 1039 at 54. 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 132 of 135
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

01980-00104/9567528.1 132

sf-3824725

Stipulated/Disputed Instruction No. 54 Re. APPORTIONMENT OF DAMAGES76 Offered 

By Defendants

Uber, Ottomotto, and Otto Trucking were unjustly enriched if their misappropriation of 

Waymo’s trade secrets caused them to receive a benefit that they otherwise would not have 

achieved. To decide the amount of any unjust enrichment, first determine the value of the 

defendants’ benefit that would not have been achieved except for its misappropriation. Then 

subtract from that amount the defendants’ reasonable expenses, including the value of their own 

research and development.77 

An important and related concept is apportionment. In determining the amount of unjust 

enrichment, you must only award the amount of the benefit attributable to the specific trade 

secret(s), if any, that you find was misappropriated. A benefit to a defendant that is attributable 

to a trade secret that you have found was not misappropriated, for example, must be excluded 

from your calculation of unjust enrichment. The owner of the trade secrets has the burden to 

persuade you of the amount of its damages. You should award only those damages that the 

 

76 02 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 399 F.Supp.2d 1064, 1076-77 (N.D. 

Cal. November 10, 2005); W.L. Gore & Associates, Inc. v. GI Dynamics, Inc., 872 F.Supp.2d 

883, 892-93 (D. Az. May 30, 2012)

77 CACI 4410

[Name of defendant] was unjustly enriched if [his/her/its] misappropriation of [name of 

plaintiff]’s trade secret[s] caused [name of defendant] to receive a benefit that [he/she/it] 

otherwise would not have achieved. 

To decide the amount of any unjust enrichment, first determine the value of [name of 

defendant]’s benefit that would not have been achieved except for [his/her/its] 

misappropriation. Then subtract from that amount [name of defendant]’s reasonable 

expenses[, including the value of the [specify categories of expenses in evidence, such as labor, 

materials, rents, interest on invested capital]]. [In calculating the amount of any unjust 

enrichment, do not take into account any amount that you included in determining any 

amount of damages for [name of plaintiff]’s actual loss.]

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 133 of 135
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

01980-00104/9567528.1 133

sf-3824725

owner more likely than not suffered. While a trade secret owner is not required to prove its 

damages with mathematical precision, it must prove them with reasonable certainty. A trade 

secret owner is not entitled to damages that are remote or speculative. The damages award 

should be based on sound economic proof.

Dated: September 21, 2017 QUINN EMANUEL URQUHART & SULLIVAN, 

LLP

By /s/ Charles K. Verhoeven

Charles K. Verhoeven

Attorneys for WAYMO LLC

Dated: September 21, 2017 MORRISON & FOERSTER LLP 

By: /s/ Arturo J. González

ARTURO J. GONZÁLEZ

Attorneys for Defendants

UBER TECHNOLOGIES, INC.

and OTTOMOTTO LLC

Dated: September 21, 2017 GOODWIN PROCTER LLP

By: /s/ Neel Chatterjee

NEEL CHATTERJEE

Attorneys for Defendant

OTTO TRUCKING, LLC

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 134 of 135
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

01980-00104/9567528.1 134

sf-3824725

ATTESTATION OF E-FILED SIGNATURE

I, Charles K. Verhoeven, am the ECF User whose ID and password are being used to file 

this Joint Submission of Proposed Voir Dire Questions. In compliance with General Order 45, 

X.B., I hereby attest that Arturo J. González and Neel Chatterjee have concurred in this filing.

Dated: September 20, 2017 /s/ Charles K. Verhoeven

Charles K. Verhoeven 

Case 3:17-cv-00939-WHA Document 1728 Filed 09/21/17 Page 135 of 135