DEFENDANTS NOTICE OF SUBSEQUENT CASE HISTORY ISO MOTION TO EXCLUDE WAGNER TESTIMONY

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

sf-3834231 

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MICHAEL A. JACOBS (CA SBN 111664)

MJacobs@mofo.com 

ARTURO J. GONZÁLEZ (CA SBN 121490) 

AGonzalez@mofo.com 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Tel: 415.268.7000 / Fax: 415.268.7522 

KAREN L. DUNN (Pro Hac Vice) 

kdunn@bsfllp.com 

HAMISH P.M. HUME (Pro Hac Vice) 

hhume@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington DC 20005 

Tel: 202.237.2727 / Fax: 202.237.6131 

WILLIAM CARMODY (Pro Hac Vice) 

bcarmody@susmangodfrey.com 

SHAWN RABIN (Pro Hac Vice) 

srabin@SusmanGodfrey.com 

SUSMAN GODFREY LLP 

1301 Avenue of the Americas, 32nd Floor 

New York, NY 10019-6023 

Tel: 212.336.8330 / Fax: 212.336.8340 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v. 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC; OTTO TRUCKING 

LLC, 

Defendants. 

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

DEFENDANTS UBER 

TECHNOLOGIES, INC. AND 

OTTOMOTTO LLC’S NOTICE OF 

SUBSEQUENT CASE HISTORY IN 

SUPPORT OF PENDING MOTION TO 

EXCLUDE TESTIMONY AND 

OPINIONS OF WAYMO’S DAMAGES 

EXPERT MICHAEL A. WAGNER 

Trial Date: December 4, 2017

Case 3:17-cv-00939-WHA Document 2050 Filed 10/23/17 Page 1 of 3
DEFENDANTS NOTICE OF SUBSEQUENT CASE HISTORY ISO MOTION TO EXCLUDE WAGNER TESTIMONY

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Defendants Uber Technologies, Inc. and Ottomotto LLC hereby submit subsequent case 

history in support of their pending motion to strike the report and opinions of Michael A. Wagner. 

Waymo has taken the position that a jury could base an unjust enrichment award based on 

the defendants’ expected gain at the time of misappropriation rather than its actual gain. (See 

Pl.’s Opp. to Defs.’ Mtn. to Exclude Testimony and Opinions of Michael Wagner (Dkt. 1777-3) 

at 7-8.) 

The Federal Circuit has squarely rejected Waymo’s position in a case applying California 

law. The primary case cited by Waymo to support its argument is Litton Sys., Inc. v. Ssangyong 

Cement Indus. Co., No. C-89-3832 VRW, 1993 WL 317266 (N.D. Cal. Aug. 19, 1993). In 

Litton, the trial court concluded that the appropriate measure for unjust enrichment was the 

defendant’s expected gain at the time of misappropriation rather than its actual gain. Id. at *4. 

Waymo cited this case in support of its position—the only case from this Circuit it cited for this 

point. However, the Federal Circuit reversed on this very point,1

 expressly rejecting the 

“expectation” approach to unjust enrichment: 

In cases of trade secret misappropriation, unjust enrichment is 

normally measured by the defendant’s profits on sales attributable 

to the use of the trade secret. See Restatement of Unfair 

Competition § 45 cmt. f (1995); 1 Melvin F. Jager, Trade Secrets 

Law § 3.03[6][b][i] (1995). The defendant’s gain has also been 

measured by the cost saving that the defendant has realized from 

using the trade secret. Id.; see also Salsbury Labs., Inc. v. Merieux 

Labs., Inc., 908 F.2d 706, 714 (11th Cir. 1990). The district 

court’s theory of unjust enrichment as encompassing 

unrealized expected gain, however, is unsupported in the law of 

unfair competition and cannot serve as a valid basis for an 

award of damages in this case. 

Litton Sys., Inc. v. Ssangyong Cement Indus. Co., 107 F.3d 30 (Fed. Cir. 1997) (unpublished) 

(emphasis added). The Federal Circuit noted that the damages award was based on an erroneous 

legal principle: 

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 The Federal Circuit reversed the Litton decision in 1997, and because the expedited 

briefing schedule did not provide for reply Daubert briefs, Uber respectfully submits this 

supplement to its motion to strike to notify the Court of the Federal Circuit decision. 

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The parties dispute the state of the record with respect to the 

evidence regarding saved development costs, and we decline 

Litton’s invitation to uphold the judgment in this case on the theory 

that the amount of the award was less than the district court could 

have granted under a different theory. The district court based its 

award on an erroneous principle of law, and we do not attempt to 

resolve the disputes among the parties regarding whether other, 

alternative damages theories could validly support a judgment in 

Litton’s favor and how large such a judgment might be. 

Id. (emphasis added). 

This decision is logical. A party cannot account for or return a benefit that it did not 

actually receive, even if it had previously expected to receive a benefit. 

Dated: October 23, 2017 MORRISON & FOERSTER LLP 

By: /s/ Arturo J. González 

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

Case 3:17-cv-00939-WHA Document 2050 Filed 10/23/17 Page 3 of 3