quinn emanuel trial lawyers | san francisco

50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL (415) 875-6600 FAX (415) 875-6700

quinn emanuel urquhart & sullivan, llp

LOS ANGELES | NEW YORK | SAN FRANCISCO | SILICON VALLEY | CHICAGO | WASHINGTON, DC | HOUSTON | SEATTLE

LONDON | TOKYO | MANNHEIM | MOSCOW | HAMBURG | PARIS | MUNICH | SYDNEY | HONG KONG | BRUSSELS | ZURICH

April 10, 2017

Honorable William H. Alsup

U.S. District Court for the Northern District of California

San Francisco Courthouse, Courtroom 8 - 19th Floor

450 Golden Gate Avenue, San Francisco, CA 94102

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

Dear Judge Alsup:

Plaintiff Waymo respectfully submits this discovery letter brief concerning the inspection of 

Defendants’ (“Uber”) accused LiDAR devices. As set forth below, Waymo’s outside counsel 

and technical expert are set to inspect Uber’s LiDAR devices tomorrow, April 11, 2017, yet Uber 

has refused to explain exactly which devices will be made available for inspection, or confirm 

that it will provide specific devices that are central to Waymo’s Motion for Preliminary 

Injunction. These devices include Uber’s “custom built” LiDAR device referenced in its 

disclosure to Nevada regulators, and the device corresponding to the design files that Waymo 

inadvertently received in an email from Uber’s vendor. It is critical that Uber provide these

devices for inspection so that Waymo can properly determine the scope and degree of Uber’s 

misappropriation and infringement, and respond to the arguments raised in Uber’s Opposition.

Factual Background

In its discovery letter brief submitted April 3, 2017, Waymo requested relief for Defendants’ 

failure to comply with the Court’s March 16 Expedited Discovery Order, including “an 

inspection of Uber’s LiDAR system(s).” (Dkt. No. 135 at 3.) During the hearing on Waymo’s 

letter brief, the Court observed that, “The plaintiff has, I believe, made a sufficient showing that

they ought to be able to inspect your LiDAR system, to see if the way it's actually implemented, 

they can – they believe it violates any of their proprietary information. So, an inspection ought to 

be done.” (April 5, 2017 Tr. at 32:14-18.) 

Following the Court’s instruction, the parties conferred about the details of the inspection. (Ex. 

A.) Waymo requested that Uber make available the following devices: (1) the “In-house custom 

built 64-laser (Class 1) emitting 6.4 million beams a second at 10Hz” described to Nevada 

regulators; (2) the LiDAR device that makes use of the transmit board depicted in Exhibit 1 to 

the Declaration of William Grossman in support of Waymo’s motion for preliminary injunction;

and (3) the LiDAR devices corresponding to the documents produced at UBER00000727_AEO 

and UBER00005076_AEO. (Id. at 3-4.) After reviewing Uber’s Opposition paper Waymo then 

requested clarification about the devices Uber would be making available, including an 

explanation of which devices from the above list (i) Uber contends do not exist; (ii) Uber is 

refusing to make available; and (iii) devices from the list that Uber contends are the same. (Id. at 

2-3.) Finally, Waymo requested confirmation that Uber would be making available all devices 

considered by Uber’s experts and fact declarants as set forth in the papers Uber submitted in 

connection with its Opposition filed on April 7, 2017. (Id. at 3.) These devices include, but are 

Case 3:17-cv-00939-WHA Document 206 Filed 04/10/17 Page 1 of 3
-2- Case No. 3:17-cv-00939-WHA

Waymo’s Letter Brief re: Inspection of Defendants’ LiDAR Devices

not necessarily limited to the “dual stack” devices discussed at page 4 of Uber’s Opposition, and 

the Fuji device discussed at page 5 of Uber’s Opposition. In response, counsel for Uber 

indicated that it would make “two devices” available for inspection, without specifying what the 

devices are or responding to Waymo’s request for clarification. (Ex. A at 1-2.) Counsel for 

Uber also stated that “there is no device that was shown to Nevada regulators,” without 

additional explanation. (Id.) Waymo again requested clarification and a meet and confer and 

indicated its understanding that the parties were at an impasses if it did not hear back from Uber. 

(Id. at 1.) As of the filing of this motion, Uber has not responded.

Argument

Waymo respectfully requests that the Court order to produce for inspection the following 

categories of LiDAR devices: (1) the “In-house custom built 64-laser (Class 1) emitting 6.4 

million beams a second at 10Hz” described to Nevada regulators; (2) the LiDAR device that 

makes use of the transmit board depicted in Exhibit 1 to the Declaration of William Grossman in 

support of Waymo’s motion for preliminary injunction; (3) the LiDAR devices corresponding to 

the documents produced at UBER00000727_AEO and UBER00005076_AEO; and (4) all 

devices considered by Uber’s experts and fact declarants as set forth in the papers Uber 

submitted in connection with its opposition brief.

With respect to category (1), Uber represented to Nevada regulators that it had “developed in 

house and/or currently deployed” an “[i]n-house custom built 64-laser” LiDAR device. (Dkt. 

No. 25-6, Ex. 51.) Waymo filed its Motion for Preliminary Injunction, in part, in light of this 

evidence. (Dkt. No. 25-4 at 15-16.) Now that the Court has ordered an inspection, Uber’s 

response is to deny its own regulatory filing’s accuracy and say that “there is no device that was 

shown to Nevada regulators.” (Ex. A at 1-2.) To the extent the device ever existed—as Uber 

previously represented—Uber must make it available for Waymo’s inspection under the Court’s 

order. The device is squarely within Waymo’s request for preliminary relief, and Waymo is 

entitled to analyze to determine the extent of Uber’s infringement and misappropriation. 

Category (2) raises the same concern. Waymo moved for a preliminary injunction on the 

grounds that, in part, a design file Waymo inadvertently received from one of Uber’s vendors 

discloses the design of a transmit board that uses the same design and configuration as the 

transmit boards in Waymo’s LiDAR system. (Dkt. No. 25-4 at 14.) Uber’s Opposition is 

noticeably silent regarding these events, failing to mention the vendor or explain how and why it 

came into possession of the design. Nevertheless, any Uber LiDAR device that makes use of the 

design is squarely within the scope of Waymo’s request for preliminary relief and must be made 

available for inspection. 

With respect to category (3), Waymo has identified specific files from Uber’s production that 

disclose transmit board and circuit designs that closely resemble files included among the 14,000 

files that Anthony Levandowski misappropriated when he left Waymo. Waymo should be 

permitted to inspect any devices that incorporate the designs contained in these files. 

Finally, with respect to category (4), Uber must make available for inspection any devices

considered by its fact and expert witnesses in preparation of their declarations submitted in 

Case 3:17-cv-00939-WHA Document 206 Filed 04/10/17 Page 2 of 3
-3- Case No. 3:17-cv-00939-WHA

Waymo’s Letter Brief re: Inspection of Defendants’ LiDAR Devices

support of Uber’s Opposition. Uber should not be permitted to rely on its witnesses’ review of 

these devices for purposes of defending against Waymo’s patent and trade secret claims, yet 

withhold the devices from inspection and thereby stifle Waymo’s ability to respond to the 

defenses. 

 

Respectfully,

/s/ Jordan R. Jaffe

Jordan R. Jaffe

QUINN EMANUEL URQUHART & SULLIVAN, LLP

Counsel for Waymo LLC

CC: Counsel of record (via ECF)

Case 3:17-cv-00939-WHA Document 206 Filed 04/10/17 Page 3 of 3