August 24, 2017

The Honorable William Alsup

United States District Judge

United States District Court

Northern District of California

450 Golden Gate Avenue

San Francisco, CA 94102

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

Dear Judge Alsup:

Pursuant to the Court’s Order (Dkt. 1308), Defendants Uber Technologies, Inc. and 

Ottomotto LLC (“Uber”) submit the attached letter responding to Plaintiff Waymo LLC’s 

request for permission to file a motion for summary judgment on certain of Uber’s 

affirmative defenses (Dkt. 1301).

Respectfully submitted, 

William Christopher Carmody

Counsel for Uber Technologies, Inc.

and Ottomotto LLC

cc: All Counsel of Record

Special Master John Cooper 

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

Susman Godfrey l.l.p.

a registered limited liability partnership

32ND FLOOR

1301 AVENUE OF THE AMERICAS

NEW YORK, NEW YORK 10019-6022

(212) 336-8330

FAX (212) 336-8340

www.susmangodfrey.com

__________

Suite 5100

1000 Louisiana Street

Houston, Texas 77002-5096

(713) 651-9366

__________

Suite 950

1901 Avenue of the Stars

Los Angeles, California 90067-6029

(310) 789-3100

__________

Suite 3800

1201 Third Avenue

Seattle, Washington 98101-3000

(206) 516-3880

__________

William Christopher Carmody

Direct Dial (212) 336-8334

E-Mail 

BCarmody@susmangodfrey.com

Case 3:17-cv-00939-WHA Document 1340 Filed 08/24/17 Page 1 of 4
The Honorable William Alsup

August 24, 2017

Page 2

In its précis, Waymo challenges seven of the affirmative defenses Uber raised in its 

Answer (Dkt. 704): preemption (No. 12); estoppel (No. 13); acquiescence (No. 14); waiver 

(No. 15); license (No. 16); patent exhaustion (No. 16); and failure to mitigate damages 

(No. 20). Waymo’s remaining challenges address Otto Trucking’s affirmative defenses. 

(Dkt. 703.). With the hope of avoiding summary judgment briefing on any of the affirmative 

defenses and in line with the Court’s direction regarding the submission of a précis, Uber 

withdraws the following affirmative defenses: preemption; estoppel; license; and patent 

exhaustion. Summary judgment motion practice on the defenses of acquiescence, waiver, and 

failure to mitigate damages will not streamline the case or resolve issues of law, as they all 

involve genuine disputes of material facts. 

Acquiescence/Waiver

These defenses implicate Waymo’s knowledge and course of conduct in the year 

leading up to this lawsuit. Waymo’s précis (Dkt. 1301 at 1) focuses on Uber’s due diligence 

process, but in fact it is Waymo’s forensic investigation of Mr. Levandowski’s conduct and 

its failure to take action against Mr. Levandowski that is primarily at issue with these 

affirmative defenses. 

By at least January 2016, Waymo was aware that Mr. Levandowski might enter the 

self-driving vehicle space. At his exit interview, 

(Josephs Decl. Ex. 1.) The same day, Waymo CEO John 

Krafcik reported to Sergey Brin and Larry Page that 

(Josephs Decl. 

Ex. 2.) Google forensic engineer Gary Brown began working on the investigation in March 

2016 and continued intermittently through February 2017. (Josephs Decl. Ex. 3, 3/24/17 

Brown Dep. 10:21–11:12.) Waymo involved outside counsel in the investigation by July

2016. (Josephs Decl. Ex. 4, 8/8/17 Brown 30(b)(6) Dep. 42:4–18.) In April 2016, 

Mr. Krafcik also discussed with Google human resources 

employee Chelsea Bailey. (Josephs Decl. Ex. 5.) Google has

. (See, e.g., Josephs Decl. Exs. 

6–8.) For example, on August 18, 2016, the day Uber announced its acquisition of Otto, 

Waymo prepared 

(Josephs Decl. Ex. 9.) 

Thus, Waymo knew, at least as of August 18, 2016, that it was investigating Mr. 

Levandowski’s alleged downloading activity; that Levandowski had pursued a self-driving 

venture; and that its (Uber) acquired Levandowski’s startup. Waymo sat on 

these facts for months. Waymo didn’t even mention the downloaded files in the arbitration it 

filed against Mr. Levandowski in October 2016. (See Dkt. 138.) At least as of October 2016, 

however, Waymo had confirmed Mr. Levandowski allegedly downloaded the files on which 

Waymo’s entire case rests. (Josephs Decl. Ex. 3, 3/24/17 Brown Dep. 48:5–49:8, 36:9–20; 

Dkt. 23, First Am. Compl. ¶ 57.) More evidence of what Waymo knew and when is expected 

today, when Waymo produces documents relating to its forensic investigation that it 

wrongfully withheld under a claim of privilege. (Dkt. 1272; Dkt. 1314.) Additional testimony

from Mr. Brown is anticipated after the close of discovery. (See id.; Dkt. 1319.) Genuine 

Case 3:17-cv-00939-WHA Document 1340 Filed 08/24/17 Page 2 of 4
The Honorable William Alsup

August 24, 2017

Page 3

issues of material fact related to Waymo’s knowledge and conduct would preclude summary

judgment.

Failure to Mitigate Damages 

Today is the last day of fact discovery in a case expedited at Waymo’s insistence. 

Waymo still has no viable damages theory. (See Dkt. 797.) Yet, in its précis, Waymo 

demands that Uber reveal its potential defense to Waymo’s as-yet-undisclosed damages 

theory. In fairness, Uber should not have to defend against a summary judgment motion on a 

damages defense when Waymo refuses to reveal its damages theory (on which it bears the 

burden of proof) and when Waymo may very well be precluded from seeking damages at 

trial. (Dkt. 563 at 1.) If Waymo wanted the opportunity to challenge this defense on summary

judgment under the expedited schedule, then it should have complied with the Federal Rules 

and this Court’s rulings. Uber should be permitted to take the defense to trial.

Subject to the above, and without waiving its pending motion to strike and preclude 

damages (Dkt. 797), which the Court has held in abeyance and 

(8/16/17 Hr’g Tr. 78:6–16; 

8/16/17 Sealed Hr’g Tr. 142:7–17), Uber responds as follows. Waymo’s précis claims that 

trade secret damages under its undefined theory are based “on the saved development costs 

and accelerated development timeline that Defendants were able to achieve through their use 

of Waymo’s trade secrets.” (Dkt. 1301 at 2.) These are precisely the type of damages that 

could have been mitigated with earlier notice as they affect the amount of time Uber 

allegedly benefited from using Waymo’s material to catch up on Waymo’s technological 

lead. As explained above, Waymo knew of the facts giving rise to its claims well before it 

filed suit. Additionally, Waymo’s interrogatories demanded that 

(Josephs Decl. Ex. 10 at 3, 13.) Uber’s responses 

. 

Finally, Waymo suggests that failure to mitigate damages is not a commonly

accepted defense in this type of case, but its cited source provides only that the duty to 

mitigate damages may include seeking a preliminary injunction, not that it excludes other 

forms of mitigation. (Dkt. 1301 at 2.) 

Conclusion

The Court very clearly informed the parties at the August 16, 2017 hearing to 

(8/16/17 Sealed 

Hr’g Tr. 134:20–23.) In line with the Court’s instruction and to avoid summary judgment 

briefing, Uber is abandoning four of its affirmative defenses. Uber respectfully requests that 

the Court deny Waymo’s request to brief the remaining three that involve genuine issues of 

material fact.

Case 3:17-cv-00939-WHA Document 1340 Filed 08/24/17 Page 3 of 4
The Honorable William Alsup

August 24, 2017

Page 4

ATTESTATION OF E-FILED SIGNATURE

I, Arturo J. González, am the ECF User whose ID and password are being used to file this 

Declaration. In compliance with General Order 45, X.B., I hereby attest that William 

Christopher Carmody has concurred in this filing.

Dated: August 24, 2017 /s/ Arturo J. González

ARTURO J. GONZÁLEZ

Case 3:17-cv-00939-WHA Document 1340 Filed 08/24/17 Page 4 of 4