DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

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

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MICHAEL A. JACOBS (CA SBN 111664)

MJacobs@mofo.com 

ARTURO J. GONZÁLEZ (CA SBN 121490) 

AGonzalez@mofo.com 

ERIC A. TATE (CA SBN 178719) 

ETate@mofo.com 

RUDY Y. KIM (CA SBN 199426) 

RKim@mofo.com 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Telephone: 415.268.7000 

Facsimile: 415.268.7522 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, and OTTO TRUCKING LLC 

KAREN L. DUNN (Pro Hac Vice) 

kdunn@bsfllp.com 

HAMISH P.M. HUME (Pro Hac Vice) 

hhume@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington DC 20005 

Telephone: 202.237.2727 

Facsimile: 202.237.6131 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v. 

UBER TECHNOLOGIES, INC., OTTOMOTTO 

LLC; OTTO TRUCKING LLC, 

Defendants. 

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

DEFENDANTS UBER 

TECHNOLOGIES, INC., OTTOMOTTO 

LLC, AND OTTO TRUCKING LLC’S 

MOTION FOR SUMMARY 

JUDGMENT OF 

NON-INFRINGEMENT 

Date: June 8, 2017 

Time: 8:00 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William Alsup 

Trial Date: October 2, 2017

REDACTED VERSION OF DOCUMENT SUBMITTED UNDER SEAL 

Case 3:17-cv-00939-WHA Document 331 Filed 05/02/17 Page 1 of 11
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

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NOTICE OF MOTION AND MOTION 

PLEASE TAKE NOTICE that on June 8, 2017, at 8:00 a.m., or as soon thereafter as the 

matter may be heard, in the United States District Court for the Northern District of California, 

San Francisco Courthouse, located at 450 Golden Gate Avenue, San Francisco, CA, in 

Courtroom 8 before the Honorable William Alsup, Defendants Uber Technologies, Inc., 

Ottomotto LLC, and Otto Trucking LLC will, and hereby do, jointly move for summary judgment 

of non-infringement of United States Patent Nos. 8,836,922, 9,285,464, and 9,086,273. 

Defendants’ motion is based on this Notice of Motion and Motion, the accompanying 

Memorandum of Points and Authorities, the concurrently filed Declaration of James Haslim, 

Declaration of Esther Kim Chang, and all exhibits thereto, all documents in the Court’s file, any 

matters of which this Court may take judicial notice, and on such other written and oral argument 

as may be presented to the Court. 

Dated: May 2, 2017 MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs 

MICHAEL A. JACOBS 

Attorneys for Defendants UBER TECHNOLOGIES, 

INC., OTTOMOTTO LLC, and OTTO TRUCKING 

LLC

Case 3:17-cv-00939-WHA Document 331 Filed 05/02/17 Page 2 of 11
TABLE OF CONTENTS 

Page 

DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

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

STATEMENT OF FACTS ............................................................................................................. 1

A. The Asserted ’922, ’464, and ’273 Patents Require a Single, Common Lens 

for Transmitting and Receiving Light ..................................................................... 1

B. Accused Products .................................................................................................... 3

1. Fuji Does Not Use a Single, Common Lens ............................................... 3

2. Spider Was Never A Completed LiDAR System ....................................... 4

SUMMARY JUDGMENT OF NON-INFRINGEMENT SHOULD BE GRANTED ................... 5

A. Fuji Does Not Infringe the ’922, ’464, and ’273 Patents Because It Lacks a 

Single, Common Lens ............................................................................................. 5

B. Spider Does Not Infringe the ’922, ’464, and ’273 Patents Because It Was 

Never Made, Used, Sold, Offered for Sale, or Imported ........................................ 6

CONCLUSION ............................................................................................................................... 7

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

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

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TABLE OF ABBREVIATIONS 

Abbreviation Description 

Chang Declaration of Esther Kim Chang in Support of Motion for 

Summary Judgment of Non-infringement 

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

Haslim Declaration of James Haslim in in Support of Motion for Summary 

Judgment of Non-infringement 

Kintz Declaration of Gregory Kintz in Support of Plaintiff Waymo LLC’s 

Motion for Preliminary Injunction (ECF No. 25-61) 

Kintz Reply Reply Declaration of Gregory Kintz in Further Support of Plaintiff 

Waymo LLC’s Motion for Preliminary Injunction (ECF No. 245-5) 

Uber Uber Technologies, Inc. 

Waymo PI Motion Plaintiff Waymo LLC’s Motion for Preliminary Injunction (ECF 

No. 24) 

Waymo PI Reply Reply in Further Support of Plaintiff Waymo LLC’s Motion for 

Preliminary Injunction (ECF No. 254) 

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DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT

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INTRODUCTION 

Waymo has confirmed that its patent infringement allegations were indeed a misfire. 

Three of the four asserted patents, United States Patent Nos. 8,836,922, 9,285,464, and 9,086,273, 

require a single lens for transmitting and receiving light. Waymo accused Uber’s Fuji LiDAR of 

infringing these patents claiming a single, common lens architecture, a monostatic design that 

Waymo characterized as “vastly different” from the multiple, separate lens designs in the prior 

art. However, Fuji is a bistatic system that uses separate lenses for transmitting and receiving 

light. Waymo’s expert Gregory Kintz, who first opined that Uber’s Fuji design “definitively” 

used a single, common lens design, now has backtracked completely, admits Fuji does not use 

Waymo’s patented design, and has withdrawn his infringement opinion.1 

Left grasping at straws, Waymo now focuses its single, common lens patent allegations on 

Spider—a design that Uber never completed and subsequently abandoned more than five months 

ago. Waymo’s expert admits that there is no evidence a completed Spider LiDAR was ever 

made, used, sold, offered for sale, or imported. A device which does not exist—and never has 

existed—cannot infringe. Lacking any evidence of a single act of infringement, Waymo cannot 

salvage its Fuji allegations by transferring them to Spider. Summary judgment of noninfringement should be granted for the ’922, ’464, and ’273 patents.

STATEMENT OF FACTS 

A. The Asserted ’922, ’464, and ’273 Patents Require a Single, Common Lens for 

Transmitting and Receiving Light 

Waymo describes the ’922 and ’464 patents as directed to a “single lens design [that] was 

(and remains today) vastly different from commercially available LiDAR systems” because 

“[p]rior systems had used separate lens assemblies—often with multiple lens elements—for the 

‘transmit path’ and the ‘receive path.’” (Waymo PI Motion at 4.) Waymo lauds this monostatic 

 

1 Defendants reserve the right to subsequently move for summary judgment of noninfringement of Waymo’s fourth asserted patent, U.S. Patent No. 9,368,936. The instant motion, 

however, is prompted by statements made by Waymo and Mr. Kintz, demonstrating that no 

genuine issue of material fact exists with respect to the three “single, common lens” patents. 

Mr. Kintz did not opine either way on the ’936 patent. 

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design as “revolutionary” and enshrines it as the centerpiece of its purported inventions. (Waymo 

PI Motion at 4.) 

Figure 2 of both the ’922 patent and the ’464 patent2 illustrates this single, common lens 

design. As shown in Figure 2, light beams travel along the transmission path (202a-c) from the 

transmit block, through a single lens (250) that collimates the light beams for transmission into 

the environment surrounding the LiDAR device. (Chang Ex. 1, ’922 patent at 11:62-12:43.) The 

reflected light beams are focused by the same lens (250), and the focused light travels along 

receive path (208) to the receive block. 

The apparatus claims of both the ’922 patent and the ’464 patent all require this single, 

common lens. The claims recite a “lens” that both “collimate[s] the light beams for transmission

into an environment of the LIDAR device” and “focus[es] the collected light onto the detectors 

via the receive path.” (Chang Ex. 1, ’922 patent, Claim 1 (emphasis added); Chang Ex. 2, ’464 

patent, Claim 1 (emphasis added).) The method claims of both patents recite similar language to 

require “a lens” that is “collimating” the “light beams for transmission into an environment of the 

LiDAR device” and that is “focusing” the “collected light onto a plurality of detectors.” (Chang 

Ex. 1, ’922 patent, Claim 15; Chang Ex. 2, ’464 patent, Claim 16.) 

 

2

 The ’464 patent is a continuation of the application that resulted in the issuance of the 

’922 patent. 

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The ’273 patent also requires a single, common lens for transmitting and receiving light. 

As illustrated in Figure 1a, for example, the light is collimated by a single lens 114 and 

transmitted into an environment of LIDAR device to be reflected by one or more objects in the 

environment. (Chang Ex. 3, ’273 patent at 4:56-60.) This light can then be reflected back into 

the same lens 114, which focuses the object-reflected light onto one or more detectors. (Id. at 

4:61-65.) 

All the apparatus claims of the ’273 patent require an “objective lens” or a “lens” that 

“collimate[s]” to provide light “for transmission into an environment of the LIDAR device” and 

“(ii) focus[es]” any “object-reflected light” onto a detector. (Id. at Claims 1, 14.) The method 

claims of the ’273 patent uses similar language to require a “lens” for “collimating” light for 

“transmitting” and “focusing” the “objected-reflected light” onto a detector. (Id. at Claim 17.) 

B. Accused Products 

1. Fuji Does Not Use a Single, Common Lens 

Uber’s Fuji design contains two optical cavities: a medium-range cavity and a long-range 

cavity. (Haslim ¶ 3.) Each cavity is bistatic, using one lens for the outbound transmit beam and a 

separate lens for the inbound receive beam. (Id. ¶ 3.) As illustrated in the annotated top-view 

cross-section CAD drawing of Fuji (below), light is emitted from diodes on the transmit block 

and travels to the transmit lens along the transmit path (shaded in red). (Id. ¶ 4.) Reflected light 

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is collected and focused by the receive lens, and this light travels to the receive board along the 

receive path (shaded in purple). (Id. ¶ 4.) 

The transmit path and the receive path in each cavity do not overlap. (Id. ¶ 5.) Fuji does 

not use a single, common lens for transmitting and receiving light. (Id. ¶ 5.) 

Mr. Kintz testified at deposition that he has withdrawn his infringement opinion for Fuji 

and that Fuji’s multi-lens design does not infringe the ’922 and ’464 patents. (Ex. 4, Kintz Dep. 

Tr. 221:2-9.) Mr. Kintz also admits that the ’273 patent is directed to a “common lens,” 

“monostatic system,” and that Fuji is a “bistatic system that does not have a common lens.” (Id. 

at 225:16-24.) 

2. Spider Was Never A Completed LiDAR System 

Uber abandoned Spider, a fiber laser based LiDAR design, in late October 2016, because 

of the complexities of the design, the anticipated difficulty of scaling the manufacturing of the 

design, and its large size, heavy weight, and high power requirement. (Id. ¶¶ 12-13.) 

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Before abandoning the Spider project, Uber built a few components for testing purposes, 

but never completely assembled these parts and never built all of the parts needed for a working 

LiDAR. (Id. ¶ 6.) Spider was designed to have eight optical cavities, for example, but Uber built 

only one optical cavity for testing purposes and never mounted that single test optical cavity onto 

the rotating base. (Id. ¶ 11.) For the one test optical cavity that was built, Uber was unable to 

place the transmit fibers accurately enough to align the eight transmit fibers to the eight 

photodetectors. (Id. ¶ 11.) 

As Uber never built all of the components needed for a functional prototype, much less a 

complete LiDAR device, Spider was never made, used, sold, offered for sale, or imported. (Id. 

¶ 6.) 

Uber has no plans to revive the abandoned Spider project. (Id. ¶ 6.) In order to prepare 

Spider components for inspection in this case, an Uber engineer had to collect them from 

scattered locations: a majority of the mechanical parts from a storage locker, eight fiber lasers and 

connected electrical components from under a tarp in the basement, and the one test optical cavity 

from a plastic bin near the storage locker. (Id. ¶¶ 15-17.) 

Mr. Kintz concedes that there is no evidence Spider was ever assembled into a working 

LiDAR. (Chang Ex. 4, Kintz Dep. Tr. at 215:5-10.) Mr. Kintz has not seen any evidence that 

Spider was ever used as a complete working LiDAR. (Id. at 215:11-14.) He is not aware of any 

evidence that Spider was ever sold, offered for sale, or imported. (Id. at 215:15-24.) Mr. Kintz is 

not aware of any evidence of development of Spider after October 2016. (Id. at 215:25-216:11.) 

SUMMARY JUDGMENT OF NON-INFRINGEMENT SHOULD BE GRANTED 

A. Fuji Does Not Infringe the ’922, ’464, and ’273 Patents Because It Lacks a 

Single, Common Lens 

The parties do not dispute that Fuji lacks the single, common lens required by Waymo’s 

single-lens patents. On the basis of a single printed circuit board drawing, Mr. Kintz concluded 

that Fuji “definitively” used the monostatic design claimed in the ’922 and ’464 patents. (Kintz 

¶¶ 72, 113.) Mr. Kintz has expressly withdrawn his infringement opinion for the ’922 and ’464 

patents and now admits that Fuji does not infringe either patent. (Kintz Reply ¶ 80; Ex. 4, Kintz 

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Dep. Tr. 221:2-9.) Mr. Kintz also admits that the ’273 patent requires a single, common lens, 

which Fuji’s bistatic design does not use. (Chang Ex. 4, Kintz Dep. Tr. 225:16-24.) There is no 

genuine dispute here, and summary judgement of non-infringement should be granted. 

B. Spider Does Not Infringe the ’922, ’464, and ’273 Patents Because It Was 

Never Made, Used, Sold, Offered for Sale, or Imported 

Waymo has redirected its single-lens patent allegations at Uber’s Spider design. (Waymo 

PI Reply at 9-10.) Spider is a red herring. 

The ’922, ’464, and ’273 patents all require a LiDAR device. The apparatus claims of the 

’922, ’464, and ’273 patents recite “[a] light detection and ranging (LIDAR) device” as the 

preamble. (See e.g., Chang Ex. 1, ’922 patent at Claim 1.) The “LiDAR device” in the preamble 

is limiting because “limitations in the body of the claim rely upon and derive antecedent basis 

from the preamble.”3

 Pacing Techs., LLC v. Garmin Int’l., Inc., 778 F.3d 1021, 1024 (Fed. Cir. 

2015) (citations omitted). In each of the three patents, the body of the independent apparatus 

claims each recites “[an/the] environment of the LiDAR device,” which derives its antecedent 

basis from the preamble. (See e.g., Chang Ex. 1, ’922 patent at Claim 1.) Furthermore, the 

dependent apparatus claims in each of the three patents recite the positive limitation “[t]he 

LIDAR device,” deriving their antecedent bases from the preamble of their respective 

independent claims. (See e.g., id., ’922 patent at Claim 2-15.) The “LIDAR device” preamble in 

each of the three patents is therefore limiting. Pacing Techs., 778 F.3d at 1024. 

 

3

 Waymo does not contend that Spider infringes the method claims of the single-lens 

patents. Nonetheless, the method claims of the ’922 patent and ’464 patent require “rotating a 

housing of a light detection and ranging (LIDAR) device about an axis.” Uber never built all the 

cavities of the Spider design and never mounted the single test optical cavity onto the rotating 

base. (Haslim ¶ 11.) Spider components did not have a housing that rotated about an axis. 

The method claims of the ’273 patent require “transmitting the collimated laser beam into 

an environment” and “focusing, by the lens, the object-reflected light through a focusing path 

onto a detector.” For the one test optical cavity that was built from the Spider design, Uber was 

unable to align the eight transmit fibers to the eight photodetectors. (Haslim ¶ 11.) Spider 

components did not transmit light into the environment and focus the reflected light onto a 

detector. Mr. Kintz conceded that the receive block (the avalanche photodiode detectors) of 

Spider has not been mounted in the one test optical cavity. (Chang Ex. 4, Kintz Dep. Tr. at 

211:13-213:7.) 

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Spider was never a completed, working LiDAR device, and Uber has no plans to revive it. 

(Haslim ¶ 6.) Mr. Kintz concedes that there is no evidence that Uber ever made, used, sold, 

offered for sale, or imported into the United States a completed, working Spider device. (Chang 

Ex. 4, Kintz Dep. Tr. at 215:5-24.) 

Mr. Kintz’s infringement claim charts do not give rise to any issues of disputed fact. His 

charts cite only to testimony about Spider’s intended design—not any evidence that a completed 

Spider device ever existed. (Kintz Reply ¶ 84.) He conceded that he never personally inspected 

Spider components, and he never saw evidence of a completed Spider prototype. (Chang Ex. 4, 

Kintz Dep. Tr. at 207:17-208:7.) Mr. Kintz admits that the components, in their current 

configuration, would not function. (Id. at 209:15-20.) 

Uber cannot infringe by merely designing a device that does not and has never existed. 

Waymo cannot show an act of infringement, and summary judgment should therefore be granted. 

(35 U.S.C. 271(a).) 

CONCLUSION 

For the foregoing reasons, summary judgment of non-infringement of the ’922, ’464, and 

’273 patents should be entered, and Waymo’s Third, Fourth, and Sixth Causes of Action should 

be dismissed with prejudice.

Dated: May 2, 2017 MORRISON & FOERSTER LLP

By: /s/ Michael A. Jacobs 

MICHAEL A. JACOBS 

Attorneys for Defendants UBER TECHNOLOGIES, 

INC., OTTOMOTTO LLC, and OTTO TRUCKING 

LLC

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