DEFS. UBER TECHS., INC. & OTTOMOTTO LLC’S OPP’N TO WAYMO’S MOT. FOR CONTINUANCE OF TRIAL DATE

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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 

Telephone: 415.268.7000 

Facsimile: 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 

Telephone: 202.237.2727 

Facsimile: 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 

Telephone: 212.336.8330 

Facsimile: 202.336.8340 

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

UBER TECHNOLOGIES, INC. AND 

OTTOMOTTO LLC’S OPPOSITION TO 

WAYMO’S MOTION FOR 

CONTINUANCE OF TRIAL DATE 

The Honorable William Alsup 

Trial Date: October 10, 2017 

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED 

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I. INTRODUCTION 

After claiming for months that it has irrefutable evidence of patent infringement and trade 

secret theft by Uber, Waymo’s case has come to a screeching halt. All four patent claims have 

been dismissed. Its trade secrets claim has been narrowed to a handful of minor features in one 

LiDAR component. And the heart of Waymo’s case—that Anthony Levandowski supposedly sat 

at a computer and selected 14,000 important proprietary files to be downloaded—has collapsed 

like a house of cards. After discovery closed, Waymo finally—and only in response to a court 

order—produced documents stating that the 14,000 files are actually of “low value” and were 

 someone logged on to that repository. That critical 

information had never previously been disclosed to Uber, or to this Court. 

Waymo’s motion for a continuance asks this Court for a do-over after it knowingly made 

the informed decision in June 2017 to proceed with expedited discovery and a trial in 

October 2017 despite not having the Stroz report. In its Motion claiming it now wants to change 

strategy and delay this trial, Waymo fails to point out that the 

(Dkt. 1603-4 at 2:17) in the Stroz report is evidence that 

 Until Waymo filed 

its complaint, no one with access to the Stroz Report could have discerned that a reference to Mr. 

Levandowski was evidence that Mr. 

Levandowski had wrongfully taken those files (or somehow retained them). Having worked at 

Google for over eight years, it is not surprising that Mr. Levandowski would have had 

 Similarly, it is not surprising that 

 especially since Uber made clear that it did not want 

any Google information brought to Uber. 

And the facts show that the due diligence worked. Waymo has conducted a dozen 

inspections of Uber’s LiDAR device, source code, work stations, computers, and facilities, taken 

over 50 days of depositions, and has found no evidence that the 14,000 files or any other Google 

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files ever made it to Uber. That explains why Waymo is in no hurry to try this case, after 

requesting and getting expedited discovery and an expedited trial date. 

Waymo now seeks to delay the trial, even though this Court has made it clear that Waymo 

may not get a trial date for two years. Waymo claims that it needs a continuance because there 

are a lot of materials at Stroz. But the question for the jury is what, if anything, did Uber 

misappropriate. That only helps Uber—

which explains why Waymo walked away from a dozen inspections 

at Uber empty-handed. 

Waymo’s motion for continuance is motivated—at least in part—by the realization that 

Waymo’s damages expert failed miserably in his effort to concoct a theory to support Waymo’s 

inflated damages claim. As the Court knows, none of the parties have 

. Nevertheless, Waymo’s damages are based entirely 

on speculative future profits and cost savings in a nascent market, and Waymo’s expert relied on 

a document that is 18 months old and untested. Furthermore, Waymo failed to conduct any 

causation analysis to show that the purported unjust future profits were caused by 

misappropriation of each trade secret. 

Waymo should not be allowed to use a continuance as a vehicle for attempting to repair 

these fatal flaws. Instead, as described below, the Court should either deny the motion for 

continuance or, at most, hold a short bench trial in October on the narrowed list of trade secrets 

and grant a continuance with regard to any others. If the Court entertains such a limited 

continuance, Uber believes that it would be helpful to the Court and to the jurors for there to be 

input from a court-appointed neutral expert. 

II. THE STROZ REPORT CONFIRMS THAT THE DUE DILIGENCE 

PREVENTED ANY GOOGLE FILES FROM REACHING UBER 

While replete with inflammatory rhetoric, glaringly absent from Waymo’s description of 

the diligence that Stroz performed is the irrefutable conclusion that it worked: none of the 

 after working at Google for several years made 

its way to Uber or Ottomotto. There is also not a shred of evidence that Uber knew of or 

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encouraged any theft. The Report expressly concludes that Stroz 

(Dkt. 1603-5, Stroz Rpt. at 17 (emphasis added).) And the Stroz due diligence process itself was 

carefully structured so that Uber did not receive any confidential or proprietary Google 

information identified by Stroz, such as that Waymo makes a centerpiece 

of its brief. (See Dkt. 824 at 6.) Waymo does not contend otherwise. 

This is why, despite a dozen detailed inspections of Uber’s facilities poring over Uber’s 

design files and source code, tens of thousands of Uber documents, and more than 45 depositions 

of Uber engineers and executives, Waymo cannot point to any evidence that the 14,000 files (or 

any other Google files) are at Uber. They simply are not there. Simply repeating the words 

“stole” and “stolen” is not a substitute for proof. 

Before Uber acquired Ottomotto, Uber required Levandowski 

 (Dkt. 1603-5, Stroz Rpt. at 3.) This 

allowed Stroz and prevent it from coming to Uber. In exchange, Uber 

agreed to indemnify them, but only to the extent that their participation in the Stroz investigation 

was completely truthful. (Declaration of Arturo J. Gonzalez in Support of Defendants Uber 

Technologies, Inc. and Ottomotto LLC’s Opposition to Waymo’s Motion for Continuance of 

Trial Date (“Gonzalez Decl.”), Ex. 1 (Indemnification Agreement) § 2.2(b)(ii) at 

UBER000098495.) The Indemnification Agreement also strongly incentivized Levandowski and 

others not to commit any “post-signing bad acts,” which were not covered by the indemnity and 

which could cause Levandowski to lose indemnification for all claims (including Google’s 

pending arbitration against Levandowski). (Id. § 2.1(b)(iii) at UBER00098496.) Each diligenced 

employee attested at the time that they . (Id. Ex. 2 at 

UBER00319641 (Maxime Levandowski attestation: 

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”); id. Exs. 3-7 (diligenced employee attestations: 

).) 

Uber and Stroz required Levandowski and the other diligenced employees to 

, and 

Levandowski attested that he did so. Then, 

 Thus, there was no way for him for 

the remainder of his time at Otto or once he joined Uber. (Dkt. 1603-6, Ex. 17 to Stroz Rpt. at 2.) 

 (Dkt. 1603-5, Stroz Rpt. at 12-13.) This is the exact scenario the Court 

recognized as “an innocent explanation.” (5/3 Public Hr’g Tr. at 108:14-25 (The Court: “But 

let’s say for some reason they did the deal, joint defense, and under that scenario Uber would be 

saying: We are innocent. We don’t know -- we don’t want any of those trade secrets. We just 

want Levandowski. He’s brilliant. He’s the man in the Smithsonian with the motorcycle. We 

just want him. We don’t want his documents. So go put those documents in a vault. Never look 

at them. Promise us you’re never going to inspect them. Small chance, but some chance that that 

happened. So what do we do? What does the system of justice do in a case like this, where 

there’s an innocent explanation; there’s a guilty explanation; neither of them have been proven up 

yet.”).) 

With respect to the 14,000 files, Waymo ignores that the Stroz Report confirms that those 

files could not have come to Uber because Levandowski 

. (Dkt. 1603-5, Stroz Rpt. at 12.) Until Waymo filed its complaint, no one with 

access to the Stroz Report could have discerned that a reference to Levandowski 

 was evidence that Levandowski had wrongfully taken those 

files. Likewise, that Waymo alleges 

Levandowski 

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 are not “irrefutable evidence that these two trade secrets 

were directly communicated to Uber.” (Mot. at 17.) To the contrary, they were not 

communicated to Uber at all, much less directly or irrefutably, for 

 and no one at Uber ever received access to these 

. (Dkt. 823 at 6.) 

Waymo’s assertion that “Uber knew about and encouraged the destruction of evidence” is 

baseless and supported by nothing in the Report, including Waymo’s selective quotation of the 

underlying deposition testimony and of the Report. Contrary to Waymo’s assertions (Mot. at 2, 

8-9), Messrs. Kalanick’s and Poetzscher’s deposition testimony on this topic is completely 

consistent with the Report and shows they directed Levandowski not to bring any Google 

information into Uber. When Levandowski disclosed his possession of five disks containing 

Google information, the Report says 

” (Dkt. 1603-5, 

Stroz Rpt. at 10.) Waymo’s motion selectively omitted the first part of Mr. Kalanick’s instruction 

to Levandowski during that meeting. Waymo also incorrectly claims that Rhian Morgan 

“testified at her deposition that she had no involvement in and never even heard of the Stroz 

investigation.” (Mot. at 9 (citing April deposition).) In an intervening portion of her April 

deposition that Waymo omits, Ms. Morgan stated (amidst objections) that she did “remember 

there being some interviews that happened for some of our early employees. I'm not sure if that 

counts under due diligence – or not.” (Gonzalez Decl. Ex. 8, 4/14/17 Morgan Dep. 17:8-17.) In 

an additional deposition, she stated that Levandowski and others were being interviewed by a 

forensic investigation firm, and that she was responsible for filing documents relating to the 

investigation, but had no further substantive knowledge of the process. (Gonzalez Decl. Ex. 9, 

8/18/17 Morgan Dep. at 143:2-14, 147:2-148:5.) 

Having worked at Google for over seven years, it is not surprising that Levandowski 

would have 

. (Dkt. 1603-5, Stroz Rpt. at 12.) Using a 

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personal device for work purposes is not evidence of theft; indeed, Waymo’s policies expressly 

 (Gonzalez Decl. Ex. 10 (Waymo personal device policy).) Similarly, it is not 

surprising that 

, especially since Uber made it clear throughout the deal negotiations that it did 

not want any Google information brought to Uber. 

In sum, and contrary to Waymo’s misleading claims, the Stroz Report confirms that no 

Google material came into Uber. Contrary to Waymo’s misleading arguments, the Report: 



, contrary to Waymo’s assertion that the “Report states plainly 

that Levandowski took trade-secret information from Waymo.” (Mot. at 4 (citing 

Stroz Rpt. at 12).) 

 

 

 (Dkt. 1603-5, 

Stroz Rpt. at 12-13.) 

III. UBER DID NOTHING IMPROPER WITH RESPECT TO THE STROZ 

REPORT 

The parties to the Stroz Report legitimately believed that a common interest privilege 

applied. Uber could not decide unilaterally to waive that privilege. After this Court decided that 

the common interest privilege did not exist until the term sheet was signed, Uber did not appeal 

this Court’s decision to the Federal Circuit; Mr. Levandowski did. 

Once the Federal Circuit issued its decision, Uber promptly produced the Stroz Report and 

its exhibits within hours. (Gonzalez Decl. ¶ 3.) Uber produced its Stroz-related documents the 

next day. (Gonzalez Decl. ¶ 4.) MoFo also made the from the Stroz database that are in 

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its files—which MoFo received on behalf of Mr. Levandowski after Google filed its arbitrations 

against him and are the only Stroz materials MoFo has other than the Stroz Report and its exhibits 

—available for review promptly. 

Since the Federal Circuit’s decision, Uber has provided deposition dates for five 

deponents. (Gonzalez Decl. ¶ 2.) Waymo has rejected these dates. (Id.) Uber understands that 

Stroz has provided a date for its deponents. Waymo has not responded to Stroz’s proposal. 

IV. WAYMO IS SEEKING A CONTINUANCE SO IT CAN SHORE UP ITS 

SHAKY CASE 

A. All of Waymo’s Patent Claims Have Been Dismissed 

Waymo’s patent claims were a complete misfire. Waymo’s claims based on all four 

patents have been dismissed. 

B. Waymo’s Nine Asserted Trade Secrets Are Weak 

As the Court recognized at a recent hearing, this is for Waymo. 

(9/6/17 Sealed Hr’g Tr. 106:9-11.) Waymo started the case by accusing Uber of copying 

Waymo’s entire single-lens LiDAR design, but is now reduced to asserting misappropriation of a 

handful of minor features in one LiDAR component— Waymo’s nine 

remaining trade secret claims have numerous defects: the purported evidence of misappropriation 

is thin to non-existent, with only a very strained connection to the 14,000 files Waymo alleges 

Levandowski wrongfully downloaded; the accused features in Uber’s Fuji LiDAR were 

independently developed with no specific design input from Mr. Levandowski; and most of the 

claimed trade secrets are broad, generally-known concepts that are within the intellectual 

“toolbox” of LiDAR engineers. 

The following is a brief summary of the state of play for each of Waymo’s nine alleged 

trade secrets: 

 TS 96 (GBr3 ): This trade secret covers the specific 

 of Waymo’s GBr3 LiDAR. As detailed in Uber’s summary judgment motion on 

TS 96 (Dkt. 1514), Waymo’s technical expert, Dr. Hesselink, confirms that Uber does not 

use the specific implementation of GBr3 . The do not 

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match, even when the differing focal lengths are (improperly) factored out. (Dkt. 1512-4 

at 3-6.) Further, Dr. Hesselink acknowledges that the 

 TS 9 ( ): This broadly-defined trade secret boils down to a fundamental optics 

principle—i.e., . As 

explained in Uber’s summary judgment motion on TS 9 (Dkt. 1419), Waymo concedes 

that its own ’922 patent discloses all elements of TS 9 except for 

 Yet, Waymo’s engineers admitted that is a 

well-known concept in optics. (Dkt. 1419-4 at 11-12.) Moreover, public literature 

discloses , and the concept has been used in commerciallyavailable LiDARs for years (including Velodyne’s HDL-64, used by both Google and 

Uber in their self-driving vehicles). (Id. at 13-15.) 

 TS 2 ( transmit block): Waymo’s misappropriation theory for TS 2 is that the 

two separate transmit blocks in Uber’s Fuji LiDAR are the same as the single 

 transmit block in GBr3, because . That simplistic notion ignores Fuji’s 

2-cavity LiDAR design (hence, its two transmit blocks), which is fundamentally different 

than GBr3’s single-cavity, single-lens design with a single block. Waymo has presented 

no evidence that Uber embraced as a magic number; rather, Uber chose 

to distribute the 32 diodes in each of Fuji’s 2 cavities, because that configuration provided 

enough physical space for mounting the diodes. Uber is currently 

. 

 TS 7 ( ): Waymo initially claimed that having a laser diode 

 was a trade secret, but retreated when faced with the numerous public 

disclosures of that concept. Now Waymo claims that a is its trade 

secret. But internal Waymo emails and testimony show that was an arbitrary 

number , and was not the result of any testing or lengthy 

development. (See, e.g., Gonzalez Decl. Ex. 12 at WAYMO-UBER-00022197-198 

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(vendor writing in response to Waymo statement that “

”).) It was 

also shared with vendors apparently without any NDA. (See, e.g., Gonzalez Decl. Ex. 13 

at WAYMO-UBER-00022246 (2/4/2016 Email to third-party ), attaching, inter 

alia, id. Ex. 14 at WAYMO-UBER-00022288 (“

”); see also Dkt. 923 at 1 (granting Uber motion to compel all vendors NDAs); 

Gonzalez Decl. Ex. 15 (Email from Uber counsel stating that Uber had not located an 

NDA for in Waymo’s productions).) Uber has already 

 TS 13 ( ): Waymo claims that the general concept of using 

. Numerous vendor websites reveal, however, 

that using is well known. Indeed, 

vendors sell for this very purpose. 

Moreover, Uber is currently . 

 TS 14 : TS 14 is the concept of having in PCBs to align the PCBs to 

each other and to be used as reference points for . Waymo’s own 

’922 patent discloses the in Waymo’s LiDAR boards, and public references 

disclose for aligning PCBs and used as reference points for . 

Moreover, Uber is currently from the boards. 

 TS 90 : This alleged trade secret does not pertain to Fuji at all, 

but only to Uber’s abandoned Spider LiDAR design. Waymo asserts that 

Mr. Levandowski disclosed Waymo’s method to Uber engineer 

James Haslim, who purportedly implemented that method in Spider. The evidence shows, 

however, that Spider’s method (and the rough sketch that Mr. Levandowski 

provided) was a publicly-known technique. Mr. Haslim consulted public references to 

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develop his method. Moreover, Waymo’s allegedly proprietary method is also disclosed 

in public references, and is not a trade secret. 

 TS 25 : Waymo accuses Uber of having misappropriated 

Waymo’s , but has no evidence to support this. Waymo relies 

exclusively on a handful of notes and an email from the former head of Uber’s Pittsburgh 

research facility (who was not working on Uber’s LiDARs) recording a few vague 

references to during conversations with Mr. Levandowski. There is 

no mention in these scant materials of any specific Waymo and 

no evidence that any Waymo were adopted by Uber or used to develop 

Uber’s LiDARs. Uber has its own , which Waymo’s technical expert admits 

do not contain any of Waymo’s . 

 TS 111 ( ): Waymo contends that Mr. Levandowski steered 

Uber away from a based on his prior negative experience with 

Waymo’s design. Yet, Waymo has proffered no evidence that Mr. 

Levandowski ever once mentioned the experience or discussed the drawbacks of 

 with anyone at Uber. Waymo’s sole evidence is that 

Mr. Levandowski preferred to implement a spinning-head LiDAR (like the Velodyne 

HDL-64) rather than a LiDAR. That is not evidence of misappropriation of 

negative know-how. 

C. Waymo’s Allegations About the 14,000 Files Have Been Undercut by 

the Evidence It Sought to Hide 

Waymo hid crucial information about the 14,000 files. Information Waymo was 

compelled to produce reveals that those files were “low value,” that the entire set is 

, and that the download did not raise any red flags. (Dkt. 1584-4, Gonzalez Decl. at 

1-3.) Moreover, the 14,000 files have almost no connection to the asserted trade secrets. 

D. Waymo Has No Basis for Damages 

Waymo’s only evidence of damages is based on the opinions of its expert, Michael 

Wagner. Despite this Court’s repeated warnings for Waymo not to get greedy with its damages 

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claim, Waymo did exactly that—Mr. Wagner’s report purports to calculate future “unjust profits” 

for each of the nine asserted trade secrets that reach as high as . Mr. Wagner then 

uses those figures as the baseline royalty before arbitrarily applying a across the board 

increase under Georgia Pacific, resulting in total damages of for the alleged 

misappropriation of a single trade secret. On Saturday, Defendants filed a motion to exclude all 

of Mr. Wagner’s opinions as speculative and not reliable. (Dkt. 1614-4.) 

As explained in that motion, Mr. Wagner calculates those astronomical figures using a 

methodology that is not reliable, inserting variables that he neither derived nor tested, and making 

assumptions that no reasonable expert would make. For the future unjust profits analysis, he 

takes an 18-month old slide prepared by an Uber corporate development manager that was never 

used for any purpose, adopts it without testing it, and then opines that the nine discrete trade 

secrets relating to LiDAR hardware will allow Uber’s entire autonomous vehicle (“AV”) program 

to skip ahead in all aspects of development and commercialization. For saved development costs, 

Mr. Wagner assumes the discrete trade secrets will allow Uber to save the cash burn rate for 

Uber’s entire AV unit for the amount of time that it would have taken Uber to 

independently develop each trade secret. And for his reasonable royalty opinion, Mr. Wagner 

uses his future unjust profits figures as the baseline royalty, and then applies an arbitrary 

across the board increase purportedly based on the Georgia Pacific factors, though the 

increase is neither calculated nor tied to any specific factor. Mr. Wagner’s opinions do not come 

close to meeting causation and apportionment standards, and the assumptions on which they 

depend are wholly unreliable and untested. 

V. THE COURT SHOULD PROCEED IN A MANNER THAT WILL 

RESOLVE THIS DISPUTE EFFICIENTLY WHILE HOLDING WAYMO 

TO ACCOUNT FOR ITS INFORMED CHOICE TO SEEK AN 

EXPEDITED TRIAL DATE. 

The Court has three options in moving this case forward to a resolution. The first is to 

maintain the current trial date, recognizing that the expedited trial schedule was implemented at 

Waymo’s request and it made an informed choice despite the risks to push forward at significant 

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expense and time to the parties and the Court. The second—granting the continuance and 

permitting Waymo to bog the Court and the parties down with its bloated list of 121 trade secrets 

plus more to come and years of additional discovery—is the most unwieldy and inefficient. And 

after consuming tremendous public and private resources, the parties will find themselves back in 

this exact same position in one or two years—on the eve of trial with a brand-new list of proposed 

trade secrets to try. Lastly, if the Court strikes the plaintiff’s speculative and unreliable damages 

model, it could try an equitable bench trial starting on October 10th. An equitable bench trial 

would resolve the plaintiff’s best nine trade secrets quickly and serve as a bellwether to provide 

the parties information for resolving this dispute. 

A. Denying the Continuance 

The best option for the Court is to deny the continuance and proceed to trial on the current 

schedule. The expedited trial schedule was imposed on the parties and the Court at Waymo’s 

request, and the parties have invested considerable resources preparing for an October trial as a 

result of that request. Thousands of documents have been produced between the parties and 69 

depositions have been taken, with 12 witnesses being deposed multiple times to date. Waymo 

understood the risks of pursuing an expedited October 2017 trial date, including the risks that it 

would need to narrow the issues for trial and that it might not obtain every conceivable piece of 

discovery it might want. The Court has addressed these risks at numerous points, such as on 

June 6, 2017 when discussing Waymo’s meritless patent claims: 

I want to give a lecture to Waymo. You’re the plaintiff. You’re the 

one that wants to get to trial. You’re a big firm. You big firms 

always think you can hold on to every issue and have it both ways, 

but at some point you got to cut loose and decide, do you really 

think these patent claims are worth the salt. In my view, they’re not. 

(6/7/17 Hr’g Tr. 47:23-48:3.) If Waymo was concerned that the Court’s suggestion to narrow the 

list of trade secrets would be deemed a waiver of the others, then it should have sought 

clarification from the Court and decided whether to continue on an expedited calendar or not. 

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Instead, Waymo waited over two months after the case management order—and more than two 

weeks after narrowing its list of trade secrets—before seeking that clarification. And when told at 

the August 16 hearing that they would be waiving their other trade secrets if they pushed forward 

with the current trial date, Waymo continued to proceed for another month despite knowing it did 

not have the Stroz report. Waymo made a deliberate and informed choice in asking to proceed at 

breakneck speed, imposing a significant burden on the Court and the parties. Waymo’s relentless 

push for an October trial date—knowing full well the consequences it may have and the burdens 

it placed on the parties and the Court—should have consequences. The Court has discretion to 

hold Waymo to their informed choice. Waymo should therefore be compelled to stick with the 

trial date it sought and waive any trade secret other than those currently scheduled to be tried. 

B. Granting the Continuance 

Granting a continuance without limiting Waymo on the number of trade secrets it can 

pursue is not a cost-effective or realistic option. At the start of this litigation, Waymo pursued 

claims on 121 alleged trade secrets. (Dkt. 25-7, Jaffe Decl. Ex. 1.) That long list allowed 

Waymo to begin a fishing expedition in hopes of finding something—anything—in Uber’s 

LiDAR systems that might match one of their trade secrets. Waymo extensively investigated 

every aspect of Uber’s LiDAR systems and knew the Stroz report was not yet produced, but made 

an informed choice to proceed with an October trial. Disappointed that the best it could find was 

the current nine trade secrets—all of which are easily shown to be without merit—Waymo now 

wants to go back to the drawing board by resurrecting its first list of trade secrets and apparently 

attempt to add even more. 

It is obvious that Waymo cannot possibly try 120+ trade secrets at once. Such a trial 

would be unmanageable and take years. See AMEC Env’t & Infrastructure, Inc. v. Geosyntec 

Consultants Inc., No. C 12-02973, 2013 WL 3923459, at *3 (N.D. Cal. July 26, 2013) (stating 

plaintiff’s pursuit of several hundred trade secrets “implicates significant case management 

issues” and that a trial on so many trade secrets “likely would be unmanageable”). If a 

continuance is granted, Waymo will again have to narrow its list of trade secrets to proceed to 

trial, and when it does everybody involved will suffer from a serious case of déjà vu as we all 

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return to the present state of affairs—a short list of dubious trade secrets chosen only with the 

benefit of hindsight after yet another incredibly-burdensome fishing expedition. Granting the 

continuance will only serve to re-open discovery for another year or two, impose significant 

burdens on the parties and case management burdens on the Court, and likely push the parties 

further away from resolving their dispute. 

C. Equitable Bench Trial 

Between these extremes, the Court could hold a short bench trial in October on the 

narrowed list of trade secrets and grant a continuance with regard to any others. On Saturday, 

Defendants filed a Daubert motion to exclude testimony from Michael Wagner, Waymo’s 

damages expert. (Dkt. 1614-4.) Despite this Court’s repeated warning not to be greedy, Waymo 

does exactly that—Mr. Wagner’s report applies a model and assumptions that he neither created 

nor tested to “calculate” the future unjust profits that Uber supposedly will realize one day far in 

the future from a head start. That exercise resulted in absurd damages numbers, including a claim 

for for a single trade secret. Even worse, Mr. Wagner’s reasonable royalty analysis 

uses the future profits figure and then applies a across the board increase to arrive at a lump 

sum reasonable royalty up to for that single trade secret. (Gonzalez Decl. Ex. 11 

¶ 440.) Mr. Wagner’s opinions are so unfounded and unreliable that the Court should reach the 

only possible conclusion—that Mr. Wagner must be excluded. Because Waymo has no other 

disclosed evidence of monetary damages, Waymo will be left only with a claim for injunctive 

relief that can be resolved through an equitable bench trial where the Court decides the scope of a 

permanent injunction, if any. 

A bench trial now could be completed in less than half the time of the currently-scheduled 

trial given the Court’s familiarity with the technology underlying the nine purported trade secrets, 

and could be limited to a discrete set of issues unaffected by the Stroz report. The Stroz report 

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does not address whether the nine trade secrets are valid trade secrets, does not address whether 

the asserted trade secrets are used in Uber’s LiDAR systems, and does not address whether Uber 

independently developed the trade secrets. That is especially so where Waymo’s motion for a 

continuance makes no mention of any additional information regarding the current nine trade 

secrets. 

Not only would the bench trial not involve evidence of damages and the Stroz report, it 

also would not call for live testimony from Anthony Levandowski and many other fact witnesses 

because it would be primarily focused on technical issues. Finally, this trial would inform any 

settlement discussions and likely push the parties toward resolving the entire litigation, which 

would save the Court and the parties significant time and expense. 

VI. UBER REQUESTS A COURT-APPOINTED NEUTRAL EXPERT 

If the Court is inclined to grant a continuance, a Court-appointed neutral expert is 

appropriate in this case, where the evidence is “confusing and conflicting” and an independent 

expert could “assist the court in evaluating contradictory evidence.” Walker v. Am. Home Shield 

Long Term Disability Plan, 180 F.3d 1065, 1071 (9th Cir. 1999). In McKinney, the Ninth Circuit 

remanded the case and recommended that the district court consider appointing an expert because 

of the “complexity of the scientific evidence.” McKinney v. Anderson, 924 F.2d 1500, 1511 (9th 

Cir. 1991), vacated on other grounds by Helling v. McKinney, 502 U.S. 903 (1991). The Federal 

Circuit, applying Ninth Circuit law, has upheld the appointment of an expert “where the district 

court was confronted by what it viewed as an unusually complex case and what appeared to be 

starkly conflicting expert testimony.” Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., 558 

F.3d 1341, 1348 (Fed. Cir. 2009). This Court, for example, has appointed a neutral expert where 

there are “extremely divergent views on damages” and given “the unusual complexity of the 

damages aspect of this case.” Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2015 WL 

7429277, at *1 (N.D. Cal. Nov. 23, 2015). 

This case is likewise complex, involves starkly conflicting expert testimony, and requires 

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Waymo also argues that the appointment of a neutral expert will cause the jury to simply 

rely on the expert’s opinions and result in a denial of the Seventh Amendment right to a jury trial. 

(Mot. at 20-21.) This argument was rejected in the Monolithic Power Systems case that Waymo 

cites in its motion. In Monolithic Power Systems, the Federal Circuit found that: 

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the factfinder to evaluate confusing and contradictory evidence. Waymo’s trade secrets have 

been and continue to be a moving target. (See Dkt. 426, PI Order at 21 (“it has become clear that 

Waymo has both overreached in defining its trade secrets and made moving targets out of its 

asserted trade secrets to evade defensive arguments”.) For example, Waymo has retreated from 

claiming under TS 7 to claiming , or a range of 

. (Id. at 13; Dkt. 335-4 at 4.) In response to a Waymo email stating that “

” Waymo’s expert now opines that 

 (Gonzalez Decl. 

Ex. 12, WAYMO-UBER-00022196 at 22197; Id. Ex. 16, Hesselink Reply Rpt. ¶ 97.) In light of 

Waymo’s repeated attempts to make moving targets out of its alleged trade secrets, a neutral 

expert would be valuable in helping the factfinders to understand the technical merits of the case. 

Moreover, even now, the number of trade secrets Waymo will pursue remains uncertain, 

with the possibility remaining that Waymo will assert dozens more trade secret claims, many 

involving general principles and approaches in the field. (Mot. at 15-19 (seeking to add trade 

secrets; see also Dkt. 426, PI Order at 16 (“Waymo has overreached in attempting to claim 

ownership over general principles and approaches in the field.”). A neutral expert would be 

valuable in assisting the factfinders with sorting through a large number of complex claims and 

understanding what is in the public domain. 

Waymo argues against a neutral expert because the parties have already submitted reports 

from four different technical experts. (Mot. at 19.) The Ninth Circuit rejected this argument in 

Walker, where defendant contended that a neutral expert was unnecessary because “record was 

sufficiently developed.” Walker, 180 F.3d at 1071. The Ninth Circuit found that the appointment 

was warranted, notwithstanding the existing record, because the evidence was “confusing and 

conflicting.” Id. The same considerations apply here. 

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Ultimately, [defendant’s] arguments that [the neutral expert’s] 

testimony relieved the jury of its tasks are policy arguments against 

Rule 706. However, Congress entertained and rejected these 

arguments during the framing of Rule 706.... Furthermore, the 

Supreme Court has long recognized the constitutionality of courtappointed experts.” 

Monolithic Power Sys., 558 F.3d at 1348 (citations omitted). The Monolithic Power Systems 

court notes that the district court took care to instruct the jury that “it should not assign [the 

expert’s] opinion greater inherent weight on accord of his independent status,” and the jury’s 

verdict did not track the expert’s opinions. Id. at 1347. The same jury instruction can be 

provided here to alleviate Waymo’s concerns. 

VII. CONCLUSION

Waymo insisted on an extremely expedited discovery schedule and made the knowing 

strategic decision to proceed on the expedited schedule without having the Stroz report. The 

parties have worked very hard to meet that schedule and to be ready for trial on nine trade secrets. 

That plan should not be derailed. The Court should resolve Uber’s motion in limine on damages 

and try the nine trade secrets. 

Dated: September 18, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. González

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC

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