DEFENDANTS’ RESPONSES TO COURT’S QUESTIONS FOR HEARING (DKT. NO. 327) 

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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 RESPONSES TO 

COURT’S QUESTIONS FOR 

HEARING ON PLAINTIFF’S 

MOTION FOR PROVISIONAL 

RELIEF (DKT. NO. 327) 

Judge: The Honorable William Alsup 

Trial Date: October 2, 2017

REDACTED VERSION OF DOCUMENT SUBMITTED UNDER SEAL 

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DEFENDANTS’ RESPONSES TO COURT’S QUESTIONS FOR HEARING (DKT. NO. 327) 

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1. How detailed is the design that Waymo claims as a trade secret? For 

example, does Waymo claim trade secret protection over any LiDAR design that uses any 

? Or does it claim only the specific design used 

in including the that Waymo 

? 

Response to Question 1: 

The design that Waymo claims as a trade secret is not detailed. Waymo 

claims trade secret protection over any LiDAR design that uses any 

 that

 (Declaration of Jordan Jaffe in Support of Waymo’s Motion for a 

Preliminary Injunction (“Jaffe Decl.”), Ex. 1 at 2.) Waymo does not claim only the specific design 

used in . 

The relevant trade secrets are numbers 1 and 4. (Waymo’s Motion for a Preliminary 

Injunction (“Motion”) at 13-14.) 

Trade Secret 1 states: 

 (Jaffe Decl. Ex. 1, at 2.) 

Trade Secret 4 states: 

 (Jaffe Decl. Ex. 1 at 3.) 

As demonstrated in the wording of the trade secrets above, Waymo does not claim any 

specific between the diodes (other than to indicate a ), nor any specific 

 for the diodes, nor any specific for the diodes, nor any specific 

percent deviation from , nor does it teach any specific 

patterns. Much less does it claim the specific design used in . Even if it did, Fuji does not 

use the specific of No transmit board in Fuji has the same as . 

(Supplemental Declaration of Michael Lebby in Support of Defendants’ Sur-Reply to Plaintiff 

Waymo LLC’s Motion for Preliminary Injunction (“Suppl. Lebby Declaration”) at 3.) The only 

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specific value that the trade secrets claim is between diodes. By 

contrast, Fuji has a between diodes. 

After Uber demonstrated that the concept of is known to the 

public, Gregory Kintz, Waymo’s expert, testified to a narrower definition of

 (Suppl. Lebby Decl., Ex. 2 (Kintz Dep. at 63:6-

14).) Fuji does not use , however, as Mr. Kintz defined it. Mr. Kintz 

testified that is not present if the 

 (Suppl. Lebby Decl., Ex. 2 (Kintz Dep. at 63:15-64:14).) Most of the 

boards in Fuji have portions where the 

. (Suppl. Lebby Decl. at 24-25.) 

2. If you want the LiDAR points of illumination 

 wouldn’t you, simply 

as a matter of optics, ? 

Response to Question 2: 

Yes. As a matter of trigonometry, 

 The relationship between ad is a 

simple trigonometric function: 

 Assuming a sensor elevation of six feet (the approximate elevation of Fuji), the table 

below illustrates the 

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3. How is a superior to any other ? Where in the 

record does Waymo supply evidence concerning the specific effects of 

Response to Question 3: 

There is no evidence that a is superior to any other degree of 

. 

The relevant trade secret, i.e., Trade Secret 7, states: 

 The trade 

secret does not specifically claim . 

Uber engineer Gaetan Pennecot testified that there was nothing special or important about 

; rather it was an easy number to “type.” (Pennecot Dep. 21:18-22:1.) 

In addition, Mr. Kintz, Waymo’s expert, testified that the trade secret does not require 

 specifically. (Suppl. Lebby Decl. Ex. 2 (Kintz Dep. 115:6-13).) Mr. Kintz further 

testified that a diode that is would have the same benefits as a 

, given manufacturing tolerances. (Suppl. Lebby Decl. Ex. 2 (Kintz Dep. 114:20-25).) 

4. What are the standard practices, if any, in the LiDAR field for distributing 64 diodes 

across multiple printed circuit boards? 

Response to Question 4: 

Defendants are not aware of standard practices for distributing 64 diodes across multiple 

printed circuit boards. Velodyne’s HDL-64E distributes 64 diodes across 64 printed circuit 

boards, with one diode per board. U.S. Patent 8,836,922, one of the asserted patents in this case, 

discloses “four PCBs, with each PCB mounting sixteen light sources, so as to provide 64 light 

sources.” (Col. 5:22-26.) 

64 diodes can also be distributed among more than one cavity. For example, Defendants 

considered a design consisting of two cavities, with 32 laser diodes mounted on a single PCB per 

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cavity. (Supplemental Declaration of Scott Boehmke in Support of Defendants’ Sur-Reply ¶ 10.) 

Fuji has two cavities and per cavity. 

Once the number of boards is determined, it is a matter of simple arithmetic how to 

distribute the 64 diodes across the boards. In his declaration, Mr. Kintz states that “

(Opening Declaration of Gregory Kintz ¶ 41), and Defendants’ expert, Michael Lebby, agreed 

(Suppl. Lebby Decl. ¶ 35). Dr. Lebby further opined: “[A]n engineer designing a LiDAR transmit 

block would logically choose a configuration in a 64-laser system with a middling number of 

PCBs (e.g., ) and diodes per PCB (e.g., ), to balance the size and cost concerns.” (Id.

¶ 36.) “The arrangement is one of a few obvious configurations that strikes that 

balance.” (Id.) 

5. How, if at all, does Fuji’s configuration of two 32-diode transmit blocks specifically 

map on to configuration of ? For example, do each of the 

printed circuit boards within each configuration serve comparable functions in their respective 

LiDAR systems? Does the patent law doctrine of equivalents have an equivalent in trade secret 

law? 

Response to Question 5: 

Aside from the fact that both include transmit PCBs, Fuji’s configuration of two 32-diode 

transmit blocks does not map on to s configuration of . 

Fuji is a combination of two bistatic systems. (Declaration of Paul McManamon in 

Support of Defendants’ Opposition to Waymo’s Preliminary Injunction Motion ¶ 36.) It is made 

up of two cavities, with each: a medium-range cavity and a long-range 

cavity. (Id.) Each cavity has separate transmit and receive paths divided by non-reflective metal 

walls, with separate lenses for each path. (Id.) In total, the Fuji has four exterior apertures fitted 

with four separate lenses. (Id.) The transmit and receive light paths do not overlap in the Fuji 

system, because each path is physically separated from the others. (Id.) The long-range cavity is 

positioned level with the ground, while the medium-range cavity is tilted downwards by 

12 degrees from level. (Id.) When the two cavities are mounted next to each other, there is a 

substantial metal wall between them. (Id.) The two cavities in the Fuji system are really two 

LiDARs packaged in a single rotating housing. (Id.) 

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By contrast, Waymo’s LiDAR is a monostatic system. (Id. ¶ 35) has a shared 

lens fitted in the exterior aperture that is used both to collimate the outbound transmitted light and 

collect the inbound received light. (Id.) GBr3 is comprised of a single optical cavity, consisting of 

, in which the transmit path and receive path will overlap. (Id.) 

 in 2 cavities and a in one cavity are fundamentally 

distinct. (Suppl. Lebby Decl. ¶ 62.) Fuji’s arrangement of lasers is a physically and functionally 

distinct design from reflecting Fuji’s fundamentally different two-cavity, multi-lens 

structure. (Id.) While has a aligned to one lens and paired with 

, Fuji’s are each 

separately (1) mounted in different LiDAR cavities, (2) aligned to permit laser light to pass 

through two lenses, and (3) paired with flat receive boards with of photoreceptors. 

(Id.) At deposition, Mr. Kintz acknowledged that it would not be “simple modification” to arrange 

boards distributed across two optical cavities into a single cavity. (Suppl. Lebby Decl., Ex. 2 

(Kintz Dep. 160:3-11, 158:7-160:2).) 

Further, Fuji does not use an inductor, because it complicates the circuity and takes up 

more space on the PCB. (Declaration of James Haslim in Support of Defendants’ Opposition to 

Waymo’s Preliminary Injunction Motion (“Haslim Decl.”) ¶ 16.) By contrast, includes an 

 (Trade Secret 15.) In addition, the shapes of the boards in Fuji are 

different from those of (Compare Haslim Decl. ¶ 15, with Jaffe Decl. Ex. 2, p.16.) 

In patent law, the doctrine of equivalents serves the purpose of preventing infringers from 

escaping liability through overly literal interpretations of patent claims vetted though Patent Office 

examination. The question in trade secret law is whether features of the defendant’s products or 

processes were derived from misappropriated trade secrets or from the defendant’s pre-existing 

skill; knowledge, training, and experience; independent efforts; or public-domain materials. See, 

e.g., Cal. Civ. Code § 3426.1(a); Mattel, Inc. v. MGA Entm’t, Inc. & Consol .Consol. Actions, 782 

F. Supp. 2d 911, 963 (C.D. Cal. 2010). Merely making minor variations does not defeat a trade 

secret claim. See Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1244 (Fed. Cir. 1989) 

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(applying California law). 

6. Does Velodyne or any other company manufacture or commercialize LiDAR systems 

using any of Waymo’s purported trade secrets? For example, is the 

 configuration used by any other company? Has Waymo’s use of this configuration or any 

other asserted trade secret been disclosed to any public agency? Under the law, could anything 

actually used by other companies be deemed a trade secret by Waymo? 

Response to Question 6: 

Yes. The Velodyne VLP-32A has “non-linear channel distribution” with “denser channel 

configuration on the horizon,” and thus discloses . (See

http://velodynelidar.com/vlp-32a.php.) Uber engineer Daniel Gruver testified that Velodyne 

LiDARs have . (Supplemental Declaration of Esther Kim Chang in Support of 

Defendants’ Sur-Reply, Ex. 14 (Gruver Dep. 51:4-15, 51:22-52:5.) Several LiDAR component 

vendors provide in LiDAR 

applications (Suppl. Lebby Decl. ¶ 42) and (id. ¶ 40). Defendants are 

unware of any other company using the . 

Defendants have insufficient information whether Waymo’s use of this configuration or any other 

asserted trade secret has been disclosed to a public agency. 

Under trade secret law, it is possible for two companies to independently derive a trade 

secret and for that trade secret to maintain its status, assuming no public disclosure. Coca-Cola 

and Pepsi might have the same formula, but each would consider it a trade secret. When 

information “is generally known in the trade and already used by good faith competitors, however, 

it is not a protectable trade secret and injunction should not issue.” Logtale, Ltd. v. IKOR, Inc., 

2012 U.S. Dist. LEXIS 173321, NO. *18-19 (N.D. Cal. Dec. 5, 2012) (quoting Am. Paper & 

Packaging Prods., Inc. v. Kirgan, 183 Cal. App. 3d 1318, 1326 (1986).) Therefore, any 

engineering concepts or techniques generally known in the trade and used by other companies do 

not—and cannot—constitute Waymo’s trade secrets. 

7. Even if defendants themselves have not misappropriated any trade secrets, can they still 

be held liable for misappropriation by Levandowski that was never used for their benefit? 

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Response to Question 7: 

No. In order for Waymo to show that Defendants misappropriated Waymo’s alleged trade 

secrets, it must show that Uber either acquired, used, or disclosed those trade secrets. 

If Levandowski never used any alleged Waymo trade secrets for Defendants’ benefit, he either (a) 

never used those trade secrets at all while he was an employee of Defendants, or (b) he somehow 

used those trade secrets while an employee of Defendants in a manner that was not of any benefit 

to Defendants. There is zero evidence of the latter, and Waymo does not even allege this. Thus, 

the only conclusion that can be drawn is that Levandowski never used the trade secrets while an 

employee of Defendants. 

The case law confirms that an employee’s misappropriation is not sufficient to hold his 

new employer liable for misappropriation. In Globespan, Inc. v. O’Neil, for example, the 

defendant new employer hired a former employee of the plaintiff who allegedly brought several 

binders containing plaintiff’s trade secrets with him to his job with defendant. Globespan, Inc. v. 

O’Neil, 151 F. Supp. 2d 1229, 1235 (C.D. Cal. 2001). But the court granted defendant new 

employer’s motion to dismiss because plaintiff failed to allege that the new employer had used or 

disclosed the trade secrets. Specifically, the court ruled that, “Plaintiff has not alleged that 

Defendant Broadcom has used or disclosed Plaintiff's trade secrets. Thus, Plaintiff has not alleged 

misappropriation by Defendant Broadcom, as required by the claim.” Id. Likewise, in Danjaq, 

LLC v. Sony Corp., the Central District granted summary judgment where the company defendant 

hired one of plaintiff’s former employees who had access to alleged trade secret information, but 

where there was no evidence of disclosure of the information by the employee or use by the new 

employer. Danjaq, LLC v. Sony Corp., No. CV 97-8414-ER (MCx), 1999 U.S. Dist. LEXIS 

22486, at *6 (C.D. Cal. Mar. 11, 1999). Similarly, in United Rentals, (North America), Inc. v. 

Keizer, 355 F.3d 399, 412 (6th Cir. 2004), the court granted summary judgment in favor of 

defendant employer on the misappropriation claim where defendant hired a former employee of 

plaintiff who brought a customer list with him, showed it to defendant employer, but defendant 

employer did not use the list. Further, in Del Monte Fresh Produce Co. v. Dole Food Co., 148 F. 

Supp. 2d 1326, 1338 (S.D. Fla. 2001), the court denied a preliminary injunction against a 

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competitor where the competitor merely hired plaintiff’s employee, finding under California or 

Florida law “[plaintiff] must show more than mere possession of a trade secret by [employee]” to 

establish misappropriation). 

Waymo does not allege a theory of vicarious liability. 

8. If Waymo shows that Levandowski misappropriated trade secrets but fails to further 

show that defendants did so, would it be enough, to show likelihood of success and irreparable 

injury, that defendants knowingly employed an executive who misappropriated trade secrets and 

who remains in a position to misuse said secrets for defendants’ benefit? Please provide case law 

on point. 

Response to Question 8: 

No. Uber’s employment of Mr. Levandowski is not sufficient to show either likelihood of 

success or irreparable harm. 

Likelihood of success: To show a likelihood of success against Defendants, Waymo must 

demonstrate that Defendants misappropriated Waymo’s trade secrets, not that Mr. Levandowski 

did. The definition of “misappropriation” requires a showing of either (a) Uber’s “acquisition of a 

trade secret” or (b) Uber’s “disclosure or use of a trade secret.” 18 U.S.C. § 1839 (5)(A); Cal. Civ. 

Code § 3426.1. Waymo cannot show either. Extensive discovery confirms that Uber has not 

acquired any of the downloaded files (which Waymo has not proven to be trade secrets), and that 

Uber’s LiDAR device is not using (or disclosing) any of Waymo’s alleged trade secrets. 

The cases cited in response to Question 7 further show that mere employment of 

Levandowski is not sufficient to impose liability on Defendants. See, e.g., FLIR Sys., Inc. v. 

Parrish, 174 Cal. App. 4th 1270, 1277 (2009) (“[S]peculation that a departing employee may 

misappropriate and use a trade secret in a startup business will not support an injunction.”). 

Further, California has rejected the doctrine of “inevitable disclosure,” and therefore does not 

permit a holding that the mere employment of a person who has trade secret information is 

sufficient to create a showing that the employer has misappropriated trade secrets. Whyte v. 

Schlage Lock Co., 101 Cal. App. 4th 1443, 1463 (2002). A contrary holding would violate 

California’s strong public policy “in favor of open competition and employee mobility.” Edwards 

v. Arthur Andersen LLP, 44 Cal. 4th 937, 946 (2008). 

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Moreover, as Uber stated in its opposition brief, Waymo has forgone any claim of 

“threatened misappropriation” in support of its motion for a preliminary injunction. Waymo’s 

Reply did not dispute this. In any event, Levandowski’s continued employment with Uber would 

be insufficient and Waymo otherwise has not met its burden for a preliminary injunction under a 

“threatened misappropriation” theory. In the absence of any actual evidence that Uber has misused 

Waymo trade secrets, Levandowski’s continued employment at Uber—especially given his recusal 

from LiDAR work—simply cannot “indicate[] imminent misuse.” CanWe Studios LLC v. Sinclair,

No. CV 13-6299 PSG (FFMx), 2013 WL 12120437, at *2 (C.D. Cal. Nov. 20, 2013) (citing FLIR 

Sys., Inc. v. Parrish, 174 Cal. App. 4th 1270, 1279 (2009) (absent evidence that contents were 

improperly accessed, used, or copied, hard drive “download was not a threatened 

misappropriation”). Indeed, Levandowski left Google and founded Otto more than fifteen months 

ago. Otto and Uber began collaborating on LiDAR a year ago. Uber acquired Otto almost eight 

months ago. If Levandowski’s involvement has not resulted in misappropriation of Waymo trade 

secrets by defendants at this point, there is simply no basis to find “imminent misuse.” See

Gibson-Homans Co. v. Wall-Tite, Inc., No. 92 2750 JGD, 1992 U.S. Dist. LEXIS 21909, at *11-12 

(C.D. Cal. Oct. 27, 1992) (“[t]here is no evidence to suggest that defendants intend to use or 

disclose to other competitors the Shur-Stik formulas. If in the future the threat of misappropriation 

becomes real, plaintiff will have a remedy . . . .”). 

Irreparable harm: Uber’s continued employment of Levandowski is irrelevant to the issue 

of irreparable harm. As Uber has already shown, Uber

 Thus, if there is any 

merit to Waymo’s claims, Waymo will be fully protected Id. at *11-

12 (granting defendants’ motion for summary judgment, where defendants possessed notebook 

containing plaintiff’s alleged trade secrets, but “defendants have not used the formulas or 

otherwise impaired their commercial benefit to plaintiff”). The ongoing employment of Mr. 

Levandowski does not change these facts. 

Thus, even if the Court were to disagree with the above and conclude there is a likelihood 

of success on the merits, Waymo cannot show irreparable harm and therefore is not entitled to a 

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preliminary injunction. The law is clear that a court is not permitted to issue a preliminary 

injunction if it concludes that plaintiff has shown a likelihood of success on the merits, but is 

unable to show irreparable harm. All. for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1134 (9th 

Cir. 2011) (quoting Save Strawberry Canyon v. Dep’t of Energy, No. C 08–03494 WHA, 2009 

WL 1098888, at *1–3 (N.D. Cal. Apr. 22, 2009) (Alsup, J.)). 

9. Does an accounting as part of provisional relief require a finding of irreparable injury? 

(An accounting, as used in this question, would be an order to defendants to conduct a thorough 

company-wide investigation and to itemize every use or communication concerning specific 

alleged trade secrets and involving Levandowski.) 

Response to Question 9: 

Technically, to issue an order for an accounting based on Waymo's motion would require a 

finding of irreparable harm, but Defendants would agree not to object to such an order in order to 

satisfy the Court that no alleged Waymo trade secrets have been used by Uber. Defendants agree 

to complete the extensive review ordered by the Court and will agree to supplement that work with 

any reasonable additional search to satisfy the Court that no alleged Waymo trade secrets have 

been used by Defendants. 

10. If the Court adopts defendants’ recusal plan for Levandowski, will defendants further 

consent to a mandatory reporting provision requiring their employees to report violations of said 

plan to the general counsel and thence to the Court and the parties? 

Response to Question 10: 

Yes. We have given some thought to how this might be implemented and have the 

following suggestion. Uber’s General Counsel would advise Special Master John Cooper of any 

report. The Special Master would be given access to any employee who comes forward and would 

be able to conduct an investigation of the employee’s report, including questioning any other 

relevant person. Once a month, the Special Master will make a report to the Court (with a copy to 

opposing counsel) of any investigation or conclusions that he reached. The recusal plan would 

continue through trial, at which point the parties and the Court can revisit whether the limitations 

and reporting provisions should continue, and if so, for how long. If this matter is referred to 

arbitration, then the recusal plan would continue through the end of the year, at which point the 

parties and the Court can revisit whether the limitations and reporting provisions should continue. 

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Dated: May 2, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. González 

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, and OTTO TRUCKING LLC

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