MCMANAMON DECL.ISO DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

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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 

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

DECLARATION OF PAUL 

MCMANAMON IN SUPPORT OF 

DEFENDANTS’ OPPOSITION TO 

PLAINTIFF WAYMO LLC’S 

MOTION FOR PRELIMINARY 

INJUNCTION 

Date: May 3, 2017 

Time: 7:30 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William Alsup 

Trial Date: October 2, 2017

REDACTED VERSION OF DOCUMENT SUBMITTED UNDER SEAL

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I, Paul McManamon, Ph.D., declare as follows: 

1. I have been asked by counsel for Defendants Uber Technologies, Inc. (“Uber”), 

and Ottomotto LLC (“Otto”) and Otto Trucking LLC (collectively, “Defendants”) to provide an 

expert opinion in connection with the technology of LiDAR systems and the allegations in 

Waymo LLC’s (“Waymo”)1 Motion for a Preliminary Injunction (“Motion”) and the declaration 

of Dr. Gregory Kintz in Support of Waymo’s Motion (“Kintz Declaration”), specifically the 

alleged trade secrets identified in Paragraphs 29-35 of the Kintz Declaration and the patent 

infringement allegations with respect to U.S. Patent Nos. 8,836,922 (“’922 patent”) and 9,285,464 

(“’464 patent”) (collectively, “the Asserted Patents”). I submit this declaration in support of 

Defendants’ Opposition to Waymo’s Motion. I have personal knowledge of the facts set forth in 

this declaration and, if called to testify as a witness, could and would do so competently. 

I. QUALIFICATIONS AND EXPERIENCE 

2. I received a Ph.D. degree in physics from the Ohio State University in 1977, and a 

Master of Science degree in physics from the same university in 1973. I received a Bachelor of 

Science degree in physics, cum laude, from John Carroll University in 1968. 

3. I am currently President of my own company, Exciting Technology LLC, and 

Technical Director of the Ladar and Optical Communications Institute at the University of 

Dayton. The term “Ladar” as used in the field of optics has the same meaning as the term 

“LiDAR” or “lidar,” as used in this lawsuit. I currently have four Ph.D. students and one Masters 

student that I am advising in aspects of LiDAR technology. 

4. I worked as a civilian employee of the U.S. Air Force at Wright-Patterson Air 

Force Base from May 1968 to May 2008. My last job for the Air Force was Chief Scientist for 

the Air Force Research Laboratory (AFRL) Sensors Directorate, where I was responsible for the 

technical aspects of all AFRL sensing technologies, including radio frequency (RF) and electrooptical (EO) sensing, automatic object recognition, infrared countermeasures (IRCM), electronic 

warfare, and device technologies. In this role I was responsible for a technical portfolio covering 

 

1

 As used in this declaration, the term “Waymo” includes Google. 

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more than 1,000 scientists and engineers, and more than $500 million of resources. I worked with 

Dr. Fenner Milton and Dr. Gerry Trunk to found the Military Sensing Symposia, combining IRIS 

and tri-service radar. Prior to becoming Chief Scientist for AFRL, I was also senior scientist for 

EO/IR Sensors for the AFRL, and acting chief scientist for the Avionics directorate for more than 

2.5 years. In 2006, I received the Meritorious Presidential Rank Award. This award was 

presented in a ceremony by the Secretary of the Air Force. 

5. I chaired the U.S. National Academy of Sciences (“NAS”) Study “Laser Radar: 

Progress and Opportunities in Active Electro-Optical Sensing” (2014). Laser Radar, as used in 

this NAS study title, is the same as “LiDAR” or “lidar” as used in this lawsuit. 

6. I was co-chair of the U.S. NAS study “Optics and Photonics, Essential 

Technologies for Our Nation” (2012), which recommended a National Photonics Initiative, NPI. 

This study covered all optical and photonic technology in the United States and the world. It has 

indirectly resulted in a $610 million center for photonic integrated circuits. I was vice chair of the 

2010 U.S. NAS study called “Seeing Photons: Progress and Limits of Visible and Infrared Sensor 

Arrays.” 

7. I am a Fellow of the International Society for Optics and Photonics (SPIE), the 

Institute of Electrical and Electronic Engineers (IEEE), the Optical Society of America (OSA), 

the AFRL, the Directed Energy Professional society (DEPs), the Military Sensing Symposia 

(MSS), and the American Institute of Aeronautics and Astronautics (AIAA). I am a former 

president of SPIE, was on the SPIE board of directors for 7 years, and on the SPIE Executive 

Committee for 4 years. 

8. I am the author of the “Field Guide to Lidar,” published by SPIE in 2015. I am 

also the author of “Review of ladar: a historic, yet emerging, sensor technology with rich 

phenomenology,” published by SPIE’s Optical Engineering Journal in 2012. 

9. I have taught a graduate course in LiDAR, and multi-day short courses in LiDAR. 

10. I received the WRG Baker award from the IEEE in 1998 for the best paper in any 

refereed IEEE journal or publication (out of over 20,000 refereed papers). 

11. A copy of my resume is attached as Exhibit 1 to this declaration. 

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12. I am being compensated at a standard consulting rate of $200 per hour for my 

work in connection with this action. I am also being reimbursed for any out-of-pocket expenses. 

My compensation is not based in any way on the outcome of the litigation or the nature of the 

opinions that I express. 

II. MATERIALS CONSIDERED 

13. I have reviewed and considered Waymo’s Motion, the Kintz Declaration, the 

Declaration of Pierre-Yves Droz (“Droz Declaration”), Plaintiff’s List of Asserted Trade Secrets 

Pursuant to Cal. Code Civ. Proc. Section 2019.201 (“Waymo’s TS List”), attached as Exhibit 1 to 

the Declaration of Jordan Jaffe In Support of Waymo’s Motion (“Jaffe Declaration”), the 

Declaration of James Haslim (“Haslim Declaration”), the Declaration of Scott Boehmke 

(“Boehmke Declaration”), and the Declaration of Michael Lebby (“Lebby Declaration”), the ’922 

and ’464 patents, the ’922 and ’464 patents’ prosecution history, materials identified in Exhibit 2 

to this declaration, and references cited in this declaration. 

14. I have spoken with two Uber engineers who each led aspects of the development 

of Uber’s Fuji LiDAR. James Haslim led the development of the Fuji LiDAR, and Scott 

Boehmke led the development of LiDAR requirements, including 

 in the Fuji. I 

have reviewed their Declarations. These conversations and declarations indicate that Uber’s Fuji 

system was independently developed by Uber engineers who were not relying on any trade secret 

information pertaining to Waymo’s system. Scott Boehmke and his team developed the 

 upon which the Fuji system is based, prior to Uber 

acquiring Otto. Also, the designs of the Fuji and the are very different. It is evident from 

the differences between the Uber and Waymo designs, and from the timing of the development of 

Uber’s , that the Fuji LiDAR was independently developed. 

I have inspected the Fuji system to confirm these differences. 

III. LEGAL STANDARDS 

15. I have not been asked to offer an opinion on the law and I am not an attorney. 

However, as an expert assisting the Court in determining whether there was trade secret 

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misappropriation and patent infringement, I understand that I am obliged to follow applicable 

law. I set forth below my understanding of the applicable legal principles as explained to me by 

Defendants’ attorneys. I have been asked to apply these legal principles to my analysis. 

16. I understand that a trade secret consists of information that derives independent 

economic value from not being generally known to the public or to other persons who can obtain 

economic value from its disclosure or use. I understand that information that can be discovered 

by fair and honest means, such as independent development or reverse engineering, will not 

receive trade secret protection. I also understand that publicly known information, such as 

technical information published in patents, books, or articles, or design choices known to 

engineers in the field, will not receive trade secret protection. I also understand that general skills 

and knowledge acquired in the course of employment do not constitute trade secrets. 

17. I understand that to maintain trade secret protection, a trade secret must be subject 

to efforts that are reasonable under the circumstances to maintain its secrecy. 

18. I understand that trade secret misappropriation means disclosure, or use, of a trade 

secret without consent by a person who used improper means to acquire knowledge of the trade 

secret or, at the time of disclosure or use, knew or had reason to know that his or her knowledge 

of the trade secret derived from, or through, a person who had used improper means to acquire it. 

19. I understand that to determine whether there is infringement of a patent: (1) the 

claims of the patent must be construed; and (2) the properly construed claims must then be 

compared with the accused products. 

20. I understand that Waymo has not proposed any constructions of the claim terms of 

the Asserted Patents. 

21. As the second step in the infringement analysis, I understand that the properly 

construed claim must be compared to the accused products. I understand that an accused product 

may infringe a claim either literally or equivalently. I understand from counsel that literal 

infringement exists when the accused product embodies each and every limitation of a given 

asserted claim. 

22. If a product does not literally embody a particular limitation of the claim, it can 

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still infringe under the doctrine of equivalents. Determining equivalence involves examining 

whether the differences between the claimed limitation and the accused product are insubstantial. 

I understand that one test used to determine equivalence is referred to as the “function, way, 

result” test. Under this test, to show equivalence, the accused product must perform substantially 

the same function in substantially the same way to achieve substantially the same result as the 

claim limitation. 

IV. SUMMARY OF OPINIONS 

23. Based on my analysis of the alleged trade secrets identified in Paragraphs 29-35 of 

the Kintz Declaration and my analysis of the ’922 and ’464 patents, I conclude that: (1) the 

 in Paragraphs 29-35 of the Kintz 

Declaration is not a trade secret; (2) Uber’s Fuji LiDAR system was independently developed and 

the Fuji did not incorporate or rely upon Waymo’s 

 and (3) Uber’s Fuji system does not infringe the ’922 and ’464 patents. 

V. OVERVIEW OF LIDAR AND SELF-DRIVING CARS 

24. LiDAR stands for “Light Detection and Ranging.” Alternative names for LiDAR 

in the industry have been “laser radar” or “ladar.” Various capitalizations have been used for 

LiDAR. In this lawsuit it seems the spelling “LiDAR” is being used, with only the “i” in lower 

case. I usually use the spelling “lidar,” with all lower case letters. For this declaration, I will use 

“LiDAR” to refer to lidar, ladar, laser radar, or opdar, since it is the common term used in this 

lawsuit. 

25. LiDAR is a sensing technique that involves sending light from a laser emitter and 

measuring the time it takes for the light to reflect off surrounding objects and return to a detector. 

LiDAR has long been used for applications apart from self-driving cars. 

26. An early example of the use of LiDAR was in the late 1960s and early 1970s when 

“corner-cube reflectors” were placed on the moon by the Apollo 11, 14, and 15 missions. These 

reflectors use a combination of mirrors that reflect an incoming light beam back in the direction it 

came from. Scientists on earth bounced laser pulses off these reflectors and calculated the 

distance between the Earth and the moon to an accuracy of about 3 centimeters. Other early 

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applications of LiDAR included weather-related uses such as wind sensing and turbulence 

detection, and military applications such as cruise missile guidance, wire detection, and automatic 

target identification. 

27. LiDAR works in the optical wavelength region, using wavelengths ranging from 

the visible light region (the human eye sees light with wavelengths from about .45 μm to about 

.7 μm) to about 11 μm (known as long-wave infrared). By contrast, radar works in the 

microwave region with wavelengths from millimeters to tens of meters. In comparison to radar, 

LiDAR has much higher resolution, but has more difficulty seeing through fog and rain. For 

automotive applications, the most likely wavelengths would be approximately 0.9μm, which is 

currently most common, or around 1.5 μm, which may become more popular, as components 

mature, due to eye safety considerations. 

28. For illuminating an object, LiDAR systems typically use diode lasers or diode 

pumped solid state lasers. Diode lasers have limited peak power. Because of this limited power, 

many LiDAR systems using diode lasers will match one laser diode per detector, whereas LiDAR 

systems using diode pumped solid state lasers would use one laser to illuminate an area viewed 

by many detectors. 

29. Automotive applications for LiDAR typically use a short range 3D form of 

LiDAR. In such applications, LiDAR has the advantage over passive sensors of providing range 

measurements at each angular location. Using 3D LiDAR, a 3-dimensional image, or point 

cloud, can be formed, providing locations of objects around the vehicle in angle/angle/range 

space. This allows the driverless car to know the range to any object location in azimuth and 

elevation viewed by the LiDAR. 

30. Automotive applications of LiDAR date back to at least the 1980s, when the 

Defense Advanced Research Projects Agency (DARPA) funded the Autonomous Land Vehicle 

(ALV) project in cooperation with academic institutions such as Carnegie Mellon University 

(CMU). DARPA conducted a 1985 road demonstration with an autonomous vehicle using a color 

video camera and laser range scanner, which a 1986 report on the ALV project identified as a 

laser range finder built by ERIM. CMU worked with DARPA to develop an autonomous vehicle 

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called the NavLab that also used the ERIM laser range finder. 

31. By the mid-90s, manufacturers were experimenting with using LiDAR for 

automotive collision avoidance systems. For example, U.S. Patent No. 7,209,221, which claims 

priority to a 1993 German patent, discloses a blindspot detection system using laser diodes 

installed on the car mirrors. This patent identifies advantages of using LiDAR: “Laser Radar: As 

with regular radar, two techniques exist: (1) a pulsed-beam of infrared light coupled with time-offlight measurements, and (2) the modulation of a continuous light beam. The pulsed technique 

offers long range, high directionality, and fast response time. Its limitations are its sensitivity to 

environmental conditions.” (’221 patent at 4:33-38.) Today, cars from manufacturers like Volvo 

and Infiniti are equipped with LiDAR-based advanced driver assistance systems (ADAS). 

32. In 2004, DARPA funded the first Grand Challenge, the world’s first long distance 

competition for self-driving cars. The Grand Challenge was held again in subsequent years. The 

autonomous vehicles in the 2004 and 2005 Grand Challenges used LiDAR systems from sensor 

companies, such as the German company SICK AG. One of the entrants in the 2005 Grand 

Challenge was David Hall and his company Velodyne Acoustics Inc., now Velodyne LIDAR Inc. 

(“Velodyne”). Velodyne created a LiDAR sensor that used multiple diode lasers and detectors, 

with a rotary motor to rotate the housing about a base. The winner of the 2007 Grand Challenge 

used Velodyne’s HDL-64E sensor, a 64-laser LiDAR system. Velodyne’s LiDARs are some of 

the most popular systems in the self-driving car industry and have been used by both Waymo and 

Uber for their self-driving cars. 

VI. UBER’S INDEPENDENT DEVELOPMENT OF LIDAR SYSTEM 

A. Overview and Comparison of Uber and Waymo LiDAR Systems 

33. As described below, the Fuji LiDAR is based on requirements, including 

, developed at Uber by Mr. Boehmke before the acquisition of Otto, 

without reliance on any Waymo trade secret information. To illustrate the relevant differences 

between Waymo’s system and Uber’s Fuji system, the following chart provides a summary 

comparison of key features. I discuss these features in more detail below. 

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36. By contrast, Uber’s Fuji LiDAR is a combination of two bistatic systems, each of 

which is housed in a separate cavity. As shown in the annotated CAD drawing below of a crosssectional top view of the LiDAR (Haslim Declaration ¶ 13), the Fuji comprises a medium-range 

cavity and a long-range cavity. Each cavity has separate transmit and receive paths divided by 

non-reflective metal walls, with separate lenses for each path. In total, the Fuji has four exterior 

apertures fitted with four separate lenses. The transmit and receive light paths do not overlap in 

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

is , while the medium-range cavity is 

. When the two cavities are mounted next to each other, there is a substantial 

metal wall between them. The two cavities in the Fuji system are really two LiDARs packaged in 

a single rotating housing. 

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37. With respect to the transmit blocks of these systems: The utilizes a 

, with incorporating a total of laser diodes. I 

understand that , with the 

 situated on the resulting in the following pattern: . 

38. In the Fuji system, each cavity 

. The . Given the 

 of the medium-range cavity, the for that cavity is 

, and thus is with the for 

the long-range cavity. As shown in the drawing above, on the 

PCBs across the has the 

following pattern: . 

39. Waymo has indicated that the LiDAR has a vertical field of view of - 

. 

40. The Fuji design combines two LiDARs: a medium-range LiDAR in one cavity and 

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a long-range LiDAR in a different cavity. The 

. 

B. Development of Uber’s Fuji LiDAR 

41. In his Declaration and discussion with me, Mr. Boehmke explained the genesis of 

the dual 32-channel LiDAR design, , and 

separate transmit and receive lenses of the Fuji system. 

42. As documented in , 

Mr. Boehmke recognized by that time that were 

heavily dependent on the speed of a vehicle. (Boehmke Decl. ¶ 6.) He considered adjusting the 

 based on this speed, noting consideration of a 

. (Id.) The 

 also recorded consideration of which used 

. 

(Boehmke Decl. ¶ 7.) 

43. From , Mr. Boehmke worked on developing 

 for Uber’s self-driving cars based on the technical restraints 

of LiDAR sensors and the design standards for American roads. (Boehmke Decl. 

¶ 8.) An , showed t

 being developed by Uber. (Boehmke Decl. Ex. D): 

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44. In , Uber entered into to develop dual 32-

channel LiDAR sensors that would work together to achieve 64-channel resolution with Uber’s 

. (Boehmke Decl. ¶ 8.) As shown in Uber’s 

 and in the that Uber provided to , these 

 would create 

 (Id.) 

45. As shown in the version of his , Mr. 

Boehmke also worked on LiDAR designs that 

, and that used and separate transmit and receive lenses. 

(Boehmke Decl. ¶ 10.) In a version of his , Mr. 

Boehmke also explored 

. (Boehmke Decl. ¶ 11.) In 

contrast, LiDAR sensors used . Mr. Boehmke’s design included 

. (Id.) 

46. The design choices and requirements described above were examined and 

developed by Mr. Boehmke prior to Uber’s acquisition of Otto in August 2016. (Boehmke Decl. 

¶ 13.) 

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concept is not disclosed in the ’922 patent or in the Velodyne HDL-64E, which purportedly both 

. 

51. The concept of is not a 

trade secret. is a well-known optical 

concept called foveated vision. The human eye uses foveated vision: when you look in a given 

direction you have higher resolution in the central region of your field of view, and lower 

resolution in the peripheral areas. Many papers have been published using this concept to 

increase resolution in the central region of an optical sensor. 

52. is an obvious extension of 

current optical systems practice. For example, in early 2015, a research group at HRL 

Laboratories in Malibu, California, published a design that mounted two Velodyne 32E LiDARs 

on top of each other to achieve 

. (See 

Mundhenk, et al., “PanDAR: A wide-area, frame-rate, and full color LIDAR with foveated region 

using backfilling interpolation upsampling.” (attached as Exhibit 4).) Figure 1 from the PanDAR 

paper illustrates this concept: 

53. The concept of a curved transmit PCB is certainly not a trade secret, as it is 

disclosed in public references. Waymo’s own ’922 patent discloses the use of “light sources 

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[that] can be mounted on a curved edge of one or more vertically-oriented printed circuit boards 

(PCBs), such that the curved edge of the PCB substantially matches the curvature of the focal 

surface in the vertical plane of the PCB.” (’922 patent, at 5:14-19.) As shown in Figure 4 of the 

’922 patent, below, the transmit PCB contains “a plurality of light sources 422 a-c (e.g., laser 

diodes) that are placed around the edge of the PCB with spacing between the diodes.” 

54. The concept of is not a 

trade secret, as it is expressly stated in Velodyne’s U.S. Patent No. 8,767,190 (attached as 

Exhibit 3), which claims priority to a provisional application filed in 2006. The ’190 patent 

discloses a Velodyne LiDAR system with 32 laser diodes, each on a separate PCB. (’190 patent, 

Fig. 8 at item 30.) The laser PCBs are arranged in a curved stack (item 30) within the system. 

(Id.) On the opposite side is a corresponding stack of PCBs (item 32) with detectors for sensing 

the incoming light. (Id. at item 32.) 

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55. Figure 5 of the ’190 patent shows a side view of the detector stack, which is 

identical in arrangement to the laser stack. I have annotated Figure 5 below to illustrate how the 

laser diodes would be positioned in the disclosed system (recognizing that the lasers would be on 

the opposite side of the one depicted in Figure 5). As shown in the figure below, the diodes are 

located on the rear edge (right side) of each PCB facing backwards towards the mirror 40. Laser 

light from the diodes will reflect off mirror 40 and pass through lens 50. (’190 patent, Col. 5:49-

51.) As can be seen, the diodes are arranged in a curved pattern (“fan pattern”) organized around 

a central axis. (Id. at Col. 5:56-67.) The angles of the laser diodes can be adjusted based on the 

“desired range of the system.” (Id.) 

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56. The ’190 patent discloses that the 

 The patent states: “The density of 

emitter/detector pairs populated along the vertical FOV is intentionally variable. While 32 pairs 

of emitters and detectors are shown in the illustrated versions, the use of hybrids and a 

motherboard allows for a reduction in the number of emitters and detectors by simply removing 

or not installing any desired number of emitter/detector pairs.” (’190 patent at Col. 6:45-50.) The 

patent further explains: “For some uses increased density is desirable to facilitate seeing objects 

at further distances and with more vertical resolution.” (Id. at Col. 6:54-56.) 

57. This disclosure teaches that by removing or not installing some of the laser PCBs 

in the fan pattern, can be achieved. As noted in the 

patent, can improve resolution at further distances, precisely the goal of the 

 in Waymo’s transmit boards. I have annotated Figure 5 below to show an 

example of achievable in the system of the ’190 patent. 

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58. The ’190 patent also discloses at Col. 6:61-7:7 that multiple laser diodes can be 

mounted together on one PCB at different vertical angles to achieve 

: 

[M]ultiple emitters and detectors can be designed and mounted onto 

the hybrid boards at slightly different vertical angles, thus 

increasing the density of vertical FOV coverage in the same 

footprint. If, for example, two emitters and two detectors were 

mounted on each of the hybrids shown in FIGS. 6 and 7 with slight 

vertical offsets, the design would incorporate 64 emitters and 

detectors rather than 32. This example design describes two 

emitters and detectors mounted per board, but there is no practical 

limit to the number of emitters and detectors that may be mounted 

on a single board. The increased number of emitters and detectors 

may be used to increase the field of view by adjusting the relative 

orientation, or may be used to increase the density of points 

obtained within the same field of view. 

59. For the reasons stated above, the concept of 

 was known in the optical field, and specifically in the LiDAR field, 

and is not a Waymo trade secret. 

60. Furthermore, my discussions with Fuji designers Mr. Haslim and Mr. Boemke, 

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along with my review of their declarations, indicate that the Fuji system was based on the 

development of at Uber prior to the acquisition of Otto. As 

discussed above, Waymo’s alleged trade secrets regarding were 

not trade secrets, but were information known to a reasonably skilled practitioner designing 

LiDARs, like Mr. Boehmke. I also note that the Fuji 

 the medium-range and long-range cavities. (See Haslim Decl. ¶ 15-

16.) The the long-range cavity have 

. (Id.) 

B. Comments on Other Alleged Waymo Trade Secrets 

61. I have reviewed Waymo’s TS List (Exhibit 1 to the Jaffe Declaration). Waymo’s 

Motion and the Kintz Declaration purport to address only certain alleged trade secrets from 

Waymo’s TS List, including TS List Nos. 1, 2-4, 6-7, 14, 28-30, 39, and 94-99. I reserve the 

right to submit a supplemental declaration addressing any other alleged trade secrets from the TS 

List that Waymo raises in its further briefing or declarations. 

62. As described below, many of the alleged trade secrets on Waymo’s TS List are 

quite broad in scope and cover features that would exist in almost any rotating LiDAR system for 

automotive use. If these broad features were deemed to be Waymo’s trade secrets and 

Defendants were enjoined from using them in their LiDAR designs, it may have the effect of 

precluding Uber from developing any rotating LiDAR system for automotive use. 

63. TS List No. 19 claims as a trade secret 

. The use of 

 is commonplace, as is the use of 

. If such a feature were deemed a Waymo trade secret, it may greatly 

limit Uber’s ability to develop an effective rotating LiDAR system for automotive use. 

64. TS List No. 27 claims as a trade secret the 

 In my experience, LiDAR 

systems are generally designed to achieve 

. , is usually chosen to 

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meet a detection or identification goal, which has to do with the 

. If such an idea were deemed a Waymo trade secret, it 

may greatly limit Uber’s ability to develop an effective LiDAR system for automotive use. 

65. TS List No. 38 claims as a trade secret a LiDAR system configured to 

provide . This is 

approximately what a person of ordinary skill would expect in any automotive LiDAR system 

operating on relatively flat terrain, given the mounting of LiDARs on top of a vehicle and the 

general need to see objects in front of and around a vehicle but not above it. If such a 

 were deemed a Waymo trade secret, it may greatly limit Uber’s ability to develop an 

effective LiDAR system for automotive use. (As I note above, the Fuji system uses two cavities 

that do not have the same as the . But to the extent Waymo claims that 

their is a trade secret, it will hinder the general development of LiDAR.) 

66. TS List No. 44 claims as a trade secret a LiDAR system having a 

 ranging from 

to . In any 

LiDAR system, the is generally set so as not to exceed the unambiguous range of the 

system. The unambiguous range of a LiDAR is the maximum range you can image without 

having multiple pulses in the air at the same time. Unambiguous range is calculated by the 

following formula, where c is the speed of light and τ is the time between pulses: 

(McManamon, Field Guide to Lidar 91.) The table below shows the unambiguous range for 

. Given that it is not desirable to operate 

beyond the unambiguous range (i.e., you want each pulse to complete its trip and be received by 

the sensor before the next pulse is sent), the 

 at which the LiDAR is operating. If this concept were deemed a Waymo trade secret, it 

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may greatly limit Uber’s ability to develop an effective LiDAR system for automotive use. 

67. TS List No. 45 claims as a trade secret a LiDAR system having 

 ranging from the 

. It is well-known in the field of 

LiDAR that to achieve uniform resolution as measured in size of the 

object being viewed, when viewing objects at different ranges. will generally 

be needed to maintain spatial resolution for objects at greater distances, because the light spreads 

out when traveling to the object and being reflected from the object. (See Paul McManamon, 

Field Guide to Lidar 14 (2015) (LiDAR range equation).) If this concept were deemed a Waymo 

trade secret, it may greatly limit Uber’s ability to develop an effective LiDAR system for 

automotive use. 

68. TS List No. 62 claims as a trade secret LiDAR 

system with a . It is 

well-known in the field of LiDAR that it is beneficial off if possible, to 

reduce noise. It is standard practice in LiDARs to configure the receiver 

. If this concept were 

deemed a Waymo trade secret, it may greatly limit Uber’s ability to develop an effective LiDAR 

system for automotive use. 

VIII. THE ’922 PATENT 

A. Overview of the ’922 Patent 

69. The ’922 patent discloses a LiDAR system using a single lens for collimating the 

transmission beams and for focusing the reflected light beams onto the detectors via the receive 

path. This is a monostatic LiDAR system. (See Paul McManamon, Field Guide to Lidar 12 

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(2015).) The embodiment of the ’922 patent is illustrated in Figure 2 (reproduced below): 

70. As shown in Figure 2, a transmit block 220 includes light sources that emit a 

plurality of light beams along a transmission path (202a-c) that are reflected by a mirror 224 and 

pass through an exit aperture 226. The transmission beams pass through lens 250, which 

collimates the light beams for transmission into the surrounding environment to reflect off 

objects. (’922 patent at 11:62-12:43.) 

71. The reflected beams return to the system and are focused by lens 250 to bounce off 

of reflective material on wall 244 and travel through entrance aperture 234 to the detectors 232ac. (’922 patent at 12:44-49, 13:1-10.) 

72. All claims of the ’922 patent require a single “interior space” containing both the 

transmit and receive paths, a “reflective surface” in the receive path, and a single lens for 

transmitting and receiving light. For example, Claim 1 recites (emphasis added): 

1. A light detection and ranging (LIDAR) device, comprising: 

a lens mounted to a housing, wherein the housing is configured to 

rotate about an axis and has an interior space that includes a 

transmit block, a receive block, a transmit path, and a receive path, 

wherein the transmit block has an exit aperture in a wall that 

comprises a reflective surface, wherein the receive block has an 

entrance aperture, wherein the transmit path extends from the exit 

aperture to the lens, and wherein the receive path extends from the 

lens to the entrance aperture via the reflective surface; 

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a plurality of light sources in the transmit block, wherein the 

plurality of light sources are configured to emit a plurality of light 

beams through the exit aperture in a plurality of different directions, 

the light beams comprising light having wavelengths in a 

wavelength range; 

a plurality of detectors in the receive block, wherein the plurality of 

detectors are configured to detect light having wavelengths in the 

wavelength range; and 

wherein the lens is configured to receive the light beams via the 

transmit path, collimate the light beams for transmission into an 

environment of the LIDAR device, collect light comprising light 

from one or more of the collimated light beams reflected by one or 

more objects in the environment of the LIDAR device, and focus 

the collected light onto the detectors via the receive path. 

73. In Paragraph 56 of his Declaration, Mr. Kintz opines that the “key innovation over 

prior art” in the ’922 patent is the use of a common lens for the transmit and receive paths. 

However, during the prosecution of the application that led to the issuance of the ’922 patent, the 

Examiner initially rejected the independent claims as obvious over a combination of U.S. Patent 

No. 7,969,558 (Hall), U.S. Patent No. 6,046,800 (Ohtomo), and U.S. Application No. 

2002/014924 (Wangler), that disclosed the concept of using a common lens for transmitted and 

received light. In particular, the Examiner found that Ohtomo teaches an optical wave range 

finder using a laser and a “multi-functional lens.” (February 13, 2014 Non-Final Rejection at 5.) 

As illustrated in Figure 14 (below), the embodiment of Ohtomo uses “an object lens 340 for 

collimating the range measuring light to cause the reflected light to be focused on the receiving 

part 320.” (Ohtomo at 3:55-57 (emphasis added).) As shown in Figure 14, object lens 340 both 

collimates the outbound beams and focuses the inbound beams: 

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74. Mr. Kintz’s Declaration does not mention Ohtomo’s disclosure of a common lens, 

nor does it describe the applicant’s response to the initial rejection for obviousness in view of 

Ohtomo, distinguishing Ohtomo on the basis that it lacked “an exit aperture in a wall that 

comprises a reflective surface.” Mr. Kintz’s Declaration also does not mention the known use of 

monostatic LiDAR systems for the last several decades. 

B. Person of Ordinary Skill in the Art 

75. In Paragraph 19 of the Declaration, Mr. Kintz opines that “a person of ordinary 

skill in the art at the time of the invention would have had a Bachelor of Science degree in 

Physics, and at least three years’ experience in laser-based optical mapping systems, or the 

equivalent.” In my opinion, a person of ordinary skill in the art would have a Master’s degree in 

Physics, Electrical Engineering, Electro-Optics, or related fields and at least three years of 

experience in the optical field, preferably in LiDAR; or have a Bachelor’s Degree in Physics, 

Electrical Engineering, Electro-Optics, or related fields and at least five years of experience. I 

understand that the definition of a person of ordinary skill takes into consideration factors such as 

the education and experience of inventors, and I reserve the right to amend my opinion on the 

definition of a person of ordinary if more information becomes available with respect to the 

inventors of the ’922 and ’464 patent. 

C. Non-infringement of Claims 1 and 13 

76. Uber’s Fuji design does not infringe Claim 1 of the ’922 patent because it does not 

contain (1) “an interior space that includes . . . a transmit path, and a receive path”; (2) a 

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“reflective surface” through which the receive path extends to the receive board; or (3) a single 

lens configured to both “collimate the light beams for transmission” and “focus the collected light 

onto the detectors via the receive path.” 

77. Claim 13 of the ’922 patent depends from Claim 1, and Uber’s Fuji design does 

not infringe Claim 13 because it does not infringe Claim 1. 

i. Uber’s Fuji Design 

78. Uber’s Fuji design has two separate LiDAR cavities, each with separate 

compartments for the transmit and receive path, as well as separate lenses for collimating 

outbound light and for focusing inbound light. The CAD drawing below illustrates the pertinent 

components of the Fuji design from a cross-sectional top view: 

79. As shown in this diagram, the Fuji design has two cavities – a medium-range 

cavity and a long-range cavity. Each individual cavity contains one compartment for the transmit 

path (marked with red), where light is emitted from diodes on the transmit block (labeled 

”) and travels to the transmit lens. Each individual cavity also contains one 

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compartment for the receive path (marked with blue), where light is collected and focused by the 

receive lens to the receive board (labeled “Receive PCB”). The transmit path and the receive path 

do not share the same compartment because they are divided by a non-reflective metal separation 

(like a wall), nor do they share the same lenses. 

80. Below are annotated photographs identifying the separate transmit and receive 

compartments in each cavity of the Fuji system: 

81. The annotated photograph below indicates the transmit lenses outlined in red and 

the receive lenses in blue. When assembled together, the two cavities are 

, and the medium-range cavity on the left is : 

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ii. The Fuji does not have “an interior space that includes . . . a transmit path, 

and a receive path” 

82. As shown in the diagram and photographs above, the Fuji does not use a single 

interior space that contains both a transmit path and a receive path. Instead, the transmit and 

receive paths are in separate compartments. 

83. In Paragraph 76 of his Declaration, Mr. Kintz opines that the Fuji’s transmit and 

receive paths are “necessarily” in the same “interior housing space.” Nowhere in his Declaration 

does Mr. Kintz identify any evidence showing that the transmit and receive paths are in the same 

“interior space.” Mr. Kintz’s speculation about the design of Fuji is wrong, as Fuji does not meet 

the “an interior space that includes . . . a transmit path, and a receive path” limitation. 

iii. The Fuji does not have a “reflective surface” 

84. As shown in the diagram and photographs above, the Fuji does not use a 

“reflective surface” through which the receive path extends from the lens to the detectors. 

Instead, the light received from the lens is focused directly on the receive board—the light is not 

bounced off a reflective surface. 

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85. In Paragraph 72 of his Declaration, Mr. Kintz opines that the Fuji contains a wall 

that comprises a reflective surface, because it is “a common-lens system.” Mr. Kintz’s 

Declaration does not identify any evidence showing that this reflective surface exists in the Fuji. 

Mr. Kintz was again wrong in his speculation about the design of Fuji, which does not meet the 

“reflective surface” limitation. 

iv. The Fuji does not have a single lens that is configured to both “collimate the 

light beams for transmission” and “focus the collected light onto the 

detectors via the receive path” 

86. As shown in the diagram and photographs above, the Fuji does not use a single 

lens for collimating the light beams for transmission, and for receiving and focusing the collected 

light. Instead, each cavity in the Fuji has separate transmit and receive lenses. The light from the 

transmit block is collimated when it passes through the transmit lens. The light that reflected off 

the surroundings is collected and focused by the receive lens, through which the light travels 

along the receive path to the receive board. 

87. In Paragraphs 65-77, 86-87 of his Declaration, Mr. Kintz opines that the Fuji uses 

a “single common lens design.” Mr. Kintz relies on his analysis of the Fuji PCB, alleging that the 

placement of the diodes point to a single lens design. This analysis is wrong. The actual Fuji 

system does not meet the single “lens is configured to . . . collimate the light beams for 

transmission . . . focus the collected light onto the detectors via the receive path” limitation. 

IX. THE ’464 PATENT 

A. Overview of the ’464 Patent 

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

the ’922 patent. As with the ’922 patent, the Examiner initially rejected the claims as obvious 

over a combination of U.S. Patent No. 7,969,558 (Hall), U.S. Patent No. 6,046,800 (Ohtomo), 

and U.S. Application No. 2002/014924 (Wangler). The applicant overcame the rejection by 

amending the independent claims to recite “wherein the transmit path at least partially overlaps 

the receive path in the interior space between the transmit block and the receive block.” 

89. The ’464 patent shares the same specification as the ’922 patent. Figure 2, which 

illustrates the embodiment of the ’464 patent, is identical to Figure 2 of the ’922 patent. 

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90. The explanation provided in Paragraph 79-81 above of the features in Figure 2 of 

the ’922 patent also applies to the ’464 patent. 

91. All claims of the ’464 patent require a single “interior space” containing both the 

transmit and receive paths, “a transmit path [that] at least partially overlaps the receive path in the 

interior space,” and a single lens for transmitting and receiving light. For example, Claim 1 

recites (emphasis added): 

1. A light detection and ranging (LIDAR) device, comprising: 

a lens mounted to a housing, wherein the housing is configured to 

rotate about an axis and has an interior space that includes a 

transmit block, a receive block, a transmit path, and a receive path, 

wherein the transmit block has an exit aperture, wherein the receive 

block has an entrance aperture, wherein the transmit path extends 

from the exit aperture to the lens, wherein the receive path extends 

from the lens to the entrance aperture, and wherein the transmit 

path at least partially overlaps the receive path in the interior space 

between the transmit block and the receive block; 

a plurality of light sources in the transmit block, wherein the 

plurality of light sources are configured to emit a plurality of light 

beams through the exit aperture in a plurality of different directions, 

the light beams comprising light having wavelengths in a 

wavelength range; 

a plurality of detectors in the receive block, wherein the plurality of 

detectors are configured to detect light having wavelengths in the 

wavelength range; and 

wherein the lens is configured to receive the light beams via the 

transmit path, collimate the light beams for transmission into an 

environment of the LIDAR device, collect light comprising light 

from one or more of the collimated light beams reflected by one or 

more objects in the environment of the LIDAR device, and focus 

the collected light onto the detectors via the receive path. 

B. Person of Ordinary Skill in the Art 

92. My opinion regarding a person of ordinary skill in the art with respect to the ’922 

patent, stated above, also applies to the ’464 patent. 

C. Non-infringement of Claims 1 and 14 

93. Uber’s Fuji design does not infringe Claim 1 of the ’464 patent because it does not 

contain (1) “an interior space that includes . . . a transmit path, and a receive path”; (2) a transmit 

path that “at least partially overlaps the receive path in the interior space,” or (3) a single lens 

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configured to both “collimate the light beams for transmission” and “focus the collected light 

onto the detectors via the receive path.” 

94. Claim 14 of the ’464 patent depends from Claim 1, and Uber’s Fuji design does 

not infringe Claim 14 because it does not infringe Claim 1. 

i. The Fuji does not have “an interior space that includes . . . a transmit path, 

and a receive path” 

95. As shown in the diagram and photographs in this Declaration, the Fuji does not 

use a single interior space that contains both a transmit path and a receive path. Instead, the 

transmit path and receive path are in separate compartments. 

96. In Paragraph 117 of his Declaration, Mr. Kintz opines that the Fuji’s transmit and 

receive paths are “necessarily” in the same “interior housing space.” Nowhere in his Declaration 

does Mr. Kintz identify any evidence showing that the transmit path and the receive path are in 

the same “interior space.” Mr. Kintz’s speculation about the design of Fuji was wrong, as the 

Fuji does not meet the “an interior space that includes . . . a transmit path, and a receive path” 

limitation. 

ii. The Fuji does not have a transmit path that “at least partially overlaps the 

receive path in the interior space” 

97. As shown in the diagram and photographs in this Declaration, the Fuji does not 

have a transmit path that “at least partially overlaps the receive path in the interior space,” 

because, for each individual cavity, the transmit path and receive path are in separate 

compartments, separated by solid walls. In one compartment, the transmit path extends from the 

diodes on the transmit block to the transmit lens. In a different compartment, the receive path 

extends from the receive lens to the detectors on the receive board. The transmit path and receive 

path never overlap (i.e. never intersect). 

98. In Paragraph 118 of his Declaration, Mr. Kintz opines that, in a common lens 

system, the transmit path and receive path “share a path, that is to say, overlap.” He also opines 

that, in the Fuji, “any receive-path beam that bounces off the mirror on the opposite side of the 

exit aperture from the receive block will necessarily overlap its own transmit path on the way to 

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the receive block.” Nowhere in his Declaration does Mr. Kintz identify evidence showing that 

this overlap exists in the Fuji. Mr. Kintz was wrong about the design of Fuji, which does not 

meet the “a transmit path [that] at least partially overlaps the receive path in the interior space” 

limitation. 

iii. The Fuji does not have a single lens that is configured to both “collimate the 

light beams for transmission” and “focus the collected light onto the 

detectors via the receive path” 

99. In Paragraphs 75-78 of his Declaration, Mr. Kintz opines that the Fuji uses a 

“single common lens design.” Mr. Kintz relies on his analysis of the Fuji PCB, alleging that the 

placement of the diodes point to a single lens design. This analysis is wrong. The actual Fuji 

system does not meet the single “lens is configured to . . . collimate the light beams for 

transmission . . . focus the collected light onto the detectors via the receive path” limitation. 

100. As shown in the diagram and photographs above, the Fuji does not use a single 

lens for collimating the light beams for transmission, and for receiving and focusing the collected 

light. Instead, each cavity in the Fuji has separate transmit and receive lenses. The light from the 

transmit block is collimated when it passes through the transmit lens. The light that reflected off 

the surroundings is collected and focused by the receive lens, through which the light travels 

along the receive path to the receive board. 

X. CONCLUSION 

101. Based on my analysis of the alleged trade secrets identified in Paragraphs 29-35 of 

the Kintz Declaration and my analysis of the ’922 and ’464 patents, I conclude that: (1) the 

 in Paragraphs 29-35 of the Kintz 

Declaration is not a trade secret; (2) Uber’s Fuji was independently developed and the Fuji did 

not incorporate, or rely upon, Waymo’s ; 

and (3) Uber’s Fuji system does not infringe the ’922 and ’464 patents. 

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