SAN FRANCISCO (CN) – A federal judge said Thursday that Waymo and Uber could face a second trade secrets trial over self-driving car technology after Waymo asked to litigate additional trade secrets during a planned December jury trial.
U.S. District Judge William Alsup gave no indication whether he would grant Waymo’s motion to add two software trade secrets claims to a list of nine hardware secrets it claims Uber misappropriated. But he said that if he did grant it, he would sever the software secrets for a future trial.
“Uber has the right to clear its name if it can,” Alsup said, confirming that the Dec. 4 trial on the nine trade secrets would move forward. “It’s not as clean a case as the plaintiff would like, but it is a triable case, and I think Waymo ought to get in there and put up or shut up,” he said. “We’re going to get to trial and we’re going to have a verdict.”
The question of holding additional trials comes after Waymo asked to delay the trial indefinitely while it reviewed millions of files that Uber produced on its former engineer, Anthony Levandowski, three weeks before an originally scheduled Oct. 10 trial. Alsup instead granted a short continuance to Dec. 4.
At the time, Waymo’s lawyers said their client had the right to expand its list of asserted trade secrets based on what it had found after an initial review of the files known as the Stroz Report. The company had at first claimed misappropriation of 121 secrets, but agreed to try just nine of them in exchange for an expedited trial date.
Alsup had suggested proceeding with the trial on the nine trade secrets and holding additional trials on the rest of the secrets next year if Waymo intended to litigate more of them, a proposition he renewed on Thursday.
“I’m not saying we will have a second trial,” he warned. “It’s just after we get the first trial and verdict done we’ll have round two, maybe.”
Waymo sued Uber and Levandowski’s driverless trucking startup Otto in February, claiming Levandowski downloaded 14,000 trade-secret files from its server related to a scanning and mapping technology, called Lidar, days before resigning to start Otto. It claims Uber promptly struck a deal to buy the fledgling company from Levandowski and hire him to build driverless cars using its trade secrets.
Now, Waymo wants to add two trade secret claims related to its planner software based on what it says is evidence in the Stroz Report of misappropriation. According to Uber’s attorney Michael Jacobs at the Thursday hearing, Waymo estimates the two secrets to be worth 6 to 12 percent of the value of the nascent driverless vehicle market.
Planner software processes data from a driverless vehicle’s sensors, including Lidar sensors, to control the vehicle’s movement, according to a brief filed by Waymo.
In the brief, Waymo says the trade secrets were taken by Don Burnette, a former Waymo software engineer Uber recruited as part of its “plan to hire Levandowski’s AV [autonomous vehicle] ‘team'” at Waymo. Burnette, who is Uber’s technical lead for software autonomy, helped develop Waymo’s planner software, Waymo says.
It says it found handwritten notes by Burnette in the Stroz Report scanned onto his personal computer outlining a similar planning software approach to the one he put together for Waymo, including the two specific trade secrets. At his deposition, Burnette “outright admitted” that the notes described the same planner software approach, according to Waymo.
In an opposition brief, Uber accused Waymo of trying to add the trade secrets to “reboot its faltering case.” It said the company shouldn’t be allowed to include them because they don’t pertain to Lidar, “the focal point of this case from the outset.”
And on Thursday, Jacobs repeatedly questioned why Waymo hadn’t included the secrets on its list of 121 secrets.
“You’re supposed to know in advance what your trade secrets are,” he said. “You’re not supposed to be allowed to rummage around [in Otto’s software] and declare what is a trade secret afterward.”
Waymo, which was spun off from Google’s driverless car project, had been demanding the Stroz Report since filing the lawsuit, insisting it would prove its allegations. But it only received the report in September, after Uber, claiming privilege, opposed producing it and the Federal Circuit denied a subsequent appeal by Levandowski to keep it out of Waymo’s hands.
“We got it late,” Waymo’s attorney Charles Verhoeven countered, referring to the Stroz Report. “We weren’t bringing a software trade secrets case. And then we get the Stroz Report and everything changes. The Stroz Report indicates significant misappropriation of Waymo’s software files. So we started pursuing that once we discovered they had taken those files. We didn’t know that before, your honor.”
“Is this in the whine category?” Alsup quipped.
“The reason this is whining is that the plaintiff here has asked that this all be done on a rush-rush basis,” Jacobs, addressing Alsup, replied. “You made it clear that that has consequences, and now those consequences are coming home to roost. With the case having fallen apart the way it has fallen apart, to now be able to resuscitate on the basis of trade secrets they never identified is fundamentally unfair.”
Verhoeven is with Quinn Emanuel Urquhart & Sullivan in San Francisco. Jacobs is with Morrison & Foerster, also in San Francisco.