By Lawrence Hoffman
Samsung, Apple, Nokia, et al. may not may not yet have worn each other out with their IP battles over smart phone technology, but they might have to move to the back seat, so to speak. The driverless (smart car) wars may have begun.
Unless some future Albert Einstein or Stephen Hawking discovers the secret of superluminal travel very soon, there’s a good chance that the biggest transportation-related news for the near future will concern autonomous – i.e., self-driving – vehicles. The potential benefits to society are enormous – improved safety, more efficient urban transportation, reduced emissions, reduced driver stress, etc.
Google is generally regarded as the instigator of the race to develop the self driving car in 2009 but driven by the prospect of enormous profit, the industry is already populated by other technomonsters like Apple, Intel, Tesla and the other automobile manufacturers, by vision system developer Mobileye, an Israeli company that Intel has acquired, and other subsystem manufacturers.
For a vehicle to be able to drive itself, it must, of course, know where it is, where it needs to go, and how to get there. The technology for this – GPS – is already well developed. But that’s not enough. There must also be a way for the vehicle to have a real time picture of what is around it so it knows how fast to go, when to slow down or speed up, when to change lanes, in other words, how to drive.
Up to now, the technology of choice for providing the input for that picture uses laser pulses and light sensors. The technology is called light detection and ranging – LiDAR. The data provided by the LiDAR subsystem is used by the vehicle’s computer to control the car.
LiDAR subsystems are available off the shelf, and these have been used by some of the players, either in combination with specially designed vehicles or with modified regular cars (dumb cars?). Other players have developed their own proprietary LiDAR systems in some cases, to go with specially designed vehicles. Google is one of the latter. A pair of companies called Otto and Ottomoto which have been acquired by ride-sharing techno-monster Uber claims that it, too, has developed a proprietary LiDAR system. However, in a recently filed lawsuit, Google claims that the Otto’s got their LiDAR technology the good old fashioned way – by stealing it from Google.
Hot new technology-intensive industries, especially when populated by well heeled players, often trigger IP conflicts and perhaps this one will also. But the crystal ball is murky, and I’m not going to stick my neck out. But I will play gossip columnist and tell you about the law suit.
Before I go into the details, I should remind you that, apart from IP rights, there are social issues as well. To give just one distracting example, driverless cars need to know where they are and, as a result, they know where the passengers are. But if you are in the car, do you want your competitors, or worse, your boss, or worst of all, perhaps, your spouse, to know where you are? All kidding aside, though, data security is a critical issue. It’s not hard to imagine someone hacking a vehicle’s control system for industrial espionage e.g., by eavesdropping on a passenger’s mobile phone conversations or to inflict personal injury on a passenger. Would you want to be the actuary at a product liability insurer who has to assess the effect data security issues should have on the premiums to its customers up and down the technological supply chain?
The other thing you need to keep in mind is not to take sides in a lawsuit based on the allegations in the suit papers. Just as those accused of crime are presumed innocent until the prosecutor proves otherwise, plaintiffs in civil suits must prove the facts they allege. The standard of proof in a criminal case is higher, but the civil plaintiff still has the burden of proof.
It is particularly important to keep this presumption of non-liability in mind in cases involving technology. If the plaintiff has a patent, what’s in it is public knowledge, but when trade secrets are involved, disclosure in public court files will destroy the secrecy. Courts therefore allow confidential information to be filed “under seal”, i.e., with the secret information inaccessible to snoopers like me, and more importantly, inaccessible to the parties’ competitors. Only the opposing attorneys and specified employees of the opposing parties have access to the information and even then, pursuant to very specific secrecy orders.
As a consequence, the court file is full of motions to file under seal, and orders granting or denying the motions. To the extent the motions are granted, the papers I get to see and tell you about are “redacted copies” full of black blocks covering references to most of the juicy information.
That having been said, let me tell you what I do know about the case. The plaintiff is a company called Waymo LLC. It was originally the self-driving car development program at Google, but was spun off into a sister company when Google became Alphabet. We will just refer to it as Waymo, even if some of the events alleged took place at Google before there was a Waymo. The program was under the direction of one Anthony Levandowski, about whom we will have more to say shortly.
The defendants are Uber Technologies, Inc., the ride-sharing technomonster everyone loves to hate, Otto Trucking LLC and Ottomotto LLC. Levandowski is not a party. The lawsuit is Waymo LLC v. Uber Technologies, Inc. et al., 17-cv-00939, filed on 23 February 2017 in the U.S. District Court for the Northern District of California. The suit asserts claims under the Defend Trade Secrets Act (DTSA) and California’s version of the Uniform Trade Secrets Act, and claims under California’s Business & Professions Code. It also includes claims for patent infringement. For convenience, we will usually refer to the defendants collectively as “Uber”. Also when the context requires it, reference to a party will mean the party’s attorneys.
Despite the fact that Uber and its CEO have been the subject of an enormous amount of bad press recently in connection with other matters, and certainly don’t need the bad publicity that this matter has already generated, it does not appear that the case is going to go away quietly in the immediate future. Even if it does settle eventually, it is already shaping up as a gold mine for several big and powerful law firms. Very few days have gone by since 27 February on which something has not been added to the court file.
I have inspected the entire docket for the court file (as of 1 May, there are 320 entires) and I have read the papers that appear to related to the substance of the case. In broad terms, the case is fairly typical of trade secret and patent litigation. Apart from what some might consider scandalous allegations (but what cynics like me might dismiss as “business as usual”) what stands out most is that Uber is trying very hard to avoid responding to Waymo’s allegations.
Let’s take a closer look at what’s happened in the two months since the case was filed.
27 February 2017: Waymo filed its Complaint. In it, Waymo alleges that over seven years (beginning in 2009), it “invested tens of millions of dollars and tens of thousands of hours of engineering time to custom-build the most advanced and cost-effective LiDAR sensors in the industry”. It attributes its alleged position as “the industry’s leader in self-driving hardware and software” in part to its LiDAR technology.
According to Waymo, in 2015, Levandowski initiated a plan to defect from Waymo and to form his own company. Perhaps it was just a manifestation of the entrepreneurial spirit, but whatever his motivation, Levandowki abruptly left Waymo late in January, 2016. By then, he had already formed a new company, 280 systems, existence of which he kept secret. That company ultimately surfaced publically in May 2016, as one of the Otto companies. The Otto companies were acquired in August 2016 by Uber for 680 million dollars. And who ended up running the show at Uber? You guessed it – Anthony Levandowski.
Triggered by the departure of several of Waymo’s employees following Levandowski’s deparature, and by Uber’s acquisition of the Otto companies in August, 2016, Waymo began to investigate. As a result, it discovered that before Levandowski left Waymo, he obtained access to a restricted-access Waymo server and downloaded 14000+ files to his office-provided laptop computer. These files contained Waymo’s proprietary technology, including its LiDAR technology, information about its suppliers, etc. He then transferred these files to an external drive and took steps to remove all evidence of his activities from the laptop.
Waymo’s investigation further revealed that Levandowski had with “high level Uber executives” even before he left Waymo, and that when other Waymo employees later defected to Levandowski’s new company, they, too, downloaded “additional Waymo trade secrets in the days and hours prior to their departure”. The additional information “included confidential supplier lists, manufacturing details and statements of work with highly technical information, all of which reflected the results of Waymo’s months-long, resource-intensive research into suppliers for highly specialized LiDAR sensor components”.
On 13 December 2016, Waymo was mistakenly copied on an e-mail from one of its (and Uber’s) LiDAR component suppliers. Attached to the email were drawings of an Uber LiDAR circuit board that “[bore] a striking resemblance to Waymo’s own highly confidential and proprietary design and reflects Waymo trade secrets”.
The “final piece of the puzzle”, namely confirmation that Waymo’s technology was being used by Uber came in documents received on February 9, 2017 from Nevada regulatory authorities. In one such document “dated less than one month after the Otto acquisition and while Uber was refusing to publicly identify the supplier of its LiDAR system, Otto privately represented that it had “developed in house and/or currently deployed” an “[i]n-house custom built 64-laser” LiDAR system. In short, Levandowski had stolen Waymo’s LiDAR technology and through the Otto companies, provided it to Uber with Uber’s full knowledge beforehand of what was going on.
Waymo further asserted that about one year before Levandowski’s departure, Uber entered into a joint program with Carnegie Mellon University to develop autonomous vehicle technology. Waymo cited a Reuters report dated 21 March 2016 that characterized the program as having “stalled”. Other sources cited in the complaint indicated that when it acquired Levandowski’s companies in August, 2016, Uber had no proprietary LiDAR technology and suggested that it bought the Otto companies to gain access to its LiDAR technology.
The Complaint further details some patented features of Waymo’s LiDAR technology and identifies several patents awarded to it for these features. These include:
- a design that uses a single lens – rather than multiple sets of lenses – to both transmit and receive the collection of laser beams used to scan the surrounding environment, thereby eliminating the need to painstakingly align pairs of transmit and receive lenses (covered by U.S. Patents 8,836,922 and 9,285,464);
- a simplified design for “pre-collimating” the light output of each laser diode separately before the beams are combined (covered by U.S. Patent 9,086,273)
10 March 2017: Waymo filed an Amended Complaint adding an additional patent covering a simplified design of the laser diode firing circuit (U.S. Patent No. 9,368,936) to the three asserted in the original complaint.
10 March 2017: With its Amended Complaint, Waymo filed a Motion for a Preliminary Injunction by which it sought to prohibit the defendants from using its proprietary confidential LiDAR technology and from infringing the patents identified in the Amended Complaint, and further compelling Uber to return the 14,000+ documents unlawfully taken from it by Anthony Levandowski and his colleagues.
10 March 2017: Waymo also filed a Motion for Expedited Discovery seeking return of the materials taken from Waymo (including the 14,000+ files taken by Levandowski) and essentially the entire history of Uber’s efforts related to development of LiDAR technology including operating versions of Uber’s LiDAR units and the associated source code for the vehicles’ autonomous driving system. Defendants need not make available duplicate units of the same type or prototype.
The motion further sought prompt pretrial testimony (depositions) of selected former Waymo engineers now employed by Uber, of an engineer knowledgeable about Uber’s autonomous vehicles generally, and the LiDAR unit, sensors, and/or systems, and a deposition of a corporate representative with knowledge of Uber’s possession, maintenance, use, and retention of Waymo’s proprietary information.
16 March 2017: The Court entered a broad order essentially granting Waymo the discovery it had requested, and permitting certain categories of discovery for Uber as well. It then set a date of 7 April for Uber to oppose Waymo’s preliminary injunction motion and allowed Waymo the right to take depositions of persons filing declarations supporting Uber’s opposition to the motion. Dates for further written responses were set, and hearing on the motion was scheduled for 4 May. A tentative trial date of October 2 was indicated.
27 March 2017: Uber filed a Motion to Compel Arbitration and to Stay Proceedings on Waymo’s Trade Secret Claims. The motion was based on the terms of Levandowski’s employment agreement with Waymo which purportedly required that disputes involving conduct alleged in the complaint were to be arbitrated. Unfortunately, the terms of the agreement have been filed under seal and are not publically accessible.
Uber cites authority to support the position that Levandowski’s alleged theft of Waymo’s trade secrets and its connection with Uber’s alleged misconduct are so closely related that Uber is entitled to arbitration, even though it is not party to the employment agreement.
29 March 2017: Uber’s attorneys disclosed that, prior to the acquisition of the Otto LLCs, Uber obtained a due diligence report prepared by an unnamed third party, a customary step prior to an acquisition. It was not disclosed if the report referenced the documents allegedly stolen by Levandowski. Uber’s attorney indicated that Uber intended to claim privilege as to the report. It further appeared that Levandowski intended to intervene in the suit to prevent even placing the report on a privilege log based on a purported Fifth Amendment right against self incrimination.
31 March 2017: The court issued an Order directing Uber to provide full details of the basis for its claim of privilege, or if privilege is not claimed to provide the report to Waymo. The Order further directed that Uber’s attorneys notify counsel for Levandowski that the deadline for a motion under the Fifth Amendment was 4 April.
3 April 2017: Waymo informed the court in a Letter Brief that Uber had willfully violated the court’s 16 March Order with respect to documents etc. to be turned over to Waymo. The Letter referred to comments by the court during a 29 March hearing at which Uber first disclosed existence of the due diligence report. (The transcript of the hearing is not publically available, but if Waymo has quoted it accurately, the court is not happy with Uber’s attorneys.)
The Letter further asserted that the material Uber did provide was non-compliant with the Order in numerous important respects and that Uber’s attorneys repeatedly refused to confer with Waymo’s attorneys to resolve the problem.
4 April 2017: Attorneys for Levandowski filed a motion in which they sought an order:
prohibiting Uber from disclosing any information provided by Mr. Levandowski in the course of a “Joint Defense and Common Interest Agreement” entered into by Levandowski and Uber, and specifically prohibiting disclosure of information concerning the due diligence review conducted by a third party under that agreement, including but not limited to the identity of the third party who conducted any such due diligence review, whether Levandowski possessed any documents that were reviewed by the third party, and the identity of any of Levandowski’s possessions that may have been reviewed.
The basis for the motion was concern that disclosure might provide “a link in a chain” that would result in violation of Levandowski’s Fifth Amendment right against self-incrimination in the event of a criminal investigation.
Perhaps the most interesting thing about the motion is the revelation of the Joint Defense and Common Interest Agreement”. This was entered into in March 2017 “in connection with Uber’s proposed acquisition (at that time) of Ottomotto and Otto Trucking.” The due diligence report was produced pursuant to the agreement. Levandowski argued that the agreement “establishes a common interest privilege” as support for the motion.
I won’t burden this article with the details of Levandowski’s arguments nor, in accordance with my caution against rushing to judgment, will I comment on the significance or timing of the events mentioned in the motion.
5 April 2017: Waymo filed an opposition to Levandowski’s motion. Again I won’t burden my readers with the details of Waymo’s arguments, but in brief, its position is:
- Levandowski’s personal privilege against self incrimination is legally irrelevant to Uber’s production of documents or information;
- Even if the self-incrimination privilege were relevant at all, Levandowski has not satisfied the requirements necessary to invoke it;
- The common interest doctrine does not apply to the due diligence report because either (i) there was never any common legal interest regarding the 14,000+ Waymo documents or (ii) communications made pursuant to a common legal interest were in furtherance of a crime;
- The fact that Levandowski remains an Uber executive in charge of Uber’s self-driving car program and the fact that Uber has repeatedly refused to return the 14,000+ documents taken from Waymo by Levandowski, and to meet its other court-ordered discovery obligations makes it increasingly clear that Uber was aware of Mr. Levandowski’s illegal conduct even before Uber acquired Otto and potentially that Uber worked in concert with Otto and Levandowski to hide that conduct, thereby ratifying Levandowski’s behavior and becoming liable for it. All of this demonstrates that an inference mqy be drawn at the trial that Uber is using Waymo’s trade secrerts.
6 April 2017: Despite Uber’s assertion that it had searched diligently for the materials it had been ordered to produce in the court’s 16 March Order, the court entered a further Order directing Uber’s attorneys to search more diligently, essentially as directed by Waymo.
- The first of these I have already mentioned, i.e., that Levandowski
- had already formed the company that became Otto and had discussed his plans with Uber even before he left Waymo. Secondly, Levandowski left Waymo in January, 2016 but, as asserted in the Complaint, Otto was not publically launched until May, 2016. However, in April, a due diligence investigation had already been made for Uber by a third party, which Uber has steadfastly refused to identify and which allegedly had access to documents in Levandowski’s possession. Such investigations are almost always conducted when an acquisition is being considered. The court has already ordered disclosure of the identity of the party that conducted the due diligence and delivery of all of the documents requested by Waymo, or a proper privilege log for documents it does not deliver. Also, it all but invited Waymo to seek court-ordered disclosure of the report on the due diligence investigation.
Further, Waymo did not know of the theft of the documents until after the arbitration with Levandowski had been instituted so it is hard to ascribe any strategic purpose to its limiting the arbitration to the breach of contract issues as Uber has asserted in its arbitration motion.
Apart from Uber’s efforts to impede discovery, perhaps the most interesting development has been Levandowski’s intervention in the law suit. The purpose of this was to obtain modification of the court’s disclosure order on the basis of the Fifth Amendment protection against self-incrimination. Yes, the DTSA does contemplate the possibility of criminal prosecution for industrial espionage. It’s hard not to wonder if Levandowski has something to be concerned about.
Be all that as it may, the court allowed the intervention, but denied the requested modification of the disclosure order, essentially on the basis that the privilege was personal, and did not extend to Uber. Levandowski appealed to the Court of Appeals for the Federal Circuit. In an opinion dated 25 April, the CAFC affirmed. Since Levandowski is not a party, the court treated his appeal as a petition for a “writ of mandamus”, i.e., a direction to a lower court to do or not do something. For such a petition to succeed, the petitioner must establish that his right to issuance of the writ is clear and indisputable, and that there is no other adequate remedy to attain the desired relief. Without much discussion, the court held that it was not persuaded that the district court erred in its ruling requiring defendants to produce the un-redacted privilege log.
3 May 2017: At long last, the court heard arguments on Waymo’s motion for a preliminary injunction. Regrettably for those seeking an exciting outcome, sorry, the court took the matter under advisement. The transcript of the hearing is not yet available, but there were lots of observers who have already reported on the event. Basically, the judge characterized the evidence that Levandowski stole the documents, as it now exists as “overwhelming” but that there is still no “smoking gun” to show that Uber actually used the information. Uber lives to fight another day, as the reports indicate. Comments by uninvolved practitioners seemed to indicate that Waymo had not shown enough to get a preliminary injunction.
So where are we in this case. We still don’t have the name of the third party that did the due diligence report or the un-redacted privilege log that Uber must produce. We don’t know what is in the report. Nor do we have any other solid information indicating if Uber had knowledge when it hired Levandowski that he had stolen the documents. And, of course, we don’t know if Uber used the stolen documents.
Apart from the injunction, there is still the question of whether the judge will order arbitration of the trade secret claims. Note that even if he does, the patent infringement claims will still be in the lawsuit.
The case is scheduled for trial this coming October, and the lawyers are going to be busier than the proverbial one-armed paper hanger if that trial date holds. And for sure, there will be lots more papers added to the court file. We will keep you informed.
Finally, a few thoughts about IP litigation in the autonomous vehicle world. Even if we are charitable, and ascribe altruistic motives to the players, what they do and how IP will enter into it will primarily be a matter of economics.
Despite companies like Google having been in the field for about eight years, and demonstrations by it and others of cars that are successfully and safely driving themselves, this industry is barely out of infancy. Is it going to be dominated by the end product producers including companies like Waymo, or the old-line auto companies, or will there be a strong component supplier population as well, as Intel seems to be hoping? Will there be a place for startups, or is it already too late for that?
There seems to be a feeling that we are going to see a reprise of the smart phone wars and I am inclined to agree. The potential market is huge, with places for everyone, but control of the preferred technology, whether in the form standard essential patents (SEPs) or just consumer preference may well push other considerations into the background.
I’m not an economist, but my guess is that companies like Intel will be better off if their technology finds its way into SEPs. In the long run, it seems that the resulting broad market will maximize profitability while still allowing innovative efforts to create products which can be sold (or the technology licensed) for market differentiation by the end product players. For sure, they need to participate in the work of the standards development community and to accept FRAND licensing as a fact of life.
However, the Intels and the would-be Intels will have their work cut out for them because it’s not likely that the Waymos and Fords are going to abandon innovation to the manufacturers of subsystems and components. Moreover, I don’t think they are going to sit by while others create the standards. So they, too, will have to accept FRAND licensing in the long run. Regrettably, there seems to be too much money at stake for everyone to play nicely. I suspect the kids in the sandbox will be throwing a lot of sand at each other.
I guess we will just have to wait and see.
About the author: Larry Hoffman has a B.S. in Electrical Engineering and Comp. Sci. from Massachusetts. Institute of Technology and a J.D. from the George Washington University School of Law. He has been a lawyer since 1965 specializing in IP law and product liability defense. He is registered to practice before the U.S. PTO, the U.S. Court of Appeals for the Federal Circuit and the state and federal courts in New York, Maryland, and the District of Columbia. His work has included preparation and prosecution of patents in countries throughout the world, and counseling on IP and product safety matters. He has been involved in the trial of close to 100 lawsuits of various kinds. You can reach him at Lawrence@ipatent.co.il.