By Linda O’Brien, J.D., LL.M.
Google’s self-driving car company Waymo LLC demonstrated a likelihood of success on the merits of its claims that competitor Uber Technologies had misappropriated certain trade secrets relating to its laser system technology after it hired a former Waymo employee who had improperly obtained thousands of Waymo’s confidential files before abruptly resigning and potentially used that information in furthering Uber’s development of competing technology, the federal district court in San Francisco has ruled. Thus, Waymo’s motion for provisional relief was granted (Waymo LLC v. Uber Technologies, Inc., May 15, 2017, Alsup, W.).
Self-driving car company Waymo LLC, a stand-alone company operating alongside Google, developed a number of different cost-effective and high-performing laser sensors known as LiDAR, which enable a vehicle to navigate its surroundings. Former Waymo engineer Anthony Levandowski formed two new self-driving car start-up companies—Ottomotto LLC and Otto Trucking LLC—and resigned from Waymo without notice after downloading over 14,000 confidential files from Waymo. Subsequently, Uber Technologies, a competitor in the self-driving car industry, acquired both companies and hired Levandowski to lead its self-driving car efforts.
In February 2017, Waymo filed suit against Uber and Levandowski for misappropriation of trade secrets, patent infringement, and unfair competition in relation to its LiDAR laser systems. Before the court was Waymo’s motion for a preliminary injunction.
Trade secret misappropriation. The court found that certain provisional relief was warranted. First, Waymo established a likelihood of success of the merits of its trade secrets misappropriation claims. Waymo presented compelling evidence that Levandowski improperly downloaded over 14,000 files from Waymo and Uber knew or should have known that Levandowski had Waymo’s intellectual property when Uber hired him. It was also undisputed that Uber did not use reasonable efforts to maintain the secrecy of those files. Further, Waymo demonstrated that some information from the files had been used in Uber’s LiDAR development efforts and qualified for trade secret protection.
Waymo also showed that it will suffer irreparable harm if the defendants are allowed to use its trade secrets to gain a competitive edge in the self-driving car industry, according to the court. The record showed that Levandowski downloaded and retained possession of Waymo’s confidential files, which he could consult at any time to further Uber’s LiDAR development, even if none of those files are on Uber’s server. Uber’s argument that Levandowski did not meaningfully contribute to its LiDAR development efforts was rejected as implausible since Uber paid $680 million to acquire Levandowski’s companies and hired him to lead those development efforts, the court noted.
Finally, it was undisputed that the public had an interest in vindicating intellectual property rights and prohibiting unfair competition. A prohibition on Levandowski from working on Uber’s recent initiative to develop its own LiDAR would cause minimal hardship, the court concluded.
Thus, Uber was ordered to: (1) prevent Levandowski and other employees from using the downloaded materials and to cause the return those materials to Waymo; (2) remove Levandowski from any role or responsibility pertaining to LiDAR; (3) conduct a thorough investigation and provide an accounting of every person who saw or heard any part of the downloaded materials, including Levandowski; and (4) provide a complete, chronologically organized log of communications in which Levandowski mentioned LiDar to any Uber employee or consultant. Additionally, Waymo was granted further expedited discovery to assist with possible other provisional relief.
The case is No. 3:17-cv-00939-WHA.
Attorneys: Charles Kramer Verhoeven (Quinn Emanuel Urquhart & Sullivan, LLP) for Waymo LLC. Arturo J. Gonzalez (Morrison & Foerster LLP) for Uber Technologies, Inc., and Ottomotto LLC. Brett Michael Schuman (Goodwin Procter LLP) for Otto Trucking LLC.
Companies: Waymo LLC; Uber Technologies, Inc.; Ottomotto LLC; Otto Trucking LLC
MainStory: TopStory Patent TradeSecrets CaliforniaNews
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