Waymo LLC v. Uber Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Waymo LLC (California)
  • Defendant: Uber Technologies, Inc.; Ottomotto LLC; Otto Trucking LLC (Delaware / California)
  • Plaintiff’s Counsel: Quinn Emanuel Urquhart & Sullivan, LLP
• Case Identification: 3:17-cv-00939, N.D. Cal., 03/10/2017
• Venue Allegations: Venue is alleged to be proper as at least one defendant resides in the judicial district, all defendants are residents of California, and a substantial part of the events giving rise to the claims occurred in the district.
• Core Dispute: Plaintiff alleges that Defendants’ in-house LiDAR systems for autonomous vehicles infringe four patents related to LiDAR design and operation, and further alleges that this technology was developed using trade secrets misappropriated by a former employee.
• Technical Context: LiDAR (Light Detection and Ranging) systems are a critical sensor technology for autonomous vehicles, enabling them to create real-time 3D maps of their surroundings, a key capability in a rapidly developing and highly competitive market.
• Key Procedural History: The complaint alleges that a former manager, Anthony Levandowski, downloaded over 14,000 confidential files related to LiDAR technology in December 2015 before resigning in January 2016 to found a company, Otto, which was acquired by Uber in August 2016 for a reported $680 million. The complaint alleges that named inventors on the patents-in-suit were involved in developing the accused LiDAR devices after leaving Waymo, forming the basis for allegations of willful infringement.

Case Timeline

Date	Event
2013-03-08	U.S. Patent No. 9,086,273 Priority Date
2013-08-20	U.S. Patent Nos. 8,836,922 & 9,285,464 Priority Date
2013-09-30	U.S. Patent No. 9,368,936 Priority Date
2014-09-16	U.S. Patent No. 8,836,922 Issue Date
2015-07-21	U.S. Patent No. 9,086,273 Issue Date
2015-12-11	Former manager allegedly downloads 14,000 confidential files
2016-01-27	Former manager resigns from Waymo
2016-03-15	U.S. Patent No. 9,285,464 Issue Date
2016-05-XX	Defendant Otto publicly launches
2016-06-14	U.S. Patent No. 9,368,936 Issue Date
2016-08-XX	Defendant Uber acquires Defendant Otto
2016-12-13	Plaintiff receives email with alleged drawing of accused circuit board
2017-02-03	Plaintiff makes public records request to Nevada regulators
2017-02-09	Plaintiff receives documents from Nevada in response to request
2017-03-10	First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,836,922 - Devices and Methods for a Rotating LiDAR Platform with a Shared Transmit/Receive Path

Issued September 16, 2014

The Invention Explained

• Problem Addressed: The complaint identifies high cost as a significant barrier to the mass-market commercialization of self-driving vehicle technology (Compl. ¶32).
• The Patented Solution: The invention addresses this problem with a LiDAR device architecture that uses a single lens to both collimate outgoing laser beams and focus incoming reflected light onto detectors (’922 Patent, col. 2:50-59, Fig. 1). This "shared transmit/receive path" is intended to simplify the manufacturing process by eliminating the need to align separate transmit and receive lenses, thereby reducing system complexity, size, and cost (Compl. ¶33).
• Technical Importance: This approach to LiDAR design was aimed at driving down costs by over 90% compared to earlier systems, a critical factor for moving autonomous vehicle technology from research to mass production (Compl. ¶¶32, 37).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶93). Essential elements include:
  • A LiDAR device with a housing configured to rotate about an axis.
  • An interior space with a transmit block, a receive block, and a transmit/receive path.
  • The transmit block has an exit aperture in a wall that comprises a reflective surface.
  • The receive block has an entrance aperture.
  • A transmit path extending from the exit aperture to a lens, and a receive path extending from the lens to the entrance aperture via the reflective surface.
  • A plurality of light sources in the transmit block and detectors in the receive block.
  • A lens configured to receive, collimate, collect, and focus the light beams.

U.S. Patent No. 9,285,464 - Devices and Methods for a Rotating LiDAR platform with a Shared Transmit/Receive Path

Issued March 15, 2016

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’922 Patent, this patent addresses the same problem of reducing the cost and complexity of LiDAR systems for autonomous vehicles (’464 Patent, Related U.S. Application Data; Compl. ¶33).
• The Patented Solution: The invention is also directed to a LiDAR device using a single lens for both transmitting and receiving light (’464 Patent, Abstract). Claim 1 of this patent differs from that of the ’922 Patent by reciting that the "transmit path at least partially overlaps the receive path in the interior space between the transmit block and the receive block," rather than requiring the receive path to extend "via the reflective surface" on the wall containing the exit aperture (’464 Patent, col. 20:16-19).
• Technical Importance: This invention represents a continued effort to refine cost-effective and high-performance LiDAR architectures necessary for the commercial viability of self-driving cars (Compl. ¶¶32-33).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶106). Essential elements include:
  • A LiDAR device with a housing configured to rotate about an axis.
  • An interior space with a transmit block, a receive block, and overlapping transmit and receive paths.
  • The transmit block has an exit aperture, and the receive block has an entrance aperture.
  • The transmit path extends from the exit aperture to a lens, and the receive path extends from the lens to the entrance aperture.
  • The transmit path at least partially overlaps the receive path in the interior space.
  • A plurality of light sources and detectors.
  • A lens configured for the transmit and receive functions.

U.S. Patent No. 9,368,936 - Laser Diode Firing System

Issued June 14, 2016

• Patent Identification: U.S. Patent No. 9,368,936, "Laser Diode Firing System," Issued June 14, 2016 (Compl. ¶116).
• Technology Synopsis: The complaint alleges this patent covers a simplified and more elegant circuit design for controlling the charging and discharging paths of lasers in a LiDAR system (Compl. ¶34). The patented solution allegedly uses an inductor and a capacitor, with both charging and discharging controllable by a single transistor and gate signal (Compl. ¶120).
• Asserted Claims: Independent Claim 1 (Compl. ¶119).
• Accused Features: The accused LiDAR devices are alleged to contain a laser diode firing circuit that uses an inductor, a charging capacitor, and a single transistor to control both the charging and discharge paths (Compl. ¶120).

U.S. Patent No. 9,086,273 - Microrod Compressions of Laser Beam in Combination with Transmit Lens

Issued July 21, 2015

• Patent Identification: U.S. Patent No. 9,086,273, "Microrod Compressions of Laser Beam in Combination with Transmit Lens," Issued July 21, 2015 (Compl. ¶131).
• Technology Synopsis: This patent is described as covering a simplified design for "pre-collimating" the light from each laser diode individually using cylindrical lenses before the beams are combined, which is alleged to increase the compactness and resolution of the overall LiDAR system (Compl. ¶¶35, 135).
• Asserted Claims: Independent Claim 1 (Compl. ¶134).
• Accused Features: The accused LiDAR devices are alleged to employ "cylindrical lenses associated with each laser diode that pre-collimate the uncollimated laser beam" in conjunction with a single main lens (Compl. ¶135).

III. The Accused Instrumentality

Product Identification

The accused products are identified as Defendants' "Accused LiDAR Devices," which include an "[i]n-house custom built 64-laser" LiDAR system used by Uber and Otto (Compl. ¶¶61, 93). The complaint centers on a specific design embodied in what it terms the "Replicated Board," an alleged Otto circuit board design (Compl. ¶58).

Functionality and Market Context

The complaint alleges that Defendants' custom LiDAR system was developed to "revive a stalled program" at Uber after its previous efforts faltered, and that self-driving car technology is considered "existential" to Uber's business (Compl. ¶¶1, 8). Plaintiff alleges it was inadvertently sent an email containing a machine drawing of the "Replicated Board," which it claims bears a "striking resemblance" to its own proprietary designs (Compl. ¶58). This drawing is presented as key evidence that Defendants are using Plaintiff's patented technology (Compl. ¶58). The complaint alleges Defendants leveraged stolen information to build a comparable LiDAR system in nine months, a process that took Plaintiff years (Compl. ¶10).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,836,922 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
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...	The Accused LiDAR Devices have a lens mounted to a housing configured to rotate, containing an interior space with a transmit block, receive block, transmit path, and receive path.	¶96	col. 2:36-40
wherein the transmit block has an exit aperture in a wall that comprises a reflective surface, wherein the receive block has an entrance aperture...	The transmit block has an exit aperture in a wall with a reflective surface, and the receive block has an entrance aperture.	¶96	col. 3:45-53
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	The transmit path extends from the exit aperture to the lens, and the receive path extends from the lens to the entrance aperture via the reflective surface.	¶96	col. 3:54-59
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 Accused LiDAR Devices have multiple light sources in the transmit block configured to emit multiple light beams through the exit aperture in different directions.	¶97	col. 2:41-46
a plurality of detectors in the receive block, wherein the plurality of detectors are configured to detect light having wavelengths in the wavelength range	The Accused LiDAR Devices have multiple detectors in the receive block configured to detect light within the relevant wavelength range.	¶98	col. 2:47-49
wherein the lens is configured to receive the light beams via the transmit path, collimate the light beams..., collect light..., and focus the collected light onto the detectors via the receive path.	The lens in the Accused LiDAR Devices is configured to perform all four functions: receiving light beams, collimating them for transmission, collecting reflected light, and focusing it onto detectors.	¶99	col. 2:50-59

U.S. Patent No. 9,285,464 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
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...	The Accused LiDAR Devices have a lens mounted to a rotating housing with an interior space containing a transmit block, receive block, and associated paths.	¶109	col. 1:37-41
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...	The accused devices' transmit block has an exit aperture and receive block has an entrance aperture, with transmit and receive paths extending between these apertures and the lens.	¶109	col. 1:40-42
and wherein the transmit path at least partially overlaps the receive path in the interior space between the transmit block and the receive block.	The transmit and receive paths in the accused devices are alleged to at least partially overlap in the interior space between the transmit and receive blocks.	¶109	col. 10:29-31
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 Accused LiDAR Devices have multiple light sources in the transmit block configured to emit multiple light beams through the exit aperture in different directions.	¶110	col. 1:43-47
a plurality of detectors in the receive block... configured to detect light...; and wherein the lens is configured to receive the light beams via the transmit path, collimate... collect... and focus the collected light onto the detectors via the receive path.	The accused devices have multiple detectors and a lens that is configured to perform the shared functions of receiving, collimating, collecting, and focusing light.	¶¶111-112	col. 1:48-59

Identified Points of Contention

• Evidentiary Questions: The infringement allegations for both patents are made "on information and belief." A central issue for the court will be the factual evidence Plaintiff can obtain and present to demonstrate that the internal architecture of Defendants' LiDAR system actually contains the specific components arranged in the manner required by the claims. The "Replicated Board" drawing mentioned in the complaint will be a key piece of evidence in this dispute (Compl. ¶58).
• Scope Questions: The primary distinction between claim 1 of the ’922 Patent and claim 1 of the ’464 Patent appears to be structural. The ’922 Patent requires a specific "wall that comprises a reflective surface" for the receive path, while the ’464 Patent requires a potentially broader "at least partial[] overlap" of the transmit and receive paths. A point of contention may be whether the accused device meets the more specific limitation of the ’922 patent, or only the arguably more general limitation of the ’464 patent, or neither.

V. Key Claim Terms for Construction

Term: "a wall that comprises a reflective surface" (’922 Patent, Claim 1)

• Context and Importance: This structural term is central to the infringement analysis for the ’922 Patent. The definition will determine whether a single integrated component can satisfy the limitation, or if distinct "wall" and "reflective surface" elements are required. Practitioners may focus on this term because Defendants could argue their device uses a different structure, such as a discrete mirror adjacent to an aperture, rather than an aperture in a wall that comprises a reflective surface.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests integration is possible, stating the reflective surface can be formed "by forming a layer of reflective material on a transparent substrate (e.g., glass)" and the exit aperture can be a portion "that is not coated" (’922 Patent, col. 4:43-47).
  • Evidence for a Narrower Interpretation: The specification also describes the exit aperture as a "hole or cut-away portion of the reflective surface," which could imply a more traditional, solid wall structure (’922 Patent, col. 4:40-42).

Term: "the transmit path at least partially overlaps the receive path" (’464 Patent, Claim 1)

• Context and Importance: The scope of infringement for the ’464 patent may turn on the definition of "overlaps." This term is the key differentiator from its parent patent. Practitioners may focus on this term because its interpretation—whether it requires a physical intersection of light beams, a shared volume of space, or something else—will be critical to determining if the accused device's internal layout infringes.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification links this feature to achieving "advantages with respect to size, cost, and/or complexity" ('464 Patent, col. 10:29-34). This purpose-driven language may support a broader, more functional interpretation of "overlap" that is not tied to a specific geometric arrangement.
  • Evidence for a Narrower Interpretation: Embodiments like Figure 2 depict a clear geometric intersection of the transmit path (beams 202a-c) and receive path (focused light 208) within the "shared space 240." A defendant may argue this figure limits the term's meaning to a direct crossing of light paths.

VI. Other Allegations

Willful Infringement

The complaint alleges that Defendants' infringement was willful and deliberate for the ’922, ’464, and ’273 patents (Compl. ¶¶100, 113, 141). The basis for this allegation is pre-suit knowledge, founded on the assertion that multiple individuals who are named inventors on the patents-in-suit were former Waymo employees who went on to develop the Accused LiDAR Devices for Defendants (Compl. ¶¶100, 113, 141). For the ’922 and ’464 patents, it is alleged that at least three named inventors were involved; for the ’273 patent, at least one is alleged (Compl. ¶¶100, 113, 141). No specific willfulness allegation is made for the ’936 patent.

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this dispute may turn on the answers to two central questions:

• A core issue will be one of evidentiary proof and origin: Can Plaintiff demonstrate that the internal design of Defendants' commercial LiDAR system is not merely convergent design, but is in fact derived from the specific patented technologies and confidential information allegedly misappropriated? The connection between the trade secret and patent allegations suggests the case will focus heavily on the provenance of Defendants' design.
• A key technical question will be one of structural equivalence: Assuming Plaintiff can prove the internal workings of the accused device, does that structure map directly onto the specific limitations of the asserted claims? This will involve a detailed analysis of whether components in the accused device function as the claimed "wall that comprises a reflective surface" ('922 patent) or create the claimed "partial[] overlap" of light paths ('464 patent), raising critical issues of claim construction and infringement.