Waymo and Uber at the Federal Circuit – Round 2

by Dennis Crouch

The ongoing trade secrecy case between Waymo (Google) and Uber / Otto Trucking centers on former Wamo creative Anthony Levandowski who left in 2016 to form Otto that was then purchased by Uber.  In the case, Waymo has alleged improper solicitation of Google employees and “theft” of 14,000 computer files.  Because the employment agreement includes an arbitration clause, Waymo initiated arbitration against Levandowski, and separately sued Uber in federal court.

Two major preliminary decisions by N.D.Cal. Judge Alsup have been (1) to award a preliminary injunction against Uber and (2) to rule that the Levansdowski employment agreement does not require arbitration of the case against Uber / Otto. The Federal Rules of Procedure permit immediate appeal of both of these interlocutory decisions.  Because the complaint also alleges Uber is infringing one of Waymo’s patents, the appeal goes to the Federal Circuit. (U.S. Patent No. 8,836,922 – invented by Levandowski, et al.).

Now on appeal, Uber is asking the Federal Circuit to reconsider its case for arbitration. Uber writes:

The questions presented on appeal relate to the precise circumstances under which a nonsignatory can use California’s doctrine of equitable estoppel to compel arbitration of claims that are asserted by a party to a contract that contains a broadly inclusive and enforceable arbitration provision.

Uber argues that Waymo is relying heavily upon the Levandowski agreements in order to make its trade secrecy and patent claims (assignor estoppel, for instance) and therefore the equitable approach is to also bind Waymo to the arbitration provisions in the agreement. It appears that the appeal will see expedited briefing and a quick resolution.

The Federal Circuit already ruled once in the case.  In April, the court denied a mandamus petition by Levandowski to block certain discovery against him based upon his claim for 5th Amendment privilege against self incrimination.  (Remember here that trade secret theft is also a crime.)

On the preliminary injunction side, Levandowski was barred further work LIDAR.  Subsequently, Uber fired Levandowski.

Note here: When Levandowski left Uber, he formed Otto Trucking and Ottomotto to develop self-driving vehicles. He was then sued by Clearpath Robotics for trademark infringement – based upon Clearpath’s Otto Motors division – that also develops self-driving material transport vehicles.  That case settled in 2017 and after it acquired Levandowski’s company, Uber dropped the Otto name in favor of Uber ATG.

Docs:

• 2017-06-06 Motion to Expedite Appeal v14