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:

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

4 thoughts on “Waymo and Uber at the Federal Circuit – Round 2

  1. Tech people read this over and over. This is where SV is headed. Have fun. Say goodbye to getting to write papers about what you do. Say goodbye to moving from company to company without spending a few years making up for all those trade secrets you won’t be able to use. Get ready for a 50-80% cut in your salaries. The SV companies will create proprietary systems and your skills won’t transfer.

    By the time you are screaming for patents to come back, guess what? It will be too late.

  2. In case, below, where the very same art was the art litigated in the IPR. The patent owner lost. Why? Because the examiner gave a critical phrase a narrow construction under 112(f) and the PTAB and the Federal Circuit gave it a broader construction. Apparently, though, neither the examiner nor the attorney clearly set down what that construction was.

    Lesson for all of us.

    SKKY, INC. v. MINDGEEK, S.A.R.L.

  3. Uber fired Levandowski.

    Simply incredible.

    Uber is asking for the benefits of arbitration of the contract between Google and Levandowski, yet it has fired him?

    There seems something very wrong in this.

  4. …and y’all thought patent litigation was messy…

    😉

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