Case 3:17-cv-00939-WHA Document 1614 Filed 09/16/17 Page 1 of 5

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MICHAEL A. JACOBS (CA SBN 111664)
MJacobs@mofo.com
ARTURO J. GONZÁLEZ (CA SBN 121490)
AGonzalez@mofo.com
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone:
415.268.7000
Facsimile:
415.268.7522
KAREN L. DUNN (Pro Hac Vice)
kdunn@bsfllp.com
HAMISH P.M. HUME (Pro Hac Vice)
hhume@bsfllp.com
BOIES SCHILLER FLEXNER LLP
1401 New York Avenue, N.W.
Washington DC 20005
Telephone:
202.237.2727
Facsimile:
202.237.6131
WILLIAM CARMODY (Pro Hac Vice)
bcarmody@susmangodfrey.com
SHAWN RABIN (Pro Hac Vice)
srabin@SusmanGodfrey.com
SUSMAN GODFREY LLP
1301 Avenue of the Americas, 32nd Floor
New York, NY 10019-6023
Telephone:
212.336.8330
Facsimile:
202.336.8340
Attorneys for Defendants
UBER TECHNOLOGIES, INC.
and OTTOMOTTO LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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WAYMO LLC,

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Case No.
Plaintiff,

v.
UBER TECHNOLOGIES, INC.,
OTTOMOTTO LLC; OTTO TRUCKING LLC,
Defendants.

3:17-cv-00939-WHA

DEFENDANTS UBER
TECHNOLOGIES, INC. AND
OTTOMOTTO LLC’S
ADMINISTRATIVE MOTION TO
FILE UNDER SEAL PORTIONS OF
THEIR MOTION TO EXCLUDE
TESTIMONY AND OPINIONS OF
WAYMO’S DAMAGES EXPERT
MICHAEL WAGNER

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DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL
Case No. 3:17-cv-00939-WHA
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 Case 3:17-cv-00939-WHA Document 1614 Filed 09/16/17 Page 2 of 5

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Pursuant to Civil Local Rules 7-11 and 79-5, Defendants Uber Technologies, Inc. and

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Ottomotto LLC (“Defendants”) submit this motion for an order to file under seal portions of their

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Motion to Exclude Testimony and Opinions of Waymo’s Damages Expert Michael Wagner.

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Specifically, Defendants request an order granting leave to file under seal the confidential

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portions of the following documents:

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Document

Portions to Be Filed Under Seal

Designating Party

Motion to Exclude Testimony
and Opinions of Waymo’s
Damages Expert Michael
Wagner (“Motion”)

Highlighted Portions

Defendants (Blue)

Exhibit 1 to the Declaration of
Matthew R. Berry

Entirety

Plaintiff

Exhibit 2 to the Declaration of
Matthew R. Berry

Entirety

Defendants

Exhibit 3 to the Declaration of
Matthew R. Berry

Entirety

Plaintiff

Exhibit 4 to the Declaration of
Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 5 to the Declaration of
Matthew R. Berry

Entirety

Defendants

Exhibit 6 to the Declaration of
Matthew R. Berry

Highlighted Portion

Defendants (Blue)

Exhibit 7 to the Declaration of
Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 8 to the Declaration of
Matthew R. Berry

Entirety

Defendants

Exhibit 9 to the Declaration of
Matthew R. Berry

Entirety

Plaintiff

Exhibit 10 to the Declaration
of Matthew R. Berry

Highlighted Portions

Plaintiff (Green)

Exhibit 11 to the Declaration
of Matthew R. Berry

Entirety

Defendants

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Plaintiff (Green)

DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL
Case No. 3:17-cv-00939-WHA
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Document

Portions to Be Filed Under Seal

Designating Party

Exhibit 12 to the Declaration
of Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 13 to the Declaration
of Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 14 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 15 to the Declaration
of Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 19 to the Declaration
of Matthew R. Berry

Entirety

Plaintiff

Exhibit 21 to the Declaration
of Matthew R. Berry

Entirety

Plaintiff

Exhibit 22 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 23 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 24 to the Declaration
of Matthew R. Berry

Entirety

Defendants

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The blue-highlighted portions of the Motion, the entirety of Exhibits 2, 5, 8, 11, 14, 22,

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23, and 24 to the Berry Declaration, and the blue-highlighted portions of Exhibits 4, 6, 7, 12, 13,

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and 15 to the Berry Declaration contain highly confidential information regarding Uber’s

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business forecasts and projections, organization run rates, market comparables, development

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strategies and performance on milestones, and responses to interrogatories regarding time and

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cost estimates for redesign of accused features. This highly confidential information is not

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publicly known, and its confidentiality is strictly maintained. Disclosure of this information

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could allow competitors to obtain a competitive advantage over Uber by giving them details into

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Uber’s business and development strategies, such that they could tailor their own strategies and

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Uber’s competitive standing could be significantly harmed. (Decl. of Halley Josephs in Support

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of Defendants’ Administrative Motion to File Documents Under Seal (“Josephs Decl.”) ¶ 3.)
DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822189

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 Case 3:17-cv-00939-WHA Document 1614 Filed 09/16/17 Page 4 of 5

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The green-highlighted portions of the Motion, the entirety of Exhibits 1, 3, 9, 19, and 21

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to the Berry Declaration, and the green-highlighted portions of Exhibit 10 to the Berry

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Declaration contain information that has been designated “Highly Confidential – Attorneys’ Eyes

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Only” or “Confidential” by Waymo in accordance with the Patent Local Rule 2-2 Interim Model

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Protective Order (“Protective Order”), which the parties have agreed governs this case (Transcript

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of 3/16/2017 Hearing, page 6). Defendants file this material under seal in accordance with

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Paragraph 14.4 of the Protective Order. (Josephs Decl. ¶ 4.)

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Pursuant to Civil Local Rule 79-5(d)(2), Defendants will lodge with the Clerk the
documents at issue, with accompanying chamber copies.
Defendants served Waymo with this Administrative Motion to File Documents Under
Seal on September 16, 2017.
For the foregoing reasons, Defendants request that the Court enter the accompanying

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Proposed Order granting Defendants’ Administrative Motion to File Documents Under Seal and

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designate the service copies of these documents as “HIGHLY CONFIDENTIAL –

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ATTORNEYS’ EYES ONLY.”

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Dated: September 16, 2017

SUSMAN GODFREY LLP

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By:

/s/ William Christopher Carmody
William Christopher Carmody
Attorneys for Defendants
UBER TECHNOLOGIES, INC.
and OTTOMOTTO LLC

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DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL
Case No. 3:17-cv-00939-WHA
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 Case 3:17-cv-00939-WHA Document 1614 Filed 09/16/17 Page 5 of 5

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ATTESTATION OF E-FILED SIGNATURE
I, Arturo J. González, am the ECF User whose ID and password are being used to file this

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Motion. In compliance with General Order 45, X.B., I hereby attest that William Christopher

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Carmody has concurred in this filing.

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Dated: September 16, 2017

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/s/ Arturo J. González
ARTURO J. GONZÁLEZ

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DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE DOCUMENTS UNDER SEAL
Case No. 3:17-cv-00939-WHA
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 Case 3:17-cv-00939-WHA Document 1614-1 Filed 09/16/17 Page 1 of 4

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MICHAEL A. JACOBS (CA SBN 111664)
MJacobs@mofo.com
ARTURO J. GONZÁLEZ (CA SBN 121490)
AGonzalez@mofo.com
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone:
415.268.7000
Facsimile:
415.268.7522
KAREN L. DUNN (Pro Hac Vice)
kdunn@bsfllp.com
HAMISH P.M. HUME (Pro Hac Vice)
hhume@bsfllp.com
BOIES SCHILLER FLEXNER LLP
1401 New York Avenue, N.W.
Washington DC 20005
Telephone:
202.237.2727
Facsimile:
202.237.6131
WILLIAM CARMODY (Pro Hac Vice)
bcarmody@susmangodfrey.com
SHAWN RABIN (Pro Hac Vice)
srabin@SusmanGodfrey.com
SUSMAN GODFREY
1301 Avenue of the Americas, 32nd Floor
New York, NY 10019-6023
Telephone:
212.336.8330
Facsimile:
202.336.8340
Attorneys for Defendants
UBER TECHNOLOGIES, INC.
and OTTOMOTTO LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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WAYMO LLC,
Plaintiff,

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Case No.

v.
UBER TECHNOLOGIES, INC.,
OTTOMOTTO LLC; OTTO TRUCKING LLC,

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Defendants.

3:17-cv-00939-WHA

DECLARATION OF
HALLEY JOSEPHS IN SUPPORT OF
DEFENDANTS’ ADMINISTRATIVE
MOTION TO FILE UNDER SEAL
PORTIONS OF THEIR MOTION TO
EXCLUDE TESTIMONY AND
OPINIONS OF WAYMO’S DAMAGES
EXPERT MICHAEL WAGNER

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JOSEPHS DECLARATION ISO DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822194

 Case 3:17-cv-00939-WHA Document 1614-1 Filed 09/16/17 Page 2 of 4

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I, Halley Josephs, declare as follows:

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1.

I am an attorney at the law firm of Susman Godfrey LLP. I make this declaration

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based upon matters within my own personal knowledge and if called as a witness, I could and

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would competently testify to the matters set forth herein. I make this declaration in support of

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Defendants’ Administrative Motion to File Under Seal Portions of Their Motion to Exclude

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Testimony and Opinions of Waymo’s Damages Expert Michael Wagner.

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2.

I have reviewed the following documents and confirmed that only the portions

identified below merit sealing:
Document

Portions to Be Filed Under Seal

Designating Party

Motion to Exclude Testimony
and Opinions of Waymo’s
Damages Expert Michael
Wagner (“Motion”)

Highlighted Portions

Defendants (Blue)

Exhibit 1 to the Declaration of
Matthew R. Berry

Entirety

Plaintiff

Exhibit 2 to the Declaration of
Matthew R. Berry

Entirety

Defendants

Exhibit 3 to the Declaration of
Matthew R. Berry

Entirety

Plaintiff

Exhibit 4 to the Declaration of
Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 5 to the Declaration of
Matthew R. Berry

Entirety

Defendants

Exhibit 6 to the Declaration of
Matthew R. Berry

Highlighted Portion

Defendants (Blue)

Exhibit 7 to the Declaration of
Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 8 to the Declaration of
Matthew R. Berry

Entirety

Defendants

Exhibit 9 to the Declaration of
Matthew R. Berry

Entirety

Plaintiff

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Plaintiff (Green)

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JOSEPHS DECLARATION ISO DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822194

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Document

Portions to Be Filed Under Seal

Designating Party

Exhibit 10 to the Declaration
of Matthew R. Berry

Highlighted Portions

Plaintiff (Green)

Exhibit 11 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 12 to the Declaration
of Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 13 to the Declaration
of Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 14 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 15 to the Declaration
of Matthew R. Berry

Highlighted Portions

Defendants (Blue)

Exhibit 19 to the Declaration
of Matthew R. Berry

Entirety

Plaintiff

Exhibit 21 to the Declaration
of Matthew R. Berry

Entirety

Plaintiff

Exhibit 22 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 23 to the Declaration
of Matthew R. Berry

Entirety

Defendants

Exhibit 24 to the Declaration
of Matthew R. Berry

Entirety

Defendants

3.

The blue-highlighted portions of the Motion, the entirety of Exhibits 2, 5, 8, 11,

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14, 22, 23, and 24 to the Berry Declaration, and the blue-highlighted portions of Exhibits 4, 6, 7,

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12, 13, and 15 to the Berry Declaration contain highly confidential information regarding Uber’s

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business forecasts and projections, organization run rates, market comparables, development

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strategies and performance on milestones, and responses to interrogatories regarding time and

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cost estimates for redesign of accused features. This highly confidential information is not

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publicly known, and its confidentiality is strictly maintained. Disclosure of this information

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could allow competitors to obtain a competitive advantage over Uber by giving them details into
JOSEPHS DECLARATION ISO DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822194

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 Case 3:17-cv-00939-WHA Document 1614-1 Filed 09/16/17 Page 4 of 4

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Uber’s business and development strategies, such that they could tailor their own strategies and

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Uber’s competitive standing could be significantly harmed.

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4.

The green-highlighted portions of the Motion, the entirety of Exhibits 1, 3, 9, 19,

4

and 21 to the Berry Declaration, and the green-highlighted portions of Exhibit 10 to the Berry

5

Declaration contain information that has been designated “Highly Confidential – Attorneys’ Eyes

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Only” or “Confidential” by Waymo in accordance with the Patent Local Rule 2-2 Interim Model

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Protective Order (“Protective Order”), which the parties have agreed governs this case (Transcript

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of 3/16/2017 Hearing, page 6). Defendants file this material under seal in accordance with

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Paragraph 14.4 of the Protective Order.

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5.

Defendants’ request to seal is narrowly tailored to the portions of the Motion and

its supporting papers that merit sealing.
I declare under penalty of perjury that the foregoing is true and correct. Executed this 16th
day of September, 2017 at New York, New York.

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/s/ Halley Josephs
Halley Josephs

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ATTESTATION OF E-FILED SIGNATURE

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I, Arturo J. González, am the ECF User whose ID and password are being used to file this

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Declaration. In compliance with General Order 45, X.B., I hereby attest that Halley Josephs has

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concurred in this filing.

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Dated: September 16, 2017

/s/ Arturo J. González
ARTURO J. GONZÁLEZ

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JOSEPHS DECLARATION ISO DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822194

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 Case 3:17-cv-00939-WHA Document 1614-2 Filed 09/16/17 Page 1 of 3

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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WAYMO LLC,

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Case No.
Plaintiff,

v.
UBER TECHNOLOGIES, INC.,
OTTOMOTTO LLC; OTTO TRUCKING LLC,

3:17-cv-00939-WHA

[PROPOSED] ORDER GRANTING
DEFENDANTS UBER
TECHNOLOGIES, INC. AND
OTTOMOTTO LLC’S
ADMINISTRATIVE MOTION TO
FILE DOCUMENTS UNDER SEAL

Defendants.

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[PROPOSED] ORDER GRANTING DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822216

 Case 3:17-cv-00939-WHA Document 1614-2 Filed 09/16/17 Page 2 of 3

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Upon consideration of Defendants Uber Technologies, Inc. and Ottomotto LLC’s

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(“Defendants”) Administrative Motion to File Documents Under Seal, and finding that good

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cause exists, this Court hereby GRANTS Defendants’ Administrative Motion to File Documents

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Under Seal and ORDERS that the following documents shall be sealed, as indicated below:

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Document

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Motion to Exclude Testimony and Opinions of
Waymo’s Damages Expert Michael Wagner
(“Motion”)

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Portions to Be Filed Under Seal
Highlighted Portions (blue)
Highlighted Portions (green)

Exhibit 1 to the Declaration of Matthew R. Berry

Entirety

Exhibit 2 to the Declaration of Matthew R. Berry

Entirety

Exhibit 3 to the Declaration of Matthew R. Berry

Entirety

Exhibit 4 to the Declaration of Matthew R. Berry

Highlighted Portions (blue)

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Exhibit 5 to the Declaration of Matthew R. Berry

Entirety

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Exhibit 6 to the Declaration of Matthew R. Berry

Highlighted Portion (blue)

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Exhibit 7 to the Declaration of Matthew R. Berry

Highlighted Portions (blue)

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Exhibit 8 to the Declaration of Matthew R. Berry

Entirety

Exhibit 9 to the Declaration of Matthew R. Berry

Entirety

Exhibit 10 to the Declaration of Matthew R. Berry

Highlighted Portions (green)

Exhibit 11 to the Declaration of Matthew R. Berry

Entirety

Exhibit 12 to the Declaration of Matthew R. Berry

Highlighted Portions (blue)

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Exhibit 13 to the Declaration of Matthew R. Berry

Highlighted Portions (blue)

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Exhibit 14 to the Declaration of Matthew R. Berry

Entirety

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Exhibit 15 to the Declaration of Matthew R. Berry

Highlighted Portions (blue)

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Exhibit 19 to the Declaration of Matthew R. Berry

Entirety

Exhibit 21 to the Declaration of Matthew R. Berry

Entirety

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[PROPOSED] ORDER GRANTING DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822216

 Case 3:17-cv-00939-WHA Document 1614-2 Filed 09/16/17 Page 3 of 3

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Document

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Exhibit 22 to the Declaration of Matthew R. Berry

Entirety

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Exhibit 23 to the Declaration of Matthew R. Berry

Entirety

Exhibit 24 to the Declaration of Matthew R. Berry

Entirety

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Portions to Be Filed Under Seal

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IT IS SO ORDERED.

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Dated: _____________, 2017
HONORABLE WILLIAM ALSUP
United States District Judge

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[PROPOSED] ORDER GRANTING DEFENDANTS’ ADMINISTRATIVE MOTION TO FILE UNDER SEAL
Case No. 3:17-cv-00939-WHA
sf-3822216

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 Case 3:17-cv-00939-WHA Document 1614-3 Filed 09/16/17 Page 1 of 17

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2
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MICHAEL A. JACOBS (CA SBN 111664)
MJacobs@mofo.com
ARTURO J. GONZÁLEZ (CA SBN 121490)
AGonzalez@mofo.com
425 Market Street
San Francisco, California 94105-2482
Telephone:
415.268.7000
Facsimile:
415.268.7522

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6
7
8
9

KAREN L. DUNN (Pro Hac Vice)
kdunn@bsfllp.com
HAMISH P.M. HUME (Pro Hac Vice)
hhume@bsfllp.com
BOIES SCHILLER FLEXNER LLP
1401 New York Avenue, N.W.
Washington DC 20005
Telephone:
202.237.2727
Facsimile:
202.237.6131

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12
13
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WILLIAM CHRISTOPHER CARMODY (Pro Hac Vice)
bcarmody@susmangodfrey.com
SHAWN RABIN (Pro Hac Vice)
srabin@SusmanGodfrey.com
SUSMAN GODFREY LLP
1301 Avenue of the Americas, 32nd Floor
New York, NY 10019-6023
Telephone:
212.336.8330
Facsimile:
202.336.8340

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Attorneys for Defendants
UBER TECHNOLOGIES, INC.
and OTTOMOTTO LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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WAYMO LLC,
Plaintiff,

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Case No.

v.
UBER TECHNOLOGIES, INC.,
OTTOMOTTO LLC; OTTO TRUCKING LLC,

25

3:17-cv-00939-WHA

DEFENDANTS UBER
TECHNOLOGIES, INC. AND
OTTOMOTTO, LLC’S MOTION TO
EXCLUDE TESTIMONY AND
OPINIONS OF WAYMO’S
DAMAGES EXPERT MICHAEL
WAGNER

Defendant.
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REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

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DEFS.’ MOT. TO EXCLUDE TESTIMONY AND OPINIONS OF WAYMO’S DAMAGES EXPERT MICHAEL WAGNER
Case No. 3:17-cv-00939-WHA
sf-3823864

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TABLE OF CONTENTS

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Page

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ARGUMENTS AND AUTHORITIES ........................................................................................... 3

4

I.

WAGNER’S ACCELERATED DEVELOPMENT THEORY IS UNRELIABLE ........... 3

5

A.

Forecasting Future Profits In a Nascent Industry Is Highly Speculative ................ 3

6

B.

Wagner Relies On a Speculative Projection of Future Profits ................................ 4

7

1.

The Qi Slide Was Speculative and Unreliable When Created .................... 5

8

2.

Wagner Failed To Consider Significant Intervening Events ...................... 6

C.

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Wagner Performs No Causation Analysis and His Apportionment Is
Nonsensical ............................................................................................................. 7

10
II.

WAGNER’S SAVED DEVELOPMENT MODEL IS EQUALLY UNRELIABLE ......... 9

III.

WAGNER’S UNJUST ENRICHMENT FOR TRADE SECRET NO. 90 IS
BASED ON A FLAWED METHODOLOGY AND IS CONTRADICTORY ................ 11

13

IV.

WAGNER’S REASONABLE ROYALTY OPINION IS UNRELIABLE ...................... 11

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CONCLUSION ............................................................................................................................. 12

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12

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DEFS.’ MOT. TO EXCLUDE TESTIMONY AND OPINIONS OF WAYMO’S DAMAGES EXPERT MICHAEL WAGNER
CASE NO. 3:17-CV-00939-WHA
sf-3823864

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 Case 3:17-cv-00939-WHA Document 1614-3 Filed 09/16/17 Page 3 of 17

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TABLE OF AUTHORITIES

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3
4
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Page(s)
Cases
Brooktree Corp. v. Advanced Micro Devices, Inc.,
977 F.2d 1555 (Fed. Cir. 1992) ...............................................................................................3, 6
Bruno v. Bozzuto’s, Inc.,
311 F.R.D. 124 (M.D. Pa. 2015) .................................................................................................5

7
8
9
10
11

In re ConAgra Foods, Inc.,
302 F.R.D. 537 (C.D. Cal. 2014) ................................................................................................5
Eagle Harbor Holdings, LLC v. Ford Motor Co.,
No. C11-5503 BHS, 2015 WL 12670404 (W.D. Wash. Mar. 9, 2015) ......................................2
Fail-Safe, L.L.C. v. A.O. Smith Corp.,
744 F. Supp. 2d 870 (E.D. Wisc. 2010) ..............................................................................5, 6, 7

12
13
14
15
16

Gen. Elec. Co. v. Joiner,
522 U.S. 136 (1997) ....................................................................................................................3
Intellectual Ventures I LLC v. Xilinx, Inc.,
No. 10-1065-LPS, 2014 WL 1814384 (D. Del. Apr. 14, 2014) .................................................2
Legendary Art, LLC v. Godard,
No. 11-0674, 2012 WL 3550040 (E.D. Pa. Aug. 17, 2012) .......................................................5

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18
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20
21
22
23
24
25
26
27
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O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
399 F. Supp. 2d 1064 (N.D. Cal. 2005) ....................................................................................10
Ollier v. Sweetwater Union High Sch. Dist.,
768 F.3d 843 (9th Cir. 2014).......................................................................................................3
Oracle Am., Inc. v. Google Inc.,
798 F. Supp. 2d 1111 (N.D. Cal. 2011) ......................................................................................3
Oracle Am., Inc. v. Google Inc.,
No. 3:10-cv-03561-WHA (N.D. Cal. July 22, 2011) ................................................................12
Sargon Enters., Inc. v. Univ. of S. Cal.,
149 Cal. Rptr. 3d 614 (Cal. Ct. App. 2013) ................................................................................3
Target Mkt. Publ’g, Inc. v. ADVO, Inc.,
136 F.3d 1139 (7th Cir. 1998).....................................................................................................7
Uniloc USA, Inc. v. Microsoft Corp.,
632 F. 3d 1292 (Fed. Cir. 2011) ................................................................................................12
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Statutes

2

18 U.S. Code § 1836(b)(i)(II) ...........................................................................................................7

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12
13
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22
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INTRODUCTION

1

Waymo’s future damages models are speculative and unreliable, and this case should

2
3

proceed to trial without any monetary damages expert. Waymo cannot say it was not warned. At

4

the August 16th hearing, this Court cautioned: 1
[I]f Waymo has become greedy and we knock out your damages, there
won’t be a retrial. You just won’t have a damages report. We just go to
trial without it. There’s no God-given right to have a damages report.

5
6

Yet Waymo has now put forward damages opinions from Michael Wagner that swing for

7
8

the fences. The result: claims for future “unjust profits” for each of the nine asserted trade secrets

9

that reach as high as

for a single trade secret. Wagner then arbitrarily increases that

10

figure by

11

misappropriation of a single trade secret. To put that number into context, Uber could have

12

purchased Velodyne for half of the amount that Waymo is seeking for a single trade secret. The

13

only thing more remarkable than the magnitude of this number is how Wagner arrived at it.

for the alleged

The below chart summarizes Wagner’s unjust enrichment calculations for each trade

14
15

under Georgia Pacific, resulting in total damages of

secret before applying an across-the-board

reasonable royalty enhancement: 2

16
17
18
19
20
21
22
23

As reflected in the two columns, Wagner opines that Uber will benefit from the asserted trade

24

secrets in two ways: future profits from accelerated commercialization and future saved

25

development costs.

26

1

27
28

8/16/17 Confidential Hr’g Tr., at 135:6-9; see also 6/7/17 Hr’g Tr., at 55:25-56:4 (“I have given
up on trying to give you second bites at the apple. So if your expert goes out the door because the
methodology sucks, too bad for you. You just don’t have the expert at trial.”).
2
See Berry Decl. Ex. 1, Wagner Rpt. Figure 13.
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Wagner calculates those astronomical figures using a methodology that is not reliable,

1
2

inserting variables that he neither derived nor tested, and making assumptions that no reasonable

3

expert would make. For accelerated development, he takes an 18-month old slide prepared by an

4

Uber corporate development manager that was never used for any purpose, adopts it without

5

testing it, and then opines that the nine discrete trade secrets relating to LiDAR hardware will

6

allow Uber’s entire autonomous vehicle (“AV”) program to skip ahead

7

development and commercialization. For saved development costs, Wagner assumes the discrete

8

trade secrets will allow Uber to save, for a

9

person AV unit. These two theories do not come close to meeting causation and apportionment

10

in all aspects of

period, the run rate for Uber’s entire 1500-

standards, and the assumptions on which they depend are wholly unreliable and untested.
Illustrating just how deficient Wagner’s opinions are, he has now submitted a 48-page

11
12

reply, with over 1200 pages of exhibits, attempting to retroactively substantiate his flawed

13

assumptions. Wagner’s reply not only fails to do so, but disregards this Court’s case management

14

order, which requires “very brief” replies that “should not add new material that should have been

15

placed in the opening report.” (Dkt. 563 at ¶ 5.)
Whether Wagner’s reply report is considered or not, the fact remains that Wagner’s

16
17

damages opinions and testimony are irredeemably flawed and should be excluded in their

18

entirety, without any opportunity to amend or submit a new report. 3 The flaws in Wagner’s

19

report are glaringly obvious and go to the core of his opinions. Even setting aside the expedited

20

schedule and the Court’s prior warnings, it would be patently unfair to allow Waymo to try to see

21

what it could get away with—only to get a do-over on the eve of trial.
LEGAL STANDARD

22

As this Court has recognized, an expert witness may provide opinion testimony “if (1) the

23
24

testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable

25
3

26
27
28

Perhaps not surprisingly, courts have excluded Wagner’s opinions as too speculative and not
reliable several times. See, e.g., Eagle Harbor Holdings, LLC v. Ford Motor Co., No. C11-5503
BHS, 2015 WL 12670404, at *2 (W.D. Wash. Mar. 9, 2015) (excluding opinion for being based
on “pure speculation”); Intellectual Ventures I LLC v. Xilinx, Inc., No. 10-1065-LPS, 2014 WL
1814384, at *4 (D. Del. Apr. 14, 2014) (excluding Wagner’s opinion for failing to consider
“highly relevant” evidence, rendering his entire opinion “unreliable and irrelevant.”).
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principles and methods, and (3) the witness has applied the principles and methods reliably to the

2

facts of the case.” Oracle Am., Inc. v. Google Inc., 798 F. Supp. 2d 1111, 1114 (N.D. Cal. 2011).

3

District courts are thus charged with a gatekeeping role, and should exclude evidence that is

4

“based on mere ‘subjective belief or unsupported speculation’” or is “inherently unreliable and

5

unsupported by the facts.” Ollier v. Sweetwater Union High Sch. Dist., 768 F.3d 843, 861 (9th

6

Cir. 2014) (citation omitted). Further, courts should exclude testimony if “there is simply too

7

great an analytical gap between the data and the opinion proffered.” Gen. Elec. Co. v. Joiner, 522

8

U.S. 136, 146 (1997).
ARGUMENTS AND AUTHORITIES

9
10
11

I.

WAGNER’S ACCELERATED DEVELOPMENT THEORY IS UNRELIABLE
Wagner’s accelerated commercialization opinion is really a future profits model because it

12

attempts to calculate Uber’s incremental future profits from accelerating its AV program, and it

13

fails for three reasons. First, forecasting profits in the nascent autonomous vehicle industry that

14

has not yet been commercialized is inherently speculative. Second, the model relies on a highly

15

speculative and outdated projection of future profits that was never used or relied on by Uber and

16

that Wagner does not test. Finally, Wagner fails to establish a causal link between the purported

17

future profits and the specific trade secrets or to apportion among them in any reliable manner.

18

A.

19

Any attempt to calculate future profits in a nascent industry, like using autonomous

Forecasting Future Profits In a Nascent Industry Is Highly Speculative

20

vehicles to transport passengers, is based on many levels of speculation. See, e.g., Brooktree

21

Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1581 (Fed. Cir. 1992) (“The burden of

22

proving future injury is commensurately greater than that for damages already incurred, for the

23

future always harbors unknowns” and affirming exclusion of damages as too speculative given

24

the “uncertainties of future pricing, future competition, and future markets, in this fast-moving

25

field, as well as the requirements of proof of future losses.”); Sargon Enters., Inc. v. Univ. of S.

26

Cal., 149 Cal.Rptr.3d 614, 634 (Cal. Ct. App. 2013) (noting that predicting future profits for an

27

unestablished business is generally “uncertain, contingent, and speculative” and only proper

28

where the predicate future events “can be shown by evidence of reasonable reliability.”). Rather
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than addressing these challenges and explaining how he accounted for them, Wagner’s analysis

2

simply glosses over them. To the extent it would be possible at all to project future profits in the

3

nascent self-driving car industry, Wagner provides no reliable analytical framework to do so.
The degree of speculation involved in forecasting profits in an industry that does not yet

4
5

exist (and may never exist) cannot be emphasized enough. And the layers of speculation are

6

compounded by the fact that Wagner is attempting to forecast profits through 2022—five years

7

into the future. No transportation as a service (“TaaS”) company has ever earned revenue (let

8

alone profits) from transporting passengers in an autonomous vehicle with no safety driver; no

9

fleet of autonomous vehicles currently exist that are ready for commercializing the TaaS business

10

model; the future competitive landscape is highly unpredictable and unknowable; and federal,

11

state, and local laws are a complex and often conflicting web of regulations that do not expressly

12

permit, and in many states expressly prohibit, fully autonomous vehicles transporting passengers.4

13

B.

14

Wagner does not perform any independent analysis and instead purports to calculate

Wagner Relies On a Speculative Projection of Future Profits

15

Uber’s future profits by relying on a single slide from January 2016 prepared by Nina Qi, a new

16

corporate development manager at Uber (the “Qi Slide”). (Berry Decl. Ex. 5 at UBER00069033.)

17

In this slide, Qi attempted to quantify the present value of “incremental EBIT” (i.e., future profits)

18

that Uber could potentially realize if it were able to accelerate commercialization of Uber’s AV

19

program by

. (Id.)

This single slide is the entire basis of Wagner’s unjust profits damages model. Yet it is

20
21

from a four-slide PowerPoint that Ms. Qi didn’t even consider a presentation and was never used

22

or relied upon for any purpose. In Ms. Qi’s words, “[a]fter I completed the exercise it was never

23

talked about again.” (Berry Decl. Ex. 6, 6/22/17 Qi Dep. at 217:3-17, 222:1-223:22). 5 Wagner’s

24

wholesale reliance on the Qi Slide without conducting any independent tests of its underlying

25
26
27
28

4

Berry Decl. Ex. 2, Bratic Rebuttal Rpt. ¶¶ 45-69; Ex. 3, 8/2/17 Krafcik Dep. at 131:4-132:1;
Ex. 4, 7/28/17 Michael Dep. at 138:25-139:3
).
5
Id. at 217:2-218:12 (it was only shown to two people and “was not a presentation”) and 223:1-5
(“Again, this is my own assessment and ultimately was not used in any forum.”).
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models and assumptions renders his opinions unreliable. See, e.g., Fail-Safe, L.L.C. v. A.O. Smith

2

Corp., 744 F. Supp. 2d 870, 886 (E.D. Wisc. 2010) (striking plaintiff’s expert report that relied on

3

data provided by the defendant regarding market share, projected sales, and market adoption,

4

without independently verifying the data or assumptions); Bruno v. Bozzuto’s, Inc., 311 F.R.D.

5

124, 144 (M.D. Pa. 2015) (excluding plaintiff’s expert report that relied on defendant’s

6

projections because “the expert must conduct some sort of independent investigation or

7

verification to ensure that the data he or she plans to use is both accurate and helpful to the court

8

in light of the disputed issues”); In re ConAgra Foods, Inc., 302 F.R.D. 537, 556 (C.D. Cal. 2014)

9

(expert may only rely on opinion of others if “the record demonstrates that the expert conducted

10

an independent evaluation of that evidence); Legendary Art, LLC v. Godard, No. 11-0674, 2012

11

WL 3550040, at *5 (E.D. Pa. Aug. 17, 2012) (“Unverified profit and loss projections cannot be

12

the type of evidence ‘reasonably relied upon by experts’ as required by Daubert and the Federal

13

Rules of Evidence.” (emphasis in original)).

14

1.

The Qi Slide Was Speculative and Unreliable When Created

The Qi Slide is derived from Uber’s

15
16

.6 Had Wagner conducted a proper test,

17
18

he would have immediately seen the following warning in a red box on the

19
”

20
21

(Id. Ex. 8 at UBER00232490.) For example, the Qi Slide assumes that Uber will have
. But Wagner failed to test that assumption, and did not

22
23

even identify the
.

24
25
6

26

Id. Ex. 7, 8/18/17 Uber Corp. Rep. (Meyhofer) Dep. at 82:4-86:6
[ ] and you see different data.…

27
28

.
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Uber is not alone in characterizing future profits from AV as speculative.7 Waymo has

1
2

identified numerous “

” that “
.” (Id. Ex. 9 at WAYMO-UBER-00046625.) Uber faces these same

3
4

risks. Yet Wagner failed to assess whether and how the Qi Slide reliably accounts for any of

5

these risks, or how a discount rate of 15% could possibly be reasonable in light of these risks.

6

Both Waymo and industry analysts have used a

7

Ex. 2 ¶ 36; Ex. 10 at 238:12-241:20 (discussing Waymo’s consistent use of a

8

and stating that, for immature markets, “

9

“possible” that it was higher than 50%); see also Fail-Safe L.L.C, 744 F. Supp. 2d at 894 (noting

10

“extreme importance in using an accurate discount rate when calculating damages” and finding

11

expert’s suggested rate unreliable) (citation omitted).)

12

2.

discount rate for their own projections. (Id.
discount rate
and

Wagner Failed To Consider Significant Intervening Events

Even if it were proper to rely on the Qi Slide when it was created, which it was not,

13
14

intervening events made it unreasonable for Wagner to rely on it in his report eighteen months

15

later. When attempting to forecast future profits in any industry, it is imperative to use the most

16

recent and accurate data and assumptions. See Brooktree Corp., 977 F.2d at 1581. That is

17

especially true in a nascent industry. Despite Uber producing recent financial data and forecasts,

18

Wagner chose instead to rely on the stale Qi Slide.
Wagner failed to assess how events that occurred in the eighteen months since the Qi

19
20

Slide was created impacted its underlying assumptions and results. For example, the Qi Slide

21

assumes that the Otto acquisition will advance Uber’s AV program by

22
23
24
25
26
27
28

7

Berry Decl. Ex. 10, 8/23/17 Su Dep. (former Waymo financial manager) at 75:6-75:11
(testifying that identifying a range of possible valuation outcomes for Waymo was “pretty
speculative”); id.at 118:4-12.
8
For example, a May 2016
presentation that Wagner relied on forecasts that
Uber AV will
. See Berry
Decl. Ex. 11 at UBER00232620.
. Id. Ex. 12,
6/16/17 Bares Dep. at 96:11-97:13; Ex. 13, 8/11/17 Bares Dep. at 363:2-10.
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.9 Meanwhile, competition has dramatically increased, with Uber’s primary

2
3

competitor Lyft partnering with Waymo,10 Ford announcing plans to introduce self-driving cars

4

by 2021,11 and GM acquiring Cruise Automation.12 And the regulatory process has moved more

5

slowly than expected, with Wagner failing to identify a single state that expressly permits the

6

transport of passengers in a fully AV. The Qi Slide does not (and cannot) take into account the

7

impact of these later events, yet Wagner made no attempt to assess how these recent events

8

impact the assumptions and methodology underlying the Qi Slide or his ultimate opinions. As a

9

result, Wagner’s opinions are not reliable and should be excluded. See, e.g., Fail-Safe, L.L.C.,

10

744 F. Supp. 2d at 888 (“Use of outdated or suspect data as the base of an expert’s testimony are

11

proper grounds to exclude that testimony.”); Target Mkt. Publ’g, Inc. v. ADVO, Inc., 136 F.3d

12

1139, 1145 (7th Cir. 1998) (affirming exclusion of plaintiff’s expert report that relied on

13

defendant’s own projections where such projections were made on assumptions that “had yet, and

14

might never, come to pass” and had been undermined by later developments).

15

C.

16

Wagner Performs No Causation Analysis and His Apportionment Is
Nonsensical

Even if Wagner had properly calculated Uber’s incremental future profits from

17
18

accelerated commercialization, his unjust profits analysis would still fail because he did not

19

establish any causal link between those future profits and the specific trade secrets at issue. It is

20

black letter law that Waymo can recover only those “damages for unjust enrichment caused by

21

the misappropriation of the trade secret.” 18 U.S. Code § 1836(b)(i)(II) (emphasis added).

22

Wagner failed to do any causation analysis, and his attempt to apportion lacks any sound

23
24
25
26
27
28

9

See id. Ex. 14 at UBER00016463-16464 (Ottomotto Merger Agreement §1.8); id. Ex. 15, 9/2/17
van den Berg Dep. at 172:4-172:6 (
).
10
Id. Ex. 16, https://www.nytimes.com/2017/05/14/technology/lyft-waymo-self-drivingcars.html; Ex.3, 8/2/17 Krafcik Dep. at 83:11-84:19.
11
Id. Ex. 17, https://media.ford.com/content/fordmedia/fna/us/en/news/2016/08/16/ford-targetsfully-autonomous-vehicle-for-ride-sharing-in-2021.html.
12
Id. Ex. 18, http://media.gm.com/media/us/en/gm/home.detail.html/content/Pages/news/us/
en/2017/ apr/0413-cruise.html.
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methodology.
The deficiencies in Wagner’s causation analysis are glaring—he assumes that each trade

2
3

secret would advance not just the development but also the commercialization of Uber’s entire

4

AV program by the exact amount of time that it would take to independently develop the trade

5

secret. This serial process assumption is not reliable. It falsely assumes that each trade secret is a

6

bottleneck in the AV program, and that Uber’s entire AV program would (i) screech to a halt if

7

Uber had to independently develop the trade secret and (ii) jump ahead in all aspects if Uber

8

already had the trade secret. For example, according to Wagner, having

9

in Trade Secret 25 would allow Uber to jump ahead in the accelerated development model and

10

bypass

of development in entirely separate areas such as software, cameras, other

11

LiDAR components, and radar.13

12

Even setting aside the speculative nature of future commercialization, Wagner’s

13

assumptions ignore the small part LiDAR plays in AV development and the even smaller part

14

these specific trade secrets play. According to Waymo, LiDAR is only one of
. (Berry Decl. Ex. 19 at WAYMO-UBER-

15
16

00001363-R.) Uber has only 155 employees in its AV hardware department, compared to 405

17

employees in its AV software department. Tellingly, Waymo’s own hardware engineer, Sasha

18

Zbrozek, highlighted the low value Waymo places on hardware: “At least historically, high-value

19

[information] has been algorithms and software. The hardware (at all levels) was a second class

20

citizen.” (Id. Ex. 20 at WAYMO-UBER-00086885; id. at 86886 (stating that electronics designs,

21

including schematics and PCB layouts, were “low-value enough that we had even considered

22

hosting it off of Google infrastructure”).) Wagner’s notion that each trade secret related to “low-

23

value” LiDAR hardware designs will allow Uber to bypass months or years of software, camera,

24

regulatory and customer adoption hurdles has no evidentiary basis.
The illogic of Wagner’s methodology is highlighted by the way he aggregates damages

25
26
27
28

13

As Bratic explains, Waymo’s technical expert’s report, upon which Wagner relied, identified
evidence that Uber allegedly misappropriated at most
present in the
document on which Waymo bases Trade Secret 25. Berry Decl. Ex. 2 ¶ 83.
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for the trade secrets. Apparently to avoid presenting too high of a damage figure, Wagner

2

“

” and that “

3
4

.” So, according to Wagner, Waymo should be awarded

whether

5

Uber misappropriated all trade secrets or only Trade Secret 25. This assumption contradicts his

6

entire methodology, which assumes that all work has to be performed in a serial process.
Finally, the redesign timelines that underpin Wagner’s calculations are unreliable. For

7
8

Trade Secrets 25 and 111, Wagner relies upon the opinions of Waymo’s technical expert,

9

Lambertus Hesselink, that it would take

, respectively, for Uber to

10

independently develop those trade secrets. (Berry Decl. Ex. 1 ¶ 284.) But Trade Secret 25 is

11

comprised of

12

yet Wagner has not undertaken any apportionment analysis. (Id. Ex. 21, Hesselink Rpt. at 38-43.)

13

For the remainder of the trade secrets, Wagner uses the independent design timelines from Uber’s

14

interrogatory response, but ignores that “[t]he Schedule times identified for the redesigns below

15

would not significantly or materially impact the timeline for commercialization and rollout of

16

Uber’s fully-autonomous self-driving technology to the general public.” (Ex. 2 ¶ 76 (emphasis in

17

original); Ex. 22, Uber’s 2d Supp. Resp. to Common Rog. No. 1, at 4.) That means Wagner is

18

relying on certain parts of Uber’s interrogatory response while at the same time rejecting other

19

parts of the same response.

20

II.

21

and Waymo has alleged misappropriation of, at most,

WAGNER’S SAVED DEVELOPMENT MODEL IS EQUALLY UNRELIABLE
Like his accelerated development model, the mistakes in Wagner’s saved development

22

model are blatant. He takes a

23

notes for the entire AV program and then assumes that each trade secret saved Uber the entire

24
25
26

,

cash burn rate from John Bares’ January 2016

for the time that it would have taken Uber to independently develop the nine
discrete trade secrets. (Id. Ex. 23 at UBER00060321; Ex. 12 at 214:18-215:1.)
This is merely the flip-side of Wagner’s flawed accelerated commercialization model:

27

rather than assuming each trade secret allowed Uber to jump ahead by

, he assumes that

28

independent development of any single trade secret would cause all other work to grind to a halt
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for

and that Uber’s entire burn rate for that period would be wasted. This methodology

2

is unreliable for the same reasons as his accelerated commercialization model.
It also defies logic that misappropriating one or more of the trade secrets that are limited

3
4

to a specific LiDAR feature could save Uber the expenses of the entire AV program. For

5

example, Wagner concludes that Trade Secret 25 would save Uber

6

costs because it would have taken Uber

to independently develop that trade secret.

7

Putting aside the fact that Waymo’s

would have no value for Uber’s AV, it

8

completely defies logic to say that

9

AV program, including software, cameras, and radar,

10

Uber would continue to employ 716 employees14 for

11

one is performing work of value beyond the small team doing the independent development work.

in development

could save Uber the cost of running its entire
. It further defies logic that
when, according to Wagner, no

Further, Wagner does nothing to test the burn rate on which he relies. The burn rate he

12
13

uses is from John Bares’ January 2016 notes, and therefore was 18 months old by the time

14

Wagner relied on it. (Id. Ex. 23 at UBER00060321.) Yet Wagner failed to analyze what this

15

includes (e.g., personnel, cap ex, overhead), what Uber’s actual burn rate was, and what it would

16

be over time. Wagner’s report identifies that he considered this material, but he simply decided

17

not to use it without explanation. (See id. Ex. 24 at UBER00231732 (August 2017 presentation

18

entitled “Financial Management Strategy Advanced Technologies Group” showing that Uber had

19

a headcount of 155 people in the Uber hardware department with aggregate monthly salaries of
).)

20

Finally, as with his accelerated development model, Wagner again contradicts himself by

21
22

assuming that the saved development costs are not additive. That is, Wagner assumes that Uber’s

23

saved development costs remain exactly the same whether Uber misappropriated only Trade

24

Secret 25 or if Uber misappropriated all of the asserted trade secrets. Such an absurd result is the

25

hallmark of a flawed model and a failure to apportion. See O2 Micro Int’l v. Monolithic Power

26
27
28

14

This headcount of 716 does not even include all ATG employees, which exceeds 1,500. (Id.
Ex. 7 at 12:2-25 (“So ATG is a pretty large entity. It’s about 1,550 people fully devoted to
developing autonomous ride-sharing technology.”).)
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Sys., Inc., 399 F. Supp. 2d 1064, 1077 (N.D. Cal. 2005) (holding that an expert’s testimony “does

2

not provide a reasonable basis for the jury to apportion damages” and that the unjust enrichment

3

damages award based thereon “was based on speculation and guesswork, not on evidence” where

4

the expert opined on a value for all trade secrets but did not provide sufficient information for the

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jury to determine how much of the value each individual secret contributed to the total).

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III.

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Wagner excluded Trade Secret 90 from his accelerated development and saved

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WAGNER’S UNJUST ENRICHMENT FOR TRADE SECRET NO. 90 IS BASED
ON A FLAWED METHODOLOGY AND IS CONTRADICTORY

development expenses models, presumably because the purported

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independent development time results in a nonsensical

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does not even use. So Wagner instead took the entire

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simply assigned that full amount to Trade Secret 90. This methodology is not based on sound

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assumptions and further demonstrates that Wagner’s models are result-oriented and contradictory.

price that Uber paid for Tyto and

To begin with, Wagner’s opinion that Trade Secret 90 comprised the entire value of Tyto

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royalty for a concept that Uber

is not reliable because the Tyto acquisition included much more. The Tyto acquisition included

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(See Ex. 1 ¶¶ 301-303.) Wagner discounts the value of the employees by assuming that the

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equity consideration to those employees reflected the full consideration, but he provides no

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analysis to substantiate this assumption. He further fails to analyze the assets of Tyto and

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substantiate his conclusion that they are entirely worthless except for Trade Secret 90.

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Moreover, Wagner fails to explain how Uber was unjustly enriched by paying

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for a trade secret that it does not use. Uber already paid

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Wagner, Trade Secret 90. Wagner fails to explain why Uber must pay another

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Waymo for something it does not use.

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IV.

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for Tyto and, according to
to

WAGNER’S REASONABLE ROYALTY OPINION IS UNRELIABLE
Wagner’s reasonable royalty opinion is based entirely on his accelerated development

model, and therefore fails for the same reasons. In addition, Wagner improperly applied the
DEFS.’ MOT. TO EXCLUDE TESTIMONY AND OPINIONS OF WAYMO’S DAMAGES EXPERT MICHAEL WAGNER
CASE NO. 3:17-CV-00939-WHA
sf-3823864

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 Case 3:17-cv-00939-WHA Document 1614-3 Filed 09/16/17 Page 16 of 17

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Georgia Pacific factors to conclude that the baseline future profits should be increased by

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First, Wagner’s conclusion that the baseline royalty should be increased by

.

is devoid

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of any analysis. He walks through each of the Georgia Pacific factors, concludes that most are

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neutral, and then opines without any analysis that the baseline royalty should be increased by

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, a number that does not appear anywhere else in his report, or in any evidence he cites. (See

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Ex. 1 ¶ 439.) That is akin to a “25% rule of thumb” and should be excluded for the same reason.

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See Uniloc USA, Inc. v. Microsoft Corp., 632 F. 3d 1292, 1318 (Fed. Cir. 2011).
Second, a

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enhancement of Wagner’s unjust profits model is illogical. In a

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hypothetical negotiation, a purchaser would pay only an amount that would permit it to earn a

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reasonable return on its investment. Wagner fails to show how Uber would profit from paying
of future AV profits to license these discreet trade secrets. It never would, and no rational

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company would pay more to license the technology than what it would cost to design around,

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which both Wagner and Bratic assume is possible. Further, the

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for Trade Secret 25 alone is

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according to the Qi Slide upon which Wagner relies. (Berry Decl. Ex. 5 at UBER00069032; id.

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Ex. 10 at 74:7-10 (discussing

reasonable royalty

of the value of Google’s entire AV program in late 2015,

).)

Third, Wagner fails to apply the Georgia Pacific analysis trade secret by trade secret. He

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also only opined as to lump sum royalties instead of running royalties, which is illogical in a trade

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secret case like this where Waymo must account for the possibility of an injunction on one or

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more of the trade secrets,15 and there are numerous contingencies/risk factors for development, let

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alone commercialization.

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CONCLUSION
For the above reasons, Uber respectfully requests that the Court exclude the monetary

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damages opinions and testimony of Michael Wagner as not reliable under Daubert.

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See, e.g., Oracle Am., Inc. v. Google Inc., No. 3:10-cv-03561-WHA (ECF No. 230 at 11) (N.D.
Cal. July 22, 2011) (“[A]ny damages report should address both the assumption that an injunction
will be granted and the assumption that an injunction will not be granted.”).
DEFS.’ MOT. TO EXCLUDE TESTIMONY AND OPINIONS OF WAYMO’S DAMAGES EXPERT MICHAEL WAGNER
CASE NO. 3:17-CV-00939-WHA
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 Case 3:17-cv-00939-WHA Document 1614-3 Filed 09/16/17 Page 17 of 17

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Dated: September 16, 2017

SUSMAN GODFREY LLP

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By:

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/s/ William Christopher Carmody
William Christopher Carmody
Attorneys for Defendants
UBER TECHNOLOGIES, INC.
and OTTOMOTTO LLC

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ATTESTATION OF E-FILED SIGNATURE
I, Arturo J. González, am the ECF User whose ID and password are being used to file this

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Motion. In compliance with General Order 45, X.B., I hereby attest that William Christopher

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Carmody has concurred in this filing.

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Dated: September 16, 2017

/s/ Arturo J. González
ARTURO J. GONZÁLEZ

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DEFS.’ MOT. TO EXCLUDE TESTIMONY AND OPINIONS OF WAYMO’S DAMAGES EXPERT MICHAEL WAGNER
CASE NO. 3:17-CV-00939-WHA
sf-3823864

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