Did Uber know the Waymo engineer it hired would bring secrets?

| May 19, 2017 | Trade Secrets

Ride-sharing giant Uber is in the midst of a hard-fought battle to get ahead in the exciting field of autonomous vehicle technology. Unfortunately, a judge has just ruled that it took the contest a bit too far when it hired a former engineer from Waymo, Google/Alphabet, Inc.’s self-driving vehicle unit.

The federal judge in San Francisco unsealed a ruling on Monday that Uber knew or should have known that the engineer was bringing along Waymo’s valuable trade secrets. Waymo produced “compelling evidence” that the engineer had downloaded a lot of files just before he left Uber to start his own autonomous vehicle business last year. Uber bought that business and hired the engineer to run its research and development.

“The bottom line is the evidence indicates that Uber hired [the engineer] even though it knew or should have known that he possessed over 14,000 confidential Waymo files likely containing Waymo’s intellectual property,” reads the ruling.

Judge forwards case to Justice Department as possible trade secret theft

Waymo had sued Uber for appropriating 121 of its confidential trade secrets, along with patent infringement. The judge did rule against Waymo in a large number of those counts, reasoning that the patent claims were without merit and that “few” of the trade secrets could be definitively traced to Uber. He also ruled that some of the 121 asserted trade secrets didn’t actually qualify as such. He also refused to shut down Uber’s autonomous vehicle program entirely.

The majority of the ruling definitely went to Waymo. The judge ordered Uber to prevent the engineer, or any other of its employees, to use the files he downloaded before leaving Waymo — and to return them to Waymo by May 31. Further, Uber must perform a comprehensive investigation and return by the end of June with detailed findings. He also ruled against Uber’s request that the dispute be handled privately in arbitration.

Moreover, the judge referred the case to the Department of Justice for possible prosecution of trade secret theft.

The engineer is not a party in the civil suit. However, he has already asserted his Fifth Amendment right against self-incrimination in order to avoid testifying.