Uber has agreed to work with Waymo to ensure that the company’s LIDAR and software represents just the work of Uber engineers.
The agreement also comes with a financial settlement of roughly $244 million in stock. A statement was released from Uber chief executive Dara Khosrowshahi regarding the settlement, which Khosrowshahi said was about finding a way to “set the course for the future of the company.”
Khosrowshahi said that he did not believe that any trade secrets actually made their way from Google’s self-driving car program into Uber’s nascent efforts.
“But the prospect that a couple of Waymo employees may have inappropriately solicited others to join Otto, and that they may have potentially left with Google files in their possession, in retrospect, raised some hard questions,” Khosrowshahi wrote.
J. Michael Keyes is an intellectual property attorney with extensive trial and litigation experience. He has tried several cases in federal courts across the United States.
Of the settlement today, he says, “The blockbuster trial over alleged trade secret misappropriation by Uber is now history. Waymo and Uber agreed to settle their heavyweight bout with Uber paying $244 million to Waymo. The lead up to the trial featured plot twists and turns, criminal investigations, and alleged destroyed evidence that sounded more like something out of a Tom Clancy novel than an actual business dispute between these two tech titans.”
Mr. Keyes offered several take-aways from the case and the settlement today:
”While it’s certainly not unheard of to settle a case midway through trial, it’s not the typical scenario. Usually, by the time both sides get to trial, all of the relevant stakeholders are aware of the risks and believe that their respective “world views” will prevail before the jury. It’s hard to know what altered that calculus, and we may never know,” Keyes said.
“Uber’s CEO acknowledged that they should have handled their acquisition of OttoMotto—the company founded by the former Google driverless technology engineer—“differently.” That’s probably the understatement of 2018. I think what Uber is saying is that it should have done much more vetting of OttoMotto and its IP to ensure compliance with the law of trade secrets,” Keyes adds.
“Tech heavyweights and non-heavyweights alike need to be vigilant about making sure that employees that are hired and companies that are acquired are not “tainted” with potential claims of misappropriation. Extreme vetting of employees to make sure they did not take files and other information from the prior employer is a must. Careful due diligence during the acquisition process of a company is also paramount. The IP of that company needs to be traced back to its origins to ensure it is free of claims by third parties.”
Keyes is a partner at the international law firm Dorsey & Whitney. Keyes specializes in cases involving trademarks, copyrights, trade secrets, unfair competition and false advertising.