On Friday, June 7th, a joint stipulation and order was entered that dropped three claims of patent infringement raised in the intellectual property case being fought between San Francisco, CA-based transportation company Uber Technologies and Waymo, one of the subsidiaries of Google-owner Alphabet Inc. (NASDAQ:GOOGL) The order is one of the most recent filings in a case which has seen hundreds of documents filed since the case began this February. The case is filed in the U.S. District Court for the Northern District of California (N.D. Cal.).
The patents which Waymo are no longer asserting include:
- U.S. Patent No. 8836922, titled Devices and Methods for a Rotating LIDAR Platform With a Shared Transmit/Receive Path. It claims a light detection and ranging (LIDAR) device with a lens mounted to a rotatable housing with light sources emitting light beams and detectors which receive reflections of the emitted beams.
- U.S. Patent No. 9285464, same title as the ‘922 patent. It discloses a LIDAR device where the paths for transmitting light beams and receiving their reflections at least partially overlap.
- U.S. Patent No. 9086273, entitled Microrod Compression of Laser Beam in Combination With Transmit Lens. It protects a LIDAR device with laser diodes emitting uncollimated, or unaligned, laser beams which diverge in two directions, a cylindrical lens that partially collimates the divergent beams and an objective lens that takes the partially collimated beams and collimates them further before directing them towards detectors.
Most of the claims have been dismissed with prejudice. However, claims related to the “abandoned Spider design,” a reference to a LIDAR device developed by Anthony Levandowski, the former Waymo employee at the center of the legal squabble, have been dismissed without prejudice. If the Uber ever returns to developing the Spider, it’s likely that Waymo will reassert the claims it has dismissed without prejudice.
The order dismissing these patents from the case comes two months after the federal judge adjudicating the case entered a motion for summary judgment of non-infringement of the three patents which Waymo just dismissed. In that motion, the N.D. Cal. judge noted that the patents claim a LIDAR device requiring a single, common lens for both transmitting and receiving light. Uber’s Fuji LIDAR design, however, contains two optical cavities, not a single lens. Uber’s Spider device, which relied on a single, common lens, was abandoned in October 2016 “because of the complexities of the design, the anticipated difficulty of scaling the manufacturing of the design, and its large size, heavy weight, and high power requirement,” the motion reads. “As Uber never built all of the components needed for a functional prototype, much less a complete LiDAR device, Spider was never made, used, sold, offered for sale, or imported… Uber cannot infringe by merely designing a device that does not and has never existed. Waymo cannot show an act of infringement, and summary judgment should therefore be granted.”
As other media reporting on the case between Waymo and Uber have noted, the order to dismiss patent claims dismissed three of the four patents asserted against Uber and it’s not clear from the recent order that the fourth patent has been dismissed. That would be U.S. Patent No. 9368936, titled Laser Diode Firing System. It claims an apparatus with a capacitor that charges its voltage level in response to a signal that a transistor is off and then discharging voltage to produce a pulse of light in response to a signal that the transistor is on. The resulting laser diode firing circuit helps a LIDAR device estimate a three-dimensional of a reflective object relative to the LIDAR device.
As of this writing, the most recent of the 843 documents filed in the case is an administrative motion to file under seal by Otto Trucking, the self-driving truck start-up created by Levandowski after leaving Waymo; Uber bought Otto in August 2016 in a deal that may have reached $680 million according to a report from Reuters. In the motion to file under seal, Otto is requesting the court to allow it to file a declaration with redactions of information with Waymo has designated as being highly confidential and for attorney’s eyes only. Otto’s filing also notes that the redactions involve confidential information on the company’s business agreements and corporate structure that could help competitors if it was made publicly available.