The Spectator Who Threw a Wrench in the Waymo/Uber Lawsuit
Eric Swildens knows how damaging intellectual property trials can be. In 2002, Speedera Networks, the content delivery network he cofounded, was sued for patent infringement and trade secrets violation by Akamai. “It was trial by fire,” says the 50-year-old engineer. “I learned a bunch of stuff I didn’t necessarily want to learn.”
After a three-year battle in which he spent up to $1000 an hour on lawyers, Swildens ended up selling Speedera at a discount to Akamai for $130 million.
The experience left Swildens with a working knowledge of intellectual property battles in the tech world, and a lingering soft spot for others facing hefty patent claims. So when he heard in February that the world’s second-most valuable company, Alphabet, was launching a legal broadside at Uber’s self-driving car technology, he put himself in then-CEO Travis Kalanick’s shoes: “I saw a larger competitor attacking a smaller competitor…and became curious about the patents involved.”
In its most dramatic allegations, Waymo is accusing engineer Anthony Levandowski of taking over 14,000 technical trade secrets to Uber. But the company also claimed that Uber’s laser-ranging lidar devices infringed four of Waymo’s patents.
“Waymo developed its patented inventions…at great expense, and through years of painstaking research, experimentation, and trial and error,” the complaint read. “If [Uber is] not enjoined from their infringement and misappropriation, they will cause severe and irreparable harm to Waymo.”
But Swildens had a suspicion. He dug into the history of Waymo’s lidars, and came to the conclusion that Waymo’s key patent should never have been granted at all. He asked the US Patent and Trademark Office (USPTO) to look into its validity, and in early September, the USPTO granted that request. Days later, Waymo abruptly dismissed its patent claim without explanation. The USPTO examiners may still invalidate that patent, and if that happens, Waymo could find itself embroiled in another multi-billion-dollar self-driving car lawsuit—this time as a defendant.
Prosecuting a patent in a lawsuit is a risky business. Patents undergo intense scrutiny during a trial, where many are shown to be poorly written, inapplicable, or even to have been granted in error. But Waymo thought it had a slam dunk for a big patent payout. Public records seemed to show Uber using its technology, and an email from a supplier contained an Uber circuit board almost identical to its own lidars.
As the legal discovery process unfolded, however, Waymo realized that its original complaint might have gone too far. It turned out that three of its four patent claims applied only to an outdated lidar, codenamed Spider, that Uber was no longer developing. When in early July the ride-sharing company promised to abandon the Spider design and never revive it, Waymo dropped those claims.
But one claim remained, related to a patent nicknamed 936. The 936 patent describes a laser diode firing system that generates the pulses of light a lidar uses to build a 3D picture of the world around it. Waymo believed that just such a circuit was present in Uber’s current generation of lidar, codenamed Fuji. But when Swildens looked it over, he was surprised by how basic the firing system looked.
“You’re talking about a capacitor, a laser diode, a transistor, an inductor, and some other diodes,” Swildens tells me from his home in Los Altos Hills, near Mountain View. “It’s a very simple circuit. When I initially saw it, I couldn’t imagine the circuit didn’t exist prior to this patent.”
In mid-July, he started looking for places where that circuit might have been described previously. If an invention claimed in a patent can be shown to have existed or been described previously, it is called “prior art” and generally invalidates the patent. Prior art can be other patents, products offered for sale, or even books. “I was ready to give up at any time,” he says. “If it seemed to pan out as some super invention, I’d have quit working on it.”
But he did not have to look far. Right on the front page of the 936 patent was a citation for another patent called High Definition Lidar System, filed in 2011 by David Hall. David Hall is the founder of Velodyne, the company that built the lidar on Google’s first self-driving car and that still makes the vast majority of automotive lidars today.
Patent applications cite earlier patents to show how they differ from them. For 936, the original USPTO examiner noted, “The cited prior art…does not teach or suggest the use of an inductor.” However, Swildens noticed that Hall’s patent does in fact mention inductors several times, and describes a circuit that operates in the same manner as the one in 936. Swildens even modeled both circuits in simulation software to double-check his calculations. (David Hall declined to speak to Swildens or to Backchannel for this story).
Then Swildens found another potential weakness. The inventors of 936, including Pierre-Yves Droz, who worked with Anthony Levandowski for many years, also claimed a novel gallium nitride field effect transistor in their circuit. But when Swildens looked into this, he found a book published in 2012—the year before Droz filed 936—that explained how gallium nitride (GaN) transistors could be used in a wide variety of circuits.
He even called up the book’s author, Alex Lidow, to confirm that it had been published well before 936 had been written. Lidow is CEO of Efficient Power Conversion, a company that aims to replace the silicon in power, analog, and digital applications with its gallium technologies.
“Velodyne came to us very early on in 2011 to talk about using our GaN devices in lidar systems,” Lidow told Backchannel. “We now have relationships with all [the lidar manufacturers]. Most of it is under NDA so I can’t talk specifics other than to say they all use our GaN devices.”
Perhaps most damning, Swildens found a reference to a similar firing circuit as far back as 1996, in a patent filed by an engineer working for Leica Geosystems, a Swiss mapping technology company. Because that patent is now over 20 years old, anything it describes is likely now in the public domain, free for anyone to build without fear of litigation.
“In my opinion, the 936 patent shouldn’t have been filed in the first place,” says Swildens. “The whole thing should now be thrown out, never to be seen again.”
But what to do next? Swildens was surprised that Uber had not filed its own re-examination request of the 936 patent and saw time ticking away toward the case’s initial October trial deadline. (It was subsequently delayed to early December and has been delayed again until February 5.) So he took the unusual step of challenging the 936 patent himself, filing what is called an ex-parte reexamination request. He gathered the prior art he had discovered, completed reams of paperwork, and pulled together his detailed arguments into a 101-page document that he filed with the USPTO on August 1. “I’m proud of my work. There’s no fluff in there,” he says.
He then wrote a $6,000 personal check for the reexamination fee. Swildens would not see this money again, whether or not his request was successful. “It’s definitely not a drop in the bucket for me,” he says. “But when I do something, I like to do it properly.”
Proper or not, the request shocked Waymo’s lawyers, who were not expecting an attack from someone completely unconnected to the case. “Ex parte re-exams have become relatively rare,” says Brian Love, co-director of the High Tech Law Institute at the Santa Clara University School of Law. “Particularly so for a person off the street, as competently filing a request can cost $50,000.”
“I’ve never heard of anyone doing that,” agrees Alex Lidow. “It’s really crazy.” Swildens insists that he has not been paid by or even been in communication with either side during the process—although not for want of trying. After Swildens filed his request with the USPTO and sent a copy to Waymo, he thought Uber should have one also. He visited two of the company’s buildings in San Francisco before being directed to its headquarters, where he was met with skepticism by a security guard.
“I explained that I had filed an ex parte reexamination on my own and Waymo had had it for two weeks already and it didn’t seem fair that Uber didn’t have it, given it was going to trial,” explains Swildens. “But I felt the guy thought I was some crazy person who just came in off the street.”
Uber did not immediately respond to a request for comment on this story. Meanwhile, the company continued to treat the 936 patent as a threat. On August 15, Uber submitted a proposal to redesign Fuji to avoid infringing on the 936 patent, and asked the court for a summary judgement of non-infringement.
Waymo was not convinced. On August 24, it filed a document that said Uber’s request for summary judgment on the 936 patent was “meritless” and called its motion “futile.” Even as late as September 12, Waymo was saying that Uber had not implemented its design-around and was continuing to use the infringing Fuji design. “Waymo is not obligated to take Uber at its word [and] the parties should be permitted to present the evidence at trial,” read one of its motions.
But the very next day, Waymo dropped all of its claims relating to the 936, without comment. Each party has its own explanation as to why. Waymo now tells Backchannel that backroom negotiations with Uber produced assurances that the company would not infringe the patent in the future. Yet Uber, in a filing days later, claimed that “Waymo’s patent claims were a complete misfire”—in other words, that it had demonstrated its hands were clean. Swildens, naturally, thinks his reexamination request played a role.
He notes that USPTO had a phone interview with Waymo’s lawyers a few days before, on September 8, at which the examiners presumably told Waymo that a reexamination of the 936 would be going ahead. If the reexamination started while the patent was being actively litigated, Uber and the court would have to be informed.
“I believe that not only does my request show that Waymo’s claims were not their invention, it shows that the circuit was in Velodyne’s earlier patent – and may even have existed prior to that,” he says. “It was a mess and wouldn’t look good for them.”
Two days later, on September 15, the USPTO formally ordered a re-examination of the 936 patent. According to the latest statistics from the USPTO, such examinations normally take around two years and result in a patent’s claims being changed or cancelled around 80 percent of the time.
By that time, the Uber lawsuit should be ancient history. And if Swildens’ analyses hold up and 936 gets revoked, Waymo may find itself facing a new threat—this time for infringing on Velodyne’s turf. But Swildens says his involvement is done. “One of the reasons I filed this is that it’s a funny story, with great engineers and fascinating characters fighting a pitched battle. When something interesting presents itself in life, I see where it leads.”