A US federal judge has ordered Uber to bar its top self-driving car engineer from any work on lidar and to return stolen files to Google's self-driving car unit, Waymo.

Today's order (PDF) by US District Judge William Alsup demands Uber do "whatever it can to ensure that its employees return 14,000-plus pilfered files to their rightful owner." The files must be returned by May 31. The order was granted last week but was just made public in an unsealed document this morning.

US District Judge William Alsup found that Uber "likely knew or at least should have known" that the man it hired as its top self-driving car engineer, Anthony Levandowski, took and kept more than 14,000 Waymo files. Those files "likely contain at least some trade secrets," making some "provisional relief" for Waymo appropriate.

Levandowski has previously asserted his Fifth Amendment rights with respect to his possession of the files.

"If Uber were to threaten Levandowski with termination for noncompliance, that threat would be backed up by only Uber’s power as a private employer, and Levandowski would remain free to forfeit his private employment to preserve his Fifth Amendment privilege," Alsup wrote.

Several factors limit the amount of relief Waymo might receive. First of all, in the judge's view, not all of the 121 elements that Waymo defines as "trade secrets" are really trade secrets. Additionally, the judge has slapped aside Waymo's patent infringement accusations as "meritless."

Resignations

Waymo and Uber compete in the self-driving car industry, and both are building custom versions of a critical technology called "lidar," or Light Detection and Ranging; that's the laser-powered system that lets self-driving cars "see" their surroundings. Today's order shows the most detailed timeline yet of how Levandowski left Waymo, founded his own company, and sold it to Uber for $680 million.

In the summer of 2015, Levandowski told co-worker Pierre Yves Droz that he was interested in creating a new self-driving car startup and that he had already spoken to an Uber executive who would be interested in "buying the team responsible for Waymo's LiDAR," Alsup writes.

On December 3, 2015, Levandowski searched Waymo's intranet for the terms "chauffeur svn login" and "chauffeur svn eee setup." Chauffeur was at the time Google's codename for its self-driving car project, and SVN referred to a "password-protected repository of design files, schematics, and other confidential information." Waymo kept a regularly audited list of authorized users for the SVN repository, which required special software called TortoiseSVN to access.

On December 11, Levandowski put TortoiseSVN on his work laptop and downloaded more than 14,000 files from the repository. It was 9.7 GB in all, including 2 GB of lidar-related data. On December 14, he attached a "portable data transfer device" to his work laptop for about eight hours. Four days later, he reformatted his work laptop and wiped it clean.

On January 5, Levandowski told his co-worker Droz that he would "replicate" Waymo's lidar at his new company. On January 12 and 13, e-mails show he was negotiating with Uber executives over a document called "NewCo Milestones v5" and what his new company might get purchased for.

On January 27, he quit his job at Waymo without prior notice. Levandowski formed Otto Trucking on February 1.

By March, Uber was preparing a "due diligence" report about a possible purchase of Otto, and Levandowski and Uber signed a joint defense agreement in April.

"In other words, it seems Uber performed specialized 'due diligence' on Levandowski with an eye toward jointly defending against potential intellectual property litigation with Waymo as a result of his move to Uber," wrote Alsup.

During the summer of 2016, two other Waymo employees, Sameer Kshirsagar and Radu Raduta, used corporate account credentials to export documents from Google Drive. The order doesn't state what the importance of those documents is, but both Kshirsagar and Raduta left Waymo to join Otto in late July. Kshirsagar has signed a sworn statement saying that he did not take any copies of documents with him when he left Waymo and that these files were exported in the context of doing his job at Waymo.

In any case, Waymo got suspicious and investigated the circumstances of the numerous employee departures. A Google forensic security engineer discovered the downloading in October 2016. In February, Waymo sued Uber, alleging trade secret theft and patent infringement.

Suspicions

Uber doesn't deny that Levandowski took the files, or that "Uber lured him with the possibility of acquisition as soon as (and before) he left Waymo," or that the company anticipated litigation with Waymo as a result of the move, Alsup notes. And Uber hasn't produced an offer letter or other document showing that it took "prophylactic steps" to prevent Levandowski from bringing in any intellectual property or confidential information from other sources.

Instead, Uber lawyers have pounded home the fact that the massive amount of discovery done thus far hasn't found any of the 14,000 files on Uber servers.

"Defendants have... presented an 'independent development' narrative in which they developed their own LiDAR technology without using any confidential information from Waymo," writes Alsup. "That narrative, however, studiously omitted any inquiry into Levandowski's work, essentially erasing him from the history of Uber's self-driving car development."

Uber has paid Levandowski "a tremendous amount of money and positioned him at the forefront of its self-driving car efforts," yet is silent on what he has been doing to earn those rewards. And Uber's promises that it hasn't touched the stolen documents do not comfort Judge Alsup.

"It remains entirely possible that Uber knowingly left Levandowski free to keep that treasure trove of files as handy as he wished (so long as he kept it on his own personal devices), and that Uber willfully refused to tell Levandowski to return the treasure trove to its rightful owner," he concludes.

While Waymo overstates its case, Alsup says that "at least some information from those files, if not the files themselves, [have] seeped into Uber's own LiDAR development efforts," and at least some of the files qualify as trade secrets. And as far as the record shows, Levandowski remains in possession of the files. "Misuse of that treasure trove remains an ever-present danger wholly at his whim," writes Alsup.

Alsup also says that Waymo overreached by asserting "supposed trade secrets" that really weren't and "moving the target as discovery and briefing progressed." The portion of the order dealing with trade secrets is heavily redacted, so it's hard to know exactly which of Waymo's 121 asserted trade secrets Alsup took issue with.

Orders

First off, the order prevents Levandowski from working on anything related to lidar—a step that Uber recently took on its own. It also orders anyone at Uber to stop using any of the downloaded materials and to return any copies by May 31.

The order also demands Uber conduct a "thorough investigation" and list every person "who has seen or heard any part of the downloaded materials" and submit that accounting under oath. Uber "must interview personnel with particular focus on anyone who has communicated with Anthony Levandowski on the subject of LiDAR." The accounting of any use of Waymo's downloaded files must be submitted by June 23.

The judge also wants to see a "complete and chronologically organized log of all oral and written communications" in which Levandowski even mentions lidar. The order grants additional discovery to Waymo to ensure compliance, including seven additional depositions and allowing Waymo's lawyer and one expert to inspect Uber's work on lidar, including "schematics, work orders, source code, notes, and emails."

The order doesn't give Waymo everything it asked for. Alsup doesn't make an "adverse inference" because Levandowski pleaded the Fifth Amendment, in part because he doesn't think it's necessary. And, he says that the patent portions of Waymo's lawsuit "are too weak to support any relief."

Waymo has accused Uber of infringing US Patent Nos. 8,836,922 and 9,285,464, lidar-related patents that describe a system using a single, common lens to transmit and receive beams. Uber's most recent lidar system, codenamed "Fuji," doesn't use a common-lens design. An earlier Uber model called "Spider" never evolved into a working prototype.

"Competition should be fueled by innovation in the labs and on the roads, not through unlawful actions," said a Waymo spokesperson, reacting to today's order via e-mail. "We welcome the order to prohibit Uber’s use of stolen documents containing trade secrets developed by Waymo through years of research, and to formally bar Mr Levandowski from working on the technology. The court has also granted Waymo expedited discovery and we will use this to further protect our work and hold Uber fully responsible for its misconduct."

"We are pleased with the court's ruling that Uber can continue building and utilizing all of its self-driving technology, including our innovation around LiDAR," said an Uber spokesperson in an e-mailed statement. "We look forward to moving toward trial and continuing to demonstrate that our technology has been built independently from the ground up."

More on Waymo v. Uber:

On February 23, Google's Waymo division filed a lawsuit claiming that Uber's self-driving car chief, Anthony Levandowski, illegally downloaded 14,000 files when he worked at Google.

On March 29, during a closed-door hearing, Levandowski's lawyer said his client would plead the Fifth to avoid testifying about documents that he may have.

On April 3, Google accused Levandowski of creating "competing side businesses," even while he earned a reported $120 million from Google.

On April 4, Levandowski filed a public motion invoking his 5th Amendment rights.

On April 5, US District Judge William Alsup insisted that Uber search harder for the 14,000 allegedly stolen files.

On April 6, Alsup said he would likely rule against Levandowski on the 5th Amendment issue and told him to prepare an appeal.

On April 25, an appeals court ruled against Levandowski, upholding Alsup's decision.

On April 27, Uber lawyers asked to move the trade secret case into arbitration.

On May 3, the two companies argued over whether Uber should be hit with a court order barring it from working on self-driving cars.