Michael A. Jacobs

It was set to be a battle of titans, pitting Silicon Valley’s biggest names – Alphabet Inc.-owned Google and Uber Technologies Inc. – against each other in the race towards the future of driverless cars.

Jacobs, a partner at Morrison & Foerster ,was in the thick of it defending Uber, accused by Alphabet Inc. subsidiary Waymo LLC of stealing trade secrets by hiring former employee Anthony Levandowski.

“We knew that Uber’s LiDAR design was dramatically different from Waymo’s,” Jacobs said in a recent interview, discussing the crucial technology that makes automated driving possible.

He and his legal team prepared a defense aimed at proving that similarities between the companies’ technology were happenstance. But what was shaping out to be a highly-watched and equally unusual trade secrets battle ended five days into trial when the parties settled, agreeing that Waymo would get a little over 3 percent of Uber’s equity — around $245 million. Waymo LLC v. Uber Technologies Inc. et al., 17-CV00939 (N.D. Cal., filed Feb. 23, 2017).

“Most importantly, the settlement preserves Uber’s independent autonomous vehicles program,” Jacobs said.

The litigator became interested in intellectual property work early on in his career.

“As a young associate, I was drafted onto a large computer software dispute,” he remembered. “That seemed to be my calling. I’ve always been a bit of a geek. I enjoy science and technology and the challenge of litigating cases of complexity to lay judges and juries.”

Among his big wins in the last year was a $32 million royalty award. Jacobs and a legal team helped secure the win for Washington University. U.S. District Judge Joseph F. Bataillon concluded the University of Wisconsin bilked Jacobs’ client out of nearly $32 million in licensing profits from a co-owned patent for a medication for patients who use kidney dialysis. Washington University v. Wisconsin Alumni Research Foundation, 13-CV02091 (D. Del., filed Dec. 26, 2013)

“It’s been such a roller coaster,” Jacobs said about the litigation, couching it as a debate over how universities that share intellectual property should interact. “This case says, ‘Be decent with each other.’”

Next, Jacobs is turning his efforts towards an attorney fee dispute in a non-infringement suit brought against client Genentech Inc. Jacobs successfully urged U.S. District Judge Beth L. Freeman of San Jose to rule the case as meritless and find the lawsuit “exceptional.” Phigenix Inc. v. Genentech Inc., 15-CV01238 (N.D. Cal., filed March 17, 2015)

— Nicolas Sonnenburg