Waymo chief on driverless car IP: ‘Prepare for all outcomes’

Waymo assistant general counsel Van Nguy has experienced a lot of disruption in her life. When she was a child, she and her family were refugees who had left Vietnam to escape the Second Indochina War, before immigrating to the US. After that, Nguy grew up in California, where she still lives.

“Having escaped a war zone, having everything taken away from you and having to rebuild it from the ground up gives you a different perspective of what's important,” she tells Managing IP in an exclusive interview.

“I really appreciate working in a place like Waymo as a result of that, where we are developing a transformational technology but still always thinking about safety and people.”

And indeed, in a good way, her life is still very much consumed by disruption. Nguy, who is 43 and based in the Bay Area’s Mountain View, leads Waymo’s intellectual property team, which handles patent, copyright and trademark matters for perhaps the most disruptive autonomous vehicle (AV) business in the world.

Her role involves managing the biggest AV patent portfolio in the US. According to a report from patent analytics company Dolcera in December 2019, Waymo has more level four-to-five AV patents (261) and those between level two and three (224) than any other company.

Because the driverless car industry is still very much in its infancy, it is in flux in terms of IP. AV companies are constantly looking at potential brand identities and which technologies they want to use and pursue.

Nguy’s job, as a result, is essentially to secure the IP that gives Waymo as many options as possible and allows it to be flexible.

She explains that not only does the AV firm need to monitor evolving safety needs and requirements, it also has to be prepared for how the industry might have to adapt to changing litigation and licensing needs.

“As far as IP goes, my goal is to make sure that we support the business and provide it with the options to help them proceed in this really niche industry,” she says. “I think Waymo is seen as a leader in the way it sticks to a step-by-step approach.

“Sometimes you'll hear from other companies that they’re pulling back on their plans. But we've always said AVs are a safety-critical technology. Driverless cars are a challenging and social technology, and people need to be comfortable with them.

“There are also still a lot of questions surrounding where the industry is going. We’re collaborating with other folks – and in that respect we see ourselves as enablers, not disruptors – and also looking out for copycats.

“We must prepare for all outcomes and have all options available to us.”

She adds that this uncertainty makes for a very exciting job. Prior to moving to Waymo three years ago, Nguy worked for Google (which, like Waymo, is an Alphabet subsidiary) as the head of portfolio development, and at IBM as a senior IP attorney before that.

While those jobs were great, she says, they didn’t offer the same thrill as her current role, where she helps the business plan for different scenarios and supports said outcomes, whether that be filing counter petitions against IP attackers or positioning the business to engage in meaningful partnerships.

Nguy says she regularly relies on external counsel, whom she sees as partners rather than simply as legal services providers, to help her and her team achieve this goal of increased IP flexibility. She adds that the biggest contribution external counsel can make to a driverless car strategy is adding different views and experiences to the mix to help companies prepare for all scenarios.

“We take on all their advice when settling on a strategy,” she says.

“We also want to work with counsel who know what we care about. They have to be like our in-house counsel: seasoned and experienced, but also creative and business minded. That is our criteria for all our outside counsel.”

Well, because I used to oversee Google’s portfolio, which contained something like 50,000 assets, this feels very manageable. Also I came from IBM before that, and they have a huge portfolio.

The work is very manageable, partly because we have such great insight into our individual assets. Our portfolio lead has been with the project since nearly the beginning, and she directed a lot of the prosecution herself. And so we have an intimate knowledge of our assets.

Also, we also started building our portfolio with the view of obtaining high-quality and efficient patents at the get-go. We are a sort of spin-off company and try to be good stewards for our investors, and we try to operate more like a start-up in that respect.

Most of our portfolio is organic. So unlike Google, which has purchased patents in the past such as the Motorola portfolio, many of which wouldn’t have been applicable to their business, all our patents relate to what we do.

We want to make sure we establish a defensive position because we know that as a leader in the AV space that we may be a target for litigation, whether or not it is meritorious.

A lot of car companies are looking at the smartphone wars, and we're really concerned about that. Coming out of Google, and a lot of the team came from there, we have lot of familiarity with what was happening in that space.

We also have an idea of how we might want to position ourselves in the future – whether it's defensively or in a creative way that positions the company in the best way possible. That positioning might include figuring out whether, in some situations, people are trying to get an unfair advantage. We’ve been workingon this for 10 years and are well positioned to make sure that everyone competes fairly.

A company might want to keep more things as trade secrets early on. But once you start to launch commercial products, your products are going to be out there.

You have to keep that in mind when you think about the combination of a trade secret and patent strategy along with copyright and other things. A really strong IP strategy keeps in mind how the industry is changing and moving and what the best move for the business is in both the near and long term.

You have to take into account when things might be revealed during the natural course of the business. You can have the best trade secret programme but never release the product you’re keeping confidential, and you should ask whether it makes sense to keep something as a secret that you never released.

A good trade secret programme should take into account the business, its roadmap and timeline, and potential risks for disclosure.

Security is also important. We are lucky that we have support and use a lot of Alphabet infrastructure, and they have great security. We have the benefit there of operating like a start-up, but with the backing of a large company. So unlike other start-ups, we have a lot of that security in place already.

Waymo has measures in place to maintain its trade secrets. As in Waymo v Uber, we will continue to protect our hard-earned IP as we build the World's Most Experienced Driver.

We keep all of our IP under one roof, which allows us to provide this holistic IP strategy. So we don't think of patents, copyright, trade secrets and trademarks separately. That way of thinking gives us an advantage that we maybe have over some other traditional organisations.

When we do something like release an open dataset, for example, we are able to think about it across the whole IP spectrum, which is part of the reason for the strength in our IP position in this space.