DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

MICHAEL A. JACOBS (CA SBN 111664)

MJacobs@mofo.com 

ARTURO J. GONZÁLEZ (CA SBN 121490) 

AGonzalez@mofo.com 

ERIC A. TATE (CA SBN 178719) 

ETate@mofo.com 

RUDY Y. KIM (CA SBN 199426) 

RKim@mofo.com 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Telephone: 415.268.7000 

Facsimile: 415.268.7522 

KAREN L. DUNN (Pro Hac Vice) 

kdunn@bsfllp.com 

HAMISH P.M. HUME (Pro Hac Vice) 

hhume@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington DC 20005 

Telephone: 202.237.2727 

Facsimile: 202.237.6131 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. and 

OTTOMOTTO LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v. 

UBER TECHNOLOGIES, INC.; 

OTTOMOTTO LLC; OTTO TRUCKING LLC, 

Defendants. 

Case No. 3:17-cv-00939-WHA

DEFENDANTS UBER 

TECHNOLOGIES, INC. AND, 

OTTOMOTTO LLC’S OPPOSITION 

TO MOTION TO COMPEL 

Date: June 8, 2017 

Time: 10:00 a.m. 

Ctrm: F, 15th Floor 

Judge: Hon. Jacqueline Scott Corley 

Trial Date: October 2, 2017 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 1 of 32
TABLE OF CONTENTS 

Page 

DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA i

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

I. INTRODUCTION .............................................................................................................. 1

II. BACKGROUND ................................................................................................................ 2

III. ARGUMENT ...................................................................................................................... 4

A. It is Uncontested that The Report and Six of its Exhibits Are Covered By 

The Attorney-Client Privilege. ................................................................................ 4

1. The Report Was Created To Facilitate The Provision Of Legal 

Advice. ........................................................................................................ 5

B. The Report and its Exhibits are Quintessential Protected Work Product. .............. 6

1. The Parties Reasonably Anticipated Possible Litigation With 

Google. ........................................................................................................ 7

2. The Report and its Exhibits Are Protected Opinion Work Product. ........... 9

3. Waymo’s Arguments That the Work Product Doctrine Is 

Inapplicable Fail. ....................................................................................... 10

C. The Report And Its Exhibits Are Also Protected Under The Common 

Interest Doctrine. ................................................................................................... 13

D. The Crime-Fraud Exception Does Not Apply. ..................................................... 17

E. Uber’s Privilege Log Complies with the Federal Rules and the Court’s 

Standing Order ...................................................................................................... 20

F. The Court Should Reject Waymo’s Substantial Need Argument. ........................ 22

G. Additional Discovery Is Unnecessary ................................................................... 24

IV. CONCLUSION ................................................................................................................. 25

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 2 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA ii

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Cmty. Ass’n for Restoration of the Env’t, Inc. v. COW Palace, LLC, 

No. 13-CV-3016-TOR, 2014 WL 11514516 (E.D. Wash. Sept. 8, 2014) ................................10 

Ellis v. J.P. Morgan Chase & Co., 

No. 12-CV-03897-YGR (JCS), 2014 WL 1510884 (N.D. Cal. Apr. 1, 2014) .........................16 

FastVDO LLC v. AT&T Mobility LLC, 

No. 16-CV-385-H (WVG), 2016 U.S. Dist. LEXIS 146373 

(S.D. Cal. Oct. 21, 2016) ...............................................................................................11, 12, 15 

Fox v. Ca. Sierra Fin. Servs., 

120 F.R.D. 520 (N.D. Cal. 1988) ................................................................................................8 

FTC v. Abbvie, Inc., 

No. CV 14-5151, 2015 U.S. Dist. LEXIS 166723 (E.D. Pa. Dec. 14, 2015) .....................14, 16 

FTC v. Lights of Am., Inc., 

No. SACV 10-1333 (E.D. Pa. Dec. 14, 2015) ....................................................................12, 13 

GenOn Mid-Atl., LLC v. Stone & Webster, Inc., 

No. 11 CIV. 1299 (HB) (FM), 2011 WL 5439046 (S.D.N.Y. Nov. 10, 2011) .........................13 

GTE Directories Serv. Corp. v. Pacific Bell Directory, 

135 F.R.D. 187 (N.D. Cal. 1991) ..............................................................................................24 

Hewlett-Packard Co. v. Bausch & Lomb, Inc., 

115 F.R.D. 308 (N.D. Cal. 1987) ....................................................................................8, 14, 16 

Hewlett-Packard Co. v. Bausch & Lomb, Inc., 

116 F.R.D. 533 (N.D. Cal. 1987) ................................................................................................6 

Holmes v. Collection Bureau of Am., Ltd., 

No. 09-02540- WHA, 2010 U.S. Dist. LEXIS 4253 (N.D. Cal. Jan. 8, 2010) 

(Alsup, J.) ....................................................................................................................1, 8, 13, 14 

Holmgren v. State Farm Mut. Auto. Ins. Co., 

976 F.2d 573 (9th Cir. 1992) ...........................................................................................9, 23, 24 

Hunt v. Blackburn, 

128 U.S. 464 (1888) ....................................................................................................................2 

In re Crazy Eddie Sec. Litig., 

No. 87 CV 0033 (EHN), 1991 WL 17287 (E.D.N.Y. Jan. 28, 1991) .......................................23 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 3 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA iii

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

In re Grand Jury Investigation, 

974 F.2d 1068 (9th Cir. 1992) ...................................................................................................17 

In re Grand Jury Proceedings, 

867 F.2d 539 (9th Cir. 1989) .....................................................................................................18 

In re Grand Jury Subpoena (Mark Torf/Torf Envtl. Mgmt.), 

357 F.3d 900 (9th Cir. 2004) ...........................................................................................7, 11, 12 

In re John Doe Corp., 

675 F.2d 482 (2d Cir. 1982) ......................................................................................................23 

In re JP Morgan Chase & Co. Securities Litigation, 

MDL No. 1783, 2007 WL 2363311 (N.D. Ill. Aug. 13, 2007) .................................................16 

In re Napster Copyright Litig., 

462 F. Supp. 2d 1060 (N.D. Cal. 2006) ....................................................................................12 

In re Napster Inc. Copyright Litig., 

479 F.3d 1078 (9th Cir. 2007) ...................................................................................................17 

In re Oracle Sec. Litig., 

No. C-01-0988 MJJ (JCS), 2005 WL 6768164 (N.D. Cal. Aug. 5, 2005) ................................24 

In re Vitamins Antitrust Litig., 

211 F.R.D. 1 (D.D.C. 2002) ......................................................................................................23 

La. Muni. Police Empls. Retirement Sys. v. Sealed Air Corp., 

253 F.R.D. 300 (D.N.J. 2008) .............................................................................................11, 12 

Laser Indus. Ltd. v. Reliant Techs., Inc., 

167 F.R.D. 417 (N.D. Cal. 1996) ........................................................................................17, 24 

Lennar Mare Island, LLC v. Steadfast Ins. Co., 

No. 2:12-CV-2182 KJM KJN, 2014 WL 1366252 (E.D. Cal. Apr. 7, 2014) .......................8, 12 

MediaTek Inc. v. Freescale Semiconductor, Inc., 

No. 4:11-cv-05341, 2013 U.S. Dist. LEXIS 147032 (N.D. Cal. Oct. 10, 2013) ....................5, 6 

Morvil Tech., LLC v. Ablation Frontiers, Inc., 

No. 10-CV-2088-BEN (BGS), 2012 WL 760603 (S.D. Cal. Mar. 8, 2012) .............................14 

Mushroom Assocs. v. Monterey Mushrooms, Inc., 

No. C-91-1092 TEH (PJH), 1992 WL 442892 (N.D. Cal. May 19, 1992) ...............................24 

Nidec Corp. v. Victor Co. of Japan, 

249 F.R.D. 575 (N.D. Cal. 2007) ..............................................................................................14 

O’Connor v. Boeing N. Am., Inc., 

216 F.R.D. 640 (C.D. Cal. 2003) ..............................................................................................24 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 4 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA iv

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Phillips v. C.R. Bard, Inc., 

290 F.R.D. 615 (D. Nev. 2013) .................................................................................................21 

Rembrandt Patent Innovations, LLC v. Apple, Inc., 

No. C14-05094 WHA, 2016 U.S. Dist. LEXIS 13749 (N.D. Cal. Feb. 4, 2016) 

(Alsup, J.) ........................................................................................................................4, 14, 15 

Doe ex rel. Rudy-Glanzer v. Glanzer, 

232 F.3d 1258 (9th Cir. 2000) ...................................................................................................19 

S.E.C. v. Brady, 

238 F.R.D. 429 (N.D. Tex. 2006) ...................................................................................9, 10, 24 

S.E.C. v. Schroeder, 

No. C07-03798 JW (HRL), 2009 WL 1125579 (N.D. Cal. Apr. 27, 2009) ...............................9 

Skynet Elect. Co. v. Flextronics Int’l, Ltd., 

No. C 12–06317 WHA, 2013 WL 6623874 (N.D. Cal. Dec. 16, 2013) ...................................18 

Sporck v. Peil, 

759 F.2d 312 (3d Cir. 1985) ................................................................................................10, 22 

Tierno v. Rite Aid Corp., 

No. C 05-02520 TEH, 2008 WL 2705089 (N.D. Cal. July 8, 2008) ....................................9, 24 

U.S. v. Bauer, 

132 F.3d 504 (9th Cir. 1997) .............................................................................................2, 4, 18 

U.S. v. Christensen, 

828 F.3d 763 (9th Cir. 2016) .......................................................................................................4 

U.S. v. de la Jara, 

973 F.2d 746 (9th Cir. 1992) .....................................................................................................18 

U.S. v. Gonzalez, 

669 F.3d 974 (2012) ....................................................................................................................8 

U.S. v. Saccoccia, 

898 F. Supp. 53 (D.R.I. 1995) ...................................................................................................20 

U.S. ex rel. Bagley v. TRW, Inc., 

212 F.R.D. 554 (C.D. Cal. 2003) ....................................................................................9, 10, 24 

Ullman-Briggs, Inc. v. Salton/Maxim Housewares, Inc., 

No. 92-c-680, 1996 WL 535083 (N.D. Ill. Sept. 17, 1996) ......................................................19 

Zamani v. Carnes, 

491 F.3d 990 (9th Cir. 2007) .......................................................................................................4 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 5 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA v

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Other Authorities 

Fed. R. Civ. P. 

26(b)(3)(A)(ii) ...........................................................................................................................22 

26(b)(3)(B) ..................................................................................................................................9 

26(b)(5)(A) ................................................................................................................................21 

26(b)(5)(A)(ii) ...........................................................................................................................20 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 6 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 1

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

I. INTRODUCTION 

On February 22, 2016, Uber Technologies, LLC (“Uber”) executed a term sheet in 

anticipation of an acquisition of two newly-formed companies, Ottomotto LLC (“Ottomotto”) and 

Otto Trucking LLC (“Otto Trucking”) (collectively “Otto”). Two of Otto’s co-founders, Anthony 

Levandowski and Lior Ron, were ex-Google employees. And competition within the 

autonomous vehicle space was intense. Litigation was a distinct possibility. Accordingly, the 

parties engaged separate counsel for the purpose of obtaining legal advice, including an 

evaluation of claims that could be brought against them in a litigation initiated by Google. The 

parties also entered into a joint defense and common interest agreement to facilitate the freeexchange of information and legal analysis—a common action to take under the circumstances. 

See Holmes v. Collection Bureau of Am., Ltd., No. 09-02540- WHA, 2010 U.S. Dist. LEXIS 

4253, at *5-6 (N.D. Cal. Jan. 8, 2010) (Alsup, J.) 

On March 4, 2016, the parties’ litigation counsel—Morrison & Foerster LLP (“MoFo”) 

for Uber and O’Melveny and Myers (“OMM”) for Otto—retained a well-known and reputable 

company, Stroz Friedberg, LLC (“Stroz”), to conduct an investigation of facts pertinent to their 

legal advice. Stroz prepared a privileged report of its findings (the “Report”) to enable MoFo and 

OMM to render legal advice, along with a number of exhibits showing its underlying 

investigatory work or selecting specific documents as relevant to the investigation. Waymo now 

seeks to compel production of this Report and its exhibits, arguing that they were not prepared in 

anticipation of litigation even though Waymo admits Google began discussions about litigation 

against Mr. Levandowski in March 2016 (the same time Stroz was retained) and against Uber in 

August 2016 (as the Stroz investigation was ongoing) and even though they filed two separate 

arbitrations against Mr. Levandowski just two months after the acquisition was announced. 

Waymo’s motion must be denied. The Report and its exhibits are protected by the 

attorney-client privilege and work product doctrine—foundational privileges that lawyers rely 

upon every day in providing legal advice to clients who may face litigation, as happened here. 

Those privileges were never waived. While Waymo argues that parties to a merger do not 

“typically” share a common interest, courts routinely recognize such an interest where parties are 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 7 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 2

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

analyzing a possible joint litigation risk. Waymo’s motion seeks to eviscerate fundamental legal 

privileges, including “the most sacred of all legally recognized privileges.” U.S. v. Bauer, 132 

F.3d 504, 510 (9th Cir. 1997); see also Hunt v. Blackburn, 128 U.S. 464, 470 (1888) (“The rule 

which places the seal of secrecy upon communications between client and attorney is founded 

upon the necessity, in the interest and administration of justice, of the aid of persons having 

knowledge of the law and skilled in its practice, which assistance can only be safely and readily 

availed of when free from the consequences or the apprehension of disclosure.”). Uber and Otto 

respectfully request that this Court not allow that to happen. 

II. BACKGROUND 

On February 22, 2016, Uber and Otto executed a term sheet setting forth the parameters of 

Uber’s potential acquisition of the newly formed companies Ottomotto and Otto Trucking. (Tate 

Decl. ¶ 5; Suhr Decl. ¶ 2.) They were founded by two ex-Google employees, Mr. Levandowski 

and Mr. Ron. (Tate Decl. ¶ 3.) Based on several factors, including the recent formation of 

Ottomotto and Otto Trucking, the fact that the founders were recent ex-Google employees and 

other ex-Google employees might be joining the venture, and the fact that the autonomous vehicle 

space is extremely competitive, Otto, its founders, and Uber all thought it was possible that 

Google would initiate some form of legal action against one or more of the parties to the 

transaction. (Id.; Suhr Decl. ¶ 5.) Consistent with the belief that there was a possibility of 

litigation by Google, Uber agreed to indemnify certain employees under certain circumstances 

regardless of whether the deal closed. (Tate Decl. ¶ 5.) In recognition of this risk, Otto, Mr. 

Levandowski, Mr. Ron, and Uber (collectively “the joint defense group”) entered into a joint 

defense and common interest agreement, so that they could jointly evaluate their legal positions 

against Google, and take steps to strengthen their defenses in the event that any investigation or 

legal action were initiated against them related to the acquisition. (Tate Decl. ¶ 7; Suhr Decl. ¶ 

6.) On February 24, 2016, the parties confirmed that agreement orally shortly after executing the 

term sheet. (Tate Decl. ¶ 7; Suhr Decl. ¶ 6.) This understanding was confirmed in an email the 

following day. (Tate Decl. ¶ 8 , Ex. 1.) On April 11, 2016, the parties memorialized their oral 

agreement in writing when they signed the Joint Defense, Common Interest, and Confidentiality 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 8 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 3

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Agreement (“JDA”). (Tate Decl. ¶ 11, Ex. 2 1 at 2 (noting that the written agreement 

memorializes the parties’ “pre-existing understanding and oral agreement.”) 

Uber retained MoFo as litigation counsel on this project. (Id. ¶¶ 2-3; Suhr Decl. ¶ 3.) 

Uber had separate deal counsel, Cooley LLP, for the underlying transaction. (Tate Decl. ¶ 2; 

Suhr Decl. ¶ 3.) Otto was represented by OMM.2 (Bentley Decl. ¶ 3.) Mr. Levandowski and Mr. 

Ron also retained separate legal counsel, Donahue Fitzgerald LLP (“Donahue”) and Levine & 

Baker LLP (“Levine”), respectively. (Gardner Decl. ¶ 2; Baker Decl. ¶ 2.) 

On March 4, 2016, MoFo and OMM, jointly retained an investigative firm, Stroz, to 

develop the facts relevant to the lawyers’ work in providing legal advice that identifies and 

evaluates legal risks and potential claims that could be developed for potential litigation by 

Google. (Tate Decl. ¶ 9; Bentley Decl. ¶ 11; Ex. 3.) Pursuant to the JDA, respective counsel for 

the joint defense group gave input as to what topics Stroz should investigate and how to 

investigate them. (Id. ¶ 15; see also Ex. 3.) The parties understood and agreed that all 

communications with, and information provided to, Stroz would be protected by the attorneyclient privilege, the common interest doctrine and/or attorney work product doctrine. (Tate Decl. 

¶ 12; Ex. 2 ¶¶ 2-3; Ex. 3 at 2.) Stroz was required to keep confidential all information developed 

through the investigation as well as all of its work product and communications with individuals 

and counsel. (Friedberg Decl. ¶¶ 6-7.) Under the Stroz engagement agreement, separate 

agreements with counsel for Mr. Levandowski, and the JDA, confidential information could only 

be disclosed to members of the joint defense group and their counsel. (Ex. 2 ¶¶ 2-3; Ex. 3 at 2; 

Friedberg Decl. ¶ 7.) 

Stroz issued its Report on August 5, 2016. (Friedberg Decl. ¶ 8.) The Report’s Appendix 

 1

 Unless otherwise noted, all citations to numbered exhibits are to those appended to the 

Tate Declaration, and all citations to lettered exhibits are to those appended to the Gonzalez 

Declaration. 

2

 In order to comply with the Court’s order that Defendants provide a “sworn record as to 

all necessary predicates,” Defendants sought a declaration from Eric Amdursky, a partner at 

OMM and counsel to Otto during the proposed transaction. (Chatterjee Decl. ¶ 3.) As detailed in 

the Chatterjee Declaration submitted herewith, OMM would not provide that declaration (in 

support of its current client, Otto Trucking) without the consent of its other current client, Google 

Inc. Waymo’s counsel refused to assist Defendants in obtaining that consent. (Id. ¶ 5 & Ex. A to 

Chatterjee Decl.) 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 9 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 4

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

of Exhibits was provided to counsel for the joint defense group on August 11, 2016 and was 

marked attorneys’ eyes only and password protected. (Id. ¶ 9; Tate Decl. ¶ 22.) Counsel at 

MoFo, OMM, Donahue, and Levine received the Report. (Tate Decl. ¶ 18.) Cooley did not 

receive the Report. (Leigh Decl. ¶ 3.) Certain in-house counsel at Uber also received a copy of 

the Report, as reflected on Uber’s privilege log. (Ex. 4; Suhr Decl. ¶ 13.) Messrs. Levandowski 

and Ron received the Report through their counsel. (Baker Decl. ¶ 17.) And, while counsel at 

MoFo, OMM, Donahue, and Levine received the Appendix of Exhibits, no in-house counsel or 

other individuals at Uber did. (Tate Decl. ¶ 22; Suhr Decl. ¶ 14.) Every person who received the 

Report and Appendix of Exhibits has kept them confidential. (Tate Decl. ¶ 19; Bentley Decl. ¶ 

17; Baker Decl. ¶¶ 16-17; Gardner Decl. ¶ 12; Suhr Decl. ¶¶ 15-16; Friedberg Decl ¶¶ 11-12.) 

III. ARGUMENT 

A. It is Uncontested that The Report and Six of its Exhibits Are Covered By The 

Attorney-Client Privilege.3

“[T]he attorney-client privilege is, perhaps, the most sacred of all legally recognized 

privileges, and its preservation is essential to the just and orderly operation of our legal 

system. . . .” Bauer, 132 F.3d at 510. “Privilege is generally demonstrated by satisfying an eightpart test: (1) Where legal advice of any kind is sought (2) from a professional legal adviser in his 

capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by 

the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the 

legal adviser, (8) unless the protection be waived.” Rembrandt Patent Innovations, LLC v. Apple, 

Inc., No. C14-05094 WHA, 2016 U.S. Dist. LEXIS 13749, at *12 (N.D. Cal. Feb. 4, 2016) 

(Alsup, J.) (quoting U.S. v. Ruehle, 583 F.3d 600, 607 (9th Cir. 2009)). Communications 

between a client and an attorney’s agent or representative are also covered by the privilege—an 

uncontroversial principle not disputed here. U.S. v. Christensen, 828 F.3d 763, 802 (9th Cir. 

 3

 Waymo does not contest that the Report and some of its exhibits are protected by the 

attorney-client privilege. Waymo has thus waived this issue as to those documents and cannot 

argue for production based on any alleged inapplicability of the attorney-client privilege in its 

reply brief. See Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007) (affirming district court’s 

finding of waiver when argument was not raised until the reply brief). Waymo’s motion as to all 

entries subject to the attorney client privilege—which includes the Report—should be denied on 

this basis alone. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 10 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 5

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

2016) (finding privilege covered communications between a lawyer and a private investigator). 

Here, the Report and several of its exhibits4 reflect information provided in confidence to an 

agent of counsel, at the direction of counsel, for the purpose of obtaining legal advice from OMM 

and MoFo and is therefore covered by the privilege. 

1. The Report Was Created To Facilitate The Provision Of Legal Advice. 

Waymo does not dispute that the Report was created to facilitate the rendering of legal 

advice to Uber and Otto. (Tate Decl. ¶ 9; Friedberg Decl. ¶ 3; Bentley Decl. ¶ 11; Ex. 3.) The 

firms’ engagement letter with Stroz expressly states that: 

The purpose of the Engagement is to enable Uber, Otto, Anthony 

Levandowski and Lior Ron (who are parties to a Joint Defense and 

Common Interest Agreement), along with their respective counsel, 

to understand certain factual matters potentially related to potential 

litigation[.] 

(Ex. 3 at 2; see also Tate Decl. ¶ 13.) 

This Court’s analysis in MediaTek instructive. There, this Court determined that a final 

report “regarding various patents” was not covered by the attorney-client privilege because: (1) 

there was no evidence that attorneys ever received or reviewed the report, (2) the context in which 

it was prepared indicated a business purpose, (3) there was nothing in the language of the report 

that “even hint[ed]” it was to be relied on by counsel, and (4) the confidentiality agreement did 

not reference that the report was intended to be covered by the attorney-client privilege. 

MediaTek Inc. v. Freescale Semiconductor, Inc., No. 4:11-cv-05341, 2013 U.S. Dist. LEXIS 

147032, at *10-18 (N.D. Cal. Oct. 10, 2013). These same four factors compel the conclusion that 

the Report in this case is privileged because: 

 The recipients of the Report—23 out of the 37 people who received it— 

were lawyers. (Ex. 4 at 17.) The only non-lawyers to receive the Report, aside 

from the individuals at Stroz who compiled the Report and three members of 

MoFo’s legal staff, were Mr. Levandowski and Mr. Ron. (Id.) 

 4

 Defendants have claimed attorney client privilege over seven entries (1-6 and 11) on the 

privilege log. Defendants have claimed work product privilege and joint interest privilege over 

every entry on the privilege log. (Ex. 4.) 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 11 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 6

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

 The primary purpose of the Report was to conduct an investigation, gather 

particular facts, synthesize information, and render expert opinions about those 

facts in such fashion that would enable OMM and MoFo to render legal advice to 

their clients. Consistent with this purpose, OMM and MoFo engaged Stroz after

they had signed a term sheet for the acquisition. Counsel for all the parties 

directed Stroz’ work. (Tate Decl. ¶¶ 9, 12; Bentley Decl. ¶ 11.) 

 The Court’s in camera review of the Report will confirm that, unlike in MediaTek, 

the Report was created for the express purpose of facilitating the rendering of legal 

advice to OMM and MoFo’s clients. (Id.)

 The Stroz Engagement Letter expressly provides that “all of its work product, and 

all information and data received [from the joint defense parties] are covered by 

the common interest, attorney-client privilege and/or attorney work product 

doctrine.” (Ex. 3 at 2.) 

 In addition, the Report and the underlying communications were made and held in the 

strictest of confidence. As documented in the Stroz Engagement Letter, Stroz adhered to a 

confidentiality protocol prohibiting materials connected to the investigation from being shared or 

discussed outside of the joint defense group. (Id. at 2-3; Friedberg Decl. ¶¶ 11-12.) Likewise, the 

JDA prohibited the parties from sharing confidential information, including the Report, outside of 

the joint defense group. (Ex. 2 ¶ 3). Consistent with those agreements, the Report was not shared 

with anyone outside of Stroz, the joint defense group, and their counsel. (Tate Decl. ¶ 19; 

Bentley Decl. ¶ 17; Baker Decl. ¶¶ 16-17; Gardner Decl. ¶ 12; Suhr Decl. ¶¶ 15-16; Friedberg 

Decl ¶¶ 11-12.) 

B. The Report and its Exhibits are Quintessential Protected Work Product. 

In addition to being protected by the attorney-client privilege, the Report and its exhibits 

are quintessential attorney work product, protection of which is necessary to “preserve the vigor 

of the dialectic by creating an environment in which each lawyer feels not only free, but 

pressured, to do his own work and to make both his investigation and his evaluation of the case as 

aggressive, as thorough, and as internally frank as possible.” Hewlett-Packard Co. v. Bausch & 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 12 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 7

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Lomb, Inc., 116 F.R.D. 533, 538 (N.D. Cal. 1987). “[T]o qualify for protection against discovery 

under Rule 26(b)(3)[, the work product doctrine,] documents must have two characteristics: (1) 

they must be ‘prepared in anticipation of litigation or for trial’, and (2) they must be prepared by 

or for another party or ‘by or for that party’s representative.’” In re Grand Jury Subpoena (Mark 

Torf/Torf Envtl. Mgmt.), 357 F.3d 900, 907 (9th Cir. 2004) (citing In re Ca. Pub. Utils. Comm’n, 

892 F.2d 778, 780-81 (9th Cir. 1989)). The Report easily satisfies both; Waymo does not even 

contest the second. 

1. The Parties Reasonably Anticipated Possible Litigation With Google. 

It is ironic that in the midst of two separate arbitrations filed by Google two months after 

the acquisition was announced, as well as this separate litigation, Google strenuously argues that 

there is no way Uber, Otto, and Otto’s founders could have reasonably anticipated the possibility 

of a challenge by Google. Regardless, the facts in the record establish that Uber and Otto 

reasonably anticipated litigation would be commenced by Google. (Tate Decl. ¶ 5; Suhr Decl. ¶¶ 

5-6; 10.) Specifically, the parties’ agreements—the JDA and the Stroz Engagement Letter—

make this clear on their face. The JDA specifically notes that it is in “contemplation of potential 

... litigation.” (Ex. 2 at 1.) And the Stroz Engagement Letter states that the “purpose of the 

Engagement is to enable Uber, Otto, Anthony Levandowski and Lior Ron (who are parties to a 

Joint Defense and Common Interest Agreement), along with their respective counsel, to 

understand certain factual matters potentially related to potential litigation.” (Ex. 3 at 2.) MoFo 

was retained in January 2016 specifically to analyze litigation risk, while Uber maintained 

separate corporate counsel for the deal. (Tate Decl. ¶ 3; Suhr Decl. ¶ 3; Leigh Decl. ¶ 2.) The 

lawyers involved expressly attest that the Report was commissioned by counsel precisely because

of the possibility of litigation. (Tate Decl. ¶ 9; Bentley Decl. ¶ 11; Gardner Decl. ¶¶ 3-6; Baker 

Decl. ¶ 10; Suhr Decl. ¶ 10.) And, consistent with the belief that there was a possibility of 

litigation by Google, Uber agreed to indemnify certain employees under certain circumstances 

regardless of whether the deal closed. (Tate Decl. ¶ 5.) 

Waymo argues that Stroz was engaged and “began preparing memoranda as part of its due 

diligence ‘investigation’ before the cited common interest agreement even existed.” (Mot. 7.) 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 13 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 8

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

But it is well-settled that a joint defense agreement may be oral and may be implied from conduct 

and situation, such as attorneys exchanging confidential communications from clients who are or 

potentially may be codefendants or have common interests in litigation. U.S. v. Gonzalez, 669 

F.3d 974, 979 (2012). Here, the parties to the joint defense and common interest agreement had 

an oral agreement in place at least as of February 24, 2016—after the signing of the term sheet, 

before Stroz was engaged on March 4, 2016, and well before Stroz began preparing any 

memoranda as part of its investigation. (Tate Decl. ¶¶ 7-8; Bentley Decl. ¶ 8; Ex. 1 at 1 (email 

dated February 25, 2016 explicitly referencing the oral common interest agreement between the 

parties)). The Stroz Engagement Letter specifically references a pre-existing common interest 

agreement. (Ex. 3 at 2.) And the JDA dated April 11, 2016, notes that it memorializes the 

parties’ “pre-existing understanding and oral agreement.” (Ex. 2 at 2.) There can be no question 

that an oral joint defense and common interest agreement was in place prior to the 

commencement of Stroz’s work, that it was later memorialized in writing, and that it must be 

respected. See Holmes, 2010 U.S. Dist. LEXIS 4253, at *10-11 (recognizing oral common 

interest agreement where attorneys submit sworn declarations establishing its existence and 

emails later memorialize that agreement). 

Waymo also argues that there is no evidence that at the time the withheld documents were 

created, there was a “substantial probability” that litigation would commence. (Mot. 8.) This 

argument is inconsistent with Rule 26’s standard, which attaches protection to work product 

created in “anticipation” of litigation.5

 To satisfy the “in anticipation of litigation” requirement, 

an attorney must have “a subjective belief that litigation was a real possibility, and that belief 

must be objectively reasonable.” Lennar Mare Island, LLC v. Steadfast Ins. Co., No. 2:12-CV2182 KJM KJN, 2014 WL 1366252, at *4 (E.D. Cal. Apr. 7, 2014) (citations omitted); see also 

Hewlett-Packard Co. v. Bausch & Lomb, Inc., 115 F.R.D. 308, 310 (N.D. Cal. 1987). 

Apart from the evidence that Uber and Otto reasonably anticipated litigation in early 

 5

 It is equally true that, as stated in the Fox case cited by Waymo, “there must be more 

than a remote possibility of litigation” and that litigation need not “have already commenced” to 

trigger work product protections. Fox v. Ca. Sierra Fin. Servs., 120 F.R.D. 520, 524 (N.D. Cal. 

1988). 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 14 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 9

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

2016, which is by itself sufficient to warrant application of work product protection to the Report, 

Google and Waymo’s subsequent conduct confirms that Uber and Otto’s anticipation of litigation 

was well-founded. Specifically, Google filed two arbitrations against Mr. Levandowski in 

October 2016, just two months after Uber announced its acquisition of Otto. Moreover, Waymo 

has conceded that Google began investigating Mr. Levandowski over one year ago and 

throughout the summer of 2016—during the same time period that Stroz was conducting its 

investigation. And Waymo has admitted that Google discussed possible litigation against Mr. 

Levandowski as early as March 2016—the same month the Stroz Engagement letter was signed—

and that Google discussed possible litigation against Uber as early as August 23, 2016. (Gonzalez 

Decl. ¶¶ 2-3; Exs. A & B.) 

2. The Report and its Exhibits Are Protected Opinion Work Product. 

The Report and its Exhibits are opinion work product, a particular class of work product 

afforded “nearly absolute” protection from disclosure, U.S. ex rel. Bagley v. TRW, Inc., 212 

F.R.D. 554, 566 (C.D. Cal. 2003), because they reflect the “mental impressions, conclusions, 

opinions, or legal theories of an attorney or other representative of a party concerning the 

litigation.” Holmgren v. State Farm Mut. Auto. Ins. Co., 976 F.2d 573, 576 (9th Cir. 1992); see 

also Tierno v. Rite Aid Corp., No. C 05-02520 TEH, 2008 WL 2705089, at *4 (N.D. Cal. July 8, 

2008); Fed. R. Civ. P. 26(b)(3)(B) (the court “must protect against disclosure of the mental 

impressions, conclusions, opinions, or legal theories of a party’s attorneys or other representative 

concerning the litigation”). Stroz prepared the Report pursuant to directives from the lawyers as 

to what potential facts and theories those attorneys deemed legally significant. Stroz conducted 

its investigation, drafted the Report, and selected the exhibits based on those directives. 

(Friedberg Decl. ¶ 10; Tate Decl. ¶¶ 23-26; Gardner Decl. ¶ 6; Suhr Decl. ¶ 12; Baker Decl. ¶ 11.) 

In S.E.C. v. Brady, 238 F.R.D. 429, 442–43 (N.D. Tex. 2006), the court determined that 

an investigative report and related documents prepared by an attorney’s consultant, KPMG, were 

opinion work product because they were “suffused” with the mental impressions of the 

investigators. See also S.E.C. v. Schroeder, No. C07-03798 JW (HRL), 2009 WL 1125579, 

at *12 (N.D. Cal. Apr. 27, 2009), objections overruled, No. C 07-03798 JW, 2009 WL 1635202 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 15 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 10

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

(N.D. Cal. June 10, 2009) (protecting as opinion work product “documents related to methods for 

document review and retention, discussions regarding how to locate and interpret metadata, a 

collection of documents that LECG [forensic accounting consultant] deemed important related to 

a particular witness, and emails discussing special projects that LECG completed during the 

investigation”); Cmty. Ass’n for Restoration of the Env’t, Inc. v. COW Palace, LLC, No. 13-CV3016-TOR, 2014 WL 11514516, at *3 (E.D. Wash. Sept. 8, 2014) (holding that production of 

report by environmental consultant hired to conduct a scientific investigation into soil samples 

“would necessarily reveal the mental processes behind the litigation strategy”). The same is true 

here; the Report and exhibits inescapably reveal the mental impressions and processes of the 

investigators and attorneys. 

In addition, while certain of the exhibits are underlying memoranda prepared by Stroz, 

others are files selected by Stroz out of a much larger group of files to be exhibits. (Tate Decl. ¶ 

26; Friedberg Decl. ¶ 10.) “[T]he selection and compilation of documents . . . falls within the 

highly-protected category of opinion work product” because the selection of documents out of 

thousands necessarily “reveal[s] important aspects of [one’s] understanding of the case.” Sporck 

v. Peil, 759 F.2d 312, 316 (3d Cir. 1985); see also Brady, 238 F.R.D. at 442–43 (finding that the 

documents reviewed and relied upon for the report were opinion work product because they were 

specifically selected by the investigators to create the report). The rule applies to selections made 

by Stroz investigators. Bagley, 212 F.R.D. at 563 (“Where the selection, organization, and 

characterization of facts reveals the theories, opinions, or mental impressions of a party or the 

party’s representative, that material qualifies as opinion work product.”) (emphasis added). The 

Report and exhibits are also protected as the culmination of “the more subjective and analytical 

process of culling, organizing, and summarizing the factual information” learned through various 

document reviews and other investigative tasks. Id. at 564. 

3. Waymo’s Arguments That the Work Product Doctrine Is Inapplicable 

Fail. 

Waymo argues that the work product doctrine is not applicable because Uber “ha[s] not 

explained why the due diligence report ‘would not have been created in substantially similar form 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 16 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 11

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

but for the prospect of litigation.’” (Mot. 8.) Waymo is arguing that the Report was created for a 

business, not a litigation purpose. This is incorrect. The Report would not have existed but for 

anticipation of litigation. (Tate Decl. ¶ 9; Suhr Decl. ¶ 10.) Indeed, Uber’s authorization of the 

Stroz engagement was atypical and was done because of the litigation risks the proposed 

acquisition of Otto presented. (Suhr Decl. ¶ 10.) 

Documents prepared exclusively in anticipation for litigation, like the Report, are 

considered “single purpose” documents, which are clearly afforded work product protection. In 

re Grand Jury Subpoena, 357 F.3d at 907 (“[S]ingle purpose documents clearly pass the two-part 

test . . . and are afforded protection under Rule 26(b)(3).”). 

Even if the Report were to be classified as a “dual purpose” document—i.e., prepared for 

litigation and business purposes—it remains protected by the work product doctrine. FastVDO 

LLC v. AT&T Mobility LLC, No. 16-CV-385-H (WVG), 2016 U.S. Dist. LEXIS 146373 (S.D. 

Cal. Oct. 21, 2016), is instructive. In FastVDO, the plaintiff had acquired the at-issue patent from 

Boeing, and the defendant moved to compel production as to claim charts and an infringement 

analysis that was shared between Boeing and the plaintiff, whom the court found were parties to a 

common interest agreement. Id. at *7-8. The court denied the motion to compel, finding that the 

subject documents were prepared in anticipation of litigation because the prospect of litigation 

was discussed prior to the purchase of the asserted patent and the terms of the final purchase 

confirm the anticipation of litigation. Id. at *9. The court further found that, even if litigation 

was not the sole purpose for the creation of the documents, the totality of the circumstance 

indicated that they at minimum served a dual purpose, and that the “litigation purpose of the 

Subject Documents permeates any potential non-litigation purpose so much so that the two cannot 

be separated.” Id. at *10; see also In re Grand Jury Subpoena, 357 F.3d at 909-10 (documents 

prepared by third party, who assisted defendant in environmental cleanup, were protected work 

product “notwithstanding their dual purpose character . . . because, taking into account the facts 

surrounding their creation, their litigation purpose so permeate[d] any non-litigation purpose”); 

La. Muni. Police Empls. Retirement Sys. v. Sealed Air Corp. (“Sealed Air”), 253 F.R.D. 300, 308 

(D.N.J. 2008) (holding that diligence materials analyzing legal risk of the merger were legal in 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 17 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 12

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

nature even if they also served a business purpose). 

As in FastVDO, In re Grand Jury Subpoena, and Sealed Air, to the extent a separate 

business purpose existed for the Report, the litigation purpose permeates the Report so greatly 

that the two cannot be separated. OMM and MoFo engaged Stroz and commissioned the Report 

to gather information to aid counsel in providing legal advice in anticipation of potential litigation 

with Google. See supra at III.B.1. Thus, even if there is an ancillary business purpose to the 

Report, it nonetheless is protected work product. 

Waymo also contends that Defendants cannot meet the factual predicates for work product 

protection because they did not implement a litigation hold until October 2016. (Mot. 9.) But 

Uber was not required to issue a litigation hold at the time Stroz was engaged because the 

standard for instituting a legal hold is higher than the standard for invoking the work product 

doctrine. And the issuance of a litigation hold is just one factor that a court may consider, in 

appropriate circumstances, in determining whether an entity anticipated possible litigation. 

The work product doctrine requires “a subjective belief that litigation was a real 

possibility, and that belief must be objectively reasonable.” Lennar Mare Island, 2014 WL 

1366252, at *4. By contrast, the duty to preserve documents does not attach until litigation is 

“probable,” which has been held to mean “more than a possibility.” In re Napster Copyright 

Litig., 462 F. Supp. 2d 1060, 1068 (N.D. Cal. 2006) (quoting Hynix Semiconductor Inc. v. 

Rambus, Inc., 2006 U.S. Dist. LEXIS 30690, at *57 (N.D. Cal. 2006) (emphasis added)). 

Litigation is “probable” when an entity has received a threat of litigation—even through informal 

means such as text message or verbally. See, e.g. In re Napster Litig., 462 F. Supp. 2d at 1069. 

Simply put, a party often reasonably anticipates the possibility of litigation (thus triggering work 

product protection) long before its adversary’s statements and actions indicate that the anticipated 

litigation is in fact probable (thus triggering the duty to issue a litigation hold). 

It was not until October 28, 2016, three days after Otto publicly released video of the 

world’s first commercial delivery by a self-driving truck, that Google filed arbitrations against the 

founders of Otto. (Tate Decl. ¶ 30; Suhr Decl. ¶ 17.) That is when the need to preserve evidence 

arose. See FTC v. Lights of Am., Inc., No. SACV 10-1333 JVS (MLGx), 2012 U.S. Dist. LEXIS 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 18 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 13

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

17212, at *10-13 (C.D. Cal. Jan. 20, 2012) (finding that the initiation of an investigation does not 

necessarily require instituting a legal hold and that the need to institute a legal hold did not arise 

until the FTC decided to bring suit). Uber thus properly issued its litigation hold in November, 

2016, shortly after Google filed arbitrations against Mr. Levandowski and another employee.6 

(Suhr Decl. ¶ 17.) 

C. The Report And Its Exhibits Are Also Protected Under The Common Interest 

Doctrine. 

Uber and Otto were parties to a common interest agreement beginning at least on 

February 24, 2016. (Tate Decl. ¶¶ 6-8; Suhr Decl. ¶ 6.) Messrs. Levandowski and Ron became 

parties to that agreement shortly thereafter. (Gardner Decl. ¶ 7-10; Baker Decl. ¶¶ 5-8.) 

Disclosure of the Report and its exhibits among those parties did not waive either the attorney 

client privilege or the work product privilege that otherwise protects those documents. Waymo 

contends that the common interest doctrine does not apply here because the parties did not have a 

common legal interest. (Mot. 10.) Waymo is wrong. 

“The ‘joint-defense’ or ‘common-interest’ privilege is an extension of the attorney-client 

privilege and work-product doctrine designed to facilitate communication among joint parties 

regarding matters that are important to protect their interests in litigation.” Holmes, 2010 U.S. 

Dist. LEXIS 4253, at *5-6. It is an exception to the ordinary rule that sharing privileged 

communications with third parties waives the privilege. Id. at *6. 

Uber shared a common interest with Otto and its founders based on the anticipated 

possibility of joint defense litigation with Google. (Tate Decl. ¶¶ 3-12; Suhr Decl. ¶¶ 5-10; Baker 

Decl. ¶¶ 3-11; Gardner Decl. ¶¶ 3-10.) Counsel for Uber and Otto engaged Stroz to gather facts 

 6

 Even if the Court were to determine that Uber should have instituted a legal hold earlier, 

that finding would not be dispositive as to the whether the Report was created in anticipation of 

litigation. See, e.g., Lights of Am., Inc., 2012 U.S. Dist. LEXIS 17212, at *13 (whether the FTC 

instituted a legal hold did not “bear[] significantly on the issue of whether the FTC foresaw 

litigation); GenOn Mid-Atl., LLC v. Stone & Webster, Inc., No. 11 CIV. 1299 (HB) (FM), 2011 

WL 5439046, at *5 (S.D.N.Y. Nov. 10, 2011) (finding that whether the party anticipates litigation 

is a fact-intensive exercise and that no one factor is dispositive). Waymo provides no authority to 

support its contention that it should be dispositive—all of its purported authority (see Mot. at 9 

n.10) pertains to spoliation, which is not at issue in this motion. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 19 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 14

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

related to the risk of joint litigation with Google. The Report was shared between the common 

interest parties in furtherance of that common legal interest. (Tate Decl. ¶¶ 18-22.) Thus, 

disclosure of the Report to the common interest parties does not constitute a waiver of either the 

attorney client privilege or work product protection. See Holmes, 2010 U.S. Dist. LEXIS 4253, at 

*6 (for the common interest privilege exception to apply to communications protected by the 

attorney client privilege, the communication must be made in furtherance of the joint defense or 

legal strategy); Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 580 (N.D. Cal. 2007) (work 

product protection is only “waived where disclosure of the otherwise privileged documents is 

made to a third party, and that disclosure enables an adversary to gain access to the 

information”). 

Waymo argues that there can be no common legal interest between an acquirer and a 

potential target while the former is conducting due diligence on the latter. (Mot. 10.) But courts 

recognize that parties to a merger agreement may share a common legal interest in exchanging 

privileged materials before the merger closes, and specifically that they can reasonably anticipate 

possible joint defense of future litigation, just as the parties here did. See, e.g., Hewlett-Packard 

Co., 115 F.R.D. at 308.7

 

In Rembrandt, this Court found that the common interest doctrine protected 

communications between named inventors of a patent and a potential patent purchaser once the 

purchaser obtained an exclusive license to purchase the patent. 2016 U.S. Dist. LEXIS 13749, at 

*24. In so finding, the Court reasoned that after the potential patent purchaser obtained the 

exclusive license, it was “engaged in a joint legal enterprise” with the named inventors and that 

“communications with them were ‘part of an on-going and joint effort to set up a 

common...strategy for perfecting title in the patent and enforcing it through litigation.”’ Id. at 

 7 See also Morvil Tech., LLC v. Ablation Frontiers, Inc., No. 10-CV-2088-BEN (BGS), 

2012 WL 760603, at *3 (S.D. Cal. Mar. 8, 2012) (finding common interest was satisfied when 

two companies were contemplating the wholesale acquisition of one by the other; “these legal 

interests were aligned as both parties were committed to the transaction and working towards its 

successful completion.”); FTC v. Abbvie, Inc., No. CV 14-5151, 2015 U.S. Dist. LEXIS 166723, 

at *30-37 (E.D. Pa. Dec. 14, 2015) (finding a common interest in litigation (or potential thereof) 

once the parties had an agreement in principle to merge).

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 20 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 15

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

*22-24. It further found that the documents submitted for in camera review supported the 

conclusion that once the option to purchase the patent was acquired, “the parties’ interests aligned 

and they began to pursue joint legal interests[,]” including “conducting due diligence.” Id. at *21, 

*24. Similarly, FastVDO is again instructive. There, the court found that a common legal 

interest existed between a patent owner and the potential acquirer of that patent because the 

“essential terms of the purchase agreement” were agreed to prior to transmission of the patent 

owner’s protected work product to the potential purchaser. 2016 WL 6138036, at *14. 

Here, Uber and Otto agreed to the “essential terms” of Uber’s acquisition on February 22, 

2016, before any party shared privileged communications or confidential information in order to 

further their joint legal interest with respect to potential litigation. (Tate Decl. ¶¶ 7-9.) That Uber 

and Otto continued to negotiate terms of the acquisition while they were sharing information and 

analysis pertaining to potential litigation does not destroy the common interest protections 

because, as the FastVDO court reasoned, “simply because there was negotiation over some terms 

that continued over a period of months did not transform the relationship between” the parties 

“into an adversarial relationship.” 2016 WL 6138036, at *14. Once an agreement in principle 

was reached through the term sheet, Otto, its founders, and Uber immediately began “engag[ing] 

in a common legal enterprise” by entering into a joint defense agreement and jointly retaining 

Stroz to investigate potential claims that Google may have. (Tate Decl. ¶¶ 3-12); Rembrandt, 

2016 U.S. Dist. LEXIS 13749, at *24. 

This Court has also recognized that important policy considerations weigh in favor of 

preserving attorney-client protection over pre-merger communications: 

Unless it serves some significant interest courts should not create 

procedural doctrine that restricts communication between buyers 

and sellers, erects barriers to business deals, and increases the risk 

that prospective buyers will not have access to important 

information that could play key roles in assessing the value of the 

business or product they are considering buying. Legal doctrine 

that impedes frank communication between buyers and sellers also 

sets the stage for more lawsuits, as buyers are more likely to be 

unpleasantly surprised by what they receive. By refusing to find 

waiver in these settings courts create an environment in which 

businesses can share more freely information that is relevant to 

their transactions. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 21 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 16

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Hewlett-Packard, 115 F.R.D. at 311. 

Waymo relies heavily on In re JP Morgan Chase & Co. Securities Litigation, MDL No. 

1783, 2007 WL 2363311 (N.D. Ill. Aug. 13, 2007), to support the proposition that parties to a 

proposed merger agreement cannot possibly share common legal interests prior to the actual 

signing of that merger agreement if a due diligence process is ongoing. (Mot. 11.) But JP 

Morgan Chase is entirely distinguishable because the documents that JP Morgan sought to 

withhold were had nothing to do with possible litigation or legal exposure. Nothing in JP 

Morgan Chase abrogates the principle that where parties to a potential merger have established a 

common legal interest in possible litigation arising out of the proposed merger, communications 

about the possible litigation are protected by the common interest doctrine.8

 See FTC v. Abbvie, 

Inc., 2015 U.S. Dist. LEXIS 166723, at *30-37 (differentiating between documents prepared for a 

business purpose in the merger context, which were discoverable, and recognizing a common 

legal interest where the parties “shared at least a substantially similar legal interest in actual or 

potential litigation against a common adversary”) (citations omitted). Moreover, here, in contrast 

to JP Morgan Chase, the parties had common legal interests when the report was disseminated. 

Thus, whatever the Report contained, the parties’ legal interests were aligned as to any potential 

legal claims brought by Google. 

Finally, even if the Court were to determine that the common interest doctrine does not 

apply, the work product privilege would nonetheless protect the Report and all of the exhibits 

from disclosure. As long as work product is not shared with a party’s adversary, it remains 

protected. “The work product doctrine can be waived, but waiver does not occur simply by virtue 

of sharing the privileged information with any third party.” Ellis v. J.P. Morgan Chase & Co., 

No. 12-CV-03897-YGR (JCS), 2014 WL 1510884, at *5 (N.D. Cal. Apr. 1, 2014). “Waiver 

occurs only “where disclosure of the otherwise privileged documents is made to a third party, and 

that disclosure enables an adversary to gain access to the information.” Id. (citing Nidec Corp., 

 8

 Nor do any of Waymo’s other cases cited for the proposition (see Mot. 12 n.13) as none 

of those cases involved parties analyzing joint litigation risk or work product commissioned and 

generated for the benefit of multiple parties to provide legal advice. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 22 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 17

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

249 F.R.D. at 578) (emphasis added). Here, there is no suggestion that disclosure of the Report 

and exhibits among the joint defense group somehow allowed Google—the relevant adversary—

to gain access to the Report and related materials or even increased the risk that Google would 

gain access to them. Thus, the work product doctrine protects the Report and exhibits from 

disclosure regardless of the applicability of the common interest doctrine.

D. The Crime-Fraud Exception Does Not Apply. 

The crime-fraud exception applies only in very limited circumstances—where an attorney 

is engaged to “solicit or offer advice for the commission of a crime or fraud.” In re Grand Jury 

Investigation, 974 F.2d 1068, 1071 (9th Cir. 1992). Accordingly, to compel disclosure of 

privileged documents pursuant to the crime-fraud exception, Waymo has the burden of showing 

that (1) “the client was engaged in or planning a criminal or fraudulent scheme when it sought the 

advice of counsel to further the scheme” and (2) “the attorney-client communications for which 

production is sought are ‘sufficiently related to’ and were made in furtherance of the intended, or 

present, continuing illegality.” In re Napster Inc. Copyright Litig., 479 F.3d 1078, 1090 (9th Cir. 

2007), abrogated in part on other grounds by Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100 

(2009). Waymo must prove both of these elements by “a preponderance of the evidence.” Id. at 

1095.9

 Moreover, a court must exercise “considerable caution when . . . pressed during the 

discovery stage of complex litigation to find that a showing of crime or fraud . . . sufficient to 

justify penetrating a privilege has been made.” Laser Indus. Ltd. v. Reliant Techs., Inc., 167 

F.R.D. 417, 436 (N.D. Cal. 1996). 

Waymo cannot meet its burden. First, it cannot show that Defendants were “engaged in or 

planning a criminal or fraudulent scheme.” To make such a showing, Waymo must “present 

evidence which, if believed by the jury would establish the elements of the alleged crime or 

fraud.” Id. at 434. (quotations omitted). Waymo has not even attempted to identify evidence that 

meets the elements of any ongoing crime or fraud perpetrated by Defendants. That is because 

 9

 The preponderance of the evidence standard is a higher standard than the one required to 

satisfy merely a request for in camera review (as opposed to full disclosure of the documents). In 

re Napster, 479 F.3d at 1092 (“the threshold for in camera review is considerably lower than that 

for fully disclosing documents”). 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 23 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 18

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

they cannot make this showing. Waymo has zero evidence that Uber or Otto ever knew about, 

much less were “engaged in or planning,” an ongoing or future crime or fraud. (Ex. F (Judge 

Alsup: “All that has been proven is he downloaded 14,000 documents. And you have -- and I’ve 

given you lots of discovery, and so far you don’t -- you don't have any smoking gun.”).) The 

mere fact that Uber acquired Ottomotto is not sufficient under any standard to show that Uber, 

Ottomotto, and Otto Trucking were “engaged in or planning a criminal or fraudulent scheme,” 

and certainly does not meet the “preponderance of the evidence” standard. 

Second, Waymo has presented no evidence that Mr. Levandowski, Mr. Ron, Otto, and 

Uber were all using their lawyers and the Stroz investigation “in furtherance” of any “intended or 

continuing criminal or fraudulent conduct.” U.S. v. de la Jara, 973 F.2d 746, 748 (9th Cir. 1992); 

Bauer, 132 F.3d at 509-10 (crime-fraud exception “applies only to documents and 

communications that were themselves in furtherance of illegal or fraudulent conduct.”) 

(emphasis added). Waymo has offered only unsupported and unjustified speculation that 

Defendants’ purpose in soliciting the Report and entering into the joint defense and common 

interest agreement was to perpetrate an ongoing or intended crime. This Court has rejected 

arguments like those made by Waymo here, holding that “mere speculation” about the purpose 

for which attorney-client communications and work product were generated does not satisfy a 

party’s burden of proving the applicability of the crime-fraud exception. Skynet Elect. Co. v. 

Flextronics Int’l, Ltd., No. C 12–06317 WHA, 2013 WL 6623874, at *4 (N.D. Cal. Dec. 16, 

2013) (after in camera review, holding that “[D]efendants have never had access to the referenced 

memorandum, so their arguments as to this document constitute mere speculation. . . . 

Accordingly, defendants have failed to make a showing of plaintiff’s deceptive intent.”).10 

 10 Furthermore, the Report constitutes opinion work product, and opinion work product is 

only subject to the crime-fraud exception if Waymo can show that the attorneys and their agents 

who authored it knew of the alleged crime or fraud. In re Grand Jury Proceedings, 867 F.2d 

539, 541 (9th Cir. 1989) (affirming district court holding that author of work product, who was 

not shown to have had knowledge of alleged criminal or fraudulent activity, had the right to 

maintain protection over “opinion work product” as distinguished from “fact work product” even 

where the crime-fraud exception was found to apply to fact work product). Waymo has not even 

attempted to make such a showing. On that basis, Waymo’s argument seeking to apply the 

crime-fraud exception should be rejected. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 24 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 19

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

With no evidence to cite that would support the application of the crime-fraud exception, 

Waymo relies almost completely on asking the Court to draw adverse inferences from Mr. 

Levandowski’s Fifth Amendment invocation. Waymo argues that “Mr. Levandowski apparently 

contends that answering any questions about the report could expose him to criminal prosecution” 

and that the Court “may infer from these invocations . . . that Mr. Levandowski and Defendants 

had a common interest in planning, engaging in, or concealing the misappropriation of Waymo’s 

trade secrets.” (Mot. 13.) But the law does not permit Waymo to get around the absence of 

evidence in this fashion. As Defendants have shown in their preliminary injunction sur-reply, the 

Ninth Circuit instructs that an adverse inference requires independent, corroborating evidence. 

See Doe ex rel. Rudy-Glanzer v. Glanzer, 232 F.3d 1258, 1264 (9th Cir. 2000) (“[W]hen there is 

no corroborating evidence to support the fact under inquiry, the proponent of the fact must come 

forward with evidence to support the allegation, otherwise no negative inference will be 

permitted.”). The requirement of independent corroboration exists in part to avoid opportunistic 

practice by attorneys. See, e.g., Ullman-Briggs, Inc. v. Salton/Maxim Housewares, Inc., No. 92-c680, 1996 WL 535083, at *17 (N.D. Ill. Sept. 17, 1996) (barring adverse inferences where 

counsel was “able to fashion the questions in such a way as to be able to create the most 

damaging testimony through negative inference, safe from any contradiction by the witness no 

matter what the actual facts”) (quotation omitted). Where, as here, there is no independent, 

corroborating evidence that Defendants conspired with Mr. Levandowski to steal Waymo’s trade 

secrets, there is no permissible adverse inference against Defendants based on Mr. Levandowski’s 

invocation. 

Waymo also claims that Defendants’ privilege log shows that “the withheld due diligence 

report is related to and in furtherance of at least concealing that trade secret theft.” (ECF No. 321 

at 14.) But the log shows no such thing. The log may reflect that Stroz and the outside lawyers 

reviewed information provided by Mr. Levandowski, but that merely shows that Stroz and the 

lawyers conducted a review of information Mr. Levandowski and others had that could 

potentially be relevant to litigation. It does not show that (a) Stroz or the lawyers had any 

knowledge that Mr. Levandowski deliberately downloaded anything from Google’s files, (b) that 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 25 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 20

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

any such downloads contained trade secret information, or (c) that Uber or anyone else was 

engaged in an effort to conceal any such downloading. There is no evidence of any of those 

things, and therefore no evidence of the due diligence effort or the Report being “in furtherance of” 

a crime or fraud.11

E. Uber’s Privilege Log Complies with the Federal Rules and the Court’s 

Standing Order 

Defendants’ privilege log “describe[s] the nature of the documents, communications, or 

tangible things not produced or disclosed” and is therefore compliant with the Federal Rules of 

Civil Procedure and this Court’s standing order. Fed. R. Civ. P. 26(b)(5)(A)(ii); Supplemental 

Order to Order Setting Initial Case Mgmt. Conf. in Civil Cases Before Judge William Alsup, 

¶ 16. Waymo argues that despite Defendants’ compliance with the rules and this Court’s order, 

Defendants’ log is nonetheless deficient.12 Waymo is wrong. 

And to be clear: Waymo does not argue that Defendants’ have waived any privilege by 

virtue of the alleged deficiencies in Defendants’ log. (Mot. 5-8.) Rather, Waymo simply 

contends—incorrectly—that the log is insufficient to allow the privilege to be challenged in a 

motion to compel. But the fact that Waymo was able to file a 19-page motion challenging the 

assertions of privilege laid out in the log belies the contention that the log is somehow 

insufficiently detailed. 

Waymo first contends that Defendants failed to identify each author/sender and recipient 

of every communication that disseminated the Report. (Mot. 6.) But Waymo concedes that 

Defendants’ log provides a list of the 37 recipients of the Report on page 17 of the log. (Id.) 

Moreover, although the communications by which Uber in-house counsel received the report are 

 11 Waymo cites U.S. v. Saccoccia, 898 F. Supp. 53, 62 (D.R.I. 1995), for the proposition 

that “a claim of attorney-client privilege is logically inconsistent with a Fifth Amendment claim 

over the same information because the crime-fraud exception would vitiate the attorney-client 

privilege.” (Mot. 14.) But Waymo misunderstands Saccoccia, which held that the invocation of 

the Fifth Amendment by a defendant and his attorneys gives rise to an inference that the crimefraud exception applies. Saccoccia, 898 F. Supp. at 61-62. That is obviously different from this 

case. 

12 Waymo’s claim that Defendants’ privilege log is deficient is disingenuous given that 

Waymo’s own privilege logs, produced earlier in the case than Defendants’ log, provide the same 

level of detail as Defendants’ log. (See, e.g., Exs. D, E.) 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 26 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 21

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

not logged in the privilege log for the Report and exhibits, Defendants produced to Waymo three 

additional privilege logs that do contain entries for such communications.13 (See, e.g., Ex. G.) 

Waymo next argues that Defendants failed to provide information sufficient to confirm 

that the asserted privileges have not been waived by disclosure to a third party because 

Defendants’ log contains only a blanket statement that to “Uber’s knowledge no unauthorized 

persons have received” the Report. (Mot. 6-7.) Neither the federal nor local rules require 

Defendants to include more detail about whether the privileged communication was received by 

unauthorized individuals. See Fed. R. Civ. P. 26(b)(5)(A); Phillips v. C.R. Bard, Inc., 290 F.R.D. 

615, 637 (D. Nev. 2013) (medical device manufacturers were not obligated to produce supporting 

affidavits in conjunction with their privilege log to establish attorney-client privilege or work 

product protection; rather, manufacturers were required only to make a showing to establish the 

element of the privilege or protection claimed). Moreover, Defendants have now submitted 

evidence that 1) an oral common interest agreement was established between Uber and Otto at 

least of February 24, 2016, and joined shortly thereafter by Messrs. Levandowski and Ron,14 (see

Tate Decl. ¶¶ 6-8; Suhr Decl. ¶ 6; Gardner Decl. ¶¶ 7-10; Baker Decl. ¶¶ 5-8; Bentley Decl. ¶ 8; 

see also Ex. 1); 2) a written joint defense and common interest agreement was entered between 

those parties on April 11, 2016 that memorializes the parties “pre-existing understanding and oral 

agreement” (Ex. 2 at 2); 3) MoFo and OMM jointly engaged Stroz to gather relevant information 

to aid them in providing legal advice to their respective clients about litigation risks and potential 

claims that could be brought by Google in connection with Uber’s acquisition of Otto (Ex. 3 at 

 13 Waymo also complains that Defendants have not listed the communications by which 

Mr. Levandowski or Mr. Ron received the Report. Those communications are not in the custody 

or control of Defendants. Mr. Gardner and Ms. Baker disseminated the report to their respective 

clients and to no other individuals. (Gardner Decl. ¶ 12; Baker Decl. ¶ 17.) 

14 Waymo contends that “Defendants have refused to provide any information about an 

alleged oral common interest agreement entered into” before April 11, 2016. (Mot. 7.) This is 

not accurate. On April 27, 2017, Defendants produced to Waymo UBER00012735 (Tate Decl. 

Ex. 1), which explicitly references the oral agreement between the parties. Moreover, the written 

joint defense and common interest agreement that Defendants produced explicitly states that it 

memorializes the parties’ “pre-existing understanding and oral agreement.” (Tate Decl. Ex. 2 at 

2.) 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 27 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 22

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

2),15 and 4) the common interest agreement encompasses all persons to whom the Report was 

disclosed (see Tate Decl. ¶ 18; Gardner Decl. ¶ 12; Baker Decl. ¶¶ 14-17.) Defendants have 

accordingly more than satisfied their burden of demonstrating that they have not waived privilege 

over the Report and exhibits. 

Finally, Waymo argues that Defendants’ privilege log fails to justify the asserted work 

product protection because Defendants have not disclosed the date and author of the exhibits to 

the Report. (Mot. 8.) This argument misapprehends Defendants’ basis for the work product 

privilege assertion. As explained above, the exhibits to the Report are protected opinion work 

product under Sporck, 759 F.2d at 316. (See supra at III.B.3.) Waymo’s assertion that 

Defendants have not established that there was a substantial possibility that litigation would 

commence is also wrong. (See supra at III.B.1.) 

F. The Court Should Reject Waymo’s Substantial Need Argument. 

Waymo asks the Court to compel production of the Report and all of its exhibits based on 

a claim of “substantial need.” (Mot. 16.) This argument fails for four reasons. 

First, a showing of “substantial need” is relevant only to an effort to compel production of 

documents protected solely by the work product privilege—and even then, it only applies to 

documents that constitute fact work product rather than opinion work product. Fed. R. Civ. P. 

26(b)(3)(A)(ii). Here, the Report is protected not just by the work product privilege, but also by 

the attorney-client privilege. The Report was prepared to gather facts for the lawyers representing 

Uber and Otto so that those lawyers could render legal advice to their clients relating to the 

proposed transaction. (Friedberg Decl. ¶¶ 2-4; Tate Decl. ¶¶ 9-13.) Likewise, entries 2-6 in 

Defendants’ privilege log are subject not only to the work product privilege but also to the 

attorney-client privilege because they consist of factual communications provided to lawyers on 

behalf of the clients for the purpose of obtaining legal advice. 

Second, both the Report and all of the exhibits constitute “opinion work product,” which 

 15 Waymo notes that Stroz did not sign the common interest agreement but Stroz is not a 

third party for purposes of waiver analysis because it authored the Report at the direction of 

counsel for purposes of providing legal advice in anticipation of litigation. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 28 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 23

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

cannot be produced under the “substantial need” test, but instead requires a showing of 

“compelling need.” Holmgren, 976 F.2d at 576. As addressed above, the Report and its exhibits 

reflect the “mental impressions, conclusions, opinions, or legal theories of an attorney or other 

representative of a party concerning litigation,” and hence are opinion work product. (See supra

III.B.2.) 

Third, Waymo has not shown either a substantial or a compelling need. Contrary to 

Waymo’s argument, Mr. Levandowski’s invocation of the Fifth Amendment does not create a 

substantial or compelling need for production, and the three cases Waymo cites are inapposite. In 

In re Vitamins Antitrust Litig., 211 F.R.D. 1, 5 (D.D.C. 2002), the court carefully distinguished 

between fact and opinion work product and ordered that opinion work product should not be 

produced notwithstanding some witnesses’ invocation of the Fifth Amendment. Likewise, In re 

John Doe Corp., 675 F.2d 482, 492 & n.10 (2d Cir. 1982) is distinguishable on two grounds: (1) 

there was a waiver of attorney-client communication over the requested documents—here, there 

is not; and (2) the court recognized that opinion work product was not discoverable 

notwithstanding the Fifth Amendment invocation. Furthermore, the specific documents at issue 

in John Doe were fact work product, not opinion work product. Finally, in In re Crazy Eddie Sec. 

Litig., No. 87 CV 0033 (EHN), 1991 WL 17287, at *1 (E.D.N.Y. Jan. 28, 1991), the plaintiffs did 

not dispute that the defendant had shown a substantial need for the requested production of work 

product and did not oppose the motion to compel its production. Notably, the court recognized 

that opinion work product (like the Report and its exhibits) is subject to protection from discovery 

even upon a showing of substantial need and ordered redaction of the portions of the documents 

that constituted opinion work product. 

Waymo argues it has a substantial and compelling need for the exhibits attached to the 

report “to the extent that Defendants no longer possess versions of these documents that were not 

attached to the report.” (Mot. 17.) But Waymo has presented no evidence that it has a substantial 

or compelling need for those documents other than its bald assertion. 

Fourth, as opinion work product, the Report and exhibits are afforded “nearly absolute 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 29 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 24

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

protection,” Bagley, 212 F.R.D. at 566,16 and are discoverable only if “the mental impressions are 

at issue in a case and the need for the material is compelling.” Holmgren, 976 F.2d at 577 

(emphasis in original); see also Bagley, 212 F.R.D. at 566 (requiring “rare or compelling 

circumstances” to justify abrogating opinion work product protections). The mental impressions 

of Stroz investigators are not at issue in this case, and Waymo does not—and cannot—argue 

otherwise.17 Waymo therefore fails to meet its burden of persuasion. Brady, 238 F.R.D. 429 at 

444 (party did not argue it had a compelling need, and failed the substantial need test, where it 

was “free to discover underlying facts through other avenues of the discovery process”). 

G. Additional Discovery Is Unnecessary 

The Court’s April 25, 2017 Order (ECF No. 271) directed the parties “to address the 

possibility that discovery into the predicates for any privilege be allowed.” Defendants do not 

believe that any further discovery is necessary. As demonstrated above and through the attached 

declarations, the Report and its exhibits are squarely protected by the attorney-client privilege, the 

work product doctrine, and the common interest doctrine. The Court has all of the facts necessary 

to rule on Waymo’s motion to compel, and courts regularly rule on motions to compel allegedly 

privileged material without ordering any discovery into the predicates of the privileges asserted. 

See, e.g., GTE Directories Serv. Corp. v. Pacific Bell Directory, 135 F.R.D. 187 (N.D. Cal. 

1991); Laser Indus., Ltd. v. Reliant Techs., Inc., 167 F.R.D. at 417. 

Although Waymo agrees that “no further discovery is necessary,” (Mot. 18), it 

nonetheless requests the opportunity to take additional discovery, (id.). Waymo’s additional 

 16 See also O’Connor v. Boeing N. Am., Inc., 216 F.R.D. 640, 642–43 (C.D. Cal. 2003) 

(“[O]pinion work product enjoys almost absolute immunity and can be discovered only in very 

rare and extraordinary circumstances, such as when the material demonstrates that an attorney 

engaged in illegal conduct or fraud.”); Tierno, 2008 WL 2705089, at *4. 

17 Compare Mushroom Assocs. v. Monterey Mushrooms, Inc., No. C-91-1092 TEH (PJH), 

1992 WL 442892, at *5 (N.D. Cal. May 19, 1992) (mental impressions “at issue” in case 

involving advice of counsel defense, where “knowing what the attorney thought about 

infringement bears directly on [the asserted defense]” with In re Oracle Sec. Litig., No. C-01-

0988 MJJ (JCS), 2005 WL 6768164, at *5 (N.D. Cal. Aug. 5, 2005) (mental impressions of 

counsel retained to conduct internal investigation not at issue in securities fraud case, where 

investigators interviewed witnesses and prepared a report used to inform decision of special 

litigation committee whether to settle, dismiss, or prosecute a separate derivative action). 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 30 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 25

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

requests for discovery should be denied as overly broad, unduly burdensome, and duplicative. 

For example, Waymo requests a 30(b)(6) deposition on Defendants’ privilege log. (Id.) But the 

information Waymo seeks to elicit is already available in the log itself and the declarations 

Defendants have submitted with its opposition, which detail the bases for the privileges asserted, 

all of the individuals who received the Report and exhibits, as well as the efforts to maintain the 

confidentiality of those documents. (See e.g., Friedberg Decl. ¶¶ 11-13; Tate Decl. ¶¶ 18-26.) 

Waymo also seeks to take a 30(b)(6) deposition of Stroz regarding the circumstances surrounding 

its analysis of Mr. Levandowski’s files and electronic media, and its preparation of the Report. 

These subject matters are privileged. Further, Stroz has submitted a declaration in support of 

Defendants’ opposition that discusses the dissemination of the Report and the recipients thereof. 

(Friedberg Decl. ¶¶ 11-13.) Defendants have already attached to their opposition the Stroz 

Engagement Letter. Although the letter is lightly redacted, Waymo has access to the critical 

“Confidentiality” provision of the letter that establishes the purpose of the engagement, the basis 

for the asserted privileges, and Stroz’s confidentiality obligations. (See also Ex. 2 ¶ 3 (requiring 

experts and outside vendors to keep joint defense material confidential).) 

Waymo cites no cases where a court permitted additional discovery into the predicates of 

the attorney-client and work product protections, and certainly not after the parties asserting the 

privilege provided declarations establishing their essential predicates. Waymo’s request for 

additional discovery can only be construed as an attempt to invade those privileges, something 

this Court should not allow. 

IV. CONCLUSION 

Waymo’s Motion to Compel should be denied. 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 31 of 32
DEFENDANTS’ OPPOSITION TO MOTION TO COMPEL

Case No. 3:17-cv-00939-WHA 26

pa-1785893 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Dated: May 8, 2017 MORRISON & FOERSTER LLP 

By: /s/ Arturo J. González 

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. and 

OTTOMOTTO LLC 

Case 3:17-cv-00939-WHA Document 369 Filed 05/08/17 Page 32 of 32