HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY 

DEFS.’ REPLY IN SUPP. OF MOT. FOR RELIEF FROM & EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

PRETRIAL ORDER (DKT. 951); Case No. 3:17-cv-00939-WHA

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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) 

RudyKim@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, 

Defendant. 

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

DEFENDANTS UBER 

TECHNOLOGIES, INC. AND 

OTTOMOTTO, LLC’S REPLY IN 

SUPPORT OF ITS MOTION FOR 

RELIEF FROM AND 

EMERGENCY MOTION FOR 

STAY OF NON-DISPOSITIVE 

PRETRIAL ORDER OF 

MAGISTRATE JUDGE (DKT. 951) 

Trial Date: October 10, 2017

UNREDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED 

Case 3:17-cv-00939-WHA Document 1066-1 Filed 08/01/17 Page 1 of 6
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DEFS.’ REPLY IN SUPP. OF MOT. FOR RELIEF FROM & EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

PRETRIAL ORDER (DKT. 951); Case No. 3:17-cv-00939-WHA 1

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I. INTRODUCTION 

Waymo’s opposition is notable for what it does not dispute. Waymo does not dispute that 

its Section 2019.210 disclosure controls the scope of discovery. Waymo has no rebuttal to the 

authority that disclosure of broad categories and a “development, goals, challenges, and 

accomplishments” spreadsheet is insufficient to adequately disclose non-LiDAR trade secrets. 

Waymo does not even attempt to defend the sufficiency of its disclosure. Waymo cannot dispute 

that LiDAR-related trade secrets have been its primary focus throughout the case—including the 

sole focus of the trade secret claims as phrased in the Complaint and in the preliminary injunction 

phase—nor that the Court has directed Waymo to narrow its trade secret claims, not expand 

them. Finally, as with its opposition in connection with the similar but separate briefing pending 

before the Court, Waymo offers no counter to Uber’s showing that the discovery it seeks renders 

the October 10 trial date untenable. (See Dkt. 999-4 at 1:11-13.) 

The July 19 Order was contrary to law because discovery must be limited to the scope of a 

sufficiently particular disclosure pursuant to Section 2019.210. Waymo’s opposition brief fails to 

support Judge Corley’s decision, as the non-LiDAR discovery requests are untethered to properly 

specified trade secrets in Waymo’s trade secret disclosure. The Court should grant Uber’s 

motion. 

II. ARGUMENT 

Waymo does not dispute that Cal. Civ. Proc. Code § 2019.210 requires a trade secret 

plaintiff to identify trade secrets with specificity. (Compare Mot. for Relief at 2, Dkt. 1006-4 

(citing Comput. Econ., Inc. v. Gartner Grp., Inc., 50 F. Supp. 2d 980, 985 (S.D. Cal. 1999)), with 

Opp’n at 4, Dkt. 1034-4.) Nor does it dispute that the scope of discovery is cabined by a proper 

trade secrets disclosure. (Compare Mot. for Relief at 2, Dkt. 1006-4 (citing case law in N.D. 

California courts stating that Cal. Civ. Proc. Code § 2019.210 frames the appropriate scope of 

discovery), with Opp’n, Dkt. 1034-4.) 

Waymo’s argument that the case law is irrelevant because Uber has “never challenged” 

the sufficiency of its disclosure is wrong on both the facts and the law. (Opp’n at 2, Dkt. 1034-4.) 

Uber did, in fact, dispute the sufficiency of Waymo’s Section 2019.210 trade secret disclosure 

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PRETRIAL ORDER (DKT. 951); Case No. 3:17-cv-00939-WHA 2

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before Judge Corley. (Resp. to Waymo Ltr. Br. at 3, Dkt. 748-13.) And the trade secret 

disclosure governs the appropriate scope of discovery in every trade secret case, so its sufficiency 

is directly relevant to whether the Court should allow Waymo the unbridled discovery it seeks. 

See Gabriel Techs. Corp. v. Qualcomm Inc., No. 08CV1992 AJB (MDD), 2012 WL 849167, at 

*3 (S.D. Cal. Mar. 13, 2012) (affirming magistrate judge’s ruling that denied plaintiff’s motion to 

compel discovery where description of trade secret was not “adequately articulated to meet the 

sufficient particularity standard”). The case law that Waymo ignores demonstrates the clear error 

in the July 19 Order: the Order allows inappropriate expansion of discovery that is not cabined to 

the proper scope of a sufficient Section 2019.210 trade secret disclosure. 

Waymo recites only three entries in its trade secret disclosure as pertaining to non-LiDAR 

trade secrets, but does nothing to show how those entries meet the Section 2019.210 standard. As 

explained in Loop AI Labs Inc. v. Gatti, “categorical descriptions render it impossible for 

Defendants to conduct public domain or other research to challenge the alleged secrecy of the 

information at issue.” 195 F. Supp. 3d 1107, 1115-16 (N.D. Cal. 2016). Here, Waymo identified 

broad categories of “PCB design schematics and layouts for all versions of Waymo’s 

” (item 108) and “PCB design schematics and layouts for each and every Waymo project 

as of December 11, 2015” (item 109). The impropriety of these vague, catch-all descriptions is 

compounded by the fact that they purport to be for “all versions” of Waymo’s and 

“each and every Waymo project” as of December 11, 2015, which is far from “enough detail so 

that the defendant is able to learn the boundaries of the alleged trade secret in order to investigate 

defenses.” VasoNova Inc. v. Grunwald, No. C 12-02422 WHA, 2012 WL 4119970, at *2 (N.D. 

Cal. Sept. 18, 2012); see also Perlan Therapeutics, Inc. v. Super. Ct., 178 Cal. App. 4th 1333, 

1346 (2009) (in affirming trial court’s finding that trade secret disclosure was insufficiently 

specific, noting that “where the alleged trade secrets consist of incremental variations on, or 

advances in the state of the art in a highly specialized technical field, a more exacting level of 

particularity may be required”) (internal citations omitted). 

Waymo similarly makes no attempt to defend its citation to its asserted trade secret 85, 

which is based on an excel spreadsheet that sets out “goals, challenges, and accomplishments.” 

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DEFS.’ REPLY IN SUPP. OF MOT. FOR RELIEF FROM & EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

PRETRIAL ORDER (DKT. 951); Case No. 3:17-cv-00939-WHA 3

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Waymo asserts without support that the spreadsheet “included extensive non-LiDAR technology 

and information,” but as Uber has separately shown, Waymo’s references to this spreadsheet have 

been a moving target and remain insufficient. (Dkt. 999-4 at 2-3.) Waymo does not deny that the 

trade disclosure provides no explanation of what language in the spreadsheet constitutes trade 

secret information; instead, it refers broadly to the spreadsheet and claims that it contains 

“detailed technical information,” including but not limited to “goals and accomplishments.” Such 

a vague disclosure cannot justify expanding discovery at this stage of the case. 

Waymo does not dispute that both allegations of trade secret misappropriation in the 

Complaint explicitly relate to LiDAR technology. (E.g., Dkt. 23 ¶ 71 (“Waymo has at all times 

maintained stringent security measures to preserve the secrecy of its LiDAR trade secrets”), ¶ 80 

(“Waymo’s technical information, designs, and other ‘know how’ related to its LiDAR system 

constitute trade secrets”).) It instead cites background and introductory language, but those 

sections a) do not overcome the language in the trade secret claims themselves, and b) in any 

event, serve to further underscore Waymo’s focus on LiDAR technology: “Mr. Levandowski’s 

download included 9.7 GBs of sensitive, secret, and valuable internal Waymo information. 2 

GBs of the download related to Waymo’s LiDAR technology. Among the downloaded 

documents were confidential specifications for each version of every generation of Waymo’s 

LiDAR circuit boards.” (Id. ¶ 44 (emphasis added), ¶ 48 (“After downloading all of this 

confidential information regarding Waymo’s LiDAR systems and other technology . . . .”) 

(emphasis added).) 

Waymo’s argument that its preliminary injunction motion does not bind it misses the 

point: the trade secret claims in the Complaint refer solely to LiDAR trade secrets; Waymo’s 

preliminary injunction motion referred solely to LiDAR trade secrets; the vast majority of 

Waymo’s 121-item trade secret disclosure addressed LiDAR trade secrets (with the possible 

exception of the few lines discussed above that do not meet Section 2019.210 muster); and 

discovery has focused on LiDAR trade secrets. Waymo’s reference to the total amount of 

information it alleges Mr. Levandowski downloaded similarly misses the point, as it does not 

specify what portion of that total volume constitutes asserted trade secrets—and it does not and 

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DEFS.’ REPLY IN SUPP. OF MOT. FOR RELIEF FROM & EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

PRETRIAL ORDER (DKT. 951); Case No. 3:17-cv-00939-WHA 4

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cannot point to any files that made their way to Uber. Now, having utterly failed to find anything 

to support its LiDAR trade secret claims against Uber, Waymo is attempting to rummage around 

to change course and shift the focus of its discovery. 

Waymo’s attempts to blame Uber for its lack of evidence and references to questions it 

intends to ask cannot justify expanding the scope of discovery either. A trade secret plaintiff 

bears the burden of an appropriately specific trade secret disclosure, and cannot disclose vague 

categories in the hopes of gaining discovery to support them. See Perlan Therapeutics, 178 Cal. 

App. 4th at 1344, 1350 (rejecting plaintiff’s trade secret disclosure where plaintiff sought to 

conduct discovery “with an eye toward enhancing [its] understanding of the trade secrets already 

asserted and adding additional particular trade secret claims as discovery potentially uncovers 

further instances”). Waymo also does not dispute that it makes this claim after extensive

discovery and inspections of facilities, source code, technical documents, and computers. (See

Mot. for Relief at 1, Dkt. 1006-4.) It cites no authority for the suggestion that questions a party 

intends to ask can justify expanding the scope of discovery from what was pled in the Complaint 

and its mandated trade secret disclosure.1

 

Finally, Waymo apparently concedes that expanding the scope of discovery to nonLiDAR trade secrets would interfere with the Court’s schedule, as it does not even mention this 

issue in its reply. (Compare Mot. for Relief at 4, Dkt. 1006-4 (noting need for parties to finalize 

fact discovery and move to expert discovery and trial preparation in order to keep October trial 

date), with Opp’n, Dkt. 1034-4.) 

III. CONCLUSION 

The July 19 Order was contrary to law because discovery must be limited to the scope of a 

sufficiently particular disclosure per Section 2019.210. Waymo is unable to support Judge 

Corley’s decision, as it cannot defend the sufficiency of its disclosures under the relevant 

California authority. Nor can Waymo deny that it is attempting to expand the case beyond the 

 

1

 Waymo’s cited list of questions (Opp’n at 3 n.1, Dkt. 1034-4) also omits that the first 

question it cites to purportedly show non-LiDAR questions (referring to “systems to collect data”) 

falls under the heading “Google/Waymo LiDAR Development Efforts” and that the fuller 

quotation refers to “systems to collect data from its LiDAR technology.” 

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focus of the Complaint, particularly the explicit language of the trade secret claims. There is no 

basis to allow Waymo to expand its discovery now. Judge Corley’s order expanding discovery to 

non-LiDAR information should be reversed. 

Dated: July 28, 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 1066-1 Filed 08/01/17 Page 6 of 6