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

PRETRIAL ORDER (DKT. 881); 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 MOTION FOR 

RELIEF FROM AND 

EMERGENCY MOTION FOR 

STAY OF NON-DISPOSITIVE 

PRETRIAL ORDER OF 

MAGISTRATE JUDGE (DKT. 881) 

Trial Date: October 10, 2017

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED 

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I. INTRODUCTION 

Waymo’s opposition brief confirms that the July 12 Order expanding discovery into 

Ottomotto’s non-LiDAR software should be reversed. Two undisputed legal principles support 

this outcome. First, the Cal Civ. Proc. Code 2019.210 trade secrets disclosure controls the scope 

of discovery. Second, any asserted trade secret should be identified with specificity in its Section 

2019.210 trade secrets list. Before Judge Corley, Waymo argued that its identification of a 

spreadsheet containing “development, goals, challenges, and accomplishments” sufficed to 

disclose non-LiDAR software trade secrets, but Waymo has no rebuttal to the case authority that 

such disclosures are insufficient. (Opp’n, Dkt. 970-4.) Its other arguments do not overcome this 

fundamental deficiency. 

Furthermore, Waymo does not dispute that the discovery it seeks will threaten the Court’s 

schedule. The expansion of discovery to non-LiDAR technology, at a time Waymo should be 

narrowing its trade secret claims, would render the October 10 trial date untenable. 

II. ARGUMENT 

In its opposition brief, Waymo never disputes that, as established by case authority in this 

District, the Section 2019.210 disclosure governs the scope of trade secrets discovery. (Compare 

Mot. For Relief at 2, Dkt. 929-4 (citing Neothermia Corp. v. Rubicor Med., Inc., 345 F. Supp. 2d 

1042, 1044 (N.D. Cal. Nov. 15, 2014) and Via Techs., Inc. v. Asus Computer Int’l, Case No. 14-

cv-03586-BLF, 2016 WL 1056139, at *2 (N.D. Cal. Mar. 17, 2016)), with Opp’n.) Waymo also 

does not contend that the non-LiDAR software modules in question relate to the one software 

trade secret specified on its Section 2019.210 list, for 

. (See Mot. for Relief at 2-3.) Uber has since confirmed that none of its software serves 

this purpose. 

Waymo also does not challenge Northern District decisions requiring plaintiffs to identify 

asserted trade secrets with more specificity than broad, generalized descriptions. (See Opp’n at 

2.) In Loop, a Northern District court rejected as insufficiently specific the Section 2019.210 

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identification of “Plaintiff's confidential information, including regarding problems experienced 

with certain tests,” which was “catchall” wording that did not “clearly refer to tangible trade 

secret material.” Loop AI Labs Inc. v. Gatti, 195 F. Supp. 3d 1107, 1115 (N.D. Cal. 2016) 

(quoting Imax Corp. v. Cinema Techs., Inc., 152 F.3d 1161, 1167 (1998); citation omitted). 

Waymo distinguishes Loop only by arguing that the defendant in Loop challenged the sufficiency 

of the Section 2019.210 disclosure, but Uber did not. (Opp’n at 2.) But Uber had argued before 

Judge Corley that Waymo was supposed to identify its trade secrets with particularity before 

discovery, and that the “weekly updates” spreadsheet could not be used to expand Waymo’s 

asserted trade secrets to cover software that was not part of its trade secrets list. (Compare Resp. 

to Waymo Ltr. Br. at 3, Dkt. 748-13, with Opp’n at 2:18-20.) Furthermore, because the Section 

2019.210 disclosure “controls the scope of discovery,” a Northern District court found that “even 

if Defendants no longer object to the disclosure, the court therefore must evaluate its sufficiency.” 

Via Techs., Inc., 2016 WL 1056139, at *3 (denying-in-part plaintiff’s motion to compel 

production of documents because plaintiff’s disclosure is “plainly insufficient”). 

Waymo’s identification of a 43-page “weekly updates” spreadsheet is an insufficient 

disclosure of any purported non-LiDAR software trade secret.1

 (Mot. for Relief at 3.) Waymo 

merely summarized the spreadsheet as containing “goals, challenges, and accomplishments” 

exactly the type of broad description that was rejected in Loop. (See Mot. for Relief at 3 (citing 

Dkt. 25-7 at 48-49 (Section 2019.210 list description of spreadsheet as containing 

” and 

 Before Judge 

 

1

 As Uber pointed out – and Waymo does not dispute – the spreadsheet contains no 

description of claimed trade secrets relating to software algorithms or source code. (Compare 

Mot. for Relief at 3; Resp. to Waymo Ltr. Br. at 3 (Dkt. 748-13); with Opp’n at 1-3.) 

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Corley, Waymo attempted to get around its broad description of the spreadsheet by identifying 

specific to and 

 and specific 

 for software of (Dkt. 681-3 at 5.) 

In its opposition to this motion, Waymo moved the target, arguing that the Ottomotto software is 

also relevant to two additional portions of the spreadsheet: 

 and (Opp’n at 1.) The 

spreadsheet excerpt below, which highlights two of the lines Waymo quoted before Judge Corley 

in yellow and one of the new lines identified in Waymo’s opposition brief in purple, illustrates the 

mischief wrought by Waymo’s bootstrapping arguments. (See Dkt. 929-5, Ex. 1 to Mot. For 

Relief at 1 (first page of spreadsheet).) Waymo’s Section 2019.210 disclosure for this 

spreadsheet only identified two example problems: “

.” (See Dkt 25-7 at 49.) The trade secrets list did not 

point to these particular portions of the spreadsheet – and Defendants would not have been able to 

guess which isolated lines from the spreadsheet were Waymo’s purported trade secrets. 

(Compare Dkt. 25-7 at 48-49 (Section 2019.210 list description of spreadsheet), with Dkt. 929-5 

(spreadsheet).) 

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As explained in Loop, “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 at 1115; see also VasoNova Inc. v. Grunwald, No. C 12–02422 WHA, 

2012 WL 4119970, at *2 (N.D. Cal. Sept. 18, 2012) (interpreting Section 2019.210 “reasonable 

particularity” requirement to mean “enough detail so that the defendant is able to learn the 

boundaries of the alleged trade secret in order to investigate defenses”). Here, Waymo identified 

the spreadsheet only as containing “goals, challenges, accomplishments” – and did not identify 

any of references to software that it now claims as disclosures of non-LiDAR software trade 

secrets. If Waymo is allowed to freely quote shifting portions of this spreadsheet or other 

documents to expand the list of its asserted trade secrets, Defendants will not be able to discern 

the boundaries of the alleged trade secrets or investigate its defenses for trial. 

Waymo’s other arguments do not overcome the fundamental deficiency in its trade secrets 

disclosure. Waymo argues that the non-LiDAR software modules are relevant because they 

reveal what Uber purchased when it acquired Ottomotto and show whether Uber acquired 

Waymo’s trade secrets. (Opp’n at 2-3.) Waymo also complains that Uber has not provided any 

discovery on the software modules in the Ottomotto acquisition. (Id. at 3.) But, as Uber pointed 

out before Judge Corley, “[a] true trade secret plaintiff ought to be able to identify, up front, and 

with specificity the particulars of the trade secrets without any discovery.” (Dkt. 748-13 at 3 

(quoting Jobscience, Inc. v. CVPartners, Inc., No. C 13-04519 WHA, 2014 WL 852477, at *5 

(N.D. Cal. Feb. 28, 2014).) Because it never identified any non-LiDAR software trade secrets 

before discovery, Waymo cannot “take discovery into the defendants’” non-LiDAR software, 

“and then cleverly specify what[ever] happens to be there as having been trade secrets stolen from 

plaintiff.” Jobscience, 2014 WL 852477, at *5. 

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Waymo argues that, because Ottomotto software designer Don Burnette was a 

“Diligenced Employee” in the Stroz investigation for the Otto acquisition, discovery should 

extend to Ottomotto software. (Opp’n at 2.) But as Judge Corley found that the Stroz 

investigation was not “to assist with obtaining Waymo’s trade secrets,” (Dkt. 731 at 2), Mr. 

Burnette’s participation in the Stroz investigation does not entitle Waymo to discovery beyond 

the scope of its Section 2019.210 disclosure. 

Waymo also argues that it is entitled to discovery of what would justify the “price tag” of 

the Ottomotto acquisition. (Opp’n at 2.) But Waymo ignores Uber’s commitment not to argue 

that the Ottomotto software modules account for the value associated with the acquisition.2

 (Mot. 

for Relief at 3.) Waymo still fails to identify any case authority that trade secrets 

misappropriation discovery—the only expedited discovery it was granted—extends beyond its 

Section 2019.210 disclosure, or to arguments that Uber will not make. 

III. CONCLUSION

The July 12 Order was contrary to law because, with no specific identification in the

Section 2019.210 of non-LiDAR software trade secrets, there is no basis for discovery into that 

technology. Allowing Waymo to expand discovery into new areas, on the basis of an evershifting set of isolated spreadsheet lines that was never in its Section 2019.210 list, would 

threaten the October 10 trial date. 

2 Waymo continues to mischaracterize the Ottomotto acquisition as bearing a “price tag”

of $680 million, despite Uber’s explanation that the reported number reflected the potential value 

of the performance-based incentive stock options offered to Ottomotto employees. (See Opp’n at 

2; Mot. for Relief at 3.) To date, Uber has paid only for the acquisition of Ottomotto, 

and none of the performance-based incentives have been met. (Gonzalez Decl. Ex. A, C. 

Poetzscher Tr. at 32:2-7; 135:12-17.) 

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Dated: July 24, 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 1000 Filed 07/24/17 Page 7 of 7