DEFENDANTS’ RENEWED MOTION IN LIMINE NO. 2 

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 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Tel: 415.268.7000 / Fax: 415.268.7522 

KAREN L. DUNN (Pro Hac Vice) 

kdunn@bsfllp.com 

HAMISH P. M. HUME 

hhume@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington, D.C. 20005 

Tel: 202.237.2727 / Fax: 202.237.6131 

WILLIAM CARMODY (Pro Hac Vice) 

bcarmody@susmangodfrey.com 

SUSMAN GODFREY LLP 

1301 Avenue of the Americas, 32nd Floor 

New York, NY 10019-6023 

Tel.: 212.336.8330 / Fax.: 212.336.8340 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. and OTTOMOTTO LLC 

NEEL CHATTERJEE (SBN 173985) 

nchatterjee@goodwinlaw.com 

GOODWIN PROCTER LLP 

135 Commonwealth Drive 

Menlo Park, California 94025 

Tel.: 650.752.3100 / Fax.: 650.853.1038 

Attorneys for Defendant OTTO TRUCKING 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’ RENEWED 

MOTION IN LIMINE NO. 2 TO 

EXCLUDE EVIDENCE OR 

ARGUMENT REGARDING 

OVERRULED PRIVILEGE 

ASSERTIONS 

 

Judge: The Honorable William Alsup 

Trial Date: October 10, 2017 

Case 3:17-cv-00939-WHA Document 1546 Filed 09/13/17 Page 1 of 6
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DEFENDANTS’ RENEWED MOTION IN LIMINE NO. 2 

CASE NO. 3:17-CV-00939-WHA

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Defendants renew their motion in limine to exclude argument or evidence about assertions 

of attorney-client privilege or work product in light of the Court’s exception for assertions that 

have been overruled. 

I. Introduction 

 The Court overruled Uber’s privilege and work product (collectively, “privilege”) 

assertions over the Stroz Report and its exhibits, and ordered Uber to produce those and related 

documents. Dkts. 566, 621, and 685. The Court recognized the privilege issues were 

“complicated” issues of “first impression.” 6/23 Hr’g Tr. at 40:11-12. Uber did not appeal, but 

Anthony Levandowski did, and the Federal Circuit stayed the Court’s orders. Dkt. 838. Uber then 

moved to exclude argument or evidence regarding Uber’s assertions of privilege. Dkt. 855 at 1; 

see Dkt. 641 at 1-3. The Court tentatively granted Uber’s motion “except as to assertions of 

privilege that, at the time of trial, have been deemed invalid by a final order of this Court or the 

Federal Circuit.” Dkt. 874 at 3. Uber respectfully asks that the Court reconsider that exception. 

The remedy for an overruled privilege claim is disclosure of the underlying information. 

Informing the jury that a party’s claim was overruled is an impermissible sanction where the party 

has not refused to obey the court-ordered production. Such a sanction is also unduly prejudicial 

because there is no probative value in telling the jury about an overruled privilege assertion, but 

only risk that the jury will improperly speculate about the motives of the party that asserted 

privilege. There is no permissible inference the jury could draw from such speculation. Of course, 

this motion works both ways by also preventing Uber from mentioning Waymo’s overruled 

privilege claims. 

II. Informing the Jury That the Court Overruled Certain of Uber’s Privilege Claims Is 

an Impermissible Sanction Because Uber Has Not Refused To Produce Documents. 

Waymo’s only purpose in presenting evidence or argument to the jury that Uber asserted 

privilege over the Stroz Report and related documents would be to invite the jury to speculate that 

Uber wrongfully sought to hide those documents due to their contents. But it is well established 

that “no adverse inference shall arise from invocation of the attorney-client privilege and/or work 

product privilege.” Knorr-Bremse Sys. Fuer Nutzfahrzeuge GMBH v. Dana Corp., 383 F.3d 

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DEFENDANTS’ RENEWED MOTION IN LIMINE NO. 2

CASE NO. 3:17-CV-00939-WHA

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1337, 1344 (Fed. Cir. 2004); see also Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. 

Co., No. 4:14-CV-371, 2016 WL 3902447, at *1 (E.D. Tex. Feb. 1, 2016) (precluding “any 

argument, evidence, or testimony, or reference during trial relating to the parties’ privilege logs or 

assertions of privilege”); Dkt. 641 at 1-2 (citing caselaw). That precedent holds true even if a 

court overrules a party’s invocation of privilege and the party then discloses pursuant to court 

order. Where “a purported invocation of privilege is invalid, the court has the authority to compel 

a response, thus ensuring that the jury is not deprived of relevant evidence.” Prime Media Grp., 

LLC v. Acer Am. Corp., No. 12-CV-05020-BLF, 2015 WL 527836, at *4 (N.D. Cal. Feb. 6, 

2015); see also Fed. R. Civ. P. 37(a)(3)(B)(iv), (a)(5)(A)(ii) (authorizing motions to compel 

production of documents and prohibiting monetary sanctions if a party’s nondisclosure was 

substantially justified). The “relevant evidence” is the underlying information itself, not the fact 

of the privilege invocation. Once the underlying information is disclosed, there can be no 

permissible sanction or inference relating to the party’s invocation of privilege over the 

information. 

In contrast, if a court has ruled against a claim of privilege “but the client continues to 

refuse to disclose the information,” the court may impose sanctions. Paul R. Rice et al., 2 

ATTORNEY-CLIENT PRIVILEGE IN THE U.S. § 10:8 (Dec. 2016) (emphasis added); see Mohawk 

Indus., Inc. v. Carpenter, 558 U.S. 100, 111 (2009) (parties that “defy a disclosure order” may 

“incur court-imposed sanctions”); see also Cal. Evid. Code § 914 (“No person may be held in 

contempt for failure to disclose information claimed to be privileged unless he has failed to 

comply with an order of a court that he disclose such information.”) (emphasis added). Even 

where a party continues to refuse to disclose the information, however, and a court makes the 

requisite findings to impose sanctions, “allowing the jury to be informed of the fact of 

nondisclosure,” Fed. R. Civ. P. 37, Adv. Comm. Notes, 1993 Amend., is permissible only “‘in 

those rare cases where there has been clear and sanctionable conduct by one of the parties.’” 

Interactive Health LLC v. King Kong USA, Inc., No. CV 06-1902-VBF (PLAX), 2008 WL 

11342905, at *3 (C.D. Cal. July 23, 2008) (quoting and distinguishing Network Computing Servs. 

Corp. v. Cisco Sys., Inc., 223 F.R.D. 392, 400 (D.S.C. 2004) (instructing the jury about discovery 

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conduct where the offending party repeatedly represented that documents did not exist and then 

manipulated them to make it appear as if they had been produced previously, and the court had 

imposed monetary sanctions to no avail)); see also Edna Selan Epstein, THE ATTORNEY-CLIENT 

PRIVILEGE AND THE WORK-PRODUCT DOCTRINE, at 1276 (5th ed. 2007) (“it is rare indeed to have 

the court grant sanctions for the assertion of privilege, even when that assertion is not sustained”). 

If the Federal Circuit rejects Levandowski’s appeal of the Court’s Stroz-related orders, 

Uber stands ready to comply fully and produce. Uber has not refused to comply with any court 

order (as the Federal Circuit stayed the orders requiring production pending appeal), and thus this 

is not a rare case of egregious nondisclosure in defiance of court orders that might allow a jury 

instruction. Moreover, Uber had a legitimate and good-faith basis for previously asserting 

privilege. The resolution of Uber’s privilege claims required the Court to make detailed factual 

findings and distinguish caselaw on a “complicated issue” of “first impression.” 6/23 Hr’g Tr. at 

40:11-12; see Dkts. 566, 685. The Court also rejected Waymo’s contention that Uber had claimed 

privilege for some improper purpose. Dkt. 731 at 3 (rejecting crime-fraud argument); Dkt. 949. In 

short, there is no permissible basis to impose sanctions or to otherwise allow argument or 

evidence regarding Uber’s assertions of privilege even if those assertions have been overruled by 

a final court order. 

III. Evidence and Argument About Uber’s Privilege Assertions Is Irrelevant And Unduly 

Prejudicial. 

The fact of Uber’s overruled privilege assertions also should be excluded because it is 

irrelevant to Waymo’s claims under Rule 401. Were Waymo to tell the jury that the Court 

overruled Uber’s assertions over the Stroz Report and related documents, that would leave the 

jury “to speculate why” Uber had claimed privilege. McKesson Info. Solutions, Inc. v. Bridge 

Medical, Inc., 434 F.Supp.2d 810, 812 (E.D. Cal. 2006). The only reason for Waymo to introduce 

such evidence would be to invite the jury to speculate that Uber had a nefarious purpose in 

asserting privilege, and to draw an impermissible inference against Uber. Such evidence has no 

probative value, but only risks forbidden speculation and inference. See id.; Dkt. 641 at 2 (citing 

caselaw). 

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Even if Uber’s privilege assertions were somehow relevant, that relevance would be vastly 

outweighed by unfair prejudice to Uber, and should be excluded under Rule 403. Putting this 

evidence to the jury would require a mini-trial into Uber’s counsel’s decisions to assert privilege 

over each document subject to the Court’s orders. See Holland v. City of San Francisco, No. C10-

2603 THE, 2013 WL 1632661, at *3 (N.D. Cal. Apr. 16, 2013) (excluding evidence that would 

require a “mini trial . . . to provide sufficient proof to the jury”). “Such a penalty for invocation of 

the privilege would have seriously harmful consequences,” Nabisco, Inc. v. PF Brands, Inc., 191 

F.3d 208, 226 (2d Cir. 1999) abrogated on other grounds by Moseley v. V Secret Catalogue, Inc., 

537 U.S. 418 (2003), regardless of whether the privilege invocation was rejected by a final order. 

Finally, if the Court informs the jury about Uber’s privilege assertions, the Court should 

not permit evidence and argument by Waymo, but instead should issue a jury instruction setting 

forth the pertinent facts and cautioning the jury not to draw any negative inferences. In fairness, 

the Court also should inform the jury about Waymo’s overruled privilege assertions, see Dkt. 

1272, including the fact that Waymo claimed privilege over information contradicting assertions 

it made in its Amended Complaint and to this Court. Compare 5/3 Hr’g Tr. at 5:3-18 (Verhoeven: 

“This is an extraordinary case of misappropriation of intellectual property.”) and Dkt. 23 at 3, 11 

(“Levandowski took extraordinary efforts to raid Waymo’s design server” and download 

“Waymo’s valuable LiDAR designs” and “9.7 GBs of sensitive, secret, and valuable internal 

Waymo information”) with Goodman Decl., Ex. 3 at 1-2 (Zbrozek: “It’s not particularly 

surprising that [Levandowski] might check [the 14,000 files] out once . . . Doesn’t ring the alarm 

bells for me”; those files were “considered low-value enough that we had even considered hosting 

if off of Google infrastructure”); Ex. 4 at 6 (Gorman, Waymo outside counsel: the 14,000 “aren’t 

the crown jewels”). 

IV. Conclusion 

For the foregoing reasons, Uber respectfully requests that the Court reconsider its partial 

denial of Uber’s motion in limine as to privilege assertions overruled by a final court order. In the 

alternative, Uber requests that the Court limit its ruling to instructing the jury on both parties’ 

overruled assertions and cautioning the jury not to draw negative inferences from the assertions. 

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DEFENDANTS’ RENEWED MOTION IN LIMINE NO. 2

CASE NO. 3:17-CV-00939-WHA

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Dated: September 7, 2017 MORRISON & FOERSTER LLP 

BOIES SCHILLER FLEXNER LLP 

SUSMAN GODFREY LLP 

By: /s/ Karen L. Dunn 

KAREN L. DUNN 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. and 

OTTOMOTTO LLC 

By: /s/ Neel Chatterjee 

 NEEL CHATTERJEE 

Attorneys for Defendant 

OTTO TRUCKING LLC 

ATTESTATION OF E-FILED SIGNATURE 

I, Karen L. Dunn, am the ECF User whose ID and password are being used to file this 

Motion in Limine. In compliance with General Order 45, X.B., I hereby attest that Neel 

Chatterjee has concurred in this filing. 

 /s/ Karen L. Dunn 

 Karen L. Dunn 

Case 3:17-cv-00939-WHA Document 1546 Filed 09/13/17 Page 6 of 6