DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

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, D.C. 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

DEFENDANT UBER 

TECHNOLOGIES, INC. AND 

OTTOMOTTO, LLC’S REPLY IN 

SUPPORT OF MOTION TO 

ENFORCE THE COURT’S JUNE 7, 

2017 ORDER (DKT. 563), TO STRIKE 

PLAINTIFF WAYMO LLC’S 

CORRECTED SUPPLEMENTAL 

INITIAL DISCLOSURES, AND TO 

PRECLUDE DAMAGES CLAIMS 

AND CERTAIN WITNESSES 

Date: August 10, 2017 

Time: 8:00 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William H. Alsup 

Trial Date: October 10, 2017 

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 1 of 18
i 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 CONTENTS 

INTRODUCTION ............................................................................................................................ 1

ARGUMENT .................................................................................................................................... 2

I. Uber Has Been Prejudiced. ................................................................................................... 2

II. Waymo’s Rule 26(a) Damages Disclosures Are Insufficient. .............................................. 3

III. Waymo Cannot Remedy its Insufficient Disclosures Through Discovery. .......................... 4

IV. Uber Still Does Not Have Waymo’s Damages Information. ................................................ 7

V. The Only Meaningful Remedy at This Point Is Preclusion. ............................................... 10

A. As the Court Has Correctly Observed, Preclusion Is the Proper Remedy for Failure 

to Provide Adequate Initial Disclosures. .................................................................... 10

B. Waymo’s Failures Are Neither Substantially Justified Nor Harmless....................... 11

1. Waymo’s Failure Was Not Substantially Justified. .......................................... 12

2. Waymo’s Failure Was Not Harmless. ............................................................... 13

VI. Waymo’s Late-Disclosed Witnesses Are an Independent Violation of Rule 26. ............... 14

CONCLUSION ............................................................................................................................... 15

 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 2 of 18
ii 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

Cases

Austrian Airlines Oesterreichische Lufverkehrs Ag v. UT Fin. Corp., 

2005 WL 977850 (S.D.N.Y. Apr. 28, 2005) .............................................................................. 11 

Baca v. State of California, 

No. C 13-02968 SBA, 2016 WL 234399 (N.D. Cal. Jan. 20, 2016) ........................... 6, 8, 11, 12 

Baker v. W. Contra Costa Sch. Dist., No. C-11-02529-WHA, 2011 U.S. Dist. LEXIS 127406 (N.D. Cal. Nov. 3, 2011) .................. 14 

Brandywine Commc’ns Techs., LLC v. Cisco Sys., Inc., 

No. C 12-01669 WHA, 2012 WL 5504036 (N.D. Cal. Nov. 13, 2012) ............................. passim 

Corning Optical Commc’ns Wireless Ltd. v. Solid, Inc., 

306 F.R.D. 276 (N.D. Cal. 2015) ............................................................................... 5, 10, 13, 14 

Gilvin v. Fire, 

No. 99-CV-530, 2002 WL 32170943 (D.D.C. Aug. 16, 2002) ................................................. 11 

Klamut v. Nibecker, 

No. 15-CV-02132-MEJ, 2017 WL 1196725 (N.D. Cal. Mar. 31, 2017) ................................... 14 

Lancelot Investors Fund, L.P. v. TSM Holdings, Ltd., 

No. 07 C 4023, 2008 WL 1883435 (N.D. Ill. Apr. 28, 2008) ...................................................... 6 

Maine v. Kerramerican, Inc., No. CV-04-191-B-W, 2007 WL 731306 (D. Me. Mar. 6, 2007) ............................................... 14 

Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 

259 F.3d 1101 (9th Cir. 2001).................................................................................................... 11 

Rules

FED. R. CIV. P. 26 .................................................................................................................... passim 

FED. R. CIV. P. 26(a)(1)(A) ..................................................................................................... passim 

FED. R. CIV. P. 26(a)(1)(E) ......................................................................................................... 4, 13 

FED. R. CIV. P. 26(b)(1) .............................................................................................................. 5, 13 

FED. R. CIV. P. 33(b)(2) .................................................................................................................... 2 

FED. R. CIV. P. 34(b)(2) .................................................................................................................... 2 

FED. R. CIV. P. 37(c) ....................................................................................................................... 11 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 3 of 18
1 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

INTRODUCTION 

Uber’s last day to serve discovery is tomorrow. The expedited trial Waymo demanded is 

eleven weeks away. Yet Uber still does not know either the form or amount of damages Waymo 

will claim. Waymo’s hired experts have had months to concoct their admittedly “complicated” 

and “new” damage theories. But under the compressed schedule Waymo demanded, Uber will 

have only two weeks to respond (between opening expert reports on August 24 and rebuttal 

reports on September 7). Meanwhile, Uber does not know what discovery to request, or what to 

ask Waymo’s witnesses about alleged damages, and has now lost that opportunity as discovery 

closes. The Federal Rules and this Court expressly sought to prevent this prejudice by requiring 

Waymo to comply with Rule 26. To this day, it has not. The only suitable remedy is preclusion. 

Waymo’s opposition (Dkt. 934 (“Opp.”)) to Uber’s motion to strike (Dkt. 797) boils down 

to an argument that Waymo should not be held to the Federal Rule’s damages disclosure 

requirements, and instead should be permitted to hold its damages theories, computations, and 

supporting documents in reserve. Despite failing to make adequate initial disclosures by the 

Court’s firm deadline, Waymo now announces that it “already intends to amend its disclosures 

shortly after July 28” (Opp. 11), more than a month after the Court’s June 21 deadline for initial 

disclosures, after the deadline for serving written discovery, and apparently without any effort to 

show good cause. (Dkt. 563 at 1.) Waymo offers no reason why the Court did not mean what it 

said when it ordered that sufficient initial disclosures had to be made by June 21, 2017 on “pain 

of preclusion.” (Id.) The plain text of Rule 26 does not support Waymo’s insistence on special 

treatment, and neither do the facts of this case. 

Instead, Waymo devotes more than half of its opposition to a revisionist narrative about 

discovery in this case; a description that is both inaccurate and irrelevant. A party’s Rule 26 

obligations are independent of any subsequent discovery: they must be made “without awaiting a 

discovery request.” FED. R. CIV. P. 26(a)(1)(A) (emphasis added). The rule exists to ensure that 

“basic information that is needed in most cases to prepare for trial or make an informed decision 

about settlement” is disclosed early in the case, shaping and informing discovery and trial 

preparations. FED. R. CIV. P. 26, 1993 adv. comm. note. Waymo had an obligation to disclose its 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 4 of 18
2 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

damages calculations based on the information available to it at the time. It failed to do so three 

times.1 Moreover, Waymo’s failure has not been remedied, as Waymo continues to resist Uber’s 

repeated requests for clarity on Waymo’s speculative damage claims. Waymo’s delay would be 

inappropriate in any context, but is acutely prejudicial due to the extraordinary pace of this 

litigation—a pace Waymo demanded. 

Separate from its failure to provide sufficient damages disclosures, Waymo also attempted 

to add 14 late-disclosed witnesses to its initial disclosures without seeking leave of Court or 

establishing good cause. Waymo obviously waited to receive and review Uber’s initial 

disclosures before deciding who to add to its own list. Again, Waymo offers no credible 

justification for its untimely supplement or any meaningful response to Uber’s showing of 

prejudice. Waymo’s “corrected” supplemental disclosures—including the 14 late-disclosed 

witnesses—should be struck. 

ARGUMENT 

I. Uber Has Been Prejudiced.

The discovery cutoff in this case is fast approaching, and expert reports are due on August 

24, 2017. (Dkt. 563 ¶ 5.) The cutoff for providing new discovery requests is tomorrow, July 25, 

2017. (Id. at ¶ 3 (setting the non-expert discovery cut-off on August 24, 2017); FED. R. CIV. P. 

33(b)(2) and 34(b)(2) (allowing a responding party 30 days to answer an interrogatory or request 

for production of documents).) At this point, Uber has already lost the opportunity to conduct 

meaningful and thorough damages discovery with the appropriate level of knowledge of what 

Waymo is claiming. Because Waymo has failed to explain its damages computations and 

theories, Uber does not know if it served the right discovery, deposed the right people, or asked 

the right questions. Uber is also disabled and prejudiced in having its own experts analyze 

Waymo’s damage theories. Uber has conducted eleven depositions to date, including Alphabet’s 

CEO, without the benefit of this information. This is clear prejudice to Uber, particularly given 

 1

 Waymo served its first initial disclosures on April 3, 2017. It then served supplemental 

initial disclosures on June 21, 2017—the deadline set by the Court “on pain of preclusion.” (Dkt. 

563 ¶ 1.) The following day, without seeking leave or establishing good cause, Waymo served 

“corrected supplemental initial disclosures.” (Dkt. 797-3; see Dkt. 797-1 (Pritt Decl.) ¶¶ 2-3, 5-6.) 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 5 of 18
3 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 expedited nature of this case. 

As a result, Uber’s damages discovery has been a guessing game. Even given Waymo’s 

most recent interrogatory responses—served the same week that Waymo filed its opposition to 

this motion—Waymo’s damages theories and computations have been shifting and vague. 

Waymo continues to hold critical information in reserve, including the specific theories that it is 

proceeding under, any information relating to lost profits (if Waymo is seeking lost profits), the 

royalty base and royalty rate for its alleged “reasonable royalty” measure of damages, and even 

the form in which that royalty will be claimed. Waymo’s apparent aim is to disclose its claimed 

damages in its expert report—but this will be acutely prejudicial to Uber. Under the compressed 

schedule in this case, Uber will only have fourteen days to respond to Waymo’s opening expert 

report. (Dkt. 563 ¶ 5.) 

The speculative nature of Waymo’s damages amplifies the prejudice to Uber. Waymo told 

the Court that it its damages theories are “complicated, and they’re new.” (Dkt. 775 (06/29/2017 

Hr’g Tr.) 98:10–12.) Waymo should not be permitted to come forward now with speculative new 

theories about damages, leaving Uber to scramble to address these “new” theories at the eleventh 

hour. Uber’s ability to defend against these new theories has already been irreparably 

undermined. 

II. Waymo’s Rule 26(a) Damages Disclosures Are Insufficient.

Waymo argues its disclosures were “sufficient as of the dates they were provided.” (Opp. 

7; see also id. at 1, 8, 10–11.) This is plainly not true. No version of Waymo’s disclosures 

provided a “computation” of any category of damages, as required under Rule 26(a)(1)(A)(iii) 

and Patent Local Rule 3-8. (Dkt. 797-2 (Supplemental Initial Disclosures) at 18; Dkt. 797-3 

(“Corrected” Suppl. Disclosures) at 19-20; see also Dkt. 797-5 (Patent Damages Contentions) at 

2.) Nor did Waymo identify a single document related to its damages claims, any information that 

was being withheld on the basis of privilege, or any explanation of why Waymo was allegedly 

not able to provide more information at the time. (See Dkt. 797 (explaining deficiencies).) 

Waymo simply provided a generic list of legal categories of potentially available damages, 

including categories where the information on which the calculation would be based was entirely 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 6 of 18
4 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 Waymo’s control, stating it “would be premature to estimate the amount of damages at this 

time.” (Id. (quoting Dkt. 797-2 at 18).) Put another way: A party need not have known anything at 

all about this case to produce the “disclosures” Waymo put forth. This type of deficient disclosure 

is exactly what the rules and the Court’s Orders prohibit. (Dkt. 563 ¶ 1.) 

To the extent that Waymo believed it was missing necessary information, Rule 26 and 

Brandywine expressly explain how to deal with such a situation. Waymo should have disclosed 

the information within its possession, and specifically stated what it needed but did not have. See 

FED. R. CIV. P. 26(a)(1)(E); Brandywine Commc’ns Techs., LLC v. Cisco Sys., Inc., No. C 12-

01669 WHA, 2012 WL 5504036, at *3 (N.D. Cal. Nov. 13, 2012) (holding plaintiffs must be 

“specific” in identifying “any such disability and the reason therefor”). Waymo did not. 

Waymo claims Brandywine is irrelevant because it was a patent case. (Opp. 10.) That is 

incorrect. First, this is also a patent case; one patent infringement claim remains, and Waymo’s 

patent damages disclosures, like its initial disclosures, were woefully inadequate. (See Dkt. 797-5 

(Pritt Decl. Ex. D).) Moreover, Brandywine’s discussion of the requirements for lost profits and 

reasonable royalty disclosures apply equally to trade secrets claims, particularly where, as here, 

Waymo expressly claimed both of these forms of relief in its initial disclosures. (Dkt. 797-3 (Pritt 

Decl. Ex. B).) And finally, Federal Rule of Civil Procedure 26 applies to all cases—regardless of 

their subject matter. There is no “trade secret exception” to Rule 26. 

Nor is Waymo excused from Rule 26 simply because there is “no established royalty rate 

for technology to be applied in the nascent but highly competitive self-driving car space.” (Opp. 

10.) That Waymo has no viable theory for damages because the market does not exist is a reason 

Waymo should be required to identify and explain its alleged damages in greater detail and 

earlier, not in less detail and later. 

III. Waymo Cannot Remedy its Insufficient Disclosures Through Discovery.

Waymo argues that the ongoing nature of discovery in this matter excuses its failure to 

disclose its alleged damages. (Opp. 1–6.) Waymo’s focus is misplaced: “Disclosure is not the 

same as discovery. Those are two different things.” (Dkt. 775 (06/29/17 Hrg. Tr.) 98:3–4; 97:2–

3.) 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 7 of 18
5 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 Federal Rules separate out initial disclosures from discovery because of the value to 

the parties—and to the fair and efficient administration of justice and due process—in receiving 

initial disclosures early in the litigation. Rule 26(a)’s requirements are “the functional equivalent 

of court-ordered interrogatories” that concern “certain basic information that is needed in most 

cases to prepare for trial or make an informed decision about settlement.” FED. R. CIV. P. 26, 

1993 adv. comm. note. “A major purpose of [Rule 26] is to accelerate the exchange of basic 

information about the case and to eliminate the paper work involved in requesting such 

information.” Id. Failure to provide damages computations and documents as part of initial 

disclosures—as Waymo failed to do in its initial, supplemental, and corrected disclosures, and 

still has not done—prevents the parties from meaningfully engaging in settlement discussions and 

makes it impossible for the parties and the Court to accurately apply the proportionality 

requirements to discovery. Corning Optical Commc’ns Wireless Ltd. v. Solid, Inc., 306 F.R.D. 

276, 278 (N.D. Cal. 2015); FED. R. CIV. P. 26(b)(1). Under the compressed schedule in this case, 

early and complete damages disclosures were necessary to permit Uber to serve the right 

discovery and prepare to rebut Waymo’s expert claims. 

To the extent Waymo’s argument is that it needed discovery from Uber to complete its 

damages computations, that is no excuse for Waymo’s failing to provide any damages 

computations and supporting materials in its initial disclosures. Even assuming Uber’s 

information would help Waymo further refine its damages computations, a party “should not be 

allowed to evade the duty to lay out its damages contentions at the outset of the case merely 

because it hopes it can frame more handsome contentions after discovery.” Brandywine, 2012 

WL 5504036, at *1, *3; see also FED. R. CIV. P. 26(a)(1)(A). In any event, Waymo’s contention 

is belied by the face of its disclosures, in which Waymo conceded that it would rely on “its

estimates of future profit and cash flows; its assessment and projections regarding the relevant 

markets . . . and its investment in LiDAR technology” in calculating its damages. (Dkt. 797-3 

(Pritt Decl. Ex. B) at 19 (emphasis added).) Even where the basis for a computation was entirely 

within its control, Waymo provided none. Waymo’s excuse is also belied by its service of 265 

early requests for production long before the June 21 deadline—which it has claimed included 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 8 of 18
6 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

essentially no damages-related requests. (See, e.g., Declaration of Meredith Dearborn in Support 

of Defendants’ Reply (“Dearborn Reply Decl.”) Ex. 1 (6/26 9:00pm L. Cooper email (“Waymo 

did not include damages-specific discovery in its initial sets of requests for production. . . . 

Waymo plans to serve approximately 30 requests for production on damages‐related topics.”).) 

Waymo’s argument that its provision of damages-related discovery to Uber is an adequate 

substitute for initial disclosures turns Rule 26 on its head. (Opp. 6.) Uber cannot fairly be 

expected (let alone required) to divine how Waymo may use its insufficient damage disclosures. 

In Baca v. State of California, No. C 13-02968 SBA, 2016 WL 234399 (N.D. Cal. Jan. 20, 2016), 

Judge Armstrong rejected the argument Waymo makes here and precluded the plaintiff from 

seeking damages. There, the plaintiff failed to provide any damages computation in his initial 

disclosures regarding his medical costs, but argued that his failure was harmless because all of the 

information underlying his expenses was “contained within the medical records” that were 

already in the defendants’ possession. Id. at *5. Judge Armstrong rejected this proposition, 

holding that “a party cannot avoid its obligation to provide a damage calculation merely by 

producing records ostensibly containing such information.” Id. (citing Lancelot Investors Fund, 

L.P. v. TSM Holdings, Ltd., No. 07 C 4023, 2008 WL 1883435, at *6 (N.D. Ill. Apr. 28, 2008) 

(“Rule 26 requires that the calculation be done by the party claiming damages, not its opponent, 

who under the defendants’ unsupportable theory is left to sift through extensive records of the 

defendants and guess at what the damage claim is.”)). In Baca, where the case was 82 days from 

trial at the time of the order, the remedy was preclusion. Id. at *1 (disclosing the trial date). Here, 

trial is only 78 days away. Preclusion is warranted here, just as in Baca. 

Under Waymo’s vision of Rule 26—where a party may be excused from violating the 

Rule’s requirements based on subsequent production of documents through discovery—Rule 26’s 

early-disclosure requirements would be meaningless. (See Opp. 9 (“Waymo has always 

anticipated updating its disclosures to more specifically identify the trade secret damages 

methodologies it intends to pursue once Uber makes at least its first damages-related 

production.”).) There is no “gamesmanship” (Opp. 5) in holding Waymo to its obligations under 

the Federal Rules of Civil Procedure in order to prevent the prejudice Uber will otherwise suffer. 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 9 of 18
7 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

IV. Uber Still Does Not Have Waymo’s Damages Information.

Although Waymo’s production of materials in discovery could not, as a matter of law, 

cure the inadequacy of its initial disclosures, Waymo is wrong that Uber “has virtually all of 

Waymo’s confidential information related to damages.” (Opp. 6.) Instead, Waymo has continued 

to hide the ball, serving interrogatory responses that obfuscate Waymo’s actual damages theories, 

and resisting Uber’s repeated requests for damages discovery. 

Since Uber served its document requests in May 2017, Uber has repeatedly had to force 

Waymo to produce damages-related discovery, including by seeking relief before Judge Corley 

twice so far. (See Dkt. 808 (7/6 Order) at 2 (granting Uber’s motion to compel Waymo to produce 

documents responsive to RFPs related to “damages/relief issues”); Dkt. 832 (7/7 Order) at 3 

(granting Uber’s motion to compel Waymo to produce documents regarding Waymo’s 

relationship with Lyft because “documents are relevant to Plaintiff’s claim of damages”).) 

Waymo’s counsel continues to refuse to search for or produce any emails concerning, among 

other things, “Waymo’s ‘financial ability’ and ‘performance,’” and Waymo’s business plans, 

strategic plans, operating plans, marketing plans, financial plans, sales plans, and investment 

plans for its ride-sharing business, including projections for revenue generation and profitability. 

(Dearborn Reply Decl. Ex. 2 (7/19 1:39pm M. Baily email (“Waymo will not agree to do that”)).) 

This information is plainly relevant to Waymo’s damages. And contrary to its representation that 

Uber already has “virtually all” relevant damages information, Waymo continues to withhold 

documents and revise its interrogatories. (Dkt. 934-7 (Judah Decl. Ex. 6) at 4–5; see also

Dearborn Reply Decl., Ex. 3 (7/21 L. Cooper 5:15pm email (stating that Waymo “expects to 

produce additional information regarding damages early next week”)).) In short, Waymo has not 

come close to producing everything Uber has requested. 

Waymo also exaggerates the significance of the damages-related documents it has 

produced to date. For example, Waymo’s motion makes much of the “nearly 4000 rows of 

Waymo financial information” it produced weeks after the June 21 initial-disclosure deadline 

(Opp. 11), referring to a spreadsheet of indecipherable content that Waymo cited in its July 13 

supplemental response to Uber’s interrogatories. The document offers virtually no context for 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 10 of 18
8 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

interpreting its contents. As best as Uber can tell, this spreadsheet identifies every single cost

associated with Waymo’s Chauffeur program from 2009 to the present, including legal fees, 

marketing, and driver instruction. (See also Dearborn Reply Decl., Ex. 3 (7/21 L. Cooper 5:15pm 

email (describing the document as “the costs Waymo has incurred in developing its asserted trade 

secrets on a month-by-month basis, broken down by cost center”)).) Notably, the spreadsheet 

does not break down costs on a trade-secret-by-trade-secret basis. When Waymo narrows its list 

of trade secrets by August 1, (Dkt. 563 at 4), the spreadsheet will be even more useless than it is 

today. In any event, Waymo was and remains required to do more than throw confounding raw 

data at Uber. Baca, 2016 WL 234399 at *5. It was required to provide a damages computation. 

FED. R. CIV. P. 26(a)(1)(A)(iii). None of the “nearly 4000 rows of Waymo financial information” 

provide that. 

Waymo also points to two of its interrogatory responses to claim that Uber has already 

received Waymo’s financial information. (Opp. 6 (citing Judah Decl., Exs. 6 and 7 (Interrogatory 

Nos. 6 and 13)).) Though lengthy, these interrogatory responses say little of substance. They 

largely recite categories of damages, and then go to great lengths to preserve Waymo’s flexibility 

to change its theories later. 

In its response to Uber’s contention interrogatory on damages (Interrogatory No. 13), for 

example, Waymo has stated that it will seek damages in the form of unjust enrichment, and its 

interrogatory response generally identifies four alternative measures of such relief, but Waymo 

does not identify which measure (or combination of measures) it will actually apply in this case. 

(Dkt. 934-7 (Judah Decl., Ex. 6) at 9–12.) The same is true of Waymo’s claim for a reasonable 

royalty: Waymo does not tell Uber what form that royalty will take, hedging its bets by claiming 

that it will either be “in the form of a lump sum payment or a running royalty rate, or a 

combination of both.” (Id. at 15 (trade secrets), 23 (remaining patent).) Waymo also fails to 

disclose the theory underlying its royalty claim, saying that it may take a “analytical approach 

and/or a hypothetical negotiation approach,” by reference to extremely broad categories of 

documents, such as those “recognized as relevant to the determination of a reasonable royalty in 

cases such as Georgia-Pacific, among others.” (Id. at 15 (trade secrets), 25 (patent).) Tellingly, 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 11 of 18
9 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

while Waymo spends eleven additional pages cutting-and-pasting some of the factors its expert 

may consider (id. at 14–28), nowhere does it identify the “claimed royalty rate” or “claimed 

royalty base,” or multiply “the two for a total, specifying the information by year,” which “can 

and should [have been] done” at least preliminarily in Waymo’s initial disclosures. Brandywine, 

2012 WL 5504036, at *2. 

Equally unenlightening is Waymo’s response to Uber’s Interrogatory No. 6, concerning 

the “time to develop each of its trade secrets,” (Opp. 2), which Waymo identified, along with the 

spreadsheet identified above, as the “damages-related discovery” referenced in its Opposition. 

(Dearborn Reply Decl. Ex. 3 (7/21 L. Cooper 5:15pm email).) First, the information in this 

response describes documents and information within Waymo’s control; there is no reason why 

Waymo did not include this information in its June 21 initial disclosures other than to sandbag 

Uber. And Waymo continues to update this interrogatory response, including as recently as July 

21, without making the required showing of good cause that is required to amend a party’s initial 

disclosures. (Dearborn Reply Decl. ¶¶ 5-6, Ex. 4 (“Second Supplemental Response to 

Interrogatory No. 6,” served on July 21, 2017).) 

Second, this information is obviously not all of the information Waymo will rely on for its 

damages computations, as it provides only a subset of the costs Waymo allegedly incurred. 

Because it does not provide any computation of any form of legally available damages, it could 

not substitute for the disclosures required under Rule 26. 

Third, this disclosure is broad and ambiguous. Buried in 111 pages of boilerplate, Waymo 

has estimated that it spent 

 It is not clear from this interrogatory whether these values are cumulative or 

overlapping. Nor is it clear whether or how these numbers will figure into any damages 

“computation.” Nor is it clear which of these are the “less than ten” trade secrets that Waymo 

plans to take to trial. (Dkt. 563 at 4.) But assuming that Waymo may seek to recoup as damages 

some percentage of the value it spent on these trade secrets (which is an assumption Uber cannot 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 12 of 18
10 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

make and does not know, and would almost certainly be improper), all Uber can guess is that 

Waymo may be seeking somewhere between zero Thus, Waymo’s 

interrogatory response does nothing more than hide Waymo’s true damages calculations. This is 

the opposite of what Rule 26 requires of all litigants. 

Moreover, neither of Waymo’s interrogatory responses contain any information 

whatsoever about lost profits, a form of damages Waymo claimed in its inadequate initial 

disclosures, and which Uber has been left to speculate about in preparation for trial ever since. 

(Compare Dkt. 797-2 (Pritt Decl., Ex. A) at 18 with Dkt. 934-7 (Judah Decl., Ex. 6) at 9–28.) 

While Waymo has since disclaimed lost profits as a measure of damages for its patent claims 

(Dkt. 934-7 (Judah Decl., Ex. 6) at 23), it is unclear whether it is disclaiming this measure for its 

trade secret claims. To the extent Waymo is attempting to reserve the right to add lost profits back 

into the case in at a later time, this is a particularly egregious violation of the rules. All of the 

information required to calculate lost profits is, and remains, in Waymo’s control. (See Dkt. 797-2 

(Pritt Decl. Ex. A) at 18.) 

In short, even if Waymo could use its interrogatory responses as a replacement for its 

initial disclosures, these responses still fall far short. To this day, Waymo has not provided a 

meaningful computation of any category of damages, flouting Rule 26 and the Court’s orders, and 

continuing to deprive Uber and the Court of an understanding of what this case is allegedly 

“worth.” Corning, 306 F.R.D. at 278. 

Waymo chose to bring this case, and it demanded an expedited trial and “bone-crushing” 

discovery schedule. (Dkt. 731 (7/18 Order) at 3.) It must comply with the rules. Without adequate 

disclosures by Waymo, Uber is left with the shifting sands of discovery as Waymo repeatedly 

claims that its theories, numbers, and responses are subject to constant change. This hide-the-ball 

approach is inequitable and unfair, and has prejudiced Uber. 

V. The Only Meaningful Remedy at This Point Is Preclusion. 

A. As the Court Has Correctly Observed, Preclusion Is the Proper Remedy for 

Failure to Provide Adequate Initial Disclosures. 

The Court has repeatedly cautioned the parties that the remedy for failure to make 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 13 of 18
11 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

adequate initial disclosures is preclusion. The Court specifically ordered, in permitting the parties 

to amend their initial disclosures, that failure to provide adequate damages disclosures by the 

court-ordered June 21, 2017 deadline would be “on pain of preclusion.” (Dkt. 563 ¶ 1.) The Court 

further emphasized that any amendment beyond that deadline would require the party 

supplementing its disclosures to “throw” itself “on the mercies of the court and do supplements 

for good cause.” (Dkt. 625 (6/7/2017 Hr’g Tr.) 69:2–72:9.) The Federal Rules likewise call for 

preclusion. Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001) 

(“Rule 37(c)(1) gives teeth to these requirements by forbidding the use at trial of any information 

required to be disclosed by Rule 26(a) that is not properly disclosed.”); Brandywine, 2012 WL 

5504036, at *1 (“plaintiff must nonetheless do the best it can on pain of preclusion”). 

To begin with, Waymo has not even purported to seek leave of Court to serve belated 

initial disclosures, or to make the required showing of good cause. Rather, Waymo simply 

announced in its opposition to this motion that it “always anticipated updating its disclosures” 

after Uber’s document production in late July, as if the Court’s words and the Federal Rules’ 

requirements meant nothing. (Opp. 9.) 

Contrary to Waymo’s suggestion (Opp. 11–12), courts will not hesitate to preclude a party 

from advancing a damages claim when the party’s initial damages disclosures were inadequate. 

E.g., Gilvin v. Fire, No. 99-CV-530, 2002 WL 32170943 at *3 (D.D.C. Aug. 16, 2002) (applying 

Rule 37 to preclude damages evidence where plaintiff failed to “provide a computation of such 

damages in accordance with” Rule 26); Austrian Airlines Oesterreichische Lufverkehrs Ag v. UT 

Fin. Corp., 2005 WL 977850, at *1 (S.D.N.Y. Apr. 28, 2005) (precluding plaintiff from 

presenting new damages theory, even though it was disclosed before the close of fact discovery; 

disclosure was “simply too late”); Baca, 2016 WL 234399 at *5 (precluding damages in an order 

82 days from trial, where plaintiff had made inadequate disclosures). 

B. Waymo’s Failures Are Neither Substantially Justified Nor Harmless. 

Preclusion is the right remedy here because Waymo’s failure to provide adequate initial 

damages disclosures was neither substantially justified nor harmless. FED. R. CIV. P. 37(c). Once 

Uber identified the inadequacies of Waymo’s initial disclosures, the burden shifted to Waymo to 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 14 of 18
12 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

explain why the failure was substantially justified or harmless. Baca, 2016 WL 234399, at *3. 

Waymo has done neither and preclusion is therefore appropriate. 

1. Waymo’s Failure Was Not Substantially Justified. 

The only excuse Waymo offers for its inadequate disclosures is that it was waiting for 

Uber to provide some discovery first in order to “inform” its damages computation. (Opp. 6.) 

This is not a valid excuse: Waymo was required to disclose the computation available at that time, 

along with the information on which that computation was based, as of the deadline, even if that 

computation would later be amended. Brandywine, 2012 WL 5504036, at *2–3. Indeed, under 

Rule 11, Waymo had to have had at least some computation to even claim damages in the first 

place, which it was unquestionably required to disclose under Rule 26. 

Waymo also argues that “fairness and equal treatment” dictate that Waymo “should have 

an opportunity to amend its disclosures.” (Opp. 7.) To be clear, Waymo has had two opportunities 

to serve adequate disclosures, and then gave itself a third opportunity with its belated “corrected 

supplemental initial disclosures.” It has failed now three times. In an effort to distract from its 

own failings, Waymo engages in a gratuitous description of separate disputes relating to Uber’s 

privilege logs (Opp. 7–8), the characterization of which Uber disputes. In any event, Waymo cites 

no rule or case for the proposition that Rule 26 violations may be offset by legitimate, unrelated 

disputes about the nature and scope of the attorney-client privilege. 

Nor were there any failures in Uber’s own Rule 26 disclosures, never mind any that would 

substantially justify Waymo’s own deficient disclosures. (Opp. 8.) Waymo would have this Court 

equate Uber’s purported failure “to provide contact information for Anthony Levandowski other 

than identifying his counsel of record” (id.) with Waymo’s failure to provide any damages 

computation at all to this day. Not only is that argument absurdly lopsided, but the lone “defect” 

Waymo identifies in Uber’s disclosures is not a defect at all. (Id.) The rules say that a party must 

provide the name and, “if known,” contact information for each individual likely to have 

discoverable information. FED. R. CIV. P. 26(a)(1)(A)(i). At the time of the revised disclosures, on 

June 21, 2017, Levandowski was no longer an Uber employee and had not for some time been 

under Uber’s control. Waymo itself did not list any address for several third-party witnesses, 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 15 of 18
13 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

including third-party Stephanie Olsen, “Anthony Levandowski’s life partner,” and Waymo listed 

no non-business address for any witness. (Id. at 17.) Moreover, Waymo has not had any difficulty 

in getting in touch with Mr. Levandowski through his counsel. In any event, this one “defect”—

which is not a violation of the rules—bears no comparison to Waymo’s refusal to provide 

meaningful information about its damages claims, as required by Court Order and the rules. 

Finally, Waymo claims its failure was substantially justified because it always intended to 

provide an adequate damages disclosure after it received additional discovery from Uber—more 

than a month after the Court’s mandated deadline for amending initial disclosures. (Opp. 9–10.) 

This excuse fails as a matter of law for the reasons described above. “A party is not excused from 

making its disclosures because it has not fully investigated the case or because it challenges the 

sufficiency of another party’s disclosures or because another party has not made its disclosures.”

FED. R. CIV. P. 26(a)(1)(E). 

2. Waymo’s Failure Was Not Harmless. 

As described above, Uber still does not have an adequate disclosure of Waymo’s damages 

computations and supporting documents. Waymo’s deficient initial disclosures and continued 

violation of the rules has not been harmless. To the contrary, it has resulted in significant and 

ongoing prejudice to Uber’s ability to defend itself. 

First, as described above, without accurate and complete disclosures, Uber cannot 

adequately prepare its discovery requests, its expert reports, or its case for trial. Under the 

compressed schedule that Waymo demanded, Uber has now lost the opportunity to craft 

appropriate discovery before the cutoff, and Uber will have just fourteen days to respond to 

“complicated” and “new” theories that Waymo has been cooking up for months. 

Second, the proper scope of discovery and resolution of discovery disputes in this case 

hinge on the question of whether the request is “proportional to the needs of the case.” FED. R.

CIV. P. 26 (b)(1). It is impossible for Uber, the Special Master, or the Court to adequately gauge 

whether discovery is proportional if Waymo refuses to explain what it believes its case is worth. 

Corning, 306 F.R.D. at 279 (“Even if Solid were willing to wait to find out what this case is 

worth—which it is not—the court still needs to know as it resolves the parties’ various discoveryCase 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 16 of 18
14 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 disputes. Proportionality is part and parcel of just about every discovery dispute.”). 

Waymo claims that “patentees need lots of information from accused infringers,” citing Corning, 

but omits Judge Grewal’s immediate following sentence: “the expense of producing lots of 

information can only be justified by a meaningful calculation suggesting that substantial dollars 

are actually at stake.” Id. at 278. Under the recently revised Federal Rules, an early computation 

of damages is necessary to determine proportionality in ongoing discovery disputes. 

Third, without Waymo’s damages computation, Uber has been unable to accurately 

determine the value of this case for settlement. FED. R. CIV. P. 26, 1993 adv. comm. note. 

VI. Waymo’s Late-Disclosed Witnesses Are an Independent Violation of Rule 26. 

Waymo devotes only seven lines to attempting to justify why it disclosed fourteen 

witnesses after the Court’s deadline. It cites no case law to support its late disclosure. Rather, 

Waymo relies on the unsupported assertion that Uber has not suffered prejudice and that 

Waymo’s conduct was “inadvertent.” (Opp. 13.) Waymo submitted no attorney declaration 

explaining this “inadvertent” mistake. Klamut v. Nibecker, No. 15-CV-02132-MEJ, 2017 WL 

1196725, at *2 (N.D. Cal. Mar. 31, 2017) (requiring a declaration from counsel to establish 

excuse under Rule 37). But even if it had, “inadvertence . . . do[es] not substantially justify failure 

to comply with the rules.” Baker v. W. Contra Costa Sch. Dist., No. C-11-02529-WHA, 2011 

U.S. Dist. LEXIS 127406, at *5 (N.D. Cal. Nov. 3, 2011). Waymo has failed to establish the good 

cause required for supplementation. (Dkt. 625 (6/7/2017 Hr’g Tr.) 69:2–72:9.) 

What happened here is obvious. Waymo waited to see Uber’s disclosures and then 

decided to add names after doing so. Uber was prejudiced by this delay because Waymo gained 

the benefit of reviewing Uber’s timely filed disclosures before making the strategic decision 

about which witnesses to include. Waymo does not disclaim this. Simultaneous disclosures 

impose discipline and mutuality, requiring the parties to identify their case-in-chief without 

cheating off the other side’s homework. See Maine v. Kerramerican, Inc., No. CV-04-191-B-W, 

2007 WL 731306, at *3 (D. Me. Mar. 6, 2007) (imposing sanctions under Rule 37 where 

“[h]olding back this information was a deliberate attempt to gain a strategic advantage from nondisclosure and violates the spirit of the Court’s orders and the rules of civil procedure”). Waymo 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 17 of 18
15 

DEFENDANTS’ REPLY TO ENFORCE THE COURT’S ORDER AND TO STRIKE

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

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 

did not comply with the Court’s orders and has no excuse—plain and simple. 

CONCLUSION 

The Court gave both parties the express instruction to “complete[]” initial disclosures by 

June 21, 2017 “on pain of preclusion.” (Dkt. 563¶ 1.) The Case Management Order can only be 

modified by a showing of good cause—a showing that Waymo has not even attempted to make. 

Uber’ ability to defend against Waymo’s damages claims has already been irreparably 

undermined. Under the circumstances, the Court is fully within its authority to preclude Waymo 

from seeking damages at trial, to preclude Waymo’s reliance on the late-disclosed witnesses, and 

to strike Waymo’s untimely filing. Uber respectfully requests it do so. 

Dated: July 24, 2017 MORRISON & FOERSTER LLP 

BOIES SCHILLER FLEXNER LLP 

By: /s/ Karen L. Dunn 

KAREN L. DUNN 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. and 

OTTOMOTTO LLC 

Case 3:17-cv-00939-WHA Document 1004 Filed 07/24/17 Page 18 of 18