DEFENDANTS’ MOTION FOR RELIEF FROM AND 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, 

Defendants. 

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

DEFENDANTS UBER 

TECHNOLOGIES, INC. AND 

OTTOMOTTO, LLC’S MOTION FOR 

RELIEF FROM AND EMERGENCY 

MOTION FOR STAY OF NONDISPOSITIVE PRETRIAL ORDER OF 

MAGISTRATE JUDGE (DKT. 951) 

Trial Date: October 10, 2017 

 REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED 

Case 3:17-cv-00939-WHA Document 1007 Filed 07/24/17 Page 1 of 5
DEFENDANTS’ MOTION FOR RELIEF FROM AND 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 

Halfway through fact discovery and just a few days before its August 1 deadline to narrow 

its trade secret claims for trial, Waymo is instead trying to vastly expand the scope of the case. 

After close to 100,000 pages of documents, 22 depositions, 307 requests for production, 46 

interrogatories, and ten inspections (which spanned over 55 hours and included inspections of 

Uber’s facilities, source code, design files, emails, technical documents, and engineers’ 

computers), Waymo has yet to find any evidence that Uber acquired or used Waymo’s trade 

secrets regarding its LiDAR technology—because there is none. Instead, Waymo is now trying 

to explore a different area: non-LiDAR technology. Waymo’s continued fishing expedition is 

unjustified and should be stopped. 

Uber thus requests relief from that portion of Judge Corley’s July 19, 2017 Order 

compelling production of information (in the form of both documents and interrogatory 

responses) related to non-LiDAR technology (the “Order”) on the basis that such information is 

relevant.1 (Dkt. 951 at 1:21-25.) Uber further requests an immediate stay of the Order pending a 

ruling on Uber’s Motion for Relief. The Order requires Uber to produce the non-LiDAR 

information by July 26, 2017. (Id. at 2:23-24.) 

II. ARGUMENT 

Discovery requests directed to non-LiDAR technology are outside the scope of this case, 

and the Order compelling production is clearly erroneous and is contrary to the law, as such 

information is irrelevant. First, there is no dispute that the requests at issue relate to non-LiDAR 

information. Both Judge Corley and Waymo have described them as such. (Order at 1:21 (“NonLiDAR Trade Secrets”); Waymo’s July 11 letter brief (Dkt. No. 878-4) at 2 (“Non-LiDAR Trade 

Secrets”).) Second, the required disclosure of non-LiDAR technological information, which 

includes Uber’s trade secrets, conflicts with Cal. Civ. Proc. Code § 2019.210 and this Court’s 

Order, which reasonably requires Waymo to reduce its list of asserted trade secrets to less than 

 

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 This motion is separate from (though thematically similar to) Uber’s Motion for Relief 

From and Emergency Motion for Stay of Non-Dispositive Pretrial Order (Dkt. 930), which seeks 

a reversal of Judge Corley’s July 12 decision ordering production of non-LiDAR source code 

modules that are unrelated to Waymo’s asserted trade secrets on its Section 2019.210 disclosure. 

Case 3:17-cv-00939-WHA Document 1007 Filed 07/24/17 Page 2 of 5
DEFENDANTS’ MOTION FOR RELIEF FROM AND EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

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

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ten. (Dkt. 563 ¶10; Dkt. 647.) The purpose of both Cal. Civ. Proc. Code § 2019.210 and the 

Court’s Order is to put the defendant in a trade secret case on sufficient and fair notice such that it 

can defend against trade secret claims, while not revealing more of its own trade secrets or 

technological know-how than is reasonably necessary. See Neothermia Corp. v. Rubicor Med., 

Inc., 345 F. Supp. 2d 1042, 1044 (N.D. Cal. 2014) (“early identification of trade secrets, as 

required by the statute . . . prevents plaintiff from using the discovery process as a means to 

obtain the defendant’s trade secrets; [] it frames the appropriate scope of discovery; and [] it 

enables the defendant to form complete and well-reasoned defenses.”); see also Via Techs., Inc. v. 

Asus Comput. Int’l, No. 14-cv-03586-BLF, 2016 WL 1056139, at *2 (N.D. Cal. Mar. 17, 2016) 

(“The scope of the Section 2019.210 disclosure controls the scope of discovery.”). 

From the outset, Waymo has focused its case against Uber on alleged misappropriation of 

LiDAR trade secrets. For example, in its amended complaint, Waymo’s two allegations of trade 

secret misappropriation explicitly relate to LiDAR technology: 

 “Waymo has at all times maintained stringent security measures to preserve the 

secrecy of its LiDAR trade secrets.” (Dkt. 23 ¶ 71 (emphasis added).) 

 “Waymo’s technical information, designs, and other “know how” related to its 

LiDAR system constitute trade secrets as defined by California’s Uniform Trade 

Secrets Act.” (Id. ¶ 80 (emphasis added).) 

 “[Mr. Levandowski] . . . attempt[ed] to erase any forensic fingerprints that would 

show what he did with Waymo’s valuable LiDAR designs once they had been 

downloaded to his computer.” (Id. ¶ 4 (emphasis added).) 

 “In light of Defendants’ misappropriation and infringement of Waymo’s LiDAR

technology, Waymo brings this Complaint . . . .” (Id. ¶ 11 (emphasis added).) 

Waymo’s LiDAR focus underscores the need to reverse the Court’s order. E.g., Comput. 

Econ., Inc. v. Gartner Grp., Inc., 50 F. Supp. 2d 980, 985 (S.D. Cal. 1999) (noting the need for 

specificity of trade secret allegations to “enable[] defendants to form complete and well-reasoned 

defenses, ensuring that they need not wait until the eve of trial to effectively defend against 

charges of trade secret misappropriation.”) 

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DEFENDANTS’ MOTION FOR RELIEF FROM AND EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

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Waymo raised no non-LiDAR trade secrets in its preliminary injunction motion (see Dkt. 

24), and the time for Waymo to amend its pleadings has passed (see Dkt. 563 ¶ 2). Waymo has 

conducted extensive discovery in this case, including 22 depositions, 307 requests for production, 

46 interrogatories, and ten inspections of Uber’s facilities, source code, design files, emails, 

technical documents, and engineers’ computers, all of which focused on Uber’s LiDAR 

technology. The inspections spanned over 55 hours. Waymo likewise focused its contentions on 

LiDAR technology, and did not identify any evidence of use by Uber of non-LiDAR trade 

secrets, aside from a blanket allegation that Uber received the 14,000 files. (See Dkt. 909 

(Declaration of Sylvia Rivera in Support of Defendants Uber Technologies, Inc. and Ottomoto 

LLC’s Opposition to Waymo’s Motion to Compel Further Discovery Responses (“Rivera 

Decl.”)), Ex. 1 at 5-11 (Waymo’s Supplemental Resp. to Uber’s Interrog. No. 1).) 

Waymo’s arguments to the contrary are unavailing. Waymo refers to the content of what 

Mr. Levandowski allegedly downloaded as purported evidence supporting its effort to expand the 

scope of the case (Dkt. No. 878-4 at 2), but has no evidence that Uber ever acquired or possessed 

any of those files. Waymo also cites a single document that it argues shows a “collection” of 

information from the self-driving car team, but omits that it is a general goals document with no 

actual description of claimed trade secrets to software or source code, and therefore cannot justify 

broad discovery into non-LiDAR software. (Dkt. 25-20 (Jaffe Decl. Ex. 14); also filed as Dkt. 

907-9 (Rivera Decl. Ex. 3).) Given Waymo’s consistent focus in its disclosures and discovery 

responses on LiDAR technology, mere allegations that Mr. Levandowski had access to general 

non-LiDAR information is insufficient to support switching gears and expanding discovery well 

into the case as Waymo proposes. 

Similarly, Waymo’s reference to its vague Trade Secrets 108 and 109 (“ 

” and for “

”) do not justify expanding discovery. See Loop AI Labs Inc. v. 

Gatti, 195 F. Supp. 3d 1107, 1115-16 (N.D. Cal. 2016) (trade secrets disclosure such as “[a]ll 

information stored in Plaintiff’s Apple MacBook computer” or “[a]ll information stored in 

Plaintiff’s data accounts” were “so vague and unspecific as to constitute no disclosure at all”). 

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DEFENDANTS’ MOTION FOR RELIEF FROM AND EMERGENCY MOTION FOR STAY OF NON-DISPOSITIVE 

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

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Waymo has not previously alleged misappropriation of technology by Uber, did not seek 

expedited discovery in this area, and has pointed to no evidence of any use by Uber of -

related trade secrets. There is no basis for Waymo to now expand discovery into this area, at this 

late stage of the case. 

III. CONCLUSION 

The July 19 Order is contrary to law because it expands the scope of discovery beyond the 

relevant technology in this case. If Waymo wants to maintain its trial date and the extremely 

condensed schedule that it demanded, the parties’ focus should be on the close of fact discovery, 

expert discovery, and trial preparation, not continued discovery into new areas that require the 

review of an ever-increasing amount of irrelevant information separate from the technology 

alleged to be misappropriated in this case. 

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 1007 Filed 07/24/17 Page 5 of 5