DEFENDANT OTTO TRUCKING, LLC’S RESPONSE TO NON-PARTY ANTHONY LEVANDOWSKI’S MOTION FOR INTERVENTION 

AND MODIFICATION OF ORDER (CASE NO. 3:17-CV-00939-WHA) 

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Neel Chatterjee (SBN 173985) 

nchatterjee@goodwinlaw.com 

GOODWIN PROCTER LLP

135 Commonwealth Drive 

Menlo Park, California 94025-1105 

Tel.: +1 650 752 3100 

Fax.: +1 650 853 1038 

Brett Schuman (SBN 189247) 

bschuman@goodwinlaw.com

Rachel M. Walsh (SBN 250568) 

rwalsh@goodwinlaw.com

GOODWIN PROCTER LLP

Three Embarcadero Center 

San Francisco, California 94111 

Tel.: +1 415 733 6000 

Fax.: +1 415 677 9041 

Attorneys for Defendant 

OTTO TRUCKING, LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v. 

UBER TECHNOLOGIES, INC., et al., 

Defendants. 

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

DEFENDANT OTTO TRUCKING LLC’S 

RESPONSE TO NON-PARTY ANTHONY 

LEVANDOWSKI’S MOTION FOR 

INTERVENTION UNDER RULE 24 AND 

MODIFICATION OF ORDER GRANTING 

IN PART AND DENYING IN PART 

PROVISIONAL RELIEF 

Date: June 7, 2017 

Time: 10:00 a.m. 

Courtroom: 8, 19th Floor 

Judge: Hon. William Alsup

Case 3:17-cv-00939-WHA Document 513 Filed 05/26/17 Page 1 of 6
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DEFENDANT OTTO TRUCKING, LLC’S RESPONSE TO NON-PARTY ANTHONY LEVANDOWSKI’S MOTION FOR INTERVENTION 

AND MODIFICATION OF ORDER (CASE NO. 3:17-CV-00939-WHA) 

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Defendant Otto Trucking LLC (“Otto Trucking”) does not oppose Non-Party Anthony 

Levandowski’s (“Levandowski”) Motion for Intervention Under Rule 24 and Modification of Order 

Granting in Part and Denying in Part Provisional Relief. (Dkt. No. 466.) 

Otto Trucking’s responses to the three Fifth Amendment questions posed by the Court are 

below.1 (Dkt. No. 471.) 

1. When an employee steals and retains a competitor’s trade secrets, may the employer, 

upon learning of the theft, direct the employee to make it right with the competitor and 

to return all copies of the trade secrets to the competitor on pain of adverse employment 

action, up to and including termination? Does the Fifth Amendment prevent such 

private action? 

In general, a private company can compel its employee to return or destroy trade secrets 

improperly obtained from a company on pain of adverse employment action. Also, assertion of the 

Fifth Amendment does not prevent such private action by the employer. The Fifth Amendment is 

only implicated by state action. See, e.g., Corrigan v. Buckley, 271 U.S. 323, 330 (1926) (“The Fifth 

Amendment is a limitation only upon the powers of the General Government . . . and is not directed 

against the action of individuals.”). 

2. In such circumstances, may a court order the employer to exercise the full scope of its 

private authority over the employee to cause the employee to return all copies of the 

stolen trade secrets? Does the Fifth Amendment bar such an order? 

The Court cannot order an employer to exercise the full scope of its private authority when 

doing so involves pressuring an employee to waive her constitutional rights. For example, a court 

cannot order an employer to exercise the full scope of its private authority over the employee—which 

includes termination—to cause the employee to return all copies of the stolen trade secrets when the 

Fifth Amendment is asserted. 

Under well-established Supreme Court precedent, a state actor cannot force an individual to 

choose between asserting her Fifth Amendment privilege against self-incrimination and maintaining 

employment. See Gardner v. Broderick, 392 U.S. 273, 279 (1968) (“[T]he mandate of the great 

privilege against self-incrimination does not tolerate the attempt, regardless of its ultimate 

 

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 Otto Trucking notes that all of these questions relate to employment action. Otto Trucking has no 

employees. It merely responds pursuant to the Court’s request and offers its observations to assist the 

Court in its evaluation of these important legal issues. 

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DEFENDANT OTTO TRUCKING, LLC’S RESPONSE TO NON-PARTY ANTHONY LEVANDOWSKI’S MOTION FOR INTERVENTION 

AND MODIFICATION OF ORDER (CASE NO. 3:17-CV-00939-WHA) 

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effectiveness, to coerce a waiver of the immunity it confers on penalty of the loss of employment.”); 

Garrity v. State of New Jersey, 385 U.S. 493, 500 (1967) (holding that “the protection of the 

individual under the Fourteenth Amendment against coerced statements prohibits use in subsequent 

criminal proceedings of statements obtained under threat of removal from office”); see also Lefkowitz 

v. Cunningham, 431 U.S. 801, 806 (1977) (“These cases settle that government cannot penalize 

assertion of the constitutional privilege against compelled self-incrimination by imposing sanctions to 

compel testimony which has not been immunized.”). 

The determinative question then is whether state action exists here. A court order requiring 

private action is unquestionably state action under the Supreme Court’s “state compulsion” test. See 

Johnson v. Knowles, 113 F.3d 1114, 1118 (9th Cir. 1997) (“The Supreme Court has articulated four 

distinct tests for determining when the actions of a private individual amount to state action: (1) the 

public function test; (2) the joint action test; (3) the state compulsion test; and (4) the governmental 

nexus test.”). “State action may be found under the state compulsion test where the state has 

‘exercised coercive power or has provided such significant encouragement, either overt or covert, that 

the [private actor’s] choice must in law be deemed to be that of the State.’” Id. at 1119 (quoting 

Blum v. Yaretsky, 457 U.S. 991, 1004 (1982)). There can be no doubt that the court’s order is 

exercising coercive power to force the employer to exercise the full scope of its private authority over 

the employee. Indeed, facing the threat of contempt for non-compliance, the employer’s “choice” 

can only—and must—be deemed that of the court, a state actor. Therefore, the court, through its 

order, would be forcing the employee to choose between asserting the Fifth Amendment and keeping 

her job. Such state action is prohibited by the Fifth Amendment. 

3. Where an employer learns that its employee has stolen trade secrets from a competitor 

and fails to, on its own initiative, use the full scope of its private authority over the 

employee to return all copies of the trade secrets to their rightful owner, may the Court 

instruct the jury that it may consider such failure as a ratification by the employer of the 

theft? 

Under the limited facts identified in the Court’s hypothetical, it would be improper for the 

Court to instruct the jury that it may consider the employer’s failure to use the full scope of its private 

authority over the employee to return all copies of the trade secrets to their rightful owner as a 

ratification by the employer of the theft. 

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DEFENDANT OTTO TRUCKING, LLC’S RESPONSE TO NON-PARTY ANTHONY LEVANDOWSKI’S MOTION FOR INTERVENTION 

AND MODIFICATION OF ORDER (CASE NO. 3:17-CV-00939-WHA) 

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Under California law, “[a] ratification can be made . . . where an oral authorization would 

suffice[ ]by accepting or retaining the benefit of the act, with notice thereof.” Cal. Civ. Code § 2310; 

see also Breed v. Hughes Aircraft Co., 35 F. App’x 864, 866 (Fed. Cir. 2002) (“To have ratified the 

alleged oral agreement, Hughes must have had knowledge of the agreement and accepted or retained 

its benefit.”) (citing Cal. Civ. Code § 2310). In the Court’s hypothetical, there is no indication that 

the employer ever reviewed or received the stolen trade secrets or that the employer somehow 

benefited from the employee’s possession of the stolen trade secrets. To instruct the jury that it may 

find ratification by the employer where there is no evidence of a benefit to, or retained by, the 

employer would be improper. 

Moreover, “[r]atification is a question of fact,” StreetScenes v. ITC Entm’t Grp., Inc., 103 Cal. 

App. 4th 233, 242 (2002), and the Court should not encourage a particular factual determination for 

the jury by way of jury instruction. Indeed, various courts have found that “an employer need not 

always terminate an employee in order to avoid ratification.” Garcia ex rel. Marin v. Clovis Unified 

Sch. Dist., 627 F. Supp. 2d 1187, 1203 (E.D. Cal. 2009) (citing Fretland v. Cty. of Humboldt, 69 Cal. 

App. 4th 1478, 1491 (1999) (finding no ratification where employer issued a “letter of warning” to 

the employee); Sullivan v. Matt, 130 Cal. App. 2d 134, 144 (1955) (finding no ratification where 

employer did not discharge an employee who had unique and necessary skills). 

// 

// 

// 

Case 3:17-cv-00939-WHA Document 513 Filed 05/26/17 Page 4 of 6
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DEFENDANT OTTO TRUCKING, LLC’S RESPONSE TO NON-PARTY ANTHONY LEVANDOWSKI’S MOTION FOR INTERVENTION 

AND MODIFICATION OF ORDER (CASE NO. 3:17-CV-00939-WHA) 

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Dated: May 26, 2017 Respectfully submitted,

By: /s/ Neel Chatterjee 

Neel Chatterjee 

nchatterjee@goodwinlaw.com

GOODWIN PROCTER LLP

135 Commonwealth Drive 

Menlo Park, California 94025 

Tel.: +1 650 752 3100 

Fax.: +1 650 853 1038 

Brett Schuman 

bschuman@goodwinlaw.com

Rachel M. Walsh 

rwalsh@goodwinlaw.com

GOODWIN PROCTER LLP

Three Embarcadero Center 

San Francisco, California 94111 

Tel.: +1 415 733 6000 

Fax.: +1 415 677 9041 

Attorneys for Defendant 

OTTO TRUCKING, LLC

 

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DEFENDANT OTTO TRUCKING, LLC’S RESPONSE TO NON-PARTY ANTHONY LEVANDOWSKI’S MOTION FOR INTERVENTION 

AND MODIFICATION OF ORDER (CASE NO. 3:17-CV-00939-WHA) 

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CERTIFICATE OF SERVICE 

I hereby certify that I electronically filed the foregoing with the Clerk of the Court for the 

United States District Court for the Northern District of California by using the CM/ECF system on 

May 26, 2017. I further certify that all participants in the case are registered CM/ECF users and that 

service will be accomplished by the CM/ECF system. 

I certify under penalty of perjury that the foregoing is true and correct. 

Executed: May 26, 2017 /s/ Neel Chatterjee

Neel Chatterjee 

Case 3:17-cv-00939-WHA Document 513 Filed 05/26/17 Page 6 of 6