DEFENDANTS’ OPPOSITION TO LYFT’S MOTION TO QUASH SUBPOENA

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 

OPPOSITION TO LYFT INC.’S 

MOTION TO QUASH SUBPOENA 

Date: TBD 

Time: TBD 

Ctrm: F - 15th Floor 

Judge: Jacqueline Scott Corley 

Trial Date: October 10, 2017

Case 3:17-cv-00939-WHA Document 665 Filed 06/20/17 Page 1 of 8
DEFENDANTS’ OPPOSITION TO LYFT’S MOTION TO QUASH SUBPOENA

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I. INTRODUCTION 

Consistent with the Special Master’s guidance on briefing, Uber hereby opposes Lyft’s 

motion to quash. As set forth in more detail below, Uber requests that the Court deny Lyft’s 

motion because the requested discovery is relevant to the issues in this case and not unduly 

burdensome. 

As Lyft’s motion confirms, Waymo and Lyft entered into a deal around May 2017, (see 

Decl. of Taggart Matthiesen, ECF No. 646-2 ¶¶ 5-6), and that deal likely involves the same

technology at issue in this case, with Waymo contributing self-driving technology and Lyft 

contributing ride-sharing technology. (Ex. 1 to Decl. of Michelle Yang, 5/14/17 New York Times

article). While Uber’s knowledge of the deal is limited to what has been reported in the press, 

documents and information regarding the deal—including the terms, the course of negotiations

and the parties’ diligence—appear likely to be relevant to numerous issues in this case. Among 

other things, (1) the terms of the deal may be relevant to damages in this matter because the 

Waymo/Lyft deal may be a roughly comparable agreement for purposes of valuing self-driving 

technology; (2) the parties’ diligence regarding and analysis of the deal may similarly be relevant 

to the measure of damages here, and also to Waymo’s request for injunctive relief (based on the 

alleged loss of potential first-mover advantages); and (3) the procedures for and content of the 

exchange of information regarding Waymo’s self-driving technology, along with any indications 

of preexisting Lyft or public knowledge regarding that technology, are relevant to whether 

Waymo’s technology is entitled to trade-secret protection. 

Accordingly, Uber’s subpoenas to Lyft are well within the scope of permissible thirdparty discovery, particularly where Lyft (1) appears likely to have responsive internal documents 

and information that are not available from Waymo, (2) entered into a deal with Waymo knowing 

of the pending litigation, and (3) has itself confirmed that the scope of the discovery is not unduly 

burdensome. Because the requested discovery will not be unduly burdensome, and focuses in 

significant part on relevant information Lyft alone possesses, Uber respectfully requests that the 

Court deny Lyft’s motion to quash. 

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II. ARGUMENT 

A. Discovery from third-parties is available, unless unreasonable or 

oppressive. 

Federal Rule of Civil Procedure 45 governs subpoenas seeking discovery from nonparties. Fed. R. Civ. P. 45(a)(1)(A)(iii). The scope of discovery permitted via a Rule 45 

subpoena is the same as the scope of discovery permitted under Rule 26(b). Beaver Cty. 

Employers Ret. Fund v. Tile Shop Holdings, Inc., Nos. 16-mc-80062-JSC, 16-mc-80076-JSC, 

2016 WL 3162218, at *2 (N.D. Cal. June 7, 2016). 

The moving party bears the burden of persuasion on a motion to quash under Fed. R. Civ. 

P. 45(c)(3), while the party issuing the subpoena must demonstrate the relevance of the discovery 

sought. Carroll v. Wells Fargo & Co., 2017 WL 1316548, at *2 (N.D. Cal. April 10, 2017); Am. 

Broad. Companies, Inc. v. Aereo, Inc., No. CV-12-80300-RMW, 2013 WL 1508894, at *4 (N.D. 

Cal. Apr. 10, 2013) (“The burden of showing that a subpoena is unreasonable and oppressive is 

upon the party to whom it is directed.”); Chevron Corp. v. Donziger, No. 12-mc-80237 CRB 

(NC), 2013 WL 4536808, at *4 (N.D. Cal. Aug. 22, 2013) (permitting discovery on non-parties). 

B. The documents and information Uber seeks from Lyft are relevant to 

multiple issues in this case. 

Waymo’s case thus far has emphasized two allegations relevant to the Lyft discovery 

Uber seeks: (1) that Uber allegedly took information from Waymo which had previously been 

kept secret and was not publicly known, and (2) that Uber allegedly harmed Waymo by depriving 

it of a possible first-mover advantage. Because discovery regarding Lyft’s deal with Waymo 

should shed light on the value of Waymo’s technology and the extent to which it was known in 

the industry, it is relevant to these two key issues. 

Lyft and Uber are competitors in the ride-sharing industry, and Waymo and OttoMotto 

both are focused on self-driving technology. While the details of the Waymo/Lyft deal are 

currently unknown outside of Waymo and Lyft, there are at least some parallels between the 

players and technology involved in the Lyft/Waymo and Uber/OttoMotto deals. Further, the selfdriving technology Waymo brings to the Lyft deal presumably includes some of the very 

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technology Waymo asserts has been misappropriated in this case (along with everything else 

Waymo might bring to such a deal). The Waymo/Lyft deal thus may provide insight into a 

variety of issues: 

First, the documents and information Uber seeks from Lyft may be relevant to the 

valuation of the technology that Waymo asserts Uber obtained in connection with its acquisition 

of OttoMotto. While there generally are few industry licensing deals or models to consider for 

purposes of valuing technology in nascent industries, the Waymo/Lyft deal may provide a model 

in some respects for purposes of analyzing damages in this matter, particularly to the extent Lyft 

analyzed the value of Waymo’s self-driving technology to its ride-sharing business, given other 

options in the market for Lyft to use. See James Pooley, Trade Secrets § 7.03(2)(d) (2017) 

(parties may use “the terms of other licenses” to analyze damages in a trade secrets case); 

LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 79 (Fed. Cir. 2012) (in calculating 

royalties in a patent case, courts may consider relevant licenses). 

Second, the documents and information Uber seeks from Lyft are likely relevant to 

Waymo’s requested injunctive relief. Waymo’s filings on injunctive relief repeatedly emphasize 

the harm Uber’s efforts might cause to Waymo’s purported first-mover advantage by permitting 

Uber to get to market sooner than it might otherwise. Lyft’s communications regarding and the 

terms of the Waymo/Lyft deal are likely to be relevant to whether Waymo has suffered any harm 

to its momentum in the self-driving industry, based on the perception of a third-party (Lyft) rather 

than Waymo’s internal view. 

Third, the documents and information Uber seeks from Lyft may be relevant to industry 

practices regarding the negotiation of deals involving, and the exchange of information regarding, 

confidential technological information—in particular, self-driving technology—along with 

general industry familiarity with the nature and scope of Waymo’s self-driving technology. This 

information thus may be relevant to whether Waymo’s purported trade secrets are in fact secrets. 

There are also a number of other ways in which information about the Waymo/Lyft deal 

may be relevant. Because this litigation was pending at the time, Lyft and Waymo presumably 

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will have discussed the implications of the litigation on their deal, which may inform a variety of 

issues, depending on the position Waymo took on the scope and value of its technology. 

Accordingly, regardless of whether the requested discovery might require disclosure of 

competitive intelligence, the requested discovery is appropriate. Medtronic MiniMed, Inc. v. 

Animas Corp., No. C 13-80294 WHA, 2014 WL 308952, at *2 (N.D. Cal. Jan. 27, 2014) (Alsup, 

J.) (denying motion to quash subpoena request for third-party competitive intelligence related to 

the product at issue in the litigation). This is particularly true where the non-party may limit 

disclosure only to outside counsel of record under the relevant protective order, and thus the 

documents and information produced cannot be used for business purposes. See Louisiana Pac. 

Corp. v. Money Mkt. 1 Institutional Inv. Dealer, 285 F.R.D. 481, 490 (N.D. Cal. 2012) 

(approving designation of competitive intelligence for production subject to attorneys’ eyes only); 

In re Domestic Drywall Antitrust Litig., 300 F.R.D. 234, 252 (E.D. Pa. 2014) (permitting 

discovery of non-party competitive intelligence with instructions for the parties to meet and 

confer to determine how to protect the information from disclosure). 

C. Lyft is not a disinterested, unrelated third-party. 

This case (1) was pending at the time Lyft entered into a deal with Waymo involving the 

same technology, (2) is very high-profile, and (3) involves what Lyft contends is its main 

competitor. (See Lyft Motion, ECF No. 646 at 1-2.) Lyft thus doubtlessly went forward with the 

deal understanding that it might be impacted in some way by the pending litigation, whether via 

discovery or otherwise. Indeed, Lyft and Waymo presumably discussed the implications of this 

litigation for their deal. 

Perhaps more importantly, Lyft provides a third-party perspective regarding the value of 

Waymo’s technology, particularly the value of that technology in connection with the ridesharing business, and in light of what is known or understood in the industry regarding Waymo 

and third-party self-driving technology. Discovery from Waymo on the Waymo/Lyft deal almost 

certainly will not reflect this perspective in the same way that internal Lyft documents and other 

information will. The discovery Uber seeks from Lyft thus generally is not available from 

Waymo instead. Of course, given the small size of the relevant industry currently, as Waymo 

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repeatedly asserts in its pleadings and elsewhere, any deal in this space may be relevant to the 

value of and knowledge regarding the relevant technology. But the deal between Lyft and 

Waymo presumably involves at least some of the very technology at issue in this case. 

Accordingly, discovery regarding Lyft’s assessment of that technology likely cannot be obtained 

from another source. See Callwave Commc’ns, LLC v. Wavemarket, Inc., No. C 14-80112 JSW 

(LB), 2014 WL 2918218, at *5 (N.D. Cal. June 26, 2014) (permitting discovery of documents 

from non-party where non-party was the “only source” of the documents); In re Domestic 

Drywall, 300 F.R.D. at 245 (permitting discovery of non-party investigative files where non-party 

was “likely the only entity” that had access to the “mosaic” of information). 

D. Lyft’s remaining objections are meritless. 

Lyft’s other objections to Uber’s requests do not warrant denial of the discovery Uber 

seeks: 

First, contrary to Lyft’s arguments, the confidential nature of the information sought does 

not warrant quashing relevant discovery. As the Special Master noted during the parties’ meet 

and confer, the protective order in this case provides a level of confidentiality that limits access to 

outside counsel and a limited number of in-house counsel. (Decl. of Michelle Yang ¶ 3.) The 

approved in-house counsel are not involved in competitive decision-making. (See 3/16/2017 Hr’g 

Tr. 3:12-5:24.) Accordingly, the information Lyft discloses and designates as attorneys’ eyes 

only confidential will not be made available to Uber for business purposes. As other cases have 

noted, “[w]here trade secrets or other confidential commercial information is involved, . . . 

[d]isclosure may be ordered to opposing party’s trial attorney only (and not to the opposing 

party),” RSI Corp. v. Int’l Bus. Machines Corp., No. 5:08-CV-3414 RMW, 2012 WL 3095439, at 

*1 (N.D. Cal. July 30, 2012), thus protecting the confidentiality of that information, Am. Broad. 

Companies, Inc. v. Aereo, Inc., No. CV-12-80300-RMW, 2013 WL 1508894, at *3 (N.D. Cal. 

Apr. 10, 2013) (finding that the party seeking to quash the subpoena offered “no specific 

explanation regarding how [the protective order] measures fail to safeguard information.”). 

Second, contrary to Lyft’s arguments, Uber has tailored its requests to the extent possible 

given the limited information it currently possesses regarding the Waymo/Lyft deal. See Fed. 

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Deposit Ins. Corp. v. Berling, No. 15-mc-80150-JSC, 2015 WL 4198645, at *4 (N.D. Cal. July 

10, 2015) (finding no undue burden where deposition testimony of two non-parties would be 

relevant to the claims in the case). In contrast, Lyft has used the confidentiality of the deal as 

purported justification for a motion to quash, while also asserting that the deal is irrelevant, 

presumably based on confidential information regarding the deal that Lyft will not or cannot 

disclose. (See Decl. of Carolyn Hoecker Luedtke, ECF No. 646-1 ¶¶ 4-5.) 

Nevertheless, Lyft’s motion confirms that responding to the relevant discovery will not be 

unduly burdensome on Lyft, regardless of the scope of the requests. As Lyft’s declarant, Mr. 

Matthiesen, makes clear, there are very few people at Lyft with relevant documents or 

information, given the narrow scope of those with any knowledge about the deal. (Decl. of 

Taggart Matthiesen, ECF No. 646-2 ¶¶ 4, 6.) Mr. Matthiesen, states that Lyft’s dealings with 

Waymo were confined to a “carefully selected . . . small team of Lyft employees,” and were only 

expanded to a “limited number of other employees and only on an ‘as needed’ basis.” (Id. ¶ 4.) 

It also appears from Mr. Matthiesen’s declaration that all documents related to the deal’s terms 

and negotiations have been compiled and managed to further limit access. (Id. ¶ 6.) Accordingly, 

Lyft should be able to identify relevant documents and a deponent (presumably, Mr. Matthiesen) 

with relative ease. 

Third, given the expedited nature of this case, Uber must seek relevant information on the 

Waymo/Lyft deal from both Waymo and Lyft simultaneously. Lyft’s objection that Uber should 

first obtain the information from Waymo rather than pursue discovery from Lyft is incompatible 

with this case’s schedule,1

 particularly where Waymo has objected to providing the relevant 

documents and information.2 And as noted above, Lyft has a unique third-party perspective on 

Waymo’s technology and its value to the self-driving market. Accordingly, regardless of the 

 

1

 As the Court made clear, expediency is a concern in this case. (Order Re Scheduling of 

Depositions, ECF No. 622 (“The Court is concerned that counsel in this action are not moving 

fast enough to complete depositions and will put too much pressure on the jury trial and final 

pretrial conference dates.”).) 

2

 The special master has directed the parties to brief that issue too, with Uber’s opening 

letter brief on this and other issues due 6/21/17. 

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corresponding requests served on Waymo, Uber’s requests to Lyft are entirely proper, particularly 

for purposes of use in connection with the deposition of a Lyft representative (who presumably 

will have only a limited basis, if any, to testify regarding documents produced by Waymo, rather 

than Lyft). 

III. CONCLUSION 

For the reasons set forth here, Uber respectfully requests that the Court deny Lyft’s 

motion to quash. 

Dated: June 20, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. González

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC 

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