OPPOSITION TO WAYMO’S MOTION IN LIMINE NO. 4

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

sf-3806402 

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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

OPPOSITION TO WAYMO’S 

MOTION IN LIMINE NO. 4 

Date: July 26, 2017 

Time: 8:00 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William Alsup 

Trial Date: October 10, 2017

Case 3:17-cv-00939-WHA Document 978 Filed 07/21/17 Page 1 of 5
OPPOSITION TO WAYMO’S MOTION IN LIMINE NO. 4 

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Waymo wants to tell the jury that Uber misappropriated the “downloaded materials” that 

Waymo claims contain its trade secrets. But then Waymo conveniently wants to prevent Uber 

from telling the jury that Uber looked for but did not find any of the “downloaded materials” at 

Uber. Waymo is well aware that Uber thoroughly inspected its computer systems and found no 

evidence of Uber ever having received “Downloaded Materials,”—the definition of which, of 

course, is not coextensive with the 14,000 files Levandowski downloaded just as it is not the 

same thing as a trade secret. Waymo wants to prevent the jury from finding out that those 

searches for anything that could remotely look like it came from Google—regardless of whether 

it was a trade secret—were conducted by highly skilled forensics experts, were repeated with 

search terms that Waymo selected, and were done with enormous rigor. Waymo also does not 

want Uber to tell the jury that Waymo’s lawyers have conducted ten separate physical inspections 

of Uber engineers’ computers and workstations and of all four of Uber’s facilities where LiDAR 

work occurs, and have found nothing. 

Waymo understands the force of this evidence and its implications for its case, because 

there is no question it is not only relevant, but highly probative. Indeed, if these searches and 

inspections had uncovered any of the “downloaded materials,” let alone any actionable trade 

secrets, that finding would be the first sentence in Waymo’s opening statement. The opposite 

side of that coin is equally relevant. 

Accordingly, Waymo wants to exclude this highly probative evidence—or improperly 

introduce evidence of the Court’s preliminary injunction along with it—because its evidence of 

misappropriation against Uber is weak and Waymo is now desperate to prevent Uber from putting 

on its defense. None of Waymo’s arguments, however, come close to warranting exclusion of 

these critical facts and depriving Uber of its ability to defend against Waymo’s allegations that 

Uber stole Waymo’s trade secrets. Below, we briefly summarize the evidence that Uber would 

seek to introduce at trial and then address Waymo’s three arguments. 

Case 3:17-cv-00939-WHA Document 978 Filed 07/21/17 Page 2 of 5
OPPOSITION TO WAYMO’S MOTION IN LIMINE NO. 4 

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I. THERE IS SIGNIFICANT ADMISSIBLE EVIDENCE PERTAINING TO 

UBER’S EFFORTS TO LOCATE THE ALLEGED “DOWNLOADED 

MATERIALS” 

The evidence showing that Uber does not have—and has never had—the alleged 

“downloaded materials” includes the following facts: 

1. Uber’s forensics expert looked for the “downloaded files” in Uber’s servers and 

computers using search terms (including some provided by Waymo), and also 

conferred with Waymo’s forensics consultant for search suggestions. None of the 

“downloaded files” were found. There were a few unrelated Google documents 

found and they were returned to Waymo. 

2. Uber asked Anthony Levandowski to return any “downloaded materials” he might 

have to Uber’s counsel, who would provide them to Waymo’s lawyers. When he 

did not do so, he was fired. 

3. Uber has allowed Waymo lawyers and experts to personally inspect four of its 

facilities for dozens of cumulative hours over ten separate visits and they have 

found nothing. During those inspections, certain Uber computers and devices that 

were requested by Waymo were made available for review. 

These straightforward facts are essentially undisputed and can be carefully presented to 

the jury. Indeed, Uber has offered Waymo the opportunity to present these facts to the jury via 

stipulation. Waymo has indicated that the offer is premature because of this pending motion. 

(González Decl. ¶ 2.) If Waymo rejects the offer to stipulate to these and other facts, we 

anticipate that various witnesses would testify about these facts, including Uber’s forensics and 

industry experts, as well as Angela Padilla, Uber’s Associate General Counsel for Litigation & 

Employment. Waymo, of course, remains free to challenge the import of these facts through 

cross examination and the presentation of any additional facts it deems appropriate. 

II. NONE OF WAYMO’S THREE ARGUMENTS WARRANT EXCLUDING 

THIS IMPORTANT EVIDENCE 

First, Waymo argues that allowing the jury to hear about Waymo’s and Uber’s efforts to 

find the “downloaded materials” would “open the door” to Waymo saying that these efforts were 

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OPPOSITION TO WAYMO’S MOTION IN LIMINE NO. 4 

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in response to Orders from this Court. No such door would be opened. Uber intends to present 

facts that bear upon what was done to locate the downloaded materials at Uber, not why Uber 

undertook those efforts. The latter fact is irrelevant. The relevant fact is that both Waymo and 

Uber thoroughly investigated whether “downloaded materials” were located at Uber and none 

were found. There is no lawful basis for precluding Uber from presenting this fact to the jury. 

Second, Waymo claims that because certain employee questionnaires have not been 

produced, Uber should not be able to introduce any of the evidence identified above (which is 

separate and apart from the questionnaires themselves). That argument is simply wrong as a 

matter of law. Uber does not need to effect a waiver over privileged material it has no intention 

of introducing at trial (attorney-client privileged and work-product protected interviews of its 

employees) in order to show the jury separate non-privileged facts identified above. And even if 

Uber’s reliance on its forensic experts’ search for “downloaded materials” and Waymo’s 

inspections could be said to be a privilege waiver (it is not), that waiver would not extend to the 

completely different subject of employee and agent interviews. See Trireme Med., LLC v. 

Angioscore, Inc., No. 14-CV-02946-LB, 2016 WL 4191828, at *2 (N.D. Cal. Aug. 9, 2016) 

(“[W]aiver on particular topics did not yield broad disclosure of entirety of patent prosecution 

material”) (internal quotation marks & citation omitted). 

Moreover, the authority cited by Waymo contradicts its overbroad request to exclude any 

argument, testimony, or evidence about efforts taken in response to the Court’s Preliminary 

Injunction Order. (Dkt. 913 at 1.) The court in Universal Electronics denied a motion in limine

to exclude evidence or argument regarding why the plaintiff had changed the inventorship of a 

patent as “overly broad” because the plaintiff’s witness answered some questions about the 

change, while asserting privilege for other questions. Universal Elecs., Inc. v. Universal Remote 

Control, Inc., No. SACV 12-00329 AG (JPRx), 2014 WL 8096334, at *8 (C.D. Cal. Apr. 21, 

2014). Here, Uber has provided extensive, non-privileged information on its efforts related to the 

Preliminary Injunction Order to the Court, the Special Master, and Waymo. (E.g., Dkt Nos. 715, 

762, 967.) There is no surprise here, and no basis to exclude argument, testimony, or evidence of 

such non-privileged efforts. 

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OPPOSITION TO WAYMO’S MOTION IN LIMINE NO. 4 

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Further, even if such a waiver were required (and it is not), Waymo admits the only two 

cases that it cites deal with preclusion where a party attempts to waive privilege after the close of 

discovery. (Mot. at 1 (citing Universal Elecs., 2014 WL 8096334, at *8; Edward Lowe Indus., 

Inc. v. Oil–Dri Corp. of Am., No. 94-C-7568, 1995 WL 609231, at *5 (N.D. Ill. Oct. 13, 1995).) 

Discovery is not closed in this case. 

Third, Waymo claims the “the only individuals” with knowledge of the facts set forth 

above would be MoFo lawyers. That is wrong. As noted above, other witnesses, including 

Uber’s forensics expert, will testify about searches that were done and communications with 

Waymo’s experts, who also did not locate any downloaded materials at Uber. In addition, Angela 

Padilla and other Uber witnesses who were present at the inspections can testify about the on-site 

inspections that were done by Waymo at Uber’s offices and at MoFo’s offices. Moreover, even if 

a MoFo lawyer testified about a fact—such as “I was at MoFo when two lawyers for Waymo 

came to look at one of Uber’s computers in our office”—that would not warrant preclusion and 

would not impact this Court’s ruling regarding MoFo’s work on the Ottomotto transaction. 

For all of these reasons, Waymo’s motion to exclude any argument, testimony, or 

evidence regarding Defendants’ efforts during the litigation to try to locate the “downloaded 

materials.” (Dkt. 913 at 2.) Waymo’s motion should be denied. 

Dated: July 21, 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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