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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

QUINN EMANUEL URQUHART & SULLIVAN, LLP

 Charles K. Verhoeven (Bar No. 170151)

 charlesverhoeven@quinnemanuel.com

 David A. Perlson (Bar No. 209502)

 davidperlson@quinnemanuel.com

 Melissa J. Baily (Bar No. 237649)

 melissabaily@quinnemanuel.com

 John Neukom (Bar No. 275887)

 johnneukom@quinnemanuel.com

 Jordan Jaffe (Bar No. 254886)

 jordanjaffe@quinnemanuel.com

50 California Street, 22nd Floor

San Francisco, California 94111-4788

Telephone: (415) 875-6600

Facsimile: (415) 875-6700

Attorneys for WAYMO LLC

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

WAYMO LLC,

Plaintiff,

vs.

UBER TECHNOLOGIES, INC.; 

OTTOMOTTO LLC; OTTO TRUCKING LLC,

Defendants.

CASE NO. 3:17-cv-00939

PLAINTIFF WAYMO LLC’S SUR-REPLY 

TO UBER’S MOTION IN LIMINE 

REGARDING ITS LEGAL COUNSEL

Judge: The Honorable William Alsup

Trial Date: October 10, 2017

Case 3:17-cv-00939-WHA Document 975 Filed 07/21/17 Page 1 of 7
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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

Plaintiff Waymo LLC (“Waymo”) respectfully submits this sur-reply in opposition to Uber’s 

motion in limine seeking to exclude any reference to Morrison & Foerster’s (“MoFo”) role in Uber’s 

acquisition of Ottomotto, and in support of Waymo’s motion to disqualify MoFo from acting as trial 

counsel for Uber.

Uber’s opening motion was twelve lines with no substantive argument or evidence. Its Reply is 

six pages and thus obviously, and unfairly, contains new arguments and evidence beyond the briefing 

on MoFo’s disqualification subsequently ordered by the Court. Despite this dramatic increase in length, 

Uber’s Reply remains notable in what is lacking. At no point in Uber’s Reply does it address Waymo’s 

argument that Uber would suffer no prejudice stemming from either reference to MoFo at trial or the 

calling of MoFo witnesses to testify. Nor does Uber rebut that MoFo attorneys appear all over critical, 

relevant documents to this case, such as those relating to the Otto acquisition and its related due 

diligence, such that the jury will already know MoFo had a role in the facts underlying the case. 

Moreover, Uber offers no contention, let alone evidence, that Uber in fact gave informed, written consent 

to MoFo to proceed as trial counsel in this action, which is its sole basis for relief from the advocatewitnessrule. And Uber continues to make no distinction between MoFo as a firm and the MoFo partners 

Waymo intends to call at trial.

Uber further misrepresents Waymo’s argument as “gamesmanship.” Not so. Fundamental 

fairness dictates that, even if the Court finds that Uber would be prejudiced in any fashion by the mention 

of MoFo’s role in the acquisition of Otto or the calling of MoFo witnesses to testify at trial, this finding 

should not prejudice Waymo from being able to fully and fairly present its case. After all, it is Uberthat 

decided to hire MoFo in this case despite the fact that attorneys there, including those who have appeared 

for Uber in this case, have relevant knowledge as percipient witnesses. Rather, the appropriate remedy 

is disqualification of MoFo as trial counsel. While the record supports, at a minimum, the 

disqualification of MoFo partners that Waymo intends to call as witnesses from participating at trial, the 

Court should exclude MoFo as a firm from participating as trial counsel. 

I. MOFO WITNESSES POSSESS INFORMATION RELEVANT TO MULTIPLE 

ASPECTS OF WAYMO’S TRADE SECRET CLAIMS

As set forth in Waymo’s Opposition to Uber’s motion, possession by MoFo of stolen 

Case 3:17-cv-00939-WHA Document 975 Filed 07/21/17 Page 2 of 7
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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

documents, the circumstances under which it acquired those documents, and the treatment of those 

documents after acquisition by MoFo are all directly relevant to Waymo’s trade secret claims. (Dkt. 

894 at 1-3.) Specifically, MoFo’s involvement in the due diligence relating to the acquisition of 

Ottomotto, including the due diligence that resulted in the report created by Stroz Friedberg and 

ordered to be produced to Waymo, means that MoFo has information relevant to “what Uber knew 

and when they knew it,” which the Court stated is “one of the key issues in the case.” (6/7/17 

Hearing Tr. at 40:10-11.)

Uber’s only response is the repeated, conclusory assertion that there is “no evidence” that 

stolen materials made their way to MoFo. This is unsupported and incorrect. MoFo’s very 

involvement in the diligence performed by Stroz, and its acquisition of materials related to that 

diligence (Dkt. 715 at 2-3; Dkt. 885 at 2), is direct evidence that either stolen materials or 

descriptions of those materials are or were in MoFo’s possession. The claim that MoFo only 

obtained certain materials related to Stroz’s investigation after the filing of the litigation is irrelevant 

even if true. MoFo’s access to and possession of those materials at any point in time is relevant to 

the actual theft in the first instance. And the issue is not whether those documents are Uber’s, the 

issue is that those Stroz materials are or describe stolen Waymo materials.

By focusing solely on MoFo’s possession of the stolen documents, Uber also inappropriately 

narrows Waymo’s demonstration of relevance as it relates to witnesses from MoFo. While the 

existence of any stolen materials in MoFo’s possession is obviously relevant to Waymo’s claims—

and could be testified to by MoFo witnesses exclusively—the absence of those documents in 

MoFo’s possession does not alter MoFo’s knowledge as to either the theft of the materials in the 

first instance or what Uber knew. Given the claimed wall separating Uber and Stroz with respect to 

the stolen materials, MoFo has information related to what was passed to Stroz that may not be in

Uber’s possession. And despite Uber’s continued reliance on Magistrate Judge Corley’s ruling 

regarding the production of certain documents, MoFo need not have been retained for the purpose 

of receiving stolen property, or even involved in wrongdoing, in order to have information relevant 

to Uber’s misappropriation of Waymo’s trade secrets. The mere fact that MoFo—and certain MoFo 

partners specifically—directed the due diligence of Uber’s acquisition means that they have 

Case 3:17-cv-00939-WHA Document 975 Filed 07/21/17 Page 3 of 7
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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

information relevant to Waymo’s claim that Uber was aware of and acquiesced to Mr. 

Levandowski’s theft and use of Waymo trade secrets. (Dkt. 893.)

Indeed, despite arguing that MoFo attorneys’ involvement in the due diligence report is 

irrelevant, as recently as two days ago Uber has sought trial stipulations on facts regarding attorney 

involvement in the case. (See Ex. 1 (“We would like to discuss trial stipulations that would eliminate 

the need for certain witnesses. For example, there is an issue that you have raised in an in limine 

motion regarding Uber’s search for downloaded materials.”)) Such a proposal is clear indication 

that Uber intends to introduce evidence relating to their—and by definition, MoFo’s—search for 

stolen materials and diligence related to the transaction. This is an admission that MoFo’s 

involvement in the due diligence—and related testimony—is relevant. 

Uber’s claim that other witnesses could testify to facts surrounding the due diligence or 

Uber’s knowledge is meritless. Initially, that Waymo may elicit testimony from Uber witnesses on 

similar topics does not obviate the need for testimony from MoFo, particularly where witness 

credibility will be key. Nor can Uber dictate how and through whom Waymo presents its case or 

shield entire lines of inquiry from the jury through its choice of counsel or by opting not to present 

certain witnesses. Additionally, as set forth in Waymo’s Opposition to Uber’s motion, MoFo and 

its attorneys are deeply embedded in the evidentiary record — they appear all over relevant, 

admissible documents. (Dkt. 894 at 2.) Uber makes the conclusory assertion that MoFo’s 

appearance throughout these documentsis “speculation.” (Dkt. 941 at 2.) But Uber does not address 

the practical fact that MoFo’s involvement throughout the diligence and acquisition means that the 

record will be replete with references to MoFo. 

Just two examples, both mentioned in Waymo’s Opposition, suffice to make this point. First, 

the back-dated, six page Stroz Engagement Letter mentions MoFo and/or MoFo attorneys no fewer 

than fifteen times. (Dkt. 882-2.) Second, many hundreds of entries on Uber’s privilege logs that 

have been designated by Uber to “Produce In-Full” if the Federal Circuit affirms the Court’s Order 

on the Due Diligence Report (Dkt. 685) are communications to and from MoFo attorneys. Because 

these documents were logged in response to the Court’s March 16 Order — and therefore necessarily 

refer to downloaded materials — they will be, if the Federal Circuit affirms, highly relevant evidence 

Case 3:17-cv-00939-WHA Document 975 Filed 07/21/17 Page 4 of 7
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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

of Uber’s knowledge of stolen Waymo files (and even if the Federal Circuit does not affirm, the 

privilege log entries themselves are probative evidence). It would be prejudicial to Waymo to 

attempt to wash MoFo’s name from these documents through heavy redaction, especially since it 

was Uber’s choice to hire as trial counsel the same lawyers who handled the due diligence and were 

mired in the underlying relevant facts of this case. (See Dkt. 894 at 2.)

II. ON THIS RECORD, THE COURT SHOULD DISQUALIFY MOFO AS TRIAL 

COUNSEL

As an initial matter, Waymo notes that Uber makes no effort to claim that it would be 

prejudiced by MoFo’s disqualification as trial counsel. Uber does not dispute that it has retained 

able, alternative trial counsel in Boies Schiller Flexner LLP. This is likely why Uber does not 

contend that it, or the schedule set by this Court, would be impacted in any manner whatsoever 

should either MoFo as a whole or specific MoFo partners be forced to withdraw from this litigation. 

So Uber should not be heard to argue that an order disqualifying MoFo or its partners would impact 

its ability to defend itself in any manner.

Instead, Uber claims that Waymo failed to make the requisite showing under Smith, Smith 

& Kring v. Super. Ct. (Oliver), 60 Cal. App. 4th 573, 580 (1997) to warrant disqualification. Not 

so. It would greatly harm the “integrity of the judicial process,” Smith, 60 Cal. App. 4th at 580, if 

MoFo were allowed to remain as trial counsel and leverage that status to exclude relevant MoFo 

evidence on the ground that such evidence would be prejudicial due to MoFo’s role as both advocate 

and witness. But more critically, Uber fails entirely to show it is entitled to the lone claimed 

exception to the advocate-witness rule. Despite claiming that client consent may overcome the 

advocate-witness rule, Uber does not actually state that it has provided such consent as to MoFo. 

Absent such consent, neither Uber nor MoFo can avoid the consequences of the advocate-witness 

rule.

Additionally, even if MoFo had informed, written consent from Uber (which neither Uber 

nor MoFo have claimed), this Court may nonetheless disqualify MoFo from acting as trial counsel. 

Uber’s purported distinction of Calouori v. One World Technologies, Inc., 2012 WL 2004173 (C.D. 

Cal. 2012), does not advance its cause. Uber does not contest that California courts may reject, 

Case 3:17-cv-00939-WHA Document 975 Filed 07/21/17 Page 5 of 7
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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

through their inherent power and discretion, client consent as an exception to the advocate-witness 

rule or that California courts may look to authorities such as the American Bar Association Model 

Rules, which do not contain a carve-out for client consent. 

Given that Uber makes no attempt to draw any distinction between those MoFo partners that 

participated in the diligence, those partners that may be called as witnesses, and the MoFo firm as a 

whole, Uber appears to concede that any disqualification based on the advocate-witness rule applies 

equally to the entirety of MoFo. At a minimum, Uber does not contest that the Court has the 

authority to do so. As set forth in Waymo’s Opposition, MoFo’s widespread involvement in the 

due diligence investigation and Otto acquisition warrants disqualification of the firm as a whole. 

(Dkt. 894 at 5.) Thus, any prejudice or jury confusion resulting from MoFo’s dual role should apply 

equally to both those MoFo partners called as witnesses and the MoFo firm.

Finally, Uber’s allegations of gamesmanship are unfounded. Waymo is not seeking to call 

witnesses for the purpose of disqualifying MoFo; Waymo is seeking to ensure that it be afforded the 

opportunity to fairly present its case and prevent Uber from obstructing that presentation by using 

percipient witnesses as trial counsel. To the extent that the Court is inclined to limit Waymo from 

presenting evidence either from MoFo or relating to MoFo’s role in the acquisition based in any 

way on MoFo’s current representation of Uber, the answer is disqualification of MoFo, not the unfair 

limitation of Waymo’s trial preparation. And to the extent Waymo is permitted to call MoFo 

partners as witnesses at trial, those partners—at a minimum—should be excluded from participating 

in the trial as advocates. Any other alternative severely prejudices Waymo.

III. CONCLUSION

For these reasons, Waymo respectfully requests that the Court deny Uber’s motion in limine. To 

the extent the Court determines that testimony from or relating to MoFo should be limited in any way, 

due to the dual-role MoFo has played, the appropriate remedy is disqualification, not prejudice to 

Waymo’s case.

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WAYMO LLC’S SUR-REPLY IN OPPOSITION TO UBER’S MOTION IN LIMINE REGARDING ITS LEGAL COUNSEL

DATED: July 21, 2017 QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Charles K. Verhoeven

Charles K. Verhoeven

Attorneys for WAYMO LLC

Case 3:17-cv-00939-WHA Document 975 Filed 07/21/17 Page 7 of 7