UBER TECHNOLOGIES, INC.’S ADMINISTRATIVE MOTION RE: KSHIRSAGAR 

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 

MORRISON & FOERSTER LLP

425 Market Street 

San Francisco, California 94105-2482 

Telephone: 415.268.7000 

Facsimile: 415.268.7522 

RUDY Y. KIM (CA SBN 199426) 

RudyKim@mofo.com 

MORRISON & FOERSTER LLP

755 Page Mill Road 

Palo Alto, California 94304-1018 

Telephone: 650.813.5600 

Facsimile: 650.494.0792 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, and OTTO TRUCKING 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

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, AND OTTO 

TRUCKING LLC’S 

ADMINISTRATIVE MOTION TO 

ALLOW SAMEER KSHIRSAGAR 

ACCESS TO CERTAIN MATERIAL 

Complaint Filed: February 23, 2017 

First Am. Compl. Filed: March 10, 2017 

Trial Date: October 2, 2017

Case 3:17-cv-00939-WHA Document 68 Filed 03/23/17 Page 1 of 4
UBER TECHNOLOGIES, INC.’S ADMINISTRATIVE MOTION RE: KSHIRSAGAR 

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Plaintiff Waymo LLC (“Waymo”), in its Motion for Preliminary Injunction, alleges that 

former Waymo employee Sameer Kshirsagar—now an employee of Uber Technologies, Inc. 

(“Uber”)—downloaded five allegedly confidential files from Waymo’s internal Google Drive 

prior to resigning from Waymo. (Mot. Prelim. Inj. at 9, ECF No. 24.) Waymo has designated 

these files “Attorneys Eyes Only,” limiting their distribution to outside counsel and a single, 

designated in-house attorney. Waymo has also designated as AEO a transition memorandum 

written by Mr. Kshirsagar upon his departure from Waymo. Uber is therefore unable to show 

Mr. Kshirsagar the five files Waymo alleges he downloaded, as well as a memorandum he 

prepared. Waymo has refused to agree that Uber be allowed to show Mr. Kshirsagar the 

allegedly downloaded files, and has ignored counsel’s request to show Mr. Kshirsagar the 

memorandum he drafted. (Declaration of Wendy Ray ¶¶ 2-4.) 

As this court has recognized, Waymo “seeks sweeping provisional relief.” (Tentative 

Order at 1, ECF No. 53.) Uber is hamstrung in its ability to prepare its response to the 

preliminary injunction motion by its inability to communicate with Mr. Kshirsagar about the very 

documents at issue—documents which, according to Waymo’s allegations, he has already seen 

(and in some cases even written). It is crucial that Uber have access to all the information to 

which it is entitled in order to prepare its defense as fulsomely as possible. This information 

includes unhindered conversations with Mr. Kshirsagar about the files he allegedly downloaded 

and the memorandum he wrote regarding his departure from Waymo. The need to have these 

conversations is particularly critical given the severity of the relief requested and the limited time 

Uber has to prepare its opposition brief. See Julius M. Ames Co. v. Bostitch, Inc., 235 F. Supp. 

856, 857 (S.D.N.Y. 1964) (holding that defendant was entitled to share interrogatory responses 

containing a competitor’s trade secrets with defendant’s personnel, over competitor’s objections, 

“insofar as it may be necessary...in order to prepare for and assist in the defense of the action.”). 

In these circumstances, Waymo bears the burden of showing that the documents at issue 

should be subject to a protective order provision preventing their disclosure to Mr. Kshirsagar. 8 

Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2043 (3d ed. Supp. 

2017) (“It is well settled that there is no absolute privilege for trade secrets and similar 

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UBER TECHNOLOGIES, INC.’S ADMINISTRATIVE MOTION RE: KSHIRSAGAR 

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confidential information ... It is for the party resisting discovery to establish, in the first instance, 

that the information sought is within this provision of [ Rule 26(c)(1)(G)].”) Yet in its 

communications with Uber to date, Waymo has provided no support for its refusal to agree to the 

narrow disclosure requested. 

In addition to being unsupported by law, Waymo’s position is unreasonable for the very 

same reasons this Court found Waymo’s previous refusal to let Uber disclose under-seal 

information to in-house counsel unreasonable. First, as the Court has recognized, “if the 

allegations in the complaint are true, then defendants already know the sensitive information.” 

(Tentative Order at 1.) The same logic applies here: if Mr. Kshirsagar downloaded the files as 

Waymo alleges, then he has already seen the material Waymo refuses to allow Uber to share with 

him now. Similarly, he has already seen the transition memorandum because he prepared it. 

Second, just as “defendants need [Waymo’s unredacted preliminary injunction papers] shared 

with in-house counsel to prepare their defense,” (id.), Uber needs to share these five files and the 

memorandum with Mr. Kshirsagar in order to prepare its defense. For example, counsel needs to 

discuss with Mr. Kshirsagar whether the alleged downloading occurred, the context surrounding 

such downloading (if any), and whether contents of any of the files were taken by him. Counsel 

also needs to discuss with Mr. Kshirsagar information in the memorandum regarding why he may 

have downloaded certain documents. 

Courts in other circuits apply a balancing test in these circumstances that weighs the 

interest of the party seeking disclosure in discovering information necessary to prove its claims or 

defenses against the other party’s “interest in preventing a potential competitor from having 

access to its [trade secrets].” Dow Corning Corp. v. Xiao, 283 F.R.D. 353, 357 (E.D. Mich. 2012) 

(citing R.C. Olmstead, Inc., v. CU Interface, LLC, 606 F.3d 262, 269 (6th Cir. 2010)). See also 

Bourdages v. Metals Ref., Ltd., No. 84 CIV. 743 (CSH), 1984 WL 665, at *7 (S.D.N.Y. July 25, 

1984) (“if the needs of the requesting party are sufficiently compelling, disclosure should be 

ordered, even to a competitor of the disclosing party.”) (citing Penthouse Int’l, Ltd. v. Playboy 

Enters., Inc., 663 F.2d 371, 391 (2d Cir. 1981); Centurion Indus., Inc. v. Warren Steurer & 

Assocs., 665 F.2d 323, 326-7 (10th Cir. 1981)). 

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UBER TECHNOLOGIES, INC.’S ADMINISTRATIVE MOTION RE: KSHIRSAGAR 

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This balancing test is instructive here. As explained above, Uber has a compelling interest 

in sharing these documents with Mr. Kshirsagar in order to effectively prepare its defenses. 

Moreover, if Mr. Kshirsagar downloaded the files as Waymo alleges, then no competitive harm 

could result from allowing him to view the files. Finally, Mr. Kshirsagar has read, signed, and 

agrees to abide by the provisions of the Patent Local Rule 2-2 Interim Model Protective Order 

that applies in this case. (Ray Decl., ¶ 5, Ex. 3 (Patent L.R. 2-2).) Uber’s strong interest in the 

limited disclosure it requests outweighs Waymo’s unsubstantiated desire to withhold these files 

from Mr. Kshirsagar. 

In light of the foregoing, Uber respectfully requests that this Court order Waymo to allow 

Uber to share the five files Waymo alleges Mr. Kshirsagar downloaded (listed at Willis Decl. ISO 

Mot. Prelim. Inj., ECF No. 24-16 ¶¶ 6-11), as well as his transition memorandum (produced by 

Waymo on March 22, 2017 at Bates no. WAYMO-UBER-00000414) with Mr. Kshirsagar. In the 

alternative, Uber requests that this Court modify the Interim Protective Order to allow those 

individuals who are alleged to have misappropriated trade secrets to view those documents that 

Waymo alleges were taken by them, and to allow former Waymo employees to view their own 

transition memoranda. 

Dated: March 23, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. González 

ARTURO J. GONZÁLEZ 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC., 

OTTOMOTTO LLC, and OTTO TRUCKING LLC

Case 3:17-cv-00939-WHA Document 68 Filed 03/23/17 Page 4 of 4