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March 15, 2017

Honorable William H. Alsup

U.S. District Court for the Northern District of California

San Francisco Courthouse, Courtroom 8 - 19th Floor

450 Golden Gate Avenue, San Francisco, CA 94102

Re: Waymo LLC v. Uber Technologies, Inc. et al., Case No. 3:17-cv-00939-WHA

Dear Judge Alsup:

As directed by this Court’s order (Dkt. 44), Plaintiff Waymo LLC (“Waymo”) hereby responds to 

the March 13, 2017 “discovery letter brief” filed by defendants Uber Technologies, Inc., Ottomotto 

LLC, and Otto Trucking LLC (collectively “Defendants”). Defendants’ letter omits material facts 

leading up to its letter and is wrong on the underlying legal dispute regarding the propriety of 

Defendants’ in-house counsel having access to Waymo’s highly confidential and valuable trade 

secrets. Nevertheless, in principal, if Defendants identify in-house counsel not involved in 

competitive decision making or provides a risk of inadvertent disclosure of Waymo’s trade secrets, 

and to whom disclosure is reasonably necessary, Waymo will agree to disclosure of “attorneys 

eyes only” to that in-house counsel pursuant to a protective order. 

Defendants’ letter1leaves the impression that Waymo withheld the unredacted preliminary 

injunction papers to achieve some concession from Defendants as to the eventual protective order 

to govern this action. This is incorrect. From the beginning, Waymo made clear it was willing to 

provide “Waymo’s unredacted preliminary injunction papers on an outside-counsel-eyes only 

basis.” Ex. A at 2.

2

 Waymo further made clear that “[w]e will agree that acceptance of our papers 

on this basis will be without prejudice to Defendants’ position on in-house counsel, which we can 

continue to negotiate and which Defendants can raise with the Court if we do not reach agreement.” 

 

1

 Defendants’ letter purports to be a discovery letter submitted pursuant to this Court’s 

Supplemental Order to Order Setting Initial Case Management Conference (“Standing Orders”), 

¶ 25. But such letters may be filed only “after having met and conferred.” Id. (emph. added). 

This District’s local rules similarly, require a meet and confer prior to seeking relief on a discovery 

dispute. Civil L.R. 37-1(a). The local rules define a “meet and confer” as either a face-to-face or 

telephonic conference. Id. 1-5(n). Defendants, however, failed to do so. The parties did exchange 

email correspondence regarding service of Plaintiff’s preliminary injunction papers in unredacted 

form, but the email exchange concluded on Sunday with Waymo stating it is “available to discuss 

on Monday.” Ex. A at 1. Defendants did not even respond before filing their letter.

2

 For the Court’s reference, Waymo attaches as Exhibit A the full record of correspondence on 

this topic in advance of Defendants’ letter filing. 

Case 3:17-cv-00939-WHA Document 52 Filed 03/15/17 Page 1 of 3
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Waymo’s Response to Defendant’s Discovery Letter Brief

Id. After its letter, Defendants eventually accepted Waymo’s offer on March 14, and Waymo 

transmitted the confidential version of its filing later that day. Ex. B.

Second, Defendants’ argument that in-house counsel are necessarily allowed access to an opposing 

party’s highly confidential trade secret information is without merit. Rather, as shown by the 

model protective orders promulgated by this District and the relevant case law, access by in-house 

counsel to trade secret information can only be made on a case-by-case and lawyer-by-lawyer 

basis. Defendants have yet to make the required showing.

For a given in-house counsel to be allowed access to trade secret information, the Court must first

weigh the “risk of inadvertent disclosure of trade secrets” against a risk that a party’s case would 

be “impaired” by protection of the trade secret. Brown Bag Software v. Symantec Corp., 960 F.2d 

1465, 1470 (9th Cir. 1992). “The concern for inadvertent disclosure is particularly acute where 

the party seeking access to the information is a direct competitor[,]” as here. Adobe Sys. Inc. v. 

Davachi, No. C 10–03575 SC (LB), 2011 WL 2610170, at *4 (N.D. Cal. July 1, 2011). In such 

circumstances, “the Court must determine whether knowledge of the trade secrets at issue would 

place counsel in the ‘untenable position’ of either refusing his employer legal advice or revealing 

the sensitive information.” Pinterest, Inc. v. Pintrips, Inc., No. 13–cv–04608–RS (KAW), 2014 

WL 5364263, at *2 (N.D. Cal. Oct. 21, 2014) (quoting Intel Corp. v. VIA Tech, Inc., 198 F.R.D. 

525, 530-31 (N.D. Cal. 2000)). Defendants have not yet identified the “case-specific 

circumstances” that allow disclosure to its in-house counsel. Defendants are direct competitors to 

Waymo, have not established that any such person(s) would be insulated from the “untenable 

position” that would disqualify their access, nor provided Waymo with relevant information to 

evaluate whether the counsel’s job responsibilities mitigated the risk of disclosure. 

Defendants’ cited case law does not support the alternative view. It instead supports Waymo’s 

position that in-house counsel’s access to confidential materials is not warranted where there is a 

risk of inadvertent disclosure. Amgen Inc. v. Sandoz Inc., No. 16-cv-02581-RS(MEJ), 2017 WL 

22502, at *2-*3 (N.D. Cal. Jan. 3, 2017) (stating that decisions on specific in-house counsels’

access to protected material could be made after those counsel were identified and the risk could 

be evaluated); Amagen Inc. v. Elanex Pharms. Inc., 160 F.R.D. 134, 139 (W.D. Wash. 1994) 

(finding in-house counsel to whom disclosure was sought were “not involved in competitive 

decision-making” in a patent infringement case); Matsushita Elec. Indus. Co., Ltd. v. U.S., 929 

F.2d 1577, 1579-80 (Fed. Cir. 1991) (in-house counsel allowed access to “proprietary business 

information” under a protective order because he was insulated completely from competitive 

decision-making). Defendants have not provided the information needed to evaluate the “casespecific circumstances” that would favor allowing its in-house counsel access to Waymo’s trade 

secrets under a protective order. 

This District provides a “Model Protective Order for Litigation Involving Patents, Highly Sensitive 

Confidential Information and/or Trade Secrets” (“Trade Secret Model Protective Order”) as a 

model protective order for trade secret cases, which comports with the above-cited case law 

requiring lawyer-specific inquiries.3 Paragraph 7.3(b) of the Trade Secret Model Protective Order 

brackets the provision allowing disclosure of highly confidential materials to in-house counsel as 

 

3

 See Model Protective Orders, U.S. DISTRICT COURT, N.D. CAL., 

http://www.cand.uscourts.gov/model-protective-orders (last visited Mar. 15, 2017).

Case 3:17-cv-00939-WHA Document 52 Filed 03/15/17 Page 2 of 3
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Waymo’s Response to Defendant’s Discovery Letter Brief

“[o]ptional as deemed appropriate in case-specific circumstances[.]” The Patent Local Rule 2-2 

Interim Model Protective Order (“Interim Patent Model Protective Order”) is not specifically 

designed for trade secret cases, but supports the same view. The only substantive mention of “trade 

secrets” in the Interim Patent Model Protective Order is in the context of “trade secret source 

code.” For that material, the Interim Patent Model Protective Order excludes in-house counsel 

entirely from reviewing it. Interim Patent Model Protective Order, ¶ 9(a)-(b). Both the Trade 

Secret Model Protective Order and the Interim Patent Model Protective Order thus do not permit 

disclosure of trade secrets to in-house counsel without a case-specific showing.

Third, on Monday, March 13, the Court ordered Defendants to bring Defendants’ proposed

designated in-house counsel to the March 16, 2017 hearing, along with the resumes of those

individuals. Dkt. 44. The same day, Waymo requested these resumes so that it may evaluate 

Defendants’ request in advance of this response and Thursday’s hearing. But Defendants did not 

provide a list of its proposed attorneys until 7:59 pm on Tuesday, March 14, and, at the time, 

provided only their LinkedIn webpages. Defendants, however, did not provide all the information 

Waymo needs to assess Defendants’ request, such as the “current and reasonably foreseeable 

future primary job duties and responsibilities in sufficient detail to determine if House Counsel is 

involved, or may become involved, in any competitive decision-making” – as would be required 

by Paragraph 7.4(a)(1) of the Interim Patent Model Protective Order that Defendants contend 

governs. Nor did Defendants identify why disclosure to these attorneys is “reasonably necessary”

in this case. Interim Patent Model Protective Order ¶ 7.3(b).

4

Waymo remains willing to assess Defendants’ proposals for in-house counsel to be provided to 

“attorneys eyes only” information under a protective order, but requires the information necessary 

in order to do so. Waymo is not opposed to any disclosure of its trade secret litigation materials 

to an in-house attorney for Defendants. Instead, Waymo asks that such access is granted sparingly, 

and only after the attorney’s work responsibilities are sufficiently disclosed to ensure that there 

will be no possibility of (further) improper use of Waymo’s trade secrets by Defendants.

Respectfully yours,

/s/ Charles K. Verhoeven

Charles K. Verhoeven

QUINN EMANUEL URQUHART & SULLIVAN, LLP

Counsel for Waymo LLC

CC: Counsel of record (via ECF)

 

4

 At 10:43 a.m. today (77 minutes before this response was due), Defendants provided short 

descriptions of the proposed attorney’s job functions. Given the timeframe of this disclosure, 

Waymo has not had an opportunity to assess the additional information Defendants provided. 

But Waymo will continue to work to narrow any disputes as much as possible.

Case 3:17-cv-00939-WHA Document 52 Filed 03/15/17 Page 3 of 3