1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

1

DEFENDANT OTTO TRUCKING LLC’S STATEMENT REGARDING PRIVILEGE (CASE NO.: 3:17-CV-00939-WHA) 

Neel Chatterjee (SBN 173985) 

nchatterjee@goodwinlaw.com 

GOODWIN PROCTER LLP 

135 Commonwealth Drive 

Menlo Park, California 94025-1105 

Tel.: +1 650 752 3100 

Fax.: +1 650 853 1038 

Brett Schuman (SBN 189247) 

bschuman@goodwinlaw.com 

Rachel M. Walsh (SBN 250568) 

rwalsh@goodwinlaw.com 

GOODWIN PROCTER LLP 

Three Embarcadero Center 

San Francisco, California 94111 

Tel.: +1 415 733 6000 

Fax.: +1 415 677 9041 

Attorneys for Defendant 

OTTO TRUCKING LLC 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN FRANCISCO DIVISION 

WAYMO LLC, 

Plaintiff, 

v. 

UBER TECHNOLOGIES, INC., et al., 

Defendants. 

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

DEFENDANT OTTO TRUCKING LLC’S 

STATEMENT REGARDING PRIVILEGE 

Case 3:17-cv-00939-WHA Document 532 Filed 06/01/17 Page 1 of 6
1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

2

DEFENDANT OTTO TRUCKING LLC’S STATEMENT REGARDING PRIVILEGE (CASE NO.: 3:17-CV-00939-WHA) 

Defendant Otto Trucking LLC (“Otto Trucking”) respectfully submits this statement in 

response to the Court’s Orders dated May 15 and May 16, 2017 (Dkt. Nos. 438 and 447), in which 

the Court ordered Defendants Otto Trucking, Uber Technologies, Inc., and Ottomotto LLC to file 

a written statement (1) asserting any waiver of privilege in support of their defense in the abovecaptioned matter and (2) addressing “what, if anything, should be said to the jury about subjects 

covered by any claim of privilege upheld as valid and not waived by defendants.” Otto Trucking 

joins in the positions taken by Uber Technologies, Inc. and Ottomotto LLC. Also, to assist the 

Court, it also provides the following answers. 

I. Otto Trucking does not intend to assert any waiver of privilege at this time. 

Otto Trucking does not intend to waive any privileges that it has asserted or will assert 

during the course of this litigation. Otto Trucking intends to rely on non-privileged facts, which 

may or may not also be included in privileged documents or discussions. Otto Trucking will 

defend against Waymo’s trade secret misappropriation claims by asserting non-privileged facts at 

trial that include, but are not limited to, evidence that rebuts Waymo’s allegations that (1) Uber 

has acquired Otto Trucking, (2) Otto Trucking has developed technology, (3) Otto Trucking has 

engaged in unlawful activity, and (4) Otto Trucking facilitated Uber’s alleged acquisition of any 

files Mr. Levandowski may have downloaded prior to leaving Google. 

This non-privileged evidence forms the basis for Otto Trucking’s defenses at trial. 

Presenting such non-privileged evidence does not risk a waiver of any privilege. Upjohn Co. v. 

United States, 449 U.S. 383, 395-96 (1981) (“A fact is one thing and a communication of that fact 

is an entirely different thing.”) (citation omitted); Hickman v. Taylor, 329 U.S. 495, 513 (1947) 

(denial of production based on work product privilege “does not mean that any material, nonprivileged facts can be hidden”). The mere presentation of non-privileged facts does not constitute 

a waiver as to any privileged communications or work product generated by these facts. To allow 

such a waiver would undermine the very foundation of those privileges. See United States v. 

O’Malley, 786 F.2d 786, 794 (7th Cir. 1986) (“[T]he privilege attaches not to the information but 

to the communication of the information.”) (citation and internal quotation marks omitted); 

Willnerd v. Sybase, Inc., No. 1:09-CV-500-BLW, 2010 WL 5391270, *3 (D. Idaho 2010) (“Even 

Case 3:17-cv-00939-WHA Document 532 Filed 06/01/17 Page 2 of 6
1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

3

DEFENDANT OTTO TRUCKING LLC’S STATEMENT REGARDING PRIVILEGE (CASE NO.: 3:17-CV-00939-WHA) 

if the privilege does not attach to the underlying fact, communications of that fact are 

privileged.”); In re Convergent Techs. Second Half 1984 Sec. Litig., 122 F.R.D. 555, 558 (N.D. 

Cal. 1988) (a work product rule that provides “no protection to purely factual witness statements, 

would simultaneously eviscerate Hickman and create a nightmare for courts and counsel”). 

Otto Trucking does not intend to waive any privileges at this time. However, discovery is 

not yet complete, and the full scope of all privilege waivers is not presently cognizable. Otto 

Trucking understands the importance of expedient resolution of privilege waivers and supports 

Defendants Ottomotto and Uber in their request for a briefing schedule to address any arising 

privilege waiver issues. 

II. Any Statement Made by the Court to the Jury About Defendants’ Claims of 

Privilege Would Be Prejudicial 

In the Court’s May 16, 2017 Supplement to Orders Filed on May 15, 2017 (Dkt. No. 447), 

the Court also requested Defendants to address the propriety of any statement to the jury the Court 

may make regarding the subjects covered by Otto Trucking’s assertion of privilege. Such 

statements are improper. See Corning Optical Commc’ns Wireless Ltd. v. Solid, Inc., No. 5:14-

CV-03750-PSG, 2015 WL 5569095, at *1 (N.D. Cal. Sept. 22, 2015). 

As Defendants explained in their responses to Waymo’s Motion to Compel, Defendants 

have—at the outset—shared discussions, communications, and documents to prepare for a joint 

defense that covers not just the contents of the privileged documents, but also the subject of the 

privileges asserted. Rembrandt Patent Innovations, LLC, 2016 WL 427363, at *7 (citing Holmes 

v. Collection Bureau of Am., Ltd., No. C 09-02540 WHA, 2010 WL 143484, at *3 (N.D. Cal. Jan. 

8, 2010). A statement by the Court to the jury regarding Otto Trucking’s assertion of privilege 

over these documents or communications would impair Otto Trucking’s ability to defend against 

claims asserted against it in this action. 

The Supreme Court has also suggested that such a statement would be improper. Under 

proposed Rule of Evidence 513, the Supreme Court has explained that a party’s assertion of 

privilege “is not a proper subject of comment by judge or counsel” and “[i]n jury cases, 

proceedings shall be conducted . . . so as to facilitate the making of claims of privilege without the 

Case 3:17-cv-00939-WHA Document 532 Filed 06/01/17 Page 3 of 6
1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

4

DEFENDANT OTTO TRUCKING LLC’S STATEMENT REGARDING PRIVILEGE (CASE NO.: 3:17-CV-00939-WHA) 

knowledge of the jury.” Proposed Rule of Evidence 513, 56 F.R.D. 183, 260-61 (1972); see also 

Tennenbaum v. Deloitte & Touche, 77 F.3d 337, 340 (9th Cir. 1996) (“we may seek guidance from 

the proposed Federal Rules of Evidence, which the Supreme Court prescribed and approved but 

ultimately Congress didn’t adopt”). Here, such a statement from the Court to the jury as to Otto 

Trucking’s assertion of privilege may give rise to an adverse inference that may be grounds for a 

new trial, United States v. Martinez, 514 F.2d 334, 343 (9th Cir. 1975), and is the subject of what 

proposed Rule of Evidence 513 counsels against. Likewise, comments by the Court to the jury 

regarding the evidence at trial is inappropriate. United States v. Brown, 988 F.2d 123 (9th Cir. 

1993). 

Any commentary by the Court is both irrelevant and more prejudicial than probative. For 

that reason, any such commentary should be excluded under Federal Rule of Evidence 401 and 

403. The fact that a party properly asserted a privilege is not a fact that is probative of anything. 

Instead, any statement about the assertion of privilege by the Court could unnecessarily lead to a 

negative inference and subvert the fact-finding mission of the jury creating confusion. 

For these reasons, Defendant Otto Trucking respectfully submits that Otto Trucking does 

not intend to assert any applicable privileges at this time, and that the Court should not make any 

statements to the jury about the subjects covered by any claim of privilege. 

Case 3:17-cv-00939-WHA Document 532 Filed 06/01/17 Page 4 of 6
1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

5

DEFENDANT OTTO TRUCKING LLC’S STATEMENT REGARDING PRIVILEGE (CASE NO.: 3:17-CV-00939-WHA) 

 Dated: June 1, 2017 Respectfully submitted, 

By: /s/ Neel Chatterjee 

Neel Chatterjee 

nchatterjee@goodwinlaw.com 

GOODWIN PROCTER LLP 

135 Commonwealth Drive 

Menlo Park, California 94025 

Tel.: +1 650 752 3100 

Fax.: +1 650 853 1038 

Brett Schuman 

bschuman@goodwinlaw.com 

Rachel M. Walsh 

rwalsh@goodwinlaw.com 

GOODWIN PROCTER LLP 

Three Embarcadero Center 

San Francisco, California 94111 

Tel.: +1 415 733 6000 

Fax.: +1 415 677 9041 

Attorneys for Defendant 

OTTO TRUCKING LLC 

Case 3:17-cv-00939-WHA Document 532 Filed 06/01/17 Page 5 of 6
1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

6

DEFENDANT OTTO TRUCKING LLC’S STATEMENT REGARDING PRIVILEGE (CASE NO.: 3:17-CV-00939-WHA) 

CERTIFICATE OF SERVICE 

I hereby certify that I electronically filed the foregoing with the Clerk of the Court for the 

United States District Court for the Northern District of California by using the CM/ECF system 

on June 1, 2017. I further certify that all participants in the case are registered CM/ECF users and 

that service will be accomplished by the CM/ECF system. 

I certify under penalty of perjury that the foregoing is true and correct. 

 

Executed: June 1, 2017 /s/ Neel Chatterjee

 Neel Chatterjee 

Case 3:17-cv-00939-WHA Document 532 Filed 06/01/17 Page 6 of 6