DEFENDANTS’ REPLY ISO MOTION TO DISMISS WAYMO’S UNFAIR COMPETITION LAW CLAIM

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 

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, 

Defendants. 

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

DEFENDANTS’ REPLY IN SUPPORT 

OF MOTION TO DISMISS 

WAYMO’S UNFAIR COMPETITION 

LAW CLAIM 

Date: June 7, 2017 

Time: 8:00 a.m. 

Ctrm: 8, 19th Floor 

Judge: The Honorable William Alsup 

Trial Date: October 2, 2017

Case 3:17-cv-00939-WHA Document 475 Filed 05/19/17 Page 1 of 8
DEFENDANTS’ REPLY ISO MOTION TO DISMISS WAYMO’S UNFAIR COMPETITION LAW CLAIM

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I. INTRODUCTION 

Waymo admits that its claims under the California Uniform Trade Secrets Act 

(“CUTSA”) and California Unfair Competition Law (“UCL”) arise from the same nucleus of 

facts – the alleged theft of confidential documents.1 Waymo argues it is entitled to maintain 

simultaneous CUTSA and UCL claims for the alleged misappropriation of trade secret and nontrade secret information, respectively, within the documents. Waymo also contends that 

alternative pleading is appropriate until a determination is made on the trade secret status of the 

documents. Both of these theories continue to be flatly rejected by decisions in this District. 

Waymo’s contentions to the contrary, it is well settled that allegations concerning nontrade secret information, even if such information is shown to be distinct from asserted trade 

secrets (which Waymo has not shown here), are preempted when they arise from the same 

allegedly wrongful conduct as the CUTSA claim. See, e.g., SunPower Corp. v. SolarCity Corp., 

No. 12-CV-00694-LHK, 2012 WL 6160472 at *5 (N.D. Cal. Dec. 11, 2012) (“SunPower”); 

Qiang Wang v. Palo Alto Networks, Inc., No. C 12-05579 WHA, 2013 WL 415615 at *4 (Jan. 31, 

2013) (Alsup, J.) (“Qiang Wang”) (citing California Court of Appeal’s rejection of contention 

that claim can be based on “the same nucleus of facts as the trade secrets claim, so long as it 

alleges new facts, different injuries and damages, or a different theory of liability”) (quoting K.C. 

Multimedia, Inc. v. Bank of Am. Tech. & Operations, Inc., 171 Cal. App. 4th 939, 957 n.7 (2009) 

(“K.C. Multimedia”)); Top Agent Network, Inc. v. Zillow, Inc., No. 14-cv-04769-RS, 2015 WL 

10435931, at *4 (Aug. 6, 2015) (Seeborg, J.) (“Zillow”) (“ostensible distinction between the 

[trade secret and non-trade secret] claims is belied by the fact that they arise from the same 

allegedly wrongful conduct . . . and thus a common nucleus of fact”). Waymo’s Amended 

Complaint contains no facts distinguishing alleged trade secrets from non-trade secret 

information – that is a distinction Waymo concocted for its opposition brief. But even if such a 

distinction were contained in the Amended Complaint, it would not change the outcome on 

CUTSA preemption, because all of the allegedly misappropriated information (trade secret or not) 

 

1

 (ECF No. 431, Plaintiff Waymo LLC’s Opposition to Defendants’ Motion to Dismiss 

Waymo’s Unfair Competition Claim (“Opp.”) at 1.) 

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would have been taken as part of the same alleged wrongful conduct – the downloading of 

Waymo files. 

Similarly, Waymo’s argument that its UCL claim can be pled in the alternative until a 

determination is made on the trade secret status of the allegedly stolen documents is undermined 

by this Court’s decision in Qiang Wang. See Qiang Wang at *4 (rejecting plaintiff’s argument 

“that it should be permitted to allege breach of confidence in the alternative using the same set of 

facts it uses to support its trade secret claim”).

For these reasons and as further described below, Waymo’s UCL claim is preempted by 

CUTSA and Defendants respectfully request that the Court dismiss the UCL claim with prejudice 

and without leave to amend. 

II. WAYMO’S UCL CLAIM IS PREEMPTED BY CUTSA

A. Waymo Cannot Maintain a UCL Claim Arising from the Same Alleged 

Misappropriation of 14,000 Files as its CUTSA Claim 

Waymo’s argument that it can maintain its UCL claim based on the alleged theft of 

potentially non-trade secret confidential information ignores prevailing authorities to the contrary, 

including the frequently-cited and on-point decision in SunPower Corp. v. SolarCity Corp., 

No. 12-CV-00694-LHK, 2012 WL 6160472 (N.D. Cal. Dec. 11, 2012) (“SunPower”) 

(interpreting and applying the California Court of Appeal’s seminal decision on this issue in 

Silvaco Data Sys. v. Intel Corp., 184 Cal. App. 4th 210 (2010), disapproved on other grounds in 

Kwikset Corp. v. Superior Court, 51 Cal. 4th 310 (2011)).2

Like Waymo here, the plaintiff in SunPower argued that it was entitled to simultaneously 

maintain CUTSA and UCL claims based on a purported independent property right under 

California law in non-trade secret proprietary information. Id. at *4. The court rejected 

plaintiff’s attempts to distinguish between the alleged theft of trade secret and non-trade secret 

information, holding that where the basis of the alleged property right “is in essence that the 

 

2 SunPower has been cited at least 20 times for its holding that CUTSA preemption 

applies to non-trade secret confidential information when the alleged misappropriation is based 

on the same nucleus of fact as the alleged trade secret misappropriation. See, e.g., Avago Techs. 

U.S. Inc. v. Nanoprecision Prods., Inc., No. 16-cv-03737-JCS, 2017 WL 412524, at *6 (N.D. Cal. 

Jan. 31, 2017). 

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information is ‘not . . . generally known to the public,’ then the claim is sufficiently close to a 

trade secret claim that it should be superseded notwithstanding the fact that the information fails 

to meet the definition of a trade secret.” Id. at *5 (quoting Cal. Civ. Code § 3426.1(d)(1)). Thus, 

the court concluded that “any property interest [that plaintiff] may have in its non-trade secret 

proprietary information is qualitatively no different from the grounds upon which its trade secrets 

are considered property” and dismissed the plaintiff’s UCL and common law unfair competition 

claims.3 Id. at *10, 16. 

Waymo’s attempt to maintain a UCL claim based on a purported separate property right in 

non-trade secret information is similarly meritless.4 Waymo does not contest that the alleged 

misappropriation of any non-trade secret information arose from the same nucleus of facts as the 

alleged trade secret misappropriation. As in SunPower, moreover, Waymo’s purported property 

right in the non-trade secret information is based on claims of confidentiality and exclusivity 

(Opp. at 4-5), characteristics that make the alleged property right “sufficiently close to a trade 

secret claim that it should be superseded.” SunPower at *5. Waymo’s description of the alleged 

non-trade secret information makes clear that it is similar enough to trade secret information to 

subject it to CUTSA preemption: Waymo’s “confidential information is housed on proprietary 

Waymo servers that restrict access” and “Waymo has a ‘legitimate claim to exclusivity.’” (Opp. 

at 5.) Simply put, Waymo generally asserts that the allegedly downloaded files contain trade 

secret and non-trade secret information, but it does nothing to show that any property interest it 

 

3

 Waymo avers that, “from a review of those cases” applying the “same nucleus of 

operative facts” test, “it does not appear that any of the plaintiffs in those cases even tried to 

assert a property right in any non-trade secret information.” (Opp. at 6.) This claim is plainly 

wrong in view of SunPower. 

4

 Waymo’s Seventh Cause of Action is devoid of any facts asserting precisely what 

information constitutes non-trade secret information, let alone how the non-trade secret 

information is factually distinct from the allegedly misappropriated trade secret information. 

Again, this is similar to the facts in SunPower, where “[n]o information [was] provided [in 

plaintiff’s causes of actions] regarding what information SunPower contends constitutes nontrade secret proprietary information.” SunPower, at *9-10 (“While SunPower makes a facial 

distinction between these two categories [confidential and non-confidential information], 

SunPower uses both terms to refer to the same computer files.”). 

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may have in the non-trade secret files is qualitatively different from the grounds upon which its 

trade secrets can be considered its property. 

Moreover, Waymo completely ignores this Court’s decision in Qiang Wang. Just as 

Waymo has done here, the plaintiff in Qiang Wang argued that it was entitled to maintain a nonCUTSA claim (breach of confidence) based on confidential information that might not meet the 

statutory definition of a trade secret. See id. at *3-4. But this Court rejected that argument: 

“Plaintiff fails, however, to reconcile this contention with the undersigned’s prior orders applying 

K.C. Multimedia to prohibit that result.” Id. at *4. In K.C. Multimedia, the court ruled that an 

unfair competition claim was preempted because, “[a]s a factual basis for its claim, appellant 

alleges the same conduct that gives rise to trade secret claims.” K.C. Multimedia at 962. 

Identifying “something more” than the trade secret claim was insufficient to overcome a 

preemption defense because “the conduct at the heart of [the] claim” was the “same” as that 

which “underpins” the trade secret claim, the other claim was preempted. Id. at 958, 960. 

Following K.C. Multimedia, this Court in Qiang Wang held that the plaintiff’s claim based on 

non-trade secret information that relied on the same facts as its trade secret misappropriation 

claim was preempted by CUTSA. See Qiang Wang at *4-5. 

Waymo’s reliance on this Court’s decision in Total Recall Techs. v. Luckey, No. C 15-

02281 WHA, 2016 WL 199796 (N.D. Cal. Jan. 16, 2016) (Alsup, J.) is also misplaced as it 

overlooks the operative legal conclusion in that case regarding CUTSA preemption: “to the 

extent Total Recall’s claims rely on the alleged misappropriation of Confidential Information, any 

such claims are superseded by CUTSA.” Id. at *8. Courts in this District consistently reach the 

same conclusion. In Zillow, for instance, Judge Seeborg rejected plaintiff’s “attempts to aver 

within the interstices of trade secrets law additional state-law claims arising from the same 

alleged fraud.” Zillow at *4. Judge Seeborg held that, even if the plaintiff’s UCL allegations 

“could be read to concern non-trade secret information that is indeed distinct,” the UCL claim 

was preempted because the alleged misappropriation arose from “the same allegedly wrongful 

conduct.” Id. As Waymo admits, its UCL claim “arises(s) from the same allegedly wrongful 

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conduct” – the alleged downloading of Waymo files – and thus is preempted by the CUTSA 

claim.5

The 2011 decision in Language Line Servs., Inc. v. Language Servs. Assocs., LLC, 

No. C 10-02605, 2011 WL 13153247 (N.D. Cal. Mar. 17, 2011), on which Waymo also relies, 

predates SunPower and cannot save Waymo’s UCL claim.6 Following the SunPower decision, 

the court in Language Line found that the CUTSA preempted a non-CUTSA claim based on 

alleged conversion of non-trade secret information, because both claims arose from the same 

facts. Language Line Servs., Inc. v. Language Servs. Assocs., Inc., 944 F. Supp. 2d 775, 781 

(N.D. Cal. 2013) (Seeborg, J.) (citing SunPower); see also NetApp, Inc. v. Nimble Storage, Inc., 

41 F. Supp. 3d 816, 839-40 (N.D. Cal. 2014) (“NetApp’s allegations against Reynolds regarding 

trespass to chattel and unfair competition stem entirely from misappropriation of proprietary 

information, and are thus preempted”); Lifeline Food Co., Inc. v. Gilman Cheese Corp., 

No. 5:15-CV-00034-PSG, 2015 WL 2357246, at *4 (N.D. Cal. May 15, 2015) (holding that the 

CUTSA preempted the plaintiff’s UCL claim because it was based solely upon defendant’s 

alleged misuse of Lifeline’s trade secrets or confidential information). 

 

5

 Waymo cites Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003) (“Kremen”) for the 

proposition that claims based on alleged misappropriation of non-trade secret information should 

not be preempted by CUTSA. However, Kremen did not address CUTSA preemption, and, in 

any event, authorities from this District make clear that claims based on the alleged 

misappropriation of non-trade secret information are preempted when they arise from the same 

nucleus of facts as the CUTSA claim. 

6

 Nearly all of the CUTSA preemption cases cited by Waymo predate Silvaco and

SunPower, and the many decisions issued since. For example, Waymo relies on TMX Funding, 

Inc. v. Impero Techs., Inc., C 10–00202 JF (PVT), 2010 WL 2509979 (N.D. Cal. June 17, 2010)

and City Solutions, Inc. v. Clear Channel Commc’ns, Inc., 365 F.3d 835 (9th Cir. 2004), decisions 

that (1) predate the decision in Silvaco, and (2) were expressly disregarded by SunPower for that 

reason. See SunPower, at *7-9. Similarly, Waymo’s reliance on Courtesy Temp. Serv., Inc. v. 

Camacho, 272 Cal. Rptr. 352 (Ct. App. 1990) is misguided: that decision predates Silvaco (by 20 

years) and has since been expressly rejected. See SOS Co. v. E-Collar Techs., Inc., No. CV-12-

3400- PSG (JEMx), 2012 WL 12897998, at *4 (C.D. Cal. Oct. 17, 2012) (collecting cases that 

“expressly rejected” Courtesy Temp. Serv.). Waymo also relies on Martone v. Burgess, No. C 08-

2379, 2008 WL 3916022 (N.D. Cal. Aug. 25, 2008). But that case again predates Silvaco, and the 

plaintiff’s UCL claim in that case was based on an alleged breach of an employment agreement 

by a former employee, which has not been alleged by Waymo in its UCL claim. 

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B. Waymo Cannot Plead its UCL Claim in the Alternative 

Waymo also claims that it should be entitled to plead its UCL claim in the alternative until 

there is a determination regarding which of the 14,000 files qualify as trade secrets. SunPower is 

again on point: CUTSA preemption is properly decided at the pleading stage because CUTSA 

will preempt the UCL claim whether or not all of the information qualifies as trade secrets. See 

SunPower, at *14-15 (rejecting plaintiff’s argument that it was premature for the court to make a 

decision on preemption before a decision is made as to whether the asserted confidential 

information qualified as trade secret). 

SocialApps, LLC v. Zynga, Inc., No. 4:11-CV-04910 YGR, 2012 WL 381216 (N.D. Cal. 

Feb. 6, 2012) does not help Waymo either. (See Opp. at 2.) This Court has specifically addressed 

and rejected this case: “To the extent that SocialApps can be interpreted as holding that the same 

nucleus of fact can support both a trade-secret and a breach-of-confidence claim, that 

interpretation is not persuasive because it conflicts with K.C. Multimedia.” Qiang Wang at *4-5. 

In finding CUTSA preemption, this Court rejected the plaintiff’s contention that it should be 

permitted to allege breach of confidence in the alternative using the same facts it used to support 

its trade secrets misappropriation claim. The same reasoning applies here – Waymo should not 

be permitted to plead the UCL claim in the alternative based on the same facts as its CUTSA 

claim. 

C. Waymo’s UCL Claim Fails and Should be Dismissed with Prejudice 

California law and subsequent decisions in this District are clear: the CUTSA preempts 

UCL claims when based on the same nucleus of facts as a CUTSA claim. In its Amended 

Complaint, Waymo explains that its claims are based on a common set of alleged facts – the 

alleged downloading of confidential Waymo files. (ECF No. 23 Am. Compl. ¶¶ 4-5, 7, 10.) 

Waymo’s failure in its Opposition to seek leave further amend its Amended Complaint makes 

clear that Waymo has no facts to add that would save that claim. Because the alleged 

misappropriation of any non-trade secret information arose from the same nucleus of facts (the 

same alleged wrongful conduct as the alleged trade secrets misappropriation), Waymo cannot 

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legally maintain both a CUTSA and UCL claim, and the latter claim should be dismissed with 

prejudice. 

III. CONCLUSION 

For the foregoing reasons, Uber respectfully requests that the Court grant its motion to 

dismiss Waymo’s Seventh Cause of Action with prejudice. 

Dated: May 19, 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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