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No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE

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,

v.

UBER TECHNOLOGIES, INC.; 

OTTOMOTTO LLC; OTTO TRUCKING 

LLC,

Defendants.

CASE NO. 3:17-cv-00939-WHA

PLAINTIFF WAYMO LLC’S RESPONSE 

TO DEFENDANTS’ STATEMENTS 

REGARDING PRIVILEGE

Case 3:17-cv-00939-WHA Document 548 Filed 06/05/17 Page 1 of 8
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-1- No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

Per the Court’s Orders (Dkts. 438 & 447), Plaintiff Waymo LLC (“Waymo”) respectfully 

submits this response to Defendants’ respective Statements Regarding Privilege.

On May 15, 2017, in advance of the Case Management Conference, the Court issued an 

order that, to avoid “discovery prejudice and waste of resources,” Defendants were required to 

“file a written statement by June 1 at noon setting forth any waiver of privilege on pain of 

preclusion thereafter.” (Dkt. 438.) The order directed Waymo to respond to Defendants’ 

statement by June 5 at noon. (Id.) On May 16, 2017, the Court supplemented the Order, stating 

that “[i]n their respective submissions, both sides should also address 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.” (Dkt. 447.) On June 1, Defendants filed their respective statements. (Dkt. 531 

(Uber/Ottomotto); Dkt. 532 (Otto Trucking).) Below, Waymo provides its response. 

1. Defendants’ Refusal To Waive Privilege Justifies Broad Preclusion

In their Statement, Defendants confirm they “do not intend to waive any privileges that 

they have asserted, or will assert,” in this litigation. (Dkt. 531 at 1; Dkt. 532 at 1.) Assuming the 

asserted privileges are valid and not already waived in the first place,1that is Defendants’ right. 

But, as the Court recognized, in order to avoid “discovery prejudice and waste of resources,” 

exercising that right should result in preclusion on related subject matter. (Dkt. 438; see also id.

(“defendants shall file a written statement . . . setting forth any waiver of privilege on pain of 

preclusion thereafter”).) 

“[T]he attorney-client privilege cannot be used as a sword as well as a shield.” Regents of 

Univ. of Cal. v. Micro Therapeutics, Inc., Case No. C-03-05669-JW, 2007 WL 2069946, at *2 

(N.D. Cal. July 13, 2007), quoting In re von Bulow, 828 F.2d 94, 103 (2d Cir. 1987). Thus, where 

a party asserts privilege over a particular subject matter, it is appropriate for the Court to preclude 

the litigant from later waiving the privilege or offering evidence on related subject matter. 

 

1

 Nothing in this Response should be construed as an admission regarding the validity of any 

privilege claim over any information or materials, including the Stroz due diligence materials. As 

discussed elsewhere, Waymo believes that the Stroz materials are fully discoverable and should be 

produced without further delay. 

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-2- No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

Universal Elecs., Inc. v. Universal Remote Control, Inc., Case No. 12-cv-00329-AG , 2014 WL 

8096334, at *8 (C.D. Cal. Apr. 21, 2014) (noting that where plaintiff previously asserted attorneyclient privilege over certain subjects, “[c]ertainly Plaintiff cannot now provide answers to those 

questions”); U.S. Rubber Recycling, Inc. v. ECORE Int’l, Inc., Case No. CV 09-09516 SJO, 2011 

WL 13127343, at *8 (C.D. Cal. Oct. 5, 2011) (requiring defendant to assure the Court that it was 

not relying on an opinion of counsel defense); Edward Lowe Indus., Inc. v. Oil–Dri Corp. of 

America, Case No. 94-C-7568, 1995 WL 609231, at *5 (N.D. Ill. 1995) (“[B]y waiting until after 

the close of discovery to waive its attorney-client privilege, it was precluded from asserting an 

advice of counsel defense.”)

Here, Defendants claim that they do not intend to waive any privileges, but rather “will 

defend against Waymo’s assertions of trade secret misappropriation by presenting non-privileged 

facts at trial . . . .” (Dkt. 531 at 1.) But, in this case, Defendants have routinely sought to 

selectively rely on “facts” that they view as helpful to them, while hiding—through redactions or 

otherwise—related “facts” they view as harmful on ground of alleged privilege. 

For example, in opposition to Waymo’s Motion To Compel Due Diligence Materials, 

Defendants submitted declarations that characterized the Uber/Ottomotto acquisition while 

withholding the actual acquisition documents until they were prodded to produce them multiple 

times by the Court. (See Dkt. 444 at 7-12.) Even then, Defendants selectively redacted 

information in the acquisition Term Sheet—by definition, negotiated at arms’ length—which the 

Magistrate Judge immediately found improper. (5/25 Hr’g Tr. at 23:7-13, 25:20-26:10, 28:17-23.) 

As another example, Defendants initially withheld and logged as privileged a document 

governing the disclosure of information from Mr. Levandowski to Stroz Friedberg, LLC (“Stroz”). 

But then, when they viewed it as becoming necessary, Defendants suddenly reversed course and 

started relying on the very same withheld contract to support its positions in this case. 

Specifically, after the Court issued its preliminary injunction ordering Defendants to exercise their 

full authority to return Waymo’s stolen materials (Dkt. 433 at 23 ¶ 2(b)), Defendants began 

justifying their refusal to ask their agent Stroz to return stolen materials in its possession based on the 

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

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

Levandowski/Stroz contract, claiming that Mr. Levandowski submitted information to Stroz under 

“very tight restrictions.” (See Dkt. 545.) Then, within two hours of submitting their statements 

claiming that they did not intend to waive any privileges, Defendants sought to bolster their claims that 

they lacked the authority to control Stroz by producing a heavily redacted copy of the LevandowskiStroz letter—that that they had previously withheld in its entirely as privileged—as evidence of the 

“tight restrictions.” (Id.) Waymo still does not have a fully unredacted version of the contract between 

Levandowski and Stroz, over which even Mr. Levandowski has not asserted any privilege. (Id.)

This sort of conduct has become routine in this litigation: Defendants withhold documents on 

all sorts of grounds—including privilege—until they suddenly need them to support a new position 

they are taking, then they claim that they need more time to think through the privilege issues and 

discuss those issues with their clients, and then (well after they were supposed to) they produce 

previously withheld documents exposing only the “facts” they need while redacting the facts that they 

still wish to conceal. Defendants cannot “present[] non-privileged facts at trial” after preventing full 

discovery about those facts on privilege grounds. Defendants have now affirmatively chosen to 

rely on asserted privileges that obscure discovery into nearly any manner of defense in this case; 

Defendants will need to be held strictly to the consequences of that choice.

Especially in light of Defendants’ practice of offering piecemeal evidence they previously 

claimed as privileged when it suits them, the Court should strictly preclude Defendants from 

offering evidence on any subject for which they are standing on privilege, and that preclusion 

should be as broad as Defendants’ own vague assertions in their privilege logs. As just one 

example, Defendants should not be entitled to claim that they reasonably tried to prevent or had 

any manner of success in preventing Mr. Levandowski from bringing stolen materials to Uber, 

given that they have cloaked the details of any such efforts under a claim of privilege. Universal 

Elecs., 2014 WL 8096334 at *8; U.S. Rubber Recycling, 2011 WL 13127343 at *8; Edward Lowe 

Indus., 1995 WL 609231 at *5.

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-4- No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

2. The Jury Is Entitled To Hear Evidence Of Defendants’ Privilege Claims

Defendants allege that Waymo should be forbidden from entering or eliciting any evidence 

whatsoever regarding their privilege assertions. The law, however, does not support this position. 

In GSI Tech., Inc. v. United Memories, Inc., Case No. 5:13-cv-01081-PSG, 2016 WL 3035699, at 

*11 (N.D. Cal. May 26, 2016), for example, the defendant played a video clip of the plaintiff’s 

attorney instructing a fact witness not to answer a question on the grounds of attorney-client 

privilege. Id. at *11. The Court rejected the argument that this was inappropriate, holding that the 

plaintiff failed to cite any cases “holding that evidence of the assertion of the privilege causes a 

jury to draw an adverse inference.” 

Waymo contends that evidence of Defendants’ fact witnesses invoking the various 

privileges asserted should not be barred, and the Court should allow such evidence to be admitted 

where necessary to provide context or educate the jury as to why certain categories of evidence 

have not been presented. See, e.g., United California Bank v. Prudential Ins. Co. of Am., 681 P.2d 

390, 445-448 (Ariz. Ct. App. 1983) (affirming trial court’s ruling that “if they can’t get the 

evidence in, I think the jury has a right to know why they can’t get the evidence in”); see also 

Commonwealth v. Simms, 521 A.2d 391, 395 (Pa. 1987) (“Forcing that witness to invoke the 

statutory privilege in the presence of the jury in no way undermines the underlying policy 

supporting that privilege.”).

Waymo’s ability to allude to Defendants’ assertion of privilege is particularly critical in 

this case given the scope, breadth, and centrality of Defendants’ privilege assertions. Defendants 

are withholding thousands of communications among a variety of players in the underlying events

regarding one of the most central issues in the case—Uber’s acquisition of Otto—relying on 

boilerplate assertions in their privilege log that are so vague and broad they are essentially 

meaningless. This, of course, is resulting in the concealment of key evidence in this case. (See 

Dkt. 433 at (noting that Defendants’ “extensive claims of privilege” have resulted in “relentless 

concealment of likely probative evidence”).) Thus, to avoid misleading the jury, it is relevant and 

proper for Waymo to allude to Defendants’ assertion of privilege over, for example, the 

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-5- No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

acquisition materials, communications between Uber and Otto, and reports on due diligence that 

would otherwise potentially be key evidence in the case. The mere existence of this supposedly 

privileged information is not itself privileged information.

Recognizing this principle, courts around the country have held that it is appropriate to 

enter an opponent’s privilege log into evidence under appropriate circumstances. See, e.g., 

Siemens v. Seagate Tech., Case No. No. SACV 06-788JVS (ANx), 2009 WL 8762978, at *7-8, *9 

(C.D. Cal. Apr. 27, 2009) (admitting privilege logs into evidence where fact of communication 

itself was relevant to issue of alleged diligence and/or unreasonable delay—“the Court finds that 

there was no error in admitting the IBM privilege logs.”); University of Pittsburgh v. Varian 

Medical Systems, Inc., 877 F. Supp. 2d 294, 307-08 (W.D. Pa. 2012) (defendant's privilege log 

properly admitted into evidence as a part of the totality of circumstances in patent infringement 

case), rev’d on other grounds by 561 Fed. Appx. 934 (Fed. Cir. 2014); Mutual Ins. Co. v. Murphy, 

630 F. Supp.2d 158, 168 n. 3 (D. Mass. 2009) (noting that a party's privilege log can be admissible 

as an admission of a party opponent). Thus, especially under the circumstances of this case, where 

Defendants’ claims of privilege go to the heart of the misappropriation and liability issues in 

question, evidence of Defendants’ privilege assertions should be admissible.

Furthermore, where an assertion of privilege results in the absence of information 

regarding a relevant subject, the opposing party is entitled to comment on the lack of evidence. 

For example, where a defendant seeks legal advice on a relevant issue and then decides to 

withhold evidence on that issue on grounds of attorney-client privilege, the plaintiff is entitled to 

point to the absence of evidence and argue to the jury that defendant’s failure to produce such 

evidence is relevant to state of mind and liability. See, e.g., Visteon Global Techs., Inc. v. Garmin 

Int’l, Inc., Case No. 10-cv-10578, 2016 WL 4396085, at *5, *6-7 (E.D. Mich. Aug. 18, 2016)

(“Evidence of an alleged infringer’s failure to produce an opinion of counsel is nonetheless 

relevant to a determination of the ‘totality of circumstances’ that inform a finding (or not) of 

willfulness.”) (quoting Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008));

Retractable Techs. Inc. v. Becton, Dickinson and Co., No. 07-cv-250, 2009 WL 8725107 (E.D. 

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-6- No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

Tex. Oct. 8, 2009) (holding that defendant’s decision not to waive privilege over an opinion of 

counsel left defendant ‘in essentially the same position that it would be in had it not obtained any 

opinion of counsel at all,’ and that plaintiff was therefore entitled to enter evidence of defendant’s 

failure to seek opinion of counsel letter). Applying this rule to the present case, Defendants’ 

decision to maintain privilege over (for example) any efforts that they may have made to prevent 

Mr. Levandowski from bringing privileged materials to Uber will likely result in an absence of 

evidence regarding this subject. Waymo is certainly allowed to comment on this absence of 

evidence, even if the reason for this absence of evidence stems from Defendants’ invocation of 

privilege. 

Finally, while Defendants are correct that courts generally do not instruct a jury to draw an 

adverse inference from the mere invocation of the attorney-client or work product privileges, 

Defendants are incorrect in asserting that the Court must take prophylactic steps to make 

Defendants’ assertion of the privilege costless—especially where the privilege is asserted to cover 

information disclosed to all manner of witnesses but then used to prevent Waymo and the jury 

from discovering critical facts about the key issues in this case. As noted above, if Defendants 

assert privilege over, for example, a due diligence investigation into the theft of stolen materials, 

then Waymo is entitled to point to the absence of evidence in the record regarding such 

investigation and ask the jury to make any number of inferences, including that Defendants knew, 

should have known, or were reckless with respect to Anthony Levandowski’s theft of Waymo’s 

trade secrets. Moreover, it is permissible and even appropriate to allow Waymo to force 

Defendants’ fact witnesses to assert the privilege in the presence of the jury if circumstances at 

trial indicate that this is necessary for context or to educate the jury as to why certain evidence is 

not being presented. E.g., GSI Tech., 2016 WL 3035699 at *11. 

3. Appropriate Jury Instruction.

Ultimately the issue of an appropriate jury instruction should be considered in light of how 

the evidence unfolds at trial. At a minimum, however, Waymo contends that a starting point for 

an appropriate jury instruction would include an instruction to the jury that the absence of 

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-7- No. 3:17-cv-00939-WHA

WAYMO’S RESPONSE TO DEFENDANTS’ STATEMENTS REGARDING PRIVILEGE 

evidence regarding Defendants’ efforts to avoid the use of Waymo’s confidential, propriety, and 

trade secret information given the circumstances of this case may be considered as part of the 

“totality of circumstances” in evaluating whether Defendants misappropriated Waymo’s 

information. Compare Broadcom, 543 F.3d at 698. If the jury is so instructed, and the record 

lacks evidence of Uber’s due diligence efforts or consultation with attorneys because of its 

assertion of privilege, then Defendants cannot be heard to complain. Visteon Global Techs., 2016 

WL 4396085 at *5.

DATED: June 5, 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 548 Filed 06/05/17 Page 8 of 8