DEFENDANTS’ SUR-REPLY IN OPPOSITION TO WAYMO’S MOTION TO COMPEL PRODUCTION OF DUE DILIGENCE 

REPORT

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 

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 UBER 

TECHNOLOGIES, INC. AND 

OTTOMOTTO LLC’S SUR-REPLY 

IN OPPOSITION TO WAYMO’S 

MOTION TO COMPEL 

PRODUCTION OF DUE DILIGENCE 

REPORT 

Date: May 25, 2017 

Time: 10:00 a.m. 

Ctrm: F, 15th Floor 

Judge: Hon. Jacqueline Scott Corley 

Trial Date: October 2, 2017

Case 3:17-cv-00939-WHA Document 474 Filed 05/19/17 Page 1 of 6
DEFENDANTS’ SUR-REPLY IN OPPOSITION TO WAYMO’S MOTION TO COMPEL PRODUCTION OF DUE DILIGENCE 

REPORT

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

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Waymo primarily uses its reply brief (Dkt. 445) to set forth an unsupported narrative of 

wrongdoing in an effort to persuade this Court that the Due Diligence Report (the “Report”) and 

accompanying exhibits1 are not protected by three fundamental legal doctrines: the attorney-client 

privilege, the work product doctrine, and the common interest doctrine. Waymo does not, 

however, base its arguments on these legal principles or associated case law, nor does Waymo 

dispute many of Defendants’ legal arguments or evidence. Unsupported rhetoric, like that offered 

by Waymo, cannot unravel foundational legal privileges particularly where, as here, the case law 

amply supports preserving them. Apparently accepting that Defendants have the better of the 

legal arguments already made, Waymo inappropriately advances two new arguments in its reply. 

Defendants appreciate leave granted by the Court to address those two arguments.2

 

A. The Way in Which This Litigation has Unfolded is Irrelevant to an Assessment of the 

Existence of a Common Legal Interest, Which Must be Analyzed at the Time the 

Communications are Made. 

Waymo contends that Defendants and Messrs. Levandowski and Ron lack a common 

legal interest in light of “the way in which the litigation against Waymo has actually unfolded....” 

(Dkt. 445 at 6.) This argument fundamentally misunderstands key principles of the common 

interest doctrine. 

First, it is well established that the assessment of the existence of a common legal interest 

is made at the time the privileged information is communicated. Waymo argues that the parties’ 

current adversity on some issues, which developed after sharing the privileged information, 

destroys the common interest protections afforded to privileged information shared previously 

(and pursuant to a common legal interest). This is not the law. See Neilson v. Union Bank of 

Cal., N.A., 2003 WL 27374179, at *4 (C.D. Cal. Dec. 23, 2003) (“[T]he common interest rule is 

concerned with the relationship between the transferor and the transferee at the time that the 

confidential information is disclosed. The fact that the parties’ interests have diverged over the 

 

1

 For the avoidance of any doubt, the Report and exhibits are the only documents rightfully before 

this Court on this motion. See Apr. 25, 2017 Order (Dkt. 271) at 1 ¶ 2 (“[P]laintiff shall move, if 

it wishes to do so at all, to compel production of the due diligence report that was the subject of 

Levandowski’s motion.”). 

2

 This sur-reply is limited to the issues raised in Defendants’ request for this brief. (Dkt. 460.) 

Failure to address any other issue is not a waiver as to that issue.

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course of the litigation does not necessarily negate the applicability of the common interest rule.”) 

(citing In re United Mine Workers of Am. Employee Ben. Plans Litig., 159 F.R.D. 307, 314 

(D.D.C. 1994); Ellis v. J.P. Morgan Chase & Co., 2014 WL 1510884, at *7 (N.D. Cal. Apr. 1, 

2014) (court evaluates whether, “at the time of the communications at issue,” parties “continued 

to share a common interest”) (citations, internal quotation marks omitted); Microban Sys., Inc. v. 

Skagit Nw. Holdings, Inc., 2016 WL 7839220, at *1 (W.D. Wash. Aug. 17, 2016) (“At the time of 

the communications, the interests of both Microban and Barr were aligned in attempt to 

determine the value of Microban’s intellectual property, and to determine whether litigation 

would be required to secure the full value of those rights.”) (emphases added). 

Second, it is axiomatic that parties to a common interest agreement can share a common 

legal interest in one or more respects and nonetheless be adverse in other respects. The common 

interest doctrine “does not require a complete unity of interests among the participants, and it may 

apply where the parties’ interests are adverse in substantial respects.” United States v. Bergonzi, 

216 F.R.D. 487, 495 (N.D. Cal. 2003); see also United States v. Gonzalez, 669 F.3d 974, 980 (9th 

Cir. 2012) (“[P]arties to an asserted JDA need not have identical interests and may even have 

some adverse motives.”). Thus, even assuming that an adversity of interests between Uber and 

Mr. Levandowski existed at any time prior to Mr. Levandowski’s assertion of the Fifth 

Amendment, like when the Report was circulated in August 2016 as Waymo suggests (Dkt. No. 

445 at 7), that would not—and did not—prevent the joint defense parties from entering into a 

joint defense agreement months prior for the common legal interest of gathering and 

understanding facts related to the risk of joint litigation with Google following Uber’s proposed 

acquisition of Ottomotto and Otto Trucking LLC. (Tate Decl. (Dkt. 370) ¶¶ 7, 9, 12; Suhr Decl. 

(Dkt. 378) ¶ 6; Bentley Decl. (Dkt. 376) ¶¶ 8, 11; Baker Decl. (Dkt. 375) ¶¶ 5-6; Gardner Decl. 

(Dkt. 381) ¶¶ 3-4; see also Ex. 2 (Dkt. 370-2) at 1; Ex. 3 (Dkt. 370-3) at 2 (confirming parties’ 

common legal interest).) The court in Matter of Grand Jury Subpoena Duces Tecum Dated Nov. 

16, 1974, 406 F. Supp. 381, 392 (S.D.N.Y. 1975), cited in Bergonzi, 216 F.R.D. at 495, explained 

this well: parties to a joint defense agreement are “entitled to risk” their potential adversity “for 

the sake of strengthening [their] immediate defense . . . . That a joint defense may be made by 

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REPORT

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somewhat unsteady bedfellows does not in itself negate the existence or viability of a joint 

defense.” See also The Pampered Chef. v. Alexanian, 2010 WL 7809455 (N.D. Ill. Aug. 18, 

2010) (“The potential for adversity on certain issues in the future is not inconsistent with a 

present and continued common interest with respect to other ‘legal goal[s].’”) (emphasis added). 

B. Newly-Alleged Predicate Crimes Do Not Compel Application of the Crime-Fraud 

Exception. 

After failing to establish the applicability of the crime-fraud exception based on alleged 

trade secret theft—because, as Defendants showed in opposition, it did not even try to meet its 

evidentiary burden of proving every element of the alleged ongoing crime (Dkt. 369 at 17)—

Waymo now includes fleeting references to two more predicate crimes they propose to justify the 

application of the crime-fraud exception: obstruction of justice and receipt of stolen property, in 

violation of California Penal Code § 496. (Dkt. 445 at 10; n.7.) Again, Waymo makes no 

attempt to satisfy its burden of presenting evidence that would establish the elements of such 

alleged predicate crimes—and, incredibly, Waymo again does not even argue that obstruction of 

justice or receipt of stolen property are the predicate crimes; it just says that each would or could 

be predicate crimes and hopes the Court finds such unsupported argument sufficient. To reiterate: 

Waymo is required to “present evidence which, if believed by the jury would establish the 

elements of the alleged crime or fraud.” Laser Indus. Ltd. v. Reliant Techs., Inc., 167 F.R.D. 417, 

436 (N.D. Cal. 1996) (citing United States v. Laurins, 857 F.2d 529, 541 (9th Cir. 1988)). This is 

an exacting showing that Waymo’s own briefing makes clear cannot be satisfied. See Laser 

Indus., 167 F.R.D. at 441-42 (requiring proponent of crime-fraud exception to present evidence 

establishing every element of common law fraud by a preponderance of the evidence; discussing 

all requirements for application of exception in civil case); In re Napster Inc. Copyright Litig., 

479 F.3d 1078, 1096-98 (9th Cir. 2007) (same, citing Laser Indus. with approval).3

 

3

 Even had it tried, Waymo would fail in presenting evidence showing obstruction of justice. See, 

e.g., United States v. Ruhbayan, 201 F. Supp. 2d 682, 686 (E.D. Va. 2002) (evidence that, in 

letters the defendant wrote, he explained to the recipient how to lie to defendant’s attorney and 

directed the recipient to give false testimony satisfied evidentiary burden; crime-fraud exception 

applied); Laurins, 857 F.2d 529, 541 (cited but not discussed by Waymo) (defendant lied to 

attorney about location of documents; evidentiary burden satisfied; crime-fraud exception 

applied); United States v. Reeder, 170 F.3d 93, 106 (1st Cir. 1999) (criminal defendant’s 

Case 3:17-cv-00939-WHA Document 474 Filed 05/19/17 Page 4 of 6
DEFENDANTS’ SUR-REPLY IN OPPOSITION TO WAYMO’S MOTION TO COMPEL PRODUCTION OF DUE DILIGENCE 

REPORT

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Waymo instead attempts to cast Defendants’ compliance with Judge Alsup’s March 16 

Order as evidence of an ongoing crime. The Order required Defendants to produce “documents 

downloaded . . . and taken” by Messrs. Levandowski, Kshirsagar, and Raduta as well as any

documents “that have forwarded, used, or referred to any part of said downloaded material.” 

(Dkt. 61 ¶ 4.) Defendants’ extensive efforts to comply with this (rightfully) broad Order are the 

exact opposite of obstruction of justice and are not evidence of an ongoing crime or concealment 

of a crime. (Dkt. 445 at 10.) The Court’s in camera review will confirm this to be the case. 

Additionally, the joint defense parties’ reasons for engaging the services of attorneys—to 

understand joint litigation risks arising from Uber’s potential acquisition of Ottomotto and Otto 

Trucking—would defeat any cognizable evidence to the contrary. (Tate Decl. (Dkt. 370) ¶¶ 7, 9, 

12; Suhr Decl. (Dkt. 378) ¶ 6; Bentley Decl. (Dkt. 376) ¶¶ 8, 11; Baker Decl. (Dkt. 375) ¶¶ 5-6; 

Gardner Decl. (Dkt. 381) ¶¶ 3-4; see also Ex. 2 (Dkt. 370-2) at 1; Ex. 3 (Dkt. 370-3) at 2 

(confirming parties’ common legal interest)); cf. Laser Indus., 167 F.R.D. at 438 (where evidence 

and argument of ongoing crime in “equipoise,” crime-fraud exception does not apply). 

As part of the “bad acts” narrative it pushes, Waymo is essentially asking the Court to cast 

Defendants’ lawful invocation of fundamental legal privileges as evidence of an ongoing crime, 

or put differently, to hold that Defendants’ assertion of privilege is in and of itself a criminal act. 

As Defendants’ extensive cited authorities show, this is not the law. The Court should not allow 

Waymo to distort such fundamental legal privileges for its own ends. 

 

conversation with attorney in which he asked for help “to cover up his criminal conduct” 

admissible under crime-fraud exception). Likewise, Waymo would have failed in its burden to 

prove trade secret theft had it tried. Cf. In re Heraeus Kulzer GmbH, No. 3:09-CV-530 RM, 2012 

WL 1493883, at *6 (N.D. Ind. Apr. 26, 2012) (“The evidence upon which Heraeus relies doesn’t 

rise to the level of a prima facie showing or support an inference that Biomet employees sought 

legal advice and conspired with counsel to further a scheme to use Heraeus’ trade secrets. Even if 

the court were to find Heraeus’ conclusion plausible—that Biomet employees sought legal advice 

about how to successfully use Heraeus’ trade secrets without detection—Biomet’s alternative 

explanation is equally plausible—that Biomet employees sought legal advice relating to the 

company’s new relationship with Esschem and how to properly conduct that business.”). 

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DEFENDANTS’ SUR-REPLY IN OPPOSITION TO WAYMO’S MOTION TO COMPEL PRODUCTION OF DUE DILIGENCE 

REPORT

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Dated: May 19, 2017 MORRISON & FOERSTER LLP 

BOIES SCHILLER FLEXNER LLP 

By: /s/ Karen L. Dunn 

Karen L. Dunn 

Attorneys for Defendants 

UBER TECHNOLOGIES, INC. and 

OTTOMOTTO LLC 

Case 3:17-cv-00939-WHA Document 474 Filed 05/19/17 Page 6 of 6