DEFENDANTS’ OPP. TO PLAINTIFF’S MOTION FOR RELIEF FROM PRETRIAL ORDER (DKT. 1276) 

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.’S AND 

OTTOMOTTO, LLC’S OPPOSITION 

TO PLAINTIFF WAYMO LLC’S 

MOTION FOR RELIEF FROM 

NONDISPOSITIVE PRETRIAL 

ORDER OF MAGISTRATE JUDGE 

(DKT. 1276) 

Judge: The Honorable William Alsup 

Trial Date: October 10, 2017

REDEACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED

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DEFENDANTS’ OPP. TO PLAINTIFF’S MOTION FOR RELIEF FROM PRETRIAL ORDER (DKT. 1276) 

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

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Pursuant to Civil Local Rule 72-2 and this Court’s Order (Dkt. 1310), Defendants Uber 

Technologies, Inc. and Ottomotto LLC (hereinafter “Uber”) file their response to Waymo’s 

Motion for Relief from Non-Dispositive Pretrial Order of Magistrate Judge Corley. (Dkt. 1289.) 

I. INTRODUCTION 

Judge Corley’s August 19, 2017 order is not clearly erroneous or contrary to law. Indeed, 

Waymo only challenges one of Judge Corley’s decisions as erroneous (not even clearly 

erroneous); the rest are simple disagreements with Judge Corley’s judgment in resolving the 

parties’ discovery disputes. First, Waymo claims that it need not produce any documents 

regarding the terms and circumstances of its own mergers or acquisitions—while continuing to 

argue that it is entitled to claim that the terms and circumstances of Uber’s acquisition of Otto 

amount to evidence of liability. Second, Waymo continues to conflate the 14,000 files allegedly 

downloaded by Anthony Levandowski with the trade secrets at issue in this case and attempts to 

avoid being bound by its inability to set forth evidence showing use by Uber of the 14,000 files. 

Finally, Waymo’s objection to Judge Corley’s order to make four custodians available for a 

second deposition if documents are produced after their depositions is simply a disagreement with 

her judgment. Accordingly, Uber respectfully requests that the Court deny Waymo’s motion. 

II. LEGAL STANDARD 

A district judge considering objections to a magistrate judge’s nondispositive order must 

defer to the order unless it is “clearly erroneous or contrary to law.” Grimes v. City & Cty. of San 

Francisco, 951 F.2d 236, 241 (9th Cir. 1991). 

III. ARGUMENT 

A. M&A Transactions and Due Diligence: Interrogatory No. 18 and Request Nos. 170 

and 172. 

Uber’s Interrogatory No. 18 asks Waymo to describe the steps it has “taken in deciding 

whether or not to acquire . . . or invest in any . . . entity.” (Dkt. 1294-3 at 4.) Uber’s Request 

Nos. 170 and 172 seek related documents: No. 170 asks for documents “relating to any 

transaction contemplated . . . by Waymo . . . that was motivated primarily or in part by the 

acquiring . . . of talent,” and No. 172 asks for documents “sufficient to show Waymo’s due 

diligence efforts for any transaction.” (Dkt. 1294-9 at 6-7.) 

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During the meet and confer process, Uber offered to limit these requests to (a) certain 

identified hires from competitors and (b) seven acquisitions. (Dkt. 1214-24 at 2.) Waymo now 

argues that these seven transactions are “random” and a “fishing expedition.” (Dkt. 1289 at 3-4.) 

Waymo did not make this argument to Judge Corley, and it is incorrect. (Dkt. 1237-4 at 2.) With 

DeepMind, Waze, SCHAFT, and Redwood Robotics, Google acquired new technologies to gain 

advantage over competitors. Apportable, JustSpotted, and Path were acquihires. Uber limited its 

request to these seven among numerous Google acquisitions, leaving out companies such as 

Holomi and Bot & Dolly (both companies with robotics technology and software). 

Additionally, Waymo answered Interrogatory No. 18 by describing general steps it has 

taken in acquisitions rather than describing each of the seven deals. (See Dkt. 1294-4 at 5 

(referring generally and vaguely to Waymo’s “management,” “local partnership,” and “OEM 

team[s]”).) Waymo also responded that “Google’s and Waymo’s due diligence into transactions 

unrelated to this Action are not relevant,” and limited its production in response to RFPs Nos. 170 

and 172 to “documents relating to Waymo’s acquisitions in the self-driving space.” (Dkt. 1294-9 

at 8 (emphasis added).) 

Judge Corley ordered Waymo to answer Interrogatory 18 and produce documents for the 

seven acquisitions identified by Uber in response to Request 170 and 172. (Dkt. 1276 at 2.) 

Waymo argues that these transactions are irrelevant because “Waymo does not intend to offer 

evidence of the seven transactions” at trial. (Dkt. 1289 at 3.) This fundamentally misunderstands 

the purpose of discovery: Uber may very well wish to offer evidence of these transactions at trial, 

and just because Waymo does not intend to rely on these seven transactions does not mean they 

are irrelevant to the case. (See Dkt. 1188 at 2 (rejecting Uber’s argument to limit discovery on 

issue on which Uber will not argue because “Waymo remains entitled to present its own version 

of the story”).) Specifically, Waymo intends to argue at trial that “the Otto acquisition was 

unusual.” (Dkt. 1289 at 3.) Discovery into Waymo’s and Google/Alphabet’s acquihire 

transactions and due diligence practices is relevant to Uber’s defense against the conspiracy 

theories Waymo intends to present to the jury, alleging that the steps Uber took in connection 

with acquiring Ottomoto were done to “coverup” Levandowski’s alleged “theft” of 14,000 

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Waymo files and to “steal” Waymo’s trade secrets. (Dkt. 756 at 1, 5-6.) Waymo also argues that 

“Uber has made no attempt to show that” these deals included “forensic due diligence or 

indemnity.” (Dkt. 1289 at 4.) Of course, without the requested discovery Uber doesn’t know 

whether these transactions included forensic due diligence or indemnity, and the requested 

discovery would be relevant to a showing of the typicality of such investigations even if they did 

not. Limiting the request to “Waymo’s acquisitions” is a red herring. 

; indeed it has only existed for less than a year. (Liu Decl., Ex. 1 at 169:2-

6). Limiting the request to acquisitions in the self-driving space is also unnecessarily narrow; 

(Liu Decl., Ex. 1 at 169:12-21), 

and Google/Alphabet’s practices in connection with its other acquisitions are just as relevant. 

Uber cannot make a showing about Google’s acquisition and diligence practices when 

Waymo has refused discovery on the issue. Since Waymo has prevented Uber from taking 

discovery on these issues during fact discovery, the Court should prohibit Waymo from arguing at 

trial that there is anything improper or unusual about (1) acquiring a company for its talent or 

employees, or acquiring a company without commercialized products or tangible assets; (2) 

recruiting or hiring employees from competitors; and (3) the processes, procedures, and protocols 

used by Uber in connection with acquiring Ottomotto. Absent such an order, Uber asks the Court 

to affirm Judge Corley’s order. 

B. Efforts to Protect Confidentiality and Secrecy: Interrogatory No. 19 and Request No. 

173. 

Uber’s Interrogatory No. 19 asks Waymo to describe its efforts “to maintain the 

confidentiality. . . of any transaction contemplated.” (Dkt. 1294-3 at 5-6.) Uber’s Request No. 

173 asks Waymo to produce documents “relating to any efforts . . . to maintain the confidentiality 

. . . of any aspect of any transaction contemplated . . . by Waymo.” (Dkt. 1294-9 at 8.) In 

response, Waymo described its general steps to protect confidentiality and refused to produce 

documents in response to Request 173 on relevance. (Dkt. 1294-3 at 6; Dkt. 1294-9 at 8.) 

Judge Corley ordered Waymo to answer Interrogatory No. 19 and produce documents in 

response to Request No. 173, both only with respect to the seven acquisitions listed above. (Dkt. 

1276 at 2.) “By finding that Uber was entitled to the requested documents to develop its defense 

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against Waymo’s claims for damages and injunctive relief, Judge Corley indicated the necessity 

of said documents to Uber’s case.” (Dkt. 1132 at 3.) 

Despite Judge Corley’s finding, Waymo renews its relevance argument to this Court. 

(Dkt. 1289 at 4.) However, Waymo has argued that Uber’s efforts to maintain the confidentiality 

of its acquisition of Otto were part of a scheme to steal Waymo’s confidential information and 

trade secrets. (See Dkt. 756 at 6 (arguing that Uber’s “went to great lengths to shroud the 

acquisition and the due diligence process in secrecy,” and its confidentiality efforts and common 

interest agreement in connection with the Ottomotto acquisition are “evidence of a coverup”).) 

Since Waymo wants to avoid discovery on these issues, the Court should prohibit Waymo 

from arguing at trial that Uber’s efforts to maintain the confidentiality of the Ottomotto 

acquisition were a “coverup.” (See 7/6 Order, Dkt. 808 at 2 (ordering production of documents 

because Waymo refused to stipulate that it would not argue Levandowski violated Google’s side 

business policies).) Absent that, Uber requests that the Court affirm Judge Corley’s order. 

C. Alleged Use of the 14,000 Files: Interrogatory No. 25 

Uber’s Interrogatory No. 25 asks Waymo to identify “every fact that you have obtained or 

learned during discovery in this case that you contend shows use by Uber of any of the 14,000 

files that you claim were improperly downloaded by Anthony Levandowski.” (Dkt. 1294-5 at 5.) 

Waymo’s response incorporates by reference its answer to Uber’s Interrogatory No. 1 (which 

asked Waymo to identify the facts that show use by Uber of alleged trade secrets), and purports to 

set forth “additional facts.” (Id.) But most of these “facts” are unsupported inferences and 

argument. For example, Waymo states that Ottomotto developed LiDAR “with the benefit of the 

14,000 misappropriated files” because the company operated out of Mr. Levandowski’s house for 

a time. (Id. at 5-6.) Judge Corley observed that “Waymo has provided a few facts in response,” 

and “despite Waymo’s numerous on-premises inspections of Uber and its servers, it does not 

identify any Uber technology that reflects that Uber used the files Mr. Levandowski allegedly 

took.” (Dkt. 1276 at 3.) “Accordingly, Waymo is bound by its response.” (Id.) 

Waymo attempts to avoid Judge Corley’s order by arguing that she must have ignored the 

fact that Waymo’s answer incorporated its answer to Interrogatory No. 1. Nonsense. Waymo 

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made this argument to Judge Corley and she rejected it. (See Dkt. 1237-4 at 3.) As Judge Corley 

undoubtedly recognized, Waymo continues to improperly use the 14,000 files as a proxy for its 

nine elected alleged trade secrets. Waymo has deprived Uber of the ability to take discovery and 

question witnesses on any overlap between 14,000 files and the operative trade secrets. Waymo 

should be prevented from arguing anything about the 14,000 files to the jury other than the “few 

facts” listed in its response to Interrogatory No. 25, as set forth in Judge Corley’s order. 

D. Conflicts with Mr. Levandowski: Request No. 166 

 Uber’s Request No. 166 asks Waymo to produce documents “concerning any complaints, 

arguments, disputes, conflicts, and evaluations (both positive and negative) related to Anthony 

Levandowski.” (Dkt. 1294-7 at 5.) Judge Corley ordered Waymo to “search the emails of the 

four individuals who have or will testify on this topic” and produce those documents. (Dkt. 1276 

at 3.) She ordered that if documents were produced after those custodians’ depositions, “Waymo 

must make the deponent available for further deposition at Waymo’s cost.” (Id.) 

 In its motion, Waymo states that it already searched the emails of Chelsea Bailey and 

Stacey Sullivan and agrees to search the emails of Joanne Chin and Jolie Sorge, but “requests 

confirmation that Uber is not entitled to a second full-day deposition of either unless documents 

bringing new issues to light are located in their custodial files.” (Dkt. 1289 at 3.) 

 Under Judge Corley’s order, Uber has the opportunity to take additional depositions of 

these custodians if Waymo produces documents after their respective depositions. Judge Corley 

did not limit her order to the standards unilaterally volunteered by Waymo, and Waymo has not 

met and conferred about these issues or sought clarification from Judge Corley. Accordingly, 

Uber requests that this Court affirm Judge Corley’s order with respect to Request No. 166. 

III. CONCLUSION 

Uber respectfully requests that this Court affirm Judge Corley’s order. 

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Dated: August 24, 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 

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