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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

WAYMO LLC,

Plaintiff,

v.

UBER TECHNOLOGIES, INC., et al.,

Defendants.

Case No.17-cv-00939-WHA (JSC)

ORDER REGARDING DEFENDANTS’ 

NON-PARTY SUBPOENA 

Re: Dkt. No. 1240-8

Waymo has sued Uber for trade secret misappropriation. Fact discovery closes on August 

24, 2017. On July 31, 2017 Defendants served non-parties Aurora Innovation, Inc., Christopher 

Urmson, Nuro, Inc. and David Ferguson with Rule 45 subpoenas. All four non-parties move to 

quash or for a protective order. Mr. Urmson and Mr. Ferguson previously worked at Waymo and 

then left to form their own companies. They have agreed to testify regarding their time at Waymo 

and what they know about Mr. Levandowski, as well as provide testimony as to why they left 

Waymo. They have refused to provide testimony however, regarding: (1) their recruiting of 

former Waymo employees, (2) Aurora and Nuro’s compensation plans and the valuation of their 

companies, and (3) the companies’ development of LiDAR technology, if any. 

DISCUSSION

Federal Rule of Civil Procedure 45 governs discovery of nonparties by subpoena. The 

scope of discovery under Rule 45 is the same as under Rule 26(b). Fed. R. Civ. P. 45 Advisory 

Comm.’s Note (1970); Fed. R. Civ. P. 34(a). A non-party subject to a subpoena may file a motion 

to quash or modify the subpoena. Fed. R. Civ. P. 45(d)(3). 

Generally, the party moving to quash under Rule 45(d)(3) bears the burden of persuasion, 

but “[t]he party issuing the subpoena must demonstrate that the information sought is relevant and 
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United States District Court

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material to the allegations and claims at issue in the proceedings.” Optimize Tech. Solutions, LLC 

v. Staples, Inc., No. 14-MC-80095, 2014 WL 1477651, at *2 (N.D. Cal. Apr. 14, 2014) (internal 

quotation marks and citation omitted); see also Am. Broad. Companies, Inc. v. Aereo, Inc., No. 

CV-12-80300-RMW, 2013 WL 1508894, at *4 (N.D. Cal. Apr. 10, 2013) (“The burden of 

showing that a subpoena is unreasonable and oppressive is upon the party to whom it is directed.”)

A court may quash a subpoena that requires the disclosure of “a trade secret or other 

confidential research, development, or commercial information.” Fed. R. Civ. P. 45(d)(3)(B)(i). 

“Once the nonparty shows that the requested information is a trade secret or confidential 

commercial information, the burden shifts to the requesting party to show a substantial need for 

the testimony or material that cannot be otherwise met without undue hardship.” Gonzalez v. 

Google, 234 F.R.D. 674, 684 (N. D. Cal. 2006) (internal citations and quotation marks omitted). 

Moreover, the information requested from a non-party “should be narrowly drawn to meet specific 

needs for information.” Convolve, Inc. v. Dell, Inc., No. C 10–80071 WHA, 2011 U.S. Dist. 

LEXIS 53641, at *7 (N. D. Cal. May 9, 2011) (internal citations and quotation marks omitted).

1. LiDAR Technology, if Any

Uber contends it needs to know about Urmson’s and Nuro’s development of LiDAR 

technology, if any, because it may evidence that Uber’s asserted trade secrets are not so secret. 

Uber’s attempt to subpoena a non-party competitor’s technical trade secrets so it can compare that 

technology to Waymo’s asserted trade secrets is unprecedented. It does not cite a single trade 

secret case that has allowed such discovery, and for good reason. To permit such discovery would 

mean in every trade secret case every industry participant’s trade secrets would be subject to 

compelled disclosure so a defendant could fish around to determine whether the competitor’s trade 

secrets are similar to the plaintiff’s and therefore the plaintiff’s trade secrets somehow not secret. 

Even more, a competitor could file a trade secret case against one defendant as a means to 

subpoena the trade secrets of all of its other competitors; after all, if a non-party’s trade secrets are 

relevant to show that technology is not secret it is also relevant to show that it is. While the 

information could be produced subject to an attorneys-eyes-only protective order, such orders do 
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United States District Court

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not guarantee that the information will not be disclosed. Thus, there is no rule that a competitor 

has to reveal its trade secrets merely because they are produced subject to a protective order.

In support of its unprecedented request Uber represents that the district court “specifically 

explained that it is necessary for the Uber Defendants to subpoena other companies for 

information about the technology at issue in this case,” and that the district court “recognized the 

substantial need for information from other companies, like Aurora and Nuro.” (Dkt. No. 1264 at 

2.) Here is what the district court actually said:

On the other side, what you should be looking at and – but 

you don’t need – you don’t need discovery, really, is to show that 

these alleged trade secrets are in the public domain. And – And you, 

know, get out there and show that some of these things –all of these 

things that are alleged trade secrets are not –are –you know, any 

good engineer would know them anyway, so that is where I think 

you should be headed.

You don’t need much discovery from the other side to do 

that, though you –some would help you. That’s going to be out 

there in the literature and the –maybe you need to go do some 

discovery from other car companies, driverless car companies in 

order to see how they do it so, see if they already have discovered 

the same trade – alleged trade secret.

(Dkt. No. 625 at 49-50.) The district court’s rumination that Uber’s efforts should focus on 

discovering what is publicly known and that Uber “maybe” will need discovery from other 

companies is not even close to a ruling that Uber has shown a substantial need for compelling the 

non-parties’ trade secrets. It has not. It does not offer any evidence that suggests these nonparties actually have evidence relevant to any particular trade secret; indeed, Uber does not even 

know if these non-parties developed LiDAR. That their founders came from Google is 

insufficient to show Uber’s compelling need. The motion to quash this portion of the subpoenas is 

GRANTED.

2. Employee Compensation and Value

Uber has also failed to show a substantial need for its competitor’s compensation 

information and the valuation of their companies. Uber does not explain how it can justify the 

price it paid for Ottomotto by referring to information of which it was not aware. Uber knows 

how it decided to pay the price it did for “talent” and Uber can offer that evidence. And, if its 
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decision was based on what it knew “talent” was being paid by others, it can offer that evidence as 

well. The result is the same for the valuations of these new companies. If Uber believed startup 

companies receive high valuations because of their talent then Uber can offer as evidence the 

information upon which its belief was based. The motion to quash this portion of the subpoena is 

GRANTED.

3. Recruitment of Former Waymo Employees and Why They Departed Waymo

Uber wants to ask non-parties about the reasons former Waymo employees left Waymo 

and joined the non-parties. The information is of limited relevance, but is also not a trade secret. 

To the extent Urmson and Ferguson have personal knowledge of what someone said about why 

they left Waymo they shall so testify. Non-parties have also not shown how disclosing the 

number of former Waymo employees who work for them is a trade secret. Uber does not appear 

to be seeking “confidential recruiting strategies.” And it is not overly burdensome given that they 

will be sitting for their depositions on other topics in any event.

CONCLUSION

For the reasons stated above, the Court GRANTS in part and DENIES in part the nonparties’ motion to quash the Rule 45 subpoena.

Non-parties’ motion to seal is DENIED. The declaration of Walter Pfeffer does not offer 

any explanation as to why he decided that certain material should be sealed and therefore violates 

the Civil Local Rule 79-5(b), (d)(1)(A). There is no point in having attorneys submit declarations 

in support of sealing if the Court is required to order a document sealed merely because an 

attorney says he thinks it should be. More is required. 

Any objections shall be filed with the district court on or before noon on August 21, 2017. 

This Order is not stayed. This Order disposes of Dkt. No. 1240. 

IT IS SO ORDERED.

Dated: August 18, 2017 

JACQUELINE SCOTT CORLEY

United States Magistrate Judge
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United States District Court

Northern District of California