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WAYMO’S RESPONSE TO MOFO AND STROZ OSC RESPONSES

QUINN EMANUEL URQUHART & SULLIVAN, LLP 

 Charles K. Verhoeven (Bar No. 170151) 

 charlesverhoeven@quinnemanuel.com 

 David A. Perlson (Bar No. 209502) 

 davidperlson@quinnemanuel.com 

 Melissa 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, 

vs. 

UBER TECHNOLOGIES, INC.; 

OTTOMOTTO LLC; OTTO TRUCKING 

LLC, 

Defendants. 

CASE NO. 3:17-cv-00939 

PLAINTIFF WAYMO LLC’S RESPONSE 

TO MOFO’S AND STROZ’S ORDER TO 

SHOW CAUSE RESPONSES (DKTS. 882-

883)

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WAYMO’S RESPONSE TO MOFO AND STROZ OSC RESPONSES

I. INTRODUCTION 

On July 3, 2017, the Court issued an Order to Show Cause why Defendants’ counsel Morrison 

& Foerster (“MoFo”) and Defendants’ agent Stroz Friedberg (“Stroz”) “are not in violation of orders 

herein and should not be ordered to turn over all originals and copies of any files in their possession 

that originated from Waymo to either Waymo or the Court.” (Dkt. 795.) On July 12, MoFo and Stroz 

filed responses to the Order to Show Cause. (Dkt. 882 (“Stroz Response”); Dkt. 883 (“MoFo 

Response”).) But far from demonstrating compliance with the Court’s Orders, these responses further 

show how MoFo and Stroz have violated these Orders and should be held in contempt. 

MoFo’s response admits that MoFo has possessed a previously-undisclosed electronic copy of 

stolen Waymo files (i.e., the “downloaded materials”) since at least March 2017, after receiving these 

materials from Stroz. (MoFo Response at ¶¶ 7-8.) To reiterate: despite multiple Court orders 

requiring that these stolen files be returned to Waymo, MoFo now admits that it has possessed these 

files since March yet has made no move to return them. Equally egregiously, MoFo’s recent 

admission means that MoFo misled Waymo and the Court when it previously stated that it did not 

possess these files. For example, on July 5 MoFo attorney Wendy Ray had submitted a sworn 

declaration stating that MoFo did not possess any of the downloaded materials, except to the extent 

any of these materials were attached as exhibits to the Stroz due diligence report. (Dkt. 806-3 at ¶ 7 

(“MoFo does not have any downloaded materials (or any copies, excerpts or summaries thereof), 

except to the extent that any such material may appear excerpted in or as an exhibit to the Stroz 

Report”).) Yet a week later, MoFo’s July 12 response to the Order to Show Cause now states that 

MoFo has in fact possessed a previously-undisclosed set of the downloaded materials since March 

2017: 

[S]eparate from our representation of Uber in this matter, MoFo previously 

represented Anthony Levandowski personally in the two arbitration matters filed 

by Google and Waymo against Mr. Levandowski. As part of our representation of 

Mr. Levandowski in those arbitration matters, Mr. Levandowski authorized Stroz to 

release his materials in their possession to our firm to provide him with counsel and 

to respond to discovery obligations. In March 2017, we received some materials 

from Stroz . . . . When reviewing our files for purposes of this declaration, it came 

to our attention following submission of Uber’s Response to Waymo’s Motion for 

an Order to Show Cause (Dkt. 806) that we had inadvertently retained an electronic 

copy of these documents. These documents were not referenced in Uber’s July 5 

filing . . . . 

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WAYMO’S RESPONSE TO MOFO AND STROZ OSC RESPONSES

(MoFo Response at ¶¶ 6-7) (emphasis added). 

 Notably, MoFo does not specify the precise date in March when it received these materials, 

rendering it ambiguous whether MoFo received these materials before or after the March 16 

Expedited Discovery Order. Either way, of course, MoFo was obliged to produce these materials 

in response to the Expedited Discovery Order. Indeed, as detailed below, MoFo's recent response 

simply accentuates how MoFo (and Stroz) are in violation of the Court’s Orders.1

II. MOFO IS IN VIOLATION OF THE COURT’S ORDERS FOR FAILING TO 

RETURN DOWNLOADED MATERIALS THAT IT NOW ADMITS IT HAS 

POSSESSED SINCE MARCH 2017 

To recap the Court Orders at issue: the Expedited Discovery Order (Dkt. 61) stated that 

“[b]y March 31, defendants shall produce for inspection all files and documents downloaded by 

Anthony Levandowski, Sameer Kshirsagar, or Radu Raduta before leaving plaintiff’s payroll and 

thereafter taken by them.” (Id. at ¶ 4.) The PI Order (Dkt. 426) stated that “Defendants must 

immediately and in writing exercise the full extent of their corporate, employment, contractual, 

and other authority to (a) prevent Anthony Levandowski and all other officers, directors, 

employees, and agents of defendants from consulting, copying, or otherwise using the downloaded 

materials; and (b) cause them to return the downloaded materials and all copies, excerpts, and 

summaries thereof to Waymo (or the Court) by MAY 31 AT NOON.” (Id. at 23 ¶ 2.) The PI 

Order also states that Defendants must provide a detailed accounting of all individuals who have 

received downloaded materials. (Id. at 24 ¶ 4.) 

 

1

 Nor is this the only recent example of conflicting accounts from Uber over who received the 

downloaded materials and when. Uber’s most recent Paragraph Four Accounting, filed on June 

28, identifies Mr. Levandowski and Lior Ron as among the Uber personnel who received copies of 

the Due Diligence Report. (Dkt. 762 at 9.) Before he was fired, Mr. Levandowski was Uber’s 

Vice President of Engineering. Mr. Ron remains to this day a Senior Director at Uber. But Uber’s 

Statement in Response to Paragraph 7 of Order re Early Motions in Limine and Related Matters, 

filed on July 7, does not identify either Mr. Levandowski or Mr. Ron as among the “board 

member[s], in-house counsel, or other officer or director of Uber who read or received any part of 

the due diligence report or its exhibits, whether in final or draft form, as well as the approximate 

date(s) that each such individual read or received it.” (See Dkt. 823.) Uber subsequently 

confirmed, on July 9, that Mr. Ron was sent the Due Diligence Report on August 8, 2016, but 

muddied the water even further as to Mr. Levandowski — stating (without explanation) that it 

knows he received a copy of the Due Diligence Report, but does not know who sent it to him, or 

when. (Judah Decl., Ex. 1 [7.09.2017 Wendy Ray email].) 

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Despite these two Orders, it is now clear that MoFo has possessed one set of downloaded 

materials since March 2017 and has not returned these materials to Waymo. The facts also show 

that MoFo has access to a separate set of downloaded materials through its litigation support 

vendor, Epiq Systems, Inc., for MoFo’s use in the Google-Levandowski arbitrations — and MoFo 

has not returned this set of downloaded materials either. Nor has MoFo properly disclosed either 

set of downloaded materials under Paragraph 4 of the PI Order. For all these reasons, MoFo is in 

violation of the Expedited Discovery Order and PI Order. 

A. MoFo Cannot Excuse Its Actions By Claiming That It Possesses The 

Downloaded Materials as Counsel for Mr. Levandowski Instead of Counsel for 

Defendants 

MoFo argues that it has no obligation to return the downloaded materials because MoFo 

supposedly received them in its capacity as counsel for Mr. Levandowski, not in its capacity as 

counsel for Defendants. (MoFo Response at ¶ 21 (“with respect to the documents that MoFo 

received from Stroz in connection with its representation of Anthony Levandowski, Uber has 

never had possession, custody, or control over these records and the documents and they are being 

withheld solely at the direction of our former client, Mr. Levandowski.”).) This argument is 

specious. Defendants have argued — thus far successfully — that Uber and Mr. Levandowski had 

a common legal interest in Mr. Levandowski’s theft of Waymo’s files, once the Put Call 

Agreement was signed in April 2016 that provisionally bound Uber to acquire Mr. Levandowski’s 

company, Ottomotto. (See 6.26.17 Judge Corley Order (Dkt. 731) at 3-4.) Indeed, Uber was 

obligated to indemnify Mr. Levandowski for his theft of Waymo’s files, under the terms of the Put 

Call Agreement. (Id.) Notably, MoFo never says that it is barred from sharing its copy of the 

downloaded materials with Uber — which is unsurprising, given that Uber claims it shared a 

common interest with Mr. Levandowski regarding these materials and agreed to indemnify Mr. 

Levandowski for his theft of them. Indeed, it is likely, given MoFo jointly represented Mr. 

Levandowski and his employer Uber, that MoFo was allowed to use documents Mr. Levandowski 

provided to assist both. 

Thus, upon this record, MoFo had an obligation to produce these materials as Uber’s agent 

in order to comply with the Court’s Orders for Uber to produce these materials. See Fed. R. Civ. 

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P. 65(d)(2)(B) (injunctive orders against a party apply to that party’s attorneys and agents); Kirk v. 

Schaeffler Grp. USA, Inc., No. 3:13-CV-5032-DGK, 2016 WL 740300, at *1 fn. 1 (W.D. Mo. Feb. 

24, 2016) (“when the Court directs ‘Plaintiff’ or ‘Defendants’ to do something, that directive 

applies to the litigant and the litigant's attorneys, experts, witnesses, and anyone else to whom the 

directive could conceivably apply.”). 

MoFo’s Response seems to suggest that, until recently, MoFo thought these downloaded 

materials had been deleted or destroyed instead of retained. (MoFo Response at ¶ 7 (“When 

reviewing our files for purposes of this declaration, it came to our attention following submission 

of Uber’s Response to Waymo’s Motion for an Order to Show Cause (Dkt. 806) that we had 

inadvertently retained an electronic copy of these documents.”).) This excuse does not hold water. 

Even if MoFo had previously thought that this set of downloaded materials was no longer 

“retained,” MoFo still had a duty to report and account for this set of materials under Paragraph 4 

of the PI Order. Yet until its July 12 Response, MoFo gave no indication that this set of 

downloaded materials even existed. 

A similar analysis applies to the downloaded materials that MoFo directed Stroz Friedberg 

to send to MoFo’s litigation support vendor, Epiq Systems, Inc., for MoFo’s use in the GoogleLevandowski arbitrations. (Dkt. 762 at 2 and 6-7.) MoFo’s Response alludes to this category of 

downloaded materials, but never identifies Epiq by name, never explains what restrictions (if any) 

attached to Epiq’s receipt of those downloaded materials or MoFo or Uber’s ability to obtain or 

access them (including directly through Epiq’s Relativity viewer), never identifies who is paying 

Epiq to store those downloaded materials, and never identifies any efforts to return those 

downloaded materials to Waymo or the Court. Uber and MoFo have even refused to disclose 

when Epiq received those downloaded materials (or when they were received by Mr. 

Levandowski’s personal counsel, John Gardner), despite the Court’s clear instructions in the PI 

Order that Defendants’ Paragraph Four Accounting must set forth “every person who has seen or 

heard any part of any downloaded materials, what they say or heard, when they saw or heard it, 

and for what purpose.” (PI Order at 24 ¶ 4 (emphasis added).) 

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WAYMO’S RESPONSE TO MOFO AND STROZ OSC RESPONSES

B. MoFo Cannot Excuse Its Actions by Arguing That The Downloaded Materials 

Are Somehow Privileged 

MoFo also argues that the downloaded materials it received from Stroz are subject to 

attorney-client privilege under Fisher v. United States, 425 U.S. 391 (1976). (MoFo Response at ¶ 

21.) This is both incorrect and irrelevant. It is incorrect because Fisher allows for privilege if two 

conditions are met: “First, the client must be privileged against production of the document in 

question, ‘either as a party at common law’ or under the Fifth Amendment. Second, the client 

must have transferred the document in question to the attorney ‘for the purpose of obtaining legal 

advice.’” (Court’s 4.10.17 Order (Dkt. 202) at 8:16-19) (quoting Fisher, 425 U.S. at 404-05) 

(Court’s emphasis). But here, the documents in question were not transferred from Mr. 

Levandowski to MoFo. They were instead transferred from Stroz to MoFo. MoFo admits this 

expressly. (MoFo Response at ¶ 6.) The fact that these documents went to Stroz for due diligence 

purposes before being later routed to MoFo takes this factual situation outside the ambit of Fisher. 

The Court explained this precise point at length in its April 10 Order (reference to the “third party”

in this Order is a reference to Stroz): 

the policy considerations underlying Fisher counsel against application of the 

attorney-client privilege here. As stated, the record does not show that 

Levandowski communicated the [] information at issue in confidence to his 

attorney for the purpose of obtaining legal advice. Indeed, if Levandowski 

transferred any incriminating documents to the third party, it would seem he did so 

for the purpose of selling his ventures to Uber for $680 million. In contrast, Fisher 

involved individuals who transferred documents to their personal attorneys for 

legal advice in connection with IRS investigations. It did not involve a joint 

defense agreement. Not did it involve presenting documents to a non-lawyer. Nor 

did it involve presenting documents to a consultant for due diligence by the other 

side in an acquisition. Fisher is very far removed from the circumstances of our 

case, which simply do not involve the kind of client-attorney communications that 

Fisher intended to protect. 

(4.10.17 Order (Dkt. 202) at 11:10-20.) The Court’s April 10 Order thus conclusively defeats the 

Fisher-related privilege argument that MoFo now makes. 

 MoFo’s argument is not only substantively incorrect, but it is also procedurally irrelevant. 

Again, the Orders that required MoFo to produce the downloaded materials are the Expedited 

Discovery Order and the PI Order. If MoFo believed that the downloaded materials were 

privileged from disclosure under Fisher — such that they did not need to be produced under the 

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Expedited Discovery and PI Orders — then MoFo had a duty to seek modification of those Orders 

or appeal them.2 MoFo did neither. Thus, MoFo cannot raise its supposed privilege concerns as a 

reason to disobey these Orders. 

C. MoFo’s Argument That the Downloaded Materials Are Not “Stolen Property” 

Is Incorrect 

In response to the Court’s directive for MoFo to “explain what controlling authority allows 

someone to knowingly receive and keep suspected stolen property despite a demand or order that 

it be returned to its rightful owner” (Dkt. 795 at 1:22-23), MoFo states that “in the context of 

intellectual property misappropriation, such intellectual property is not necessarily ‘stolen 

property.’” (MoFo Response at 5:18-19.) This position is meritless. First, the materials at issue 

here are discrete files stolen from Waymo. These files are clearly “property.” Second, even if one 

focuses on the incorporeal trade secrets embodied in these files, rather than the files themselves, 

trade secrets are “property” as well. The Silvaco case — which has been cited repeatedly by both 

Uber and the Court during the course of this lawsuit — makes that clear. Silvaco Data Sys. v. 

Intel Corp., 184 Cal. App. 4th 210, 236 (2010) (“the only property interest that Silvaco could have 

in that software under the facts alleged in the pleadings is a trade secret.”) And while the civil tort 

pled by Waymo in this case is trade secret “misappropriation,” such misappropriation can also 

constitute the crime of trade secret “theft” under both California and Federal law. See Cal. Penal 

Code § 499c(b) (referring to “theft” of trade secrets); 18 U.S.C. § 1832(a)(1) (referring to 

“steal[ing]” of trade secrets). For all these reasons, MoFo’s position that misappropriated trade 

secret documents are not “stolen property” is meritless. 

Indeed, the only case MoFo cites for this position is Dowling v. United States, 473 U.S. 

207 (1985), which did not deal with trade secrets at all. Dowling instead held that the 

transportation of copyright-infringing records across state lines does not violate a particular 

Federal statute criminalizing the interstate transportation of goods known to have been “stolen, 

 

2

 By way of illustration, Mr. Levandowski sought modification of the PI Order when he believed 

that this Order impinged on his Fifth Amendment rights (Dkt. 466), and the Court stayed 

compliance with the PI Order in relation thereto in order to allow time for that issue to be briefed. 

(Dkt. 471.) 

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converted or taken by fraud.” Id. (citing 18 U.S.C. § 2314) (“Section 2314”). Relying in part on 

the legislative history of Section 2314 and the separate body of criminal copyright-infringement 

law, Dowling held that the transport of copyright-infringing goods did not infringe Section 2314. 

There are numerous reasons why Dowling does not support MoFo’s argument that it has 

not retained “stolen property.” First, it is questionable whether Dowling can be extended from the 

copyright context to the trade secret context at all. See, e.g., United States v. Kwan, No. 02 CR. 

241 (DAB), 2003 WL 21180401, at *2 (S.D.N.Y. May 20, 2003) (noting that Dowling has been 

restricted to the copyright context and not extended to other forms of intellectual property). 

Second, Dowling did not purport to address the metes and bounds of “stolen property” in the 

abstract — it was expressly limited to the scope of Section 2314. And third, MoFo’s retention of 

the downloaded materials would constitute “stolen property” even under Dowling. As Dowling

stated: “cases . . . . prosecuted under § 2314 have always involved physical ‘goods, wares, [or] 

merchandise’ that have themselves been ‘stolen, converted or taken by fraud.’ . . . the provision 

seems clearly to contemplate a physical identity between the items unlawfully obtained and those 

eventually transported, and hence some prior physical taking of the subject goods.” Dowling, 473 

U.S. at 216. Here, the Waymo files were actually stolen by Mr. Levandowski, and there is a 

“physical identity” between those files and the files retained by MoFo. 

In sum, the files that MoFo possesses and refuses to return certainly constitute “stolen 

property,” notwithstanding MoFo’s arguments to the contrary. 

III. STROZ IS IN VIOLATION OF THE COURT’S ORDERS FOR FAILING TO 

RETURN THE SAME SET OF DOCUMENTS 

 For much the same reason that MoFo is in violation of the Court’s Orders, Stroz is in 

violation as well. As recounted above, the copy of downloaded materials that MoFo has possessed 

since March 2017 and is refusing to produce is a copy that MoFo received from Stroz. Similarly, 

the copies of downloaded materials received by MoFo’s litigation support vendor and Mr. 

Levandowski’s personal counsel were received from Stroz. There also is no dispute that Stroz 

itself still possesses other copies of these downloaded materials, including the user-generated 

content that was extracted and sent to Epiq and Mr. Gardner, the actual physical devices 

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themselves, and forensic images of those devices. (See, e.g., Dkt. 762 at 6-7.) Just as MoFo was 

obliged to produce these materials in response to the Court’s Orders, so too was Stroz. 

 After all, Stroz is Defendants’ “agent” just as much as MoFo is. Defendants’ counsel 

repeatedly called Stroz their “agent” at a discovery hearing before Judge Corley. (5.25.17 Hearing 

Tr. at 24:6-7; 38:5-12; 53:4-9.) Thus, Stroz was bound to produce its copies of the downloaded 

materials in response to the Expedited Discovery and PI Orders. Fed. R. Civ. P. 65(d)(2)(B) 

(party’s agents are bound by court orders). By failing to do so, Stroz is in violation of those 

Orders. 

 Stroz argues that it is not in violation because one particular Order — namely, the Order 

for Stroz to produce the downloaded materials in response to the Stroz subpoena — has been 

appealed to the Federal Circuit and is stayed pending Federal Circuit resolution. (Stroz Response 

at 3:3-4:6 (recounting the procedural history of the Stroz subpoena Order).) But this overlooks the 

fact that the Stroz subpoena Order is not the only order that requires Stroz to produce the 

downloaded materials. The Expedited Discovery Order and PI Order also require Stroz to produce 

these materials. As with MoFo, if Stroz wished to resist producing the downloaded materials in 

response to those Orders, it had a duty to appeal or seek modification of those Orders. Yet it 

never did so. Those Orders remain fully in force and are not stayed pending appeal. Thus, Stroz 

plainly has an obligation to produce the downloaded materials in response to those Orders, even if 

the separate Stroz subpoena Order is temporarily stayed. 

 Stroz also argues that “it is in an impossible position — either honor its contractual 

obligations and Mr. Levandowski’s asserted Fifth Amendment rights and asserted attorney-client 

privileges and attract the ire of the Court [by refusing to produce the downloaded materials], or 

breach those obligations and ignore Mr. Levandowski’s asserted constitutional rights and 

privileges.” (Stroz Response at 5:1-4.) But Stroz’s position is not “impossible” at all — there are 

multiple ways for Stroz to resolve its supposed dilemma without disobeying the Court’s Orders. 

First, as noted above, Stroz could have promptly appealed every Court Order requiring it to 

produce the downloaded materials and sought a stay of its production obligations pending appeal. 

Second, Stroz could have informed Mr. Levandowski that it intended to comply with the Court’s 

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Orders and thereby but the burden on him to seek modification and/or a stay of those Orders. But 

instead, Stroz has chosen to retain the downloaded materials in the face of two unstayed, 

unappealed Court Orders to produce them. Thus, Stroz is squarely in violation of these Orders. 

 

DATED: July 17, 2017 QUINN EMANUEL URQUHART & SULLIVAN, 

LLP 

By /s/ Charles K. Verhoeven 

Charles K. Verhoeven 

Attorneys for WAYMO LLC 

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