DEFS.’ REPLY ISO MOT. TO STRIKE VAGUE AND OVERBROAD TRADE SECRET CLAIMS

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

sf-3814517 

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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 

RUDY Y. KIM (CA SBN 199426) 

RudyKim@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, 

Defendant.

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

DEFENDANTS UBER 

TECHNOLOGIES, INC. AND 

OTTOMOTTO, LLC’S REPLY IN 

SUPPORT OF MOTION TO

STRIKE VAGUE AND 

OVERBROAD TRADE SECRET 

CLAIMS 

Trial Date: October 10, 2017

REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED 
DEFS.’ REPLY ISO MOT. TO STRIKE VAGUE AND OVERBROAD TRADE SECRET CLAIMS

CASE NO. 3:17-CV-00939-WHA 1

sf-3814517

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I. INTRODUCTION

Waymo’s opposition brief confirms that its alleged TS 25, 90, 96, and 111 should be 

stricken. Notwithstanding its embrace of the Court’s Jobscience requirement to disclose its trade 

secret claims with precision, Waymo does not even attempt to show that its Section 2019.210 

disclosure of these trade secrets meets this standard. Instead, it cherrypicks specific examples 

encompassed by its alleged trade secrets. But its actual claimed trade secrets represent the kind of

categorical descriptions and catchall language that courts have rejected. 

In March, the Court instructed Waymo to narrow its trade secrets list to “ones that will 

hold up.” Uber timely brought this motion to strike only days after Waymo provided its narrowed 

list. Contrary to Waymo’s claims, Northern District courts have evaluated the sufficiency of a 

plaintiff’s trade secret disclosure under Section 2019.210 late in the case, and not just early in 

discovery. Furthermore, because Waymo’s obligation to identify trade secrets with specificity is 

a duty owed to the Court, Uber is correct to bring a motion to strike, rather than a summary 

judgment motion. Waymo should not get another bite at the apple: the proper remedy for 

Waymo’s depriving Uber of the meaningful opportunity to prepare its defense is to strike the 

improperly delineated trade secrets.

II. ARGUMENT

A. Waymo Does Not Dispute This Court’s JobScience Requirements, or Its 

Failure to Meet Them

Earlier in this case, Waymo accepted this Court’s JobScience requirement to list “the 

specific elements for each [trade secret], as claims would appear at the end of a patent.” (Mot. at 

6.) In its opposition brief, Waymo does not challenge the Court’s holding in that case that an 

identification of schematics without further explanation or of “mere criteria” without “the secret 

of how it is done” fails to meet this standard. JobScience, Inc. v. CVPartners, Inc., No. C 13-

04519-WHA, 2014 WL 1724763, at *3 (N.D. Cal. May 1, 2014). Yet, Waymo does not even

attempt to show that it has identified the “specific elements” of each of its trade secrets in the 

actual language of its Section 2019.210 disclosure. (Compare Mot. at 2-3 with Opp’n at 5-8.)


1 in its trade secrets list. (Dkt. 1159-20 at 482:2-12.) Again, Waymo should not be allowed to 

2 nanow TS 111 to smvive this motion only to claim a broader scope at trial. 

3 c. Uber's Motion to Strike Is Timely and Not a Motion for Summary Judgment 

4 Waymo contends that Uber waived its challenge by failing to move earlier in discove1y. 

5 But the Comi ordered Waymo to naITow its list to patents that will "hold up" by August 1. (Mot. 

6 at 8-9.) Waymo's Comi-ordered list amended TS 7 but not the other trade secrets. (Dkt. 1110-1; 

7 Dkt. 335-4 at 2-4 (specifying a ).) Uber filed this motion only days later. 

8 Citing JobScience, Waymo argues that Defendants should have raised challenges 

9 illllllediately after the original filing of its Section 2019.210 list. (Opp'n at 2.) But in Jobscience, 

10 plaintiff filed its Section 2019 .210 list after two orders from the Co mt to define its trade secrets, 

11 which defendants then challenged. JobScience, 2014 WL 1724763, at *3. Here, the Court twice 

12 instmcted Waymo to provide a nanowed list of the specific trade secrets "to be tried,'' and Uber 

13 timely filed this motion after Waymo served its nairnwed list. (Mot. at 9.) 

14 Fmthe1more, in Fortinet, the Northern District court assessed the sufficiency of plaintiffs 

15 TS under Section 2019.210 late in the case, three months before trial. Fortinet, Inc. v. Sophos, 

16 Inc. , No. 13-cv-05831-EMC, 2015 WL 5971585, at *2-3 (N.D. Cal. Oct. 15, 2015); see Fortinet, 

17 Dkt. 110 (scheduling order). Because defendant "has already accepted [plaintiff's] trade secret 

18 disclosure for discovery purposes,'' the "prirnai·y question for the Co mt [was] whether the trade 

19 secret disclosure is sufficiently specific such that [defendant] can adequately defend itself." 2015 

20 WL 5971585 at *2; see also Lilith Games (Shanghai) Co. v. uCool, Inc., No. 15-CV-01267-SC, 

21 2015 WL 4149066, at *4 (N.D. Cal. July 9, 2015) (case cited by Waymo identifies Section 

22 2019.210's purpose as fraining scope of discove1y, but also to "enable[] defendants to f01m 

23 complete and well-reasoned defenses" instead of waiting for "eve of trial"). This is the same 

24 inquiiy that Uber requests the Comt conduct here. 

25 Uber has challenged the sufficiency of individual trade secrets when Waymo raised them 

26 in discove1y. (See Dkt. 929-4 and 1006-4.) Notably, Waymo does not dispute that TS 25 and TS 

27 111 had not previously been the focus of this litigation. Waymo alleged for the first tiine on July 

28 28, days before its August 1 list, that Uber used TS 25 and 111. Waymo had previously admitted 

DEFS. ' REPLY ISO MOT. TO STRlKE VAGUE AND OVERBROAD TRADE SECRET CLAIMS 

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

sf-3814517 

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DEFS.’ REPLY ISO MOT. TO STRIKE VAGUE AND OVERBROAD TRADE SECRET CLAIMS

CASE NO. 3:17-CV-00939-WHA 5

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that TS 25 and TS 111 were not disclosed in any allegedly downloaded files. (Mot. at 3; Dkt. 

1107-8 at 23-25.) Waymo’s August 1 interrogatory responses were devoid of detail about the 

scope of TS 25 and 111, and its newly served interrogatory responses on August 10 are no more 

precise in their delineation of these trade secrets. (Chang Reply Decl. Ex. A, Waymo’s Amended 

4th Suppl. Resp. to 1st of Interrogs. at 23-25.)

Furthermore, this motion is properly a motion to strike, not a summary judgment motion 

that litigates the merits of this case. “[A] particularized description of an alleged trade secret is a 

duty owed to the court,” which is separate from whether an asserted trade secret is in fact a trade 

secret. Agency Solutions.Com, LLC v. Trizetto Grp., Inc., 819 F. Supp. 2d 1001, 1017 (E.D. Cal. 

2011). As explained in AgencySolutions.com, a district court can “reject a claim that information 

is a trade secret sua sponte if the information is not identified . . . with sufficient particularity to 

allow the court to determine what the information is.” Id. Waymo has no answer to this Court’s 

ruling in the JobScience case, which similarly granted a motion to strike trade secret claims that 

were not sufficiently disclosed.

III. CONCLUSION

Waymo has no excuse for this lack of precision. After 12 inspections, hundreds of 

thousands of pages of documents, and 35 Uber depositions, including 15 of Uber engineers, 

Waymo evidently cannot muster more than a handful of more narrowly delineated trade secrets to 

assert. The Court should hold Waymo to those trade secrets, and strike the remainder.

Striking Waymo’s overbroad trade secrets is the appropriate remedy, not another chance 

at supplementation. Unlike in Jobscience, this case is on an accelerated trial schedule at 

Waymo’s insistence. The Court was clear that Waymo needed to identify the specific trade 

secrets in play before expert reports were due on August 24, which is a week from the August 16 

hearing on this motion. Waymo understood its obligations to provide disclosures with specificity 

for TS 7, but declined to provide this detail for TS 25, 90, 96, and 111. Waymo should not be 

allowed a third bite at the apple. Accordingly, Uber’s motion should be granted.
DEFS.’ REPLY ISO MOT. TO STRIKE VAGUE AND OVERBROAD TRADE SECRET CLAIMS

CASE NO. 3:17-CV-00939-WHA 6

sf-3814517

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Dated: August 14, 2017 MORRISON & FOERSTER LLP

By: /s/ Arturo J. González

ARTURO J. GONZÁLEZ

Attorneys for Defendants

UBER TECHNOLOGIES, INC. 

and OTTOMOTTO LLC