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No. 3:17-cv-00939-WHA

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QUINN EMANUEL URQUHART & SULLIVAN, LLP 

 Charles K. Verhoeven (Bar No. 170151) 

 charlesverhoeven@quinnemanuel.com 

 David A. Perlson (Bar No. 209502) 

 davidperlson@quinnemanuel.com 

 Melissa J. 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, 

v. 

UBER TECHNOLOGIES, INC.; 

OTTOMOTTO LLC; OTTO TRUCKING 

LLC, 

Defendants. 

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

PLAINTIFF WAYMO’S REPLY IN 

SUPPORT OF ITS MOTION TO 

COMPEL PRODUCTION OF 

WITHHELD DOCUMENTS 

PUBLIC REDACTED VERSION OF 

DOCUMENT SOUGHT TO BE SEALED 

Date: May 24, 2017 

Time: 2:00 p.m. 

Place: Courtroom F, 15th Floor 

Judge: The Honorable Jacqueline Scott Corley

 

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TABLE OF CONTENTS 

Page 

I. DEFENDANTS DO NOT REBUT THE INFIRMITIES IN THEIR LOG AND 

HAVE SUBMITTED A DEFICIENT SWORN RECORD THAT FALLS FAR 

SHORT OF SHOWING THAT ANY PRIVILEGES APPLY AND HAVE NOT 

BEEN WAIVED ....................................................................................................................2

II. DEFENDANTS HAVE NOT ESTABLISHED AND CANNOT ESTABLISH 

THAT ANY PRIVILEGE APPLIES TO THE PURPORTED “DUE DILIGENCE” 

MATERIALS .........................................................................................................................3

A. Defendants’ Incomplete Record Does Not Justify The Claimed Privileges ..............4

B. The Acquisition Documents Confirm That Uber’s Conduct Is Not 

Privileged As A Matter Of Law .................................................................................5

C. Defendants Do Not Even Submit The Declarations They Concede Are 

Necessary To Make A Prima Facie Showing That The Asserted Privileges 

Apply And Were Not Waived ....................................................................................7

III. EVEN IF THE LOGGED DOCUMENTS WOULD OTHERWISE BE 

PROTECTED, THE CRIME-FRAUD EXCEPTION APPLIES ........................................10

IV. DEFENDANTS DO NOT DISPUTE THAT THEY SHOULD BE COMPELLED 

TO PRODUCE ALL DOCUMENTS AND FORENSIC DATA PROVIDED TO 

STROZ FOR USE IN ITS INVESTIGATION ....................................................................13

V. WAYMO HAS SHOWN THE REQUISITE NEED FOR THE LOGGED 

DOCUMENTS .....................................................................................................................14

VI. DISCOVERY .......................................................................................................................15

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The Court has already found that “troves of likely probative evidence have been concealed 

from Waymo under relentless assertions of privilege that shroud dealings between Levandowski 

and defendants in secrecy.” (Dkt. 433 at 18-19.) In its motion to compel, Waymo demonstrated 

that Defendants have not met their burden to justify this shroud over what Defendants call the 

“due diligence materials” related to Uber’s investigation of Mr. Levandowski and other former 

Waymo employees prior to Uber’s acquisition of Otto. Defendants do not substantively rebut that 

their (tardy) privilege log fails to comply with the Court’s standing order. Instead, in opposition to 

Waymo’s motion, Defendants raise new supposed grounds, not found in their log, to justify their 

privilege assertions. These new grounds should be ignored altogether, though even they do not 

support Defendants’ positions, as detailed below. 

Defendants’ recent production of documents regarding Uber’s acquisition of Otto – 

initially withheld even after the Court explicitly asked for those documents1 – only further shows 

that there is no basis to assert privilege over the “due diligence materials.” These acquisition 

agreements reveal that

 (E.g., 

Ex.2 9 at 3-4 & Exh. C; Ex. 10.) Incredibly, these

. (E.g., Ex. 9, Exh. C at 4; Ex. 10 at 2.) 

 (E.g., Ex. 9, 

Exh. A; see also Dkt. 433 at 3-4.) What is still unclear from Defendants’ statements and 

incomplete discovery is whether Uber learned about the through due diligence (and then 

 

1

 In connection with expedited discovery ordered for the purpose of informing Waymo’s motion 

for a preliminary injunction, Waymo had asked for all agreements related to Uber’s acquisition of 

Otto, including those executed by Mr. Levandowski. With no legitimate justification whatsoever, 

Defendants intentionally waited until after the Court issued its preliminary injunction ruling to 

produce any such agreements. If the Court had not made known that Defendants should “hurry 

up” and produce them, Defendants would have concealed the acquisition agreements for even 

longer – at least until after this motion to compel was decided. But, with the Court forcing their 

hand, on Thursday night and on Saturday, Defendants provided an incomplete set of heavily 

redacted acquisition agreements executed by Mr. Levandowski. 2

 All Exhibits are attached to the Declaration of Patrick Schmidt. 

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sought to cover them up) or whether Uber was complicit in the theft of Waymo’s confidential 

documents from the start. Uber’s shroud of secrecy cannot be justified in either scenario. 

I. DEFENDANTS DO NOT REBUT THE INFIRMITIES IN THEIR LOG AND HAVE 

SUBMITTED A DEFICIENT SWORN RECORD THAT FALLS FAR SHORT OF 

SHOWING THAT ANY PRIVILEGES APPLY AND HAVE NOT BEEN WAIVED 

The Court made clear to Defendants that they needed to provide “bone-crushing detail” in 

their privilege logs. (4/5/17 Hr’g Tr. 27:10-28:4.) Defendants do not substantively dispute that 

they did not provide such detail. Indeed, the new arguments Defendants make in their opposition 

only confirm that the log describing the due diligence materials was grossly deficient. As just one 

example, while Defendants’ log based their privilege assertions solely on an April 11, 2016 Joint 

Defense Agreement (Dkt. 370-4 at 1 n.2), Defendants now point to all manner of oral and written 

agreements (e.g., Opp. 3 (Stroz engagement letter, side agreement between Stroz and 

Levandowski), 7 (referring to an “indemnification construct”), 8 (February 2016 term sheet, 

various emails purportedly related to oral agreements)). As expressly called out in Waymo’s 

motion (at 5-6), Defendants’ failure to reference these agreements “at the time of the assertion” of 

the privileges should be “deemed a waiver” pursuant to Judge Alsup’s standing order. 

More problematic, however, is Defendants’ failure to make the vast majority of the 

agreements that they are now relying on part of the sworn record in opposition to Waymo’s 

motion to compel. Referring to these various agreements in declarations is not sufficient.3 

Indeed, Defendants intentionally limited their record to such references – as opposed to providing 

the documents themselves – seemingly for a specific improper purpose: to use self-serving 

characterizations of the documents as a sword in opposition to Waymo’s motion to compel, while 

simultaneously shielding the problematic content of the documents from Waymo and the Court for 

as long as possible, prejudicing Waymo with respect to not only this motion to compel but also its 

motion for a preliminary injunction. Defendants voluntarily submitted an incomplete record, and 

that record cannot satisfy Defendants’ burden to establish the applicability of the asserted 

 

3

 Such references do not pass muster on the best evidence rule. Groppi v. Barham, 157 F. App’x 

10, 11–12 (9th Cir. 2005); United States v. Bennett, 363 F.3d 947, 953 (9th Cir. 2004). 

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privileges and the lack of any waiver thereof. 

II. DEFENDANTS HAVE NOT ESTABLISHED AND CANNOT ESTABLISH THAT 

ANY PRIVILEGE APPLIES TO THE PURPORTED “DUE DILIGENCE” 

MATERIALS 

Regardless of Defendants’ waiver in the context of its relentless efforts to obfuscate in this 

case, there is no viable privilege here. Defendants have taken the position that all parties related to 

a potential acquisition – including a potential acquirer, potential acquirees (whether ultimately 

acquired or not), individuals being investigated during “due diligence,” and third-party 

investigators – can collectively use privilege to cloak unfavorable facts in secrecy. That is not the 

law, and “all manner of mischief could be concealed” (Dkt. 202 at 12) if it were. 

The following colloquy regarding a hypothetical posed by Judge Alsup is instructive. 

THE COURT: All right. So let’s say that the scenario is somebody is jumping 

ship, coming over. The acquiring company learns in the course of the 

negotiations that, by the way, the guy jumping ship has downloaded a bunch of 

secret documents. And then the acquirer says: Well, that’s a problem. We’ve got 

to come up with some kind of a solution to this. So there’s a lot of negotiation. 

Let’s just say that, hypothetically, they all get put into a vault somewhere. They 

are not—you know, they’re put into a vault and he promises in writing 

somewhere he will never look at them. He won’t use them. The company tries to 

protect itself in every possible way. But isn’t that—isn’t that agreement part of 

the acquisition itself and something that everybody ought to see? 

MR. GONZALEZ: So, your Honor, what you just described, in my opinion, is 

classic joint interest material because— 

THE COURT: The magistrate judge ought to take a very, very close look at your 

position. 

MR. GONZALEZ: Understood, Your Honor. Understood. But if what we’re 

describing is something like that, where the acquiring company is trying to do the 

right thing, such as in the hypothetical you just mentioned, putting things in a 

vault so that we never get it, that’s why you have the joint interest privilege. 

THE COURT: I don’t think that’s correct, in my view. That’s not what it’s for. 

But that’s for the magistrate judge to decide. 

(5/3/2017 Public Hr’g Tr. 52:6-53:8.) Defendants’ expansive understanding of privilege – as 

revealed in response to Judge Alsup’s hypothetical – is not supportable. There is “no binding 

authority” to support the notion that litigants can “abuse” privilege to conceal whatever they like 

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“so long as they cleverly passed it on as part of ‘due diligence.’” (Dkt. 202 at 10.) 

A. Defendants’ Incomplete Record Does Not Justify The Claimed Privileges 

Even the limited information that Defendants provided in opposition to Waymo’s motion – 

which was cherry-picked to reflect what Defendants thought was most helpful while omitting what 

they deemed to be unhelpful – makes clear that Defendants have not come anywhere near meeting 

their burden to establish the asserted privileges. 

For example, contrary to Defendants’ statement that “Otto, its founders, and Uber . . . 

jointly retain[ed] Stroz to investigate potential claims that Google may have” (Opp. 15), the 

evidentiary record submitted by Defendants reveals that Mr. Levandowski and Mr. Ron did not

participate in retaining Stroz and did not have a common interest with those who did. Only 

Uber/MoFo and Otto/OMM (not Mr. Levandowski, Mr. Ron, or their counsel) engaged Stroz 

(Dkt. 370-3 at 1); the Stroz engagement was for the purpose of investigating Mr. Levandowski, 

Mr. Ron, and other former Waymo employees (Dkt. 370 ¶ 9); Stroz communicated substantively 

about its ongoing investigation only with MoFo and OMM (not with Mr. Levandowski, Mr. Ron, 

or their attorneys) (id. ¶ 16); Ottomotto, Otto Trucking, and Mr. Levandowski did not permit Stroz 

to share their attorney/client communications with Uber/MoFo (Dkt. 370-3 at 3); and Stroz had to 

seek permission from Mr. Levandowski – which Mr. Levandowski only sometimes granted – to 

share information uncovered in the investigation with Uber/MoFo (Dkt. 380 ¶ 7). None of these 

facts supports Defendants’ conclusory assertion that all of these actors had a common legal 

interest. To the contrary, these facts show that those doing the investigating and those being 

investigated were protecting their own, personal interests vis-à-vis the group and third parties. 

As another example, Uber makes a point of stating that it authorized the Stroz 

investigation4

 “prior to any understanding of the facts informing” the “litigation risks that the 

proposed acquisition presented.” (Dkt. 378 ¶ 10.) Uber should not be heard to both disclaim 

knowledge of the facts informing purported litigation risks and seek to conceal those same facts 

 

4

 Defendants provide no date for this “authorization,” though it now seems clear that Defendants 

. (Compare Ex. 9 

(dated February 22, 2016), with Dkt. 370-3 (dated March 4, 2016).) 

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based on purported litigation risks. Moreover, Uber’s assertion begs the question of how the 

interests of various purported members of the common interest group fluctuated over time. What 

exactly did Uber know about Mr. Levandowski’s theft of Waymo’s confidential and proprietary 

documents and when did it know it? Were Uber’s and Mr. Levandowski’s interests aligned with 

respect to that theft from the start or did their interests diverge once Uber gained “any 

understanding of the facts informing the litigation risks”? Defendants’ record provides no answer. 

Similarly, Defendants contend that Otto Trucking was initially an acquisition target but 

was not ultimately acquired by Uber. Although Otto Trucking is a purported member of the 

common interest group, Defendants provide no information regarding the purpose of Otto 

Trucking’s receipt of any due diligence materials or its alleged change in status with respect to the 

acquisition. Did Otto Trucking’s interests change vis-à-vis Waymo when the decision was made 

that Otto Trucking would not be acquired? Again, the record is silent. 

The Court in this case made clear that Defendants’ burden was to establish that each and 

every recipient of the due diligence materials had a common legal interest related to those 

materials. But the limited evidence submitted by Defendants only raises doubts as to how that 

could have possibly been the case. Such a record is insufficient to justify the asserted privileges. 

B. The Acquisition Documents Confirm That Uber’s Conduct Is Not Privileged 

As A Matter Of Law 

This Court previously anticipated the possibility that Uber asked Mr. Levandowski to 

disclose information to Stroz, so that Uber could “evaluate the extent to which Levandowski 

would arrive with attendant liabilities.” (Dkt. 202 at 10.) And that Mr. Levandowski, in turn, 

“transferred any incriminating documents to [Stroz] . . . for the purpose of selling his ventures to 

Uber for $680 million.” (Id. at 11.) The Court intimated that such a scenario would not be 

privileged, as it would constitute due diligence related to a commercial transaction between parties 

on opposing sides. (See id. at 10.) Of course the actual facts here are much more troubling, as 

(Ex. 9 at Exh. C), and Defendants appear to have set 

up the purported “due diligence” protocol to conceal But this more 

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nefarious scenario does not change the conclusion that, as a matter of law, no privilege applies. 

To try to argue otherwise, Defendants heavily rely on Judge Alsup’s opinion in Rembrandt 

Patent Innovations, LLC v. Apple Inc., No. C 14-05093 WHA, 2016 WL 427363 (N.D. Cal. Feb. 

4, 2016). But that case actually supports Waymo’s position. Rembrandt held that, before a 

purchaser had acquired a binding option from inventors to purchase their patent, communications 

between these parties could not be protected by the common interest doctrine. Id. at *8. “At that 

point, Rembrandt’s interest was in pitching the value of a business partnership to the named 

inventors and possibly in highlighting concerns about invalidity and title in order to drive down 

the price” – which was an interest assuredly not shared by the inventors. Id. The same logic 

applies here. Unless there was a concerted plan for all purported members of the common interest 

group – including Uber, Otto, Mr. Levandowski, and Mr. Ron – to steal Waymo’s trade secrets 

(which the circumstantial evidence suggests and in which case the crime-fraud exception applies), 

those entities and individuals would have had starkly divergent interests vis-à-vis Waymo in the 

period before the acquisition closed.5 And Mr. Levandowski and Mr. Ron – the subjects of the 

Stroz investigation – clearly had unique personal interests vis-à-vis those who were investigating 

them and vis-à-vis third parties who might be interested in the results of the investigation. 

Even if Defendants were to argue that the acquisition was effectively a done deal by the 

time the due diligence materials were circulated among the group (an argument unsupported by 

the record), there still would not be a common legal interest here. This can be seen by the way in 

which the litigation against Waymo has actually unfolded: the legal interests of at least Mr. 

Levandowski and Uber are certainly not common. Mr. Levandowski has broadly taken the Fifth 

Amendment to protect himself against self-incrimination while exposing Uber to possible adverse 

inferences. Uber purportedly took steps to remove Mr. Levandowski from responsibilities for 

which he was originally hired even before the Court issued its Order enjoining Mr. Levandowski 

 

5

 The Court has recognized this, stating: “I have been in this job a long time. I have seen many 

cases involving acquisitions, but I have never heard of an acquisition itself being cloaked in 

secrecy every -- because you’re really on adverse sides. It’s a business deal.” (5/3/17 Public 

Hr’g Tr. at 47:24-48:3 (emphasis added).) 

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from working Uber’s LiDAR technology (Dkt. 433 at 7-8). And the Court’s preliminary 

injunction Order makes clear that Uber can threaten Mr. Levandowski with termination of his 

employment should he fail to return the “14,000-plus pilfered files” to Waymo. (Id. at 23 n.9.) 

Needless to say, these divergent interests existed and were readily apparent at the time the 

purportedly privileged materials were circulated to Uber, Mr. Levandowski, and others in August 

2016. Indeed, this Court recognized at the very outset of this litigation that Mr. Levandowski had 

vastly different legal interests from Uber, suggesting that Mr. Levandowski may need his own 

counsel. (3/16/17 Hr’g Tr. at 16:16-17:3.) And Defendants’ counsel acknowledged that there was 

a “conflict” with respect to their representation of both Defendants and Mr. Levandowski. 

(3/29/17 Hr’g Tr. at 17:15-20.) In sum, all of the dynamics that make clear that Uber and Mr. 

Levandowski have divergent legal interests in this case would have been equally apparent in 

August 2016, when the parties were discussing the theft of Waymo’s confidential design server 

and other proprietary documents in the context of purported “due diligence.”6 

C. Defendants Do Not Even Submit The Declarations They Concede Are 

Necessary To Make A Prima Facie Showing That The Asserted Privileges 

Apply And Were Not Waived 

In connection with any opposition to Waymo’s motion to compel, the Court ordered 

 

6

 In their Opposition, Defendants only cite cases in which the parties to a common interest 

agreement would actually pursue a joint defense as opposed to the divergent legal defenses that 

Uber and Mr. Levandowski are pursuing here. For example, in Hewlett-Packard Co. v. Bausch & 

Lomb, Inc., 115 F.R.D. 308, 310 (N.D. Cal. 1987), there was a common interest between a 

corporate buyer and seller with respect to possible future patent litigation because “they could be 

expected to conduct a joint defense on all the liability issues.” Id. at 310; see also FastVDO LLC 

v. AT&T Mobility LLC, No. 16-CV-385-H (WVG), 2016 WL 6138036, at *4 (S.D. Cal. Oct. 21, 

2016) (“[T]he Subject Documents, the final agreement signed by Boeing and Plaintiff, and other 

documents lodged with the Court clearly demonstrate that the parties had, at the time of the 

communication of the Subject Documents, a common legal interest. This legal interest was 

ultimately aligned with a final agreement regarding the asserted patent.”); Morvil Tech., LLC v. 

Ablation Frontiers, Inc., No. 10-CV-2088-BEN BGS, 2012 WL 760603, at *3 (S.D. Cal. Mar. 8, 

2012) (“AFI and Medtronic shared common legal interests in whether the products that AFI and 

Medtronic would market infringed third party IP, and the communications addressing the scope of 

the IP certainly were designed to further that interest.”); FTC v. Abbvie, Inc., No. CV 14-5151, 

2015 WL 8623076, at *12 (E.D. Pa. Dec. 14, 2015) (“Having signed an agreement to acquire 

Solvay on September 26, 2009, Abbott and Solvay shared a common interest in litigation 

concerning Solvay products when these emails were exchanged in October 2009.”). 

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Defendants to “submit a proper sworn record as to all necessary predicates” for their privilege 

assertions. But whether one looks to the story told by Defendants in their opposition or the story 

told by the acquisition agreements, the fact is that Defendants submitted no sworn declaration 

from Mr. Ron, Mr. Levandowski, or OMM, even though each received all 42 of the logged “due 

diligence” documents. For this reason as well, Defendants have not carried their burden of 

establishing that the asserted privileges “appl[y] and ha[ve] not been waived.” (Dkt. 202 at 5; 

4/6/17 Hr’g Tr. at 36:1-4 (“Ordinarily if there’s a claim of privilege, we look to see every single 

person who got the information because there could easily be a waiver. It happens all the time.”).) 

Defendants offer no explanation or justification for why they did not submit a sworn 

declaration from Mr. Ron. The absence of such a declaration is particularly problematic, given 

that Mr. Ron was a target of the Stroz investigation that Defendants contend they authorized. The 

declaration from Mr. Ron’s counsel, Ms. Baker, does not solve the problem. For example, with 

respect to whether Mr. Ron disseminated the due diligence report – a critical point that must be 

supported by the sworn record in order for Defendants to prevail here (4/6/17 Hr’g Tr. at 36:1-

16) – Ms. Baker states only: “I have no reason to believe, and do not believe, that Mr. Ron has, at 

any time, failed to keep the Due Diligence Report and exhibits thereto confidential.” (Dkt. 375 ¶ 

17.) Ms. Baker apparently has no personal knowledge of Mr. Ron’s activities since receiving the 

purportedly privileged documents – her declaration does not even state that she spoke to Mr. Ron 

regarding his efforts, if any, to keep those documents confidential. Her statement that she has “no 

reason to believe” Mr. Ron waived confidentiality is essentially meaningless. See United States v. 

Wallace, 961 F. Supp. 969, 976 (N.D. Tex. 1996). 

Similarly, Defendants offer no declaration from Mr. Levandowski, another target of the 

Stroz investigation that Defendants contend they initiated and one whose interests were not

aligned with Defendants’ interests with respect to the Stroz investigation. (See supra II.A & Dkt. 

380 ¶ 7 (noting that Mr. Levandowski did not permit Stroz to share information uncovered in the 

investigation with Defendants or with Mr. Ron).) The declaration from Mr. Levandowski’s 

corporate counsel does not state any belief as to whether Mr. Levandowski maintained the 

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confidentiality of the purportedly privileged materials, and Mr. Levandowski did disclose those 

materials at least to his criminal counsel, non-parties to any alleged joint defense agreement. 

Although Mr. Levandowski moves for leave to submit a declaration in camera, Mr. 

Levandowski cites no authority that supports his request. This is not a criminal proceeding in 

which Mr. Levandowski faces a Hobson’s choice between two fundamental constitutional rights 

or even between a constitutional right and the attorney-client privilege. Here, Mr. Levandowski 

chose – voluntarily – to disclose information to Stroz, Uber, and others “for the purpose of selling 

his ventures to Uber for $680 million” (Dkt. 202 at 11). Defendants should not now be excused 

from having to establish the predicates for a privilege “merely because [those predicates] might 

connect the dots back to a non-party in a possible criminal investigation.” (Id. at 12.) 

Finally, Defendants concede that they were required to submit a declaration from OMM in 

order to comply with the Court’s order that they “submit a proper sworn record as to all necessary 

predicates” for their privilege assertions. (Opp. at 3 n.2.) OMM is identified as a recipient of all 

the purportedly privileged documents. (Dkt. 370-4.) Accordingly, a declaration from OMM 

would need to address, OMM’s purported representation of Ottomoto and Otto Trucking, the 

nature of the asserted common interest privilege that OMM, Ottomoto, and Otto Trucking 

purportedly shared with the other recipients of the due diligence report, and any efforts OMM 

made and continue to make to limit the dissemination of the documents at issue. Defendants state 

that “OMM would not provide that declaration . . .” (Opp. at 3 n.2.) Although Defendants try to 

cast blame on “Waymo’s counsel” for refusing to assist Defendants in obtaining such a declaration 

(id.), Waymo’s counsel certainly did not stand in the way of OMM contacting OMM’s client, 

Google, regarding any conflicts issues (indeed, Waymo’s counsel suggested just that to 

Defendants’ counsel) or otherwise stand in the way of OMM submitting a declaration regarding 

any issues it deemed appropriate. Waymo does not have an obligation to assist Defendants in 

obtaining declarations necessary to support their claims of privilege. 

Defendants’ failure to submit declarations from Mr. Ron, Mr. Levandowski, and OMM is 

an independent reason for finding that Defendants did not meet their burden to establish the 

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applicability of the asserted privileges and the lack of any waiver thereof. 

III. EVEN IF THE LOGGED DOCUMENTS WOULD OTHERWISE BE 

PROTECTED, THE CRIME-FRAUD EXCEPTION APPLIES 

No one in this case has ever disputed that Mr. Levandowski – purported joint holder of the 

alleged “common interest” – stole Waymo’s confidential and proprietary materials or that stealing 

confidential and proprietary materials is a crime. Indeed, Mr. Levandowski has broadly asserted 

his right against self-incrimination in this case, which has now been referred to the U.S. attorney’s 

office for investigation (Dkt. 428). As summarized in the Restatement (Third) of the Law 

Governing Lawyers (§ 82 cmt. e), for crimes like theft that have continuing legal consequences, 

“[c]onfidential communications concerning ways in which Client can continue to possess the 

stolen goods, including information supplied by Client about their present location, are not 

protected by the privilege because of the crime-fraud exception.” Communicating for the purpose 

of concealing evidence of a crime also constitutes obstruction of justice, making the crime-fraud 

exception to the attorney-client privilege applicable. United States v. Laurins, 857 F.2d 529, 540 

(9th Cir. 1988) (“Obstruction of justice is an offense serious enough to defeat the privilege.”); see 

also United States v. Edison, No. CR 07-0074, 2008 WL 170660, at *4 (N.D. Cal. Jan. 17, 2008) 

(Alsup, J.) (holding that under the crime-fraud exception, “conversations that furthered ongoing 

efforts to obstruct justice would not be protected”).7 

 Here, Defendants cannot dispute that the logged materials are related to the theft of 

Waymo’s proprietary and confidential materials. See In re Napster, Inc. Copyright Litig., 479 

F.3d 1078, 1095 (9th Cir. 2007), abrogated on other grounds by Mohawk Indus., Inc. v. 

Carpenter, 558 U.S. 100 (2009). Defendants themselves logged those materials in response to 

Judge Alsup’s March 15 Order that Defendants produce the stolen materials – i.e., “all files and 

documents downloaded by Anthony Levandowski, Sameer Kshirsagar, or Radu Raduta before 

leaving plaintiff’s payroll and thereafter taken by them” – as well as all documents that reference 

the stolen materials. (Dkt. 61 ¶ 4.) 

 

7

 Communications in furtherance of receiving stolen property in violation of California Penal 

Code 496 would also be a sufficient predicate for invoking the crime-fraud exception. 

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 Moreover, a preponderance of the evidence indicates that the logged communications were 

“made ‘in furtherance of [the] intended, or present, continuing illegality.’” Napster, 479 F.3d at 

1095 (citation omitted). Indeed, Defendants’ claim that “Waymo has zero evidence that Uber or 

Otto ever knew about,” much less furthered a continuing illegality (Opp. at 18), does not pass the 

straight-face test. As an initial matter, even Defendants’ otherwise deficient privilege log makes 

clear that the due diligence documents relate to at least the possession and location of stolen 

materials, as Stroz itself apparently received those stolen materials for review in its investigation 

(e.g., Dkt. 370-4 at No. 10 (referring to “electronic media collected from A. Levandowski”)). 

More tellingly, Judge Alsup has already found that: 

Waymo has made a strong showing that Levandowski absconded with over 14,000 

files from Waymo, evidently to have them available to consult on behalf of Otto 

and Uber. As of the date of this order, those files have not been returned and likely 

remain in Levandowski’s possession. The record further indicates that Uber knew 

or at least should have known of the downloading but nevertheless proceeded to 

bring Levandowski and Otto on board. Even after this litigation commenced, Uber 

kept Levandowski as the head of its self-driving efforts until his “recusal” from 

LiDAR development on the day before defendants’ sur-reply in opposition to 

provisional relief. 

Defendants maintain that Waymo’s files never crossed over to Uber’s servers or 

devices and that “Uber took strict precautions to ensure that no trade secrets 

belonging to a former employer would be brought to or used at Uber.” These 

denials, however, leave open the danger of all manner of mischief. For example, it 

remains entirely possible that Uber knowingly left Levandowski free to keep that 

treasure trove of files as handy as he wished (so long as he kept it on his own 

personal devices), and that Uber willfully refused to tell Levandowski to return the 

treasure trove to its rightful owner. At best (and this has not been shown), Uber 

may have required Levandowski, as a matter of form, to commit not to use the 

Waymo files. But even if Levandowski so agreed, his word under these 

circumstances would be cold comfort against the danger of trade secret 

misappropriation for Uber’s benefit. 

(Dkt. 433 at 7-8 (citations omitted).) And the documents that Defendants were withholding until 

after the issuance of the preliminary injunction order confirm that Uber and Otto not only knew 

about Mr. Levandowski’s theft but – at best – did absolutely nothing about it. 

 The Stroz investigation was specifically directed to

. (See, e.g., Ex. 10 

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§ 2.1(a).) But, despite its knowledge of Uber did not require the files to be 

returned to Waymo; Uber did not require that any existing technology at Ottomoto be scrubbed for 

Waymo trade secrets; Uber did not require that Mr. Levandowski’s consulting work for Uber to be 

scrubbed for Waymo trade secrets; Uber did not ensure that Mr. Levandowski did not keep 

Waymo’s files handy on his personal devices; and Uber did not make Levandowski commit not to 

use the Waymo files even as a matter of form. By failing to take any remedial or prophylactic 

measures whatsoever with respect to Mr. Levandowski’s Uber ratified and furthered 

those for its own benefit. Indeed, Uber 

incentivized Mr. Levandowski to use Waymo’s stolen files by tying his compensation to 

aggressive technology milestones. (E.g., Dkt. 248-19.) Defendants should not be permitted to 

rely on any privilege regarding Mr. Levandowski’s under such circumstances. 

 Of course, further supporting the existence of the crime-fraud exception is Mr. 

Levandowski’s across-the-board assertion of the Fifth Amendment (see generally Dkt. 273). 

Amusement Indus., Inc. v. Stern, 293 F.R.D. 420, 428 (S.D.N.Y. 2013) (“Courts have drawn 

[adverse inferences from invocation of the Fifth Amendment] when determining if the crime-fraud 

exception applies to evidence protected by the attorney-client privilege or work-product 

doctrine.”).8 Mr. Levandowski now says that he cannot even submit a declaration that some sort 

of common interest with Uber ever existed because, apparently, admitting the fact of the common 

interest would incriminate him. (Dkt. 382 at 4 (“Mr. Levandowski cannot fully explain to the 

Court the basis for the application of the common interest, attorney-client, or work product 

privileges to the communications at issue without risking a waiver of his Fifth Amendment 

privilege against self-incrimination.”).) Under these circumstances, an adverse inference that 

 

8

 Defendants ignore most of Waymo’s authority that an assertion of the Fifth Amendment 

properly results in an adverse inference for purposes of the crime-fraud analysis. Defendants also 

fail to distinguish United States v. Saccoccia, 898 F. Supp. 53, 62 (D.R.I. 1995), which held that a 

claim of attorney-client privilege is logically inconsistent with a Fifth Amendment claim over the 

same information. Although Defendants argue that Saccoccia involved an attorney, as opposed to 

a client, asserting the Fifth Amendment, the Ninth Circuit has made clear that an attorney’s 

knowledge or involvement in the criminal activity is not necessary to establish the crime-fraud 

exception. Laurins, 857 F.2d at 540. 

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further supports the application of the crime-fraud exception is appropriate.9 

IV. DEFENDANTS DO NOT DISPUTE THAT THEY SHOULD BE COMPELLED TO 

PRODUCE ALL DOCUMENTS AND FORENSIC DATA PROVIDED TO STROZ 

FOR USE IN ITS INVESTIGATION 

As explained in Waymo’s Motion, Defendants should also be compelled to produce all 

documents and forensic data that Mr. Levandowski or others provided to Stroz for use in its 

investigation. (Dkt. 321 at 15:24-16:5.) Indeed, this issue was even called out in the Notice of 

Waymo’s motion. (Id. at (i) (requesting “that the Court compel production of the withheld report 

and attachments in addition to all other relevant information, files, and electronic media 

currently in the possession of Stroz Friedberg.” (emphasis added)).) Notably, the Court’s March 

16 discovery order already required Defendants to produce any of Mr. Levandowski’s 

information, files, and media that remain in the possession of Uber or its agents, or to alternatively 

provide a statement regarding the extent to which such materials have been deleted, destroyed, or 

modified. (Dkt. 61 at 2.) Defendants’ refusal to produce these materials, despite the Court’s 

discovery order and Waymo’s explicit request for these materials, is unjustifiable. 

Defendants’ Opposition does not address these materials at all. Defendants’ Opposition 

never argues that the full set of documents and data provided to Stroz are privileged or 

protected. Nor do Defendants dispute that Stroz is their agent such that they can compel 

production of those materials in this case. Thus, there appears to be no dispute that these materials 

should be produced in full. I-Enterprise Co. v. Draper Fisher Jurvetson Mgmt. Co. V, No. C-03-

1561, 2005 WL 1661959, at *14 (N.D. Cal. July 15, 2005) (non-movant’s failure to address an 

issue in its opposition brief “effective concedes” the issue). 

Nor could there be any dispute that these materials are not privileged and should be 

produced. Defendants’ Opposition states again and again that Stroz was retained to investigate 

facts. (E.g., Opp. at 1:13-16; 3:8-11; 5:9-11; 6:1-2; 7:16-19; 13:21-14:1; 22:19.) Facts are not 

privileged. (Dkt. 202 at 9:22-10:1 (citing Upjohn Co. v. United States, 449 U.S. 383, 395-96 

 

9

 There is sufficient evidence of both Mr. Levandowski’s theft (Dkt. 433 at 1-2; 5/3/17 Hr’g Tr. 

Public AM 75:22-76:1) and Uber’s complicity therein (Dkt. 433 at 2; Exs. 9-11) to justify the 

Court drawing adverse inferences here. (Dkt. 245-4 at 10-12.) 

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(1981) (“The [attorney-client] privilege only protects disclosure of communications; it does not 

protect disclosure of the underlying facts by those who communicated with the attorney.”).) The 

underlying documents and forensic data provided to Stroz for use in its investigation are classic 

factual material that must be produced. 

V. WAYMO HAS SHOWN THE REQUISITE NEED FOR THE LOGGED 

DOCUMENTS 

Defendants have not rebutted Waymo’s showing that Defendants should be compelled to 

produce the documents due to Waymo’s substantial and compelling need, even if they were 

privileged and even if the privilege had not been made. 

As an initial matter, Defendants have not established that every document on their 42-entry 

log is “opinion work product,” thereby raising the standard for compelling their production. (Opp. 

at 22-23.) Defendants’ own declarant states that the logged exhibits to the due diligence report are 

“documents collected by Stroz” and “interview memoranda.” (Dkt. 370 ¶ 23.) But the mere fact 

that a document was “collected by Stroz” cannot transform that document into any type of work 

product. And “interview notes” are commonly classified as “fact” work product. In re 

Healthsouth Corp. Secs. Litig., 250 F.R.D. 8, 12 (D.D.C. 2008). Neither Defendants’ log nor their 

Opposition demonstrate that the contents of purported “interview memoranda” include any 

attorney opinion. To the contrary, the interviews were performed by Stroz Friedberg, not 

Defendants’ counsel, and they were not part of a business transaction, all of which weighs in favor 

of a finding that the documents at issue reflect “fact” not “opinion” work product.10 

Defendants next fail to persuasively distinguish authority holding that a witness’ 

invocation of the Fifth Amendment privilege creates a need for production of work product related 

to that witness.11 (Opp. at 23.) Mr. Levandowski should not be permitted to make statements 

 

10 See In re Vitamins Antitrust Litig., 211 F.R.D. 1, 5 (D.D.C. 2002). 

11 Defendants argue that the reasoning in In re John Doe Corp., 675 F.2d 482, 492 & n.10 (2d 

Cir. 1982), applies only to “fact” not “opinion” work product. Defendants similarly attempt to 

limit In re Crazy Eddie Secs. Litig., No. 87 CV 0033 (EHN), 1991 WL 17287, at *1 (E.D.N.Y. 

Jan. 28, 1991) and In re Vitamins Antitrust Litig., 211 F.R.D. 1, 5 (D.D.C. 2002), to “fact work 

product.” But Defendants’ own record establishes that at least some of the logged documents are 

“interview memoranda” and “documents collected,” (Dkt. 370 ¶23), i.e., “fact work product.” 

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about his when it suits him – i.e., for the purpose of selling his company for $680 

million – while shielding those same statements from discovery here. 

Finally, Defendants cite Holmgren v. State Farm Mutual Auto Ins. Co., 976 F.2d 573, 577 

(9th Cir. 1992), to argue that opinion work product can only be compelled where “mental 

impressions” are at issue. (Opp. at 24.) Here, Defendants’ mental impressions are at issue. 

Waymo has alleged that Defendants’ misappropriation is intentional, knowing, willful, malicious 

and fraudulent. (Dkt. 23 ¶¶ 75, 86.) And since Mr. Levandowski is an employee and officer at 

Uber and a central perpetrator of the theft, his mental impressions in particular are at issue. 

In light of Mr. Levandowski’s broad assertion of the Fifth, the withheld documents may be 

the only source for highly relevant information here; Defendants have identified no alternative. 

VI. DISCOVERY 

Defendants should be compelled to provide discovery related to the privileges they have 

asserted over the due diligence materials – they should be required to provide un-redacted versions 

of the agreements they cite in their opposition; they should be required to provide still-withheld 

documents cited in their opposition; witnesses should be subject to depositions about the 

declarations they have submitted; and so on. As indicated in its motion, Waymo requests leave to 

conduct discovery on these fronts outside the to-be-determined limits on discovery in this case. 

But that discovery is not needed to grant Waymo’s motion. Defendants have been 

preparing their positions on this 42-entry privilege log since before the March 29 hearing they 

initiated to discuss it.12 Defendants chose to provide an insufficient log, even after receiving 

guidance from Judge Alsup and requests for additional information from Waymo. And they chose 

to provide a sworn record that falls short of their burden to establish that any privileges apply and 

that there has been no waiver. Discovery is closing in a little over two months. Defendants 

should be compelled to produce the due diligence materials now, without further delay. 

 

12 As the Court has described: “On March 29, at Uber’s cryptic request, the Court convened a 

non-public conference at which separate counsel appeared for Levandowski. At that conference, 

defense counsel explained, ‘Before the acquisition [of Otto] some due diligence was done. A third 

party prepared a report based on that due diligence. We intend to put that report on a privilege 

log.’” (Dkt. 433 at 6.) 

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DATED: May 16, 2017 QUINN EMANUEL URQUHART & SULLIVAN, 

LLP 

By Charles K. Verhoeven 

 Charles K. Verhoeven 

Attorneys for WAYMO LLC 

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