March 15, 2017 Honorable William H. Alsup US District Court

Case 3:17-cv-00939-WHA Document 52 Filed 03/15/17 Page 1 of 3

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March 15, 2017

Honorable William H. Alsup U.S. District Court for the Northern District of California San Francisco Courthouse, Courtroom 8 - 19th Floor 450 Golden Gate Avenue, San Francisco, CA 94102

Re: Waymo LLC v. Uber Technologies, Inc. et al., Case No. 3:17-cv-00939-WHA

Dear Judge Alsup:

As directed by this Court’s order (Dkt. 44), Plaintiff Waymo LLC (“Waymo”) hereby responds to the March 13, 2017 “discovery letter brief” filed by defendants Uber Technologies, Inc., Ottomotto LLC, and Otto Trucking LLC (collectively “Defendants”). Defendants’ letter omits material facts leading up to its letter and is wrong on the underlying legal dispute regarding the propriety of Defendants’ in-house counsel having access to Waymo’s highly confidential and valuable trade secrets. Nevertheless, in principal, if Defendants identify in-house counsel not involved in competitive decision making or provides a risk of inadvertent disclosure of Waymo’s trade secrets, and to whom disclosure is reasonably necessary, Waymo will agree to disclosure of “attorneys eyes only” to that in-house counsel pursuant to a protective order.

Defendants’ letter1 leaves the impression that Waymo withheld the unredacted preliminary injunction papers to achieve some concession from Defendants as to the eventual protective order to govern this action. This is incorrect. From the beginning, Waymo made clear it was willing to provide “Waymo’s unredacted preliminary injunction papers on an outside-counsel-eyes only basis.” Ex. A at 2.2 Waymo further made clear that “[w]e will agree that acceptance of our papers on this basis will be without prejudice to Defendants’ position on in-house counsel, which we can continue to negotiate and which Defendants can raise with the Court if we do not reach agreement.”

1 Defendants’ letter purports to be a discovery letter submitted pursuant to this Court’s Supplemental Order to Order Setting Initial Case Management Conference (“Standing Orders”), ¶ 25. But such letters may be filed only “after having met and conferred.” Id. (emph. added). This District’s local rules similarly, require a meet and confer prior to seeking relief on a discovery dispute. Civil L.R. 37-1(a). The local rules define a “meet and confer” as either a face-to-face or telephonic conference. Id. 1-5(n). Defendants, however, failed to do so. The parties did exchange email correspondence regarding service of Plaintiff’s preliminary injunction papers in unredacted form, but the email exchange concluded on Sunday with Waymo stating it is “available to discuss on Monday.” Ex. A at 1. Defendants did not even respond before filing their letter. 2 For the Court’s reference, Waymo attaches as Exhibit A the full record of correspondence on this topic in advance of Defendants’ letter filing.

Case 3:17-cv-00939-WHA Document 52 Filed 03/15/17 Page 2 of 3

Id. After its letter, Defendants eventually accepted Waymo’s offer on March 14, and Waymo transmitted the confidential version of its filing later that day. Ex. B.

Second, Defendants’ argument that in-house counsel are necessarily allowed access to an opposing party’s highly confidential trade secret information is without merit. Rather, as shown by the model protective orders promulgated by this District and the relevant case law, access by in-house counsel to trade secret information can only be made on a case-by-case and lawyer-by-lawyer basis. Defendants have yet to make the required showing.

For a given in-house counsel to be allowed access to trade secret information, the Court must first weigh the “risk of inadvertent disclosure of trade secrets” against a risk that a party’s case would be “impaired” by protection of the trade secret. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). “The concern for inadvertent disclosure is particularly acute where the party seeking access to the information is a direct competitor[,]” as here. Adobe Sys. Inc. v. Davachi, No. C 10–03575 SC (LB), 2011 WL 2610170, at *4 (N.D. Cal. July 1, 2011). In such circumstances, “the Court must determine whether knowledge of the trade secrets at issue would place counsel in the ‘untenable position’ of either refusing his employer legal advice or revealing the sensitive information.” Pinterest, Inc. v. Pintrips, Inc., No. 13–cv–04608–RS (KAW), 2014 WL 5364263, at *2 (N.D. Cal. Oct. 21, 2014) (quoting Intel Corp. v. VIA Tech, Inc., 198 F.R.D. 525, 530-31 (N.D. Cal. 2000)). Defendants have not yet identified the “case-specific circumstances” that allow disclosure to its in-house counsel. Defendants are direct competitors to Waymo, have not established that any such person(s) would be insulated from the “untenable position” that would disqualify their access, nor provided Waymo with relevant information to evaluate whether the counsel’s job responsibilities mitigated the risk of disclosure.

Defendants’ cited case law does not support the alternative view. It instead supports Waymo’s position that in-house counsel’s access to confidential materials is not warranted where there is a risk of inadvertent disclosure. Amgen Inc. v. Sandoz Inc., No. 16-cv-02581-RS(MEJ), 2017 WL 22502, at *2-*3 (N.D. Cal. Jan. 3, 2017) (stating that decisions on specific in-house counsels’ access to protected material could be made after those counsel were identified and the risk could be evaluated); Amagen Inc. v. Elanex Pharms. Inc., 160 F.R.D. 134, 139 (W.D. Wash. 1994) (finding in-house counsel to whom disclosure was sought were “not involved in competitive decision-making” in a patent infringement case); Matsushita Elec. Indus. Co., Ltd. v. U.S., 929 F.2d 1577, 1579-80 (Fed. Cir. 1991) (in-house counsel allowed access to “proprietary business information” under a protective order because he was insulated completely from competitive decision-making). Defendants have not provided the information needed to evaluate the “case- specific circumstances” that would favor allowing its in-house counsel access to Waymo’s trade secrets under a protective order.

This District provides a “Model Protective Order for Litigation Involving Patents, Highly Sensitive Confidential Information and/or Trade Secrets” (“Trade Secret Model Protective Order”) as a model protective order for trade secret cases, which comports with the above-cited case law requiring lawyer-specific inquiries.3 Paragraph 7.3(b) of the Trade Secret Model Protective Order brackets the provision allowing disclosure of highly confidential materials to in-house counsel as

3 See Model Protective Orders, U.S. DISTRICT COURT, N.D. CAL., http://www.cand.uscourts.gov/model-protective-orders (last visited Mar. 15, 2017). -2- Case No. 3:17-cv-00939-WHA Waymo’s Response to Defendant’s Discovery Letter Brief

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“[o]ptional as deemed appropriate in case-specific circumstances[.]” The Patent Local Rule 2-2 Interim Model Protective Order (“Interim Patent Model Protective Order”) is not specifically designed for trade secret cases, but supports the same view. The only substantive mention of “trade secrets” in the Interim Patent Model Protective Order is in the context of “trade secret source code.” For that material, the Interim Patent Model Protective Order excludes in-house counsel entirely from reviewing it. Interim Patent Model Protective Order, ¶ 9(a)-(b). Both the Trade Secret Model Protective Order and the Interim Patent Model Protective Order thus do not permit disclosure of trade secrets to in-house counsel without a case-specific showing.

Third, on Monday, March 13, the Court ordered Defendants to bring Defendants’ proposed designated in-house counsel to the March 16, 2017 hearing, along with the resumes of those individuals. Dkt. 44. The same day, Waymo requested these resumes so that it may evaluate Defendants’ request in advance of this response and Thursday’s hearing. But Defendants did not provide a list of its proposed attorneys until 7:59 pm on Tuesday, March 14, and, at the time, provided only their LinkedIn webpages. Defendants, however, did not provide all the information Waymo needs to assess Defendants’ request, such as the “current and reasonably foreseeable future primary job duties and responsibilities in sufficient detail to determine if House Counsel is involved, or may become involved, in any competitive decision-making” – as would be required by Paragraph 7.4(a)(1) of the Interim Patent Model Protective Order that Defendants contend governs. Nor did Defendants identify why disclosure to these attorneys is “reasonably necessary” in this case. Interim Patent Model Protective Order ¶ 7.3(b).4

Waymo remains willing to assess Defendants’ proposals for in-house counsel to be provided to “attorneys eyes only” information under a protective order, but requires the information necessary in order to do so. Waymo is not opposed to any disclosure of its trade secret litigation materials to an in-house attorney for Defendants. Instead, Waymo asks that such access is granted sparingly, and only after the attorney’s work responsibilities are sufficiently disclosed to ensure that there will be no possibility of (further) improper use of Waymo’s trade secrets by Defendants.

Respectfully yours,

/s/ Charles K. Verhoeven Charles K. Verhoeven QUINN EMANUEL URQUHART & SULLIVAN, LLP Counsel for Waymo LLC

CC: Counsel of record (via ECF)

4 At 10:43 a.m. today (77 minutes before this response was due), Defendants provided short descriptions of the proposed attorney’s job functions. Given the timeframe of this disclosure, Waymo has not had an opportunity to assess the additional information Defendants provided. But Waymo will continue to work to narrow any disputes as much as possible. -3- Case No. 3:17-cv-00939-WHA Waymo’s Response to Defendant’s Discovery Letter Brief

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EXHIBIT A Case 3:17-cv-00939-WHA Document 52-1 Filed 03/15/17 Page 2 of 5

From: David Perlson Sent: Sunday, March 12, 2017 8:31 PM To: 'Gonzalez, Arturo J.'; James Judah Cc: Ray, Wendy J.; Lindsay Cooper; Jacobs, Michael A.; QE-Waymo Subject: RE: Waymo v. Uber

Arturo,

We have articulated the basis for our position, which we think is reasonable and supported by the Court's model orders. In contrast, as we have shown, your position is not. If you have authority that supports your position, please pass along for our consideration. Your unsupported protestations of inability to respond to the pending motions, however, are not persuasive.

Our proposal remains available for Otto and Uber to accept, as it has been since Friday, the day the motions were filed. We would also be available to discuss on Monday.

David

David Perlson Quinn Emanuel Urquhart & Sullivan, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Direct: (415) 875-6344 Main Phone: (415) 875-6600 Main Fax: (415) 875-6700 E-mail: [email protected] Web: www.quinnemanuel.com

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From: Gonzalez, Arturo J. [mailto:[email protected]] Sent: Saturday, March 11, 2017 6:26 PM To: James Judah Cc: Ray, Wendy J. ; Lindsay Cooper ; Jacobs, Michael A. ; QE-Waymo Subject: Waymo v. Uber

James,

1 Case 3:17-cv-00939-WHA Document 52-1 Filed 03/15/17 Page 3 of 5 You are refusing to allow us to share with our clients the trade secrets that they allegedly misappropriated? The failure to provide the trade secrets makes it impossible for us to respond to your three motions. We should be allowed to share the 2019 with in-house counsel, and also with Anthony Lvandowski, who (a) presumably is already familiar with the purported secrets, and (b) allegedly took them. We would not share the information with Mr. Levandowski without your consent, but I don't see how he can defend himself without knowing exactly what trade secrets he allegedly misappropriated.

Arturo

Sent from my iPad

On Mar 11, 2017, at 4:47 PM, James Judah wrote:

Wendy,

The Interim Model Patent PO “shall govern discovery unless the Court enters a different protective order.” A few things of note. Our PI papers are not discovery. But perhaps even more importantly, this is not just a patent case. It is also a trade secret case. So we cannot and will not voluntarily agree to hand in-house counsel at Otto/Uber our trade secret information, including our list of Waymo trade secrets when Otto/Uber has intentionally stolen our trade secrets and know-how. We also note that in the N.D. Cal Model PO for “Litigation Involving Patents, Highly Sensitive Confidential Information and/or Trade Secrets” that allowing “Designated House Counsel of the Receiving Party (1) who has no involvement in competitive decision-making, (2) to whom disclosure is reasonably necessary for this litigation, (3) who has signed the ‘Acknowledgment and Agreement to Be Bound’ (Exhibit A), and (4) as to whom the procedures set forth in paragraph 7.4(a)(1), below, have been followed” to see “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” and “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items is “Optional as deemed appropriate in case-specific circumstances.” So we disagree with your assertion that we are imposing “additional conditions” or causing any “delay.”

We again offer to send you Waymo's unredacted preliminary injunction papers on an outside-counsel- eyes only basis. We will agree that acceptance of our papers on this basis will be without prejudice to Defendants' position on in-house counsel, which we can continue to negotiate and which Defendants can raise with the Court if we do not reach agreement.

Best, James

From: Ray, Wendy J. [mailto:[email protected]] Sent: Friday, March 10, 2017 8:26 PM To: Lindsay Cooper ; Gonzalez, Arturo J. ; Jacobs, Michael A. Cc: QE-Waymo Subject: RE: [EXT] RE: Waymo v. Uber

Lindsay, We will agree to the Northern District’s Interim Model Patent Protective Order until a negotiated protective order can be entered. Under the Patent Local Rules, the Interim Order governs. Waymo may not impose additional conditions. We therefore do not agree to exclude in-house counsel who meet the conditions of 7.3(b). Please let us know if you will agree to the Interim Order as is until we negotiate an order. We note that failure to

2 Case 3:17-cv-00939-WHA Document 52-1 Filed 03/15/17 Page 4 of 5 provide the unredacted papers filed today hampers our ability to respond to the three motions filed today.

Wendy

From: Lindsay Cooper [mailto:[email protected]] Sent: Friday, March 10, 2017 7:17 PM To: Ray, Wendy J.; Gonzalez, Arturo J.; Jacobs, Michael A. Cc: QE-Waymo Subject: [EXT] RE: Waymo v. Uber

One edit to my email below – I meant to say that we have the unredacted papers from today’s filing ready to send to you.

From: Lindsay Cooper Sent: Friday, March 10, 2017 7:14 PM To: [email protected]; [email protected]; [email protected] Cc: QE-Waymo Subject: RE: Waymo v. Uber

Wendy,

We have the redacted papers from today’s filing ready to send to you, but before we do so, we need to reach an agreement on how Waymo’s highly confidential information will be treated until the parties agree on a protective order. We’ve prepared the attached stipulation which memorializes the following agreement:

Until the entry of an appropriate Protective Order in this action, Defendants agree that the confidential portions of the PI motion will be treated as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” material pursuant to the Interim Model Patent Protective Order, with the exception that individuals in Section 7.3(b) are excluded from those to whom Defendants may disclose the material.

The N.D. Cal. interim model protective order referenced in the stipulation is attached for your reference as well.

Please let us know if we have your approval to file, and if so, who will sign on behalf of Defendants.

Thank you, Lindsay

------Original message ------From: "Ray, Wendy J." Date: 3/10/17 4:04 PM (GMT-08:00) To: Charles K Verhoeven , David Perlson , John Neukom , Jordan Jaffe , James Judah , Melissa Baily

3 Case 3:17-cv-00939-WHA Document 52-1 Filed 03/15/17 Page 5 of 5 Cc: "Gonzalez, Arturo J." , "Jacobs, Michael A." Subject: Waymo v. Uber

All, Morrison & Foerster has appeared for Uber in this matter. Please provide us with the unredacted papers from today’s filings as soon as possible. Thank you.

Wendy

Wendy J. Ray MORRISON & FOERSTER LLP 707 Wilshire Blvd., Suite 6000 Los Angeles, California 90017-3543 Phone: (213) 892.5446 | Fax: (213) 892.5454 E-mail: [email protected]

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4 Case 3:17-cv-00939-WHA Document 52-2 Filed 03/15/17 Page 1 of 5

EXHIBIT B Case 3:17-cv-00939-WHA Document 52-2 Filed 03/15/17 Page 2 of 5

From: Jacobs, Michael A. [mailto:[email protected]] Sent: Tuesday, March 14, 2017 5:42 PM To: Jordan Jaffe Cc: Charles K Verhoeven ; David Perlson ; Gonzalez, Arturo J. Subject: Re: [EXT] RE: Waymo v. Uber

Message acknowledged. Thanks.

On Mar 14, 2017, at 5:41 PM, Jordan Jaffe wrote:

Michael,

The sealed documents are here: Unsealed Preliminary Injunction

Best regards,

Jordan R. Jaffe // Quinn Emanuel // 415.498.0556 // [email protected]

From: Jacobs, Michael A. [mailto:[email protected]] Sent: Tuesday, March 14, 2017 5:02 PM To: Charles K Verhoeven Cc: David Perlson ; Jordan Jaffe ; Gonzalez, Arturo J. Subject: Re: [EXT] RE: Waymo v. Uber

Consider the below message sent. (I am remote.)

On Mar 14, 2017, at 5:00 PM, Charles K Verhoeven wrote:

Sorry, was in meeting. Yes, that works. Send me the mail and I will direct the docs immediately.

From: Jacobs, Michael A. [mailto:[email protected]] Sent: Tuesday, March 14, 2017 4:59 PM To: Charles K Verhoeven Cc: David Perlson ; Jordan Jaffe ; Gonzalez, Arturo J. Subject: Re: [EXT] RE: Waymo v. Uber

Charlie?

1 Case 3:17-cv-00939-WHA Document 52-2 Filed 03/15/17 Page 3 of 5

On Mar 14, 2017, at 3:05 PM, Jacobs, Michael A. wrote:

Charlie, I have modified your language below (see yellow highlighting) to further minimize misunderstanding.

Michael

From: Charles K Verhoeven [mailto:[email protected]] Sent: Tuesday, March 14, 2017 3:03 PM To: Jacobs, Michael A. Cc: David Perlson; Jordan Jaffe; Gonzalez, Arturo J. Subject: [EXT] RE: Waymo v. Uber

Michael,

To clarify, what we have proposed is that Defendants agree that the confidential portions of the PI motion will be treated as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” material pursuant to the Northern District of California’s Patent Local Rule 2-2 Interim Model Protective Order, with the exception that individuals in Section 7.3(b) are excluded from those to whom Defendants may disclose “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” material pending further agreement or court order. I think this consistent with what you have proposed below, but just didn’t want there to be any misunderstanding. We also agree that acceptance of our papers on this basis will be without prejudice to Defendants' position on in-house counsel. Assuming the above is acceptable, we will pass along the papers.

Charlie

From: Jacobs, Michael A. [mailto:[email protected]] Sent: Tuesday, March 14, 2017 2:26 PM To: Charles K Verhoeven Cc: David Perlson ; Jordan Jaffe ; Gonzalez, Arturo J. Subject: Waymo v. Uber

Charlie,

Thanks for the call today.

In connection with receiving unredacted versions of your filing, we agree that we will maintain those materials on an outside-counsel only basis until further agreement or order of the Court.

We believe the Patent Local Rule 2-2 Interim Model Protective Order applies; we understand that you disagree; neither of us is waiving any rights.

Michael

From: Charles K Verhoeven [mailto:[email protected]] Sent: Tuesday, March 14, 2017 1:48 PM To: Jacobs, Michael A. Cc: David Perlson; Jordan Jaffe; Gonzalez, Arturo J. Subject: RE: [EXT] Call Today?

2 Case 3:17-cv-00939-WHA Document 52-2 Filed 03/15/17 Page 4 of 5 415-875-6301

From: Jacobs, Michael A. [mailto:[email protected]] Sent: Tuesday, March 14, 2017 12:21 PM To: Charles K Verhoeven Cc: David Perlson ; Jordan Jaffe ; Gonzalez, Arturo J. Subject: RE: [EXT] Call Today?

Charlie,

Understood. We can talk at 2 p.m. today then. Please let us know the number to call.

Michael

From: Charles K Verhoeven [mailto:[email protected]] Sent: Tuesday, March 14, 2017 12:08 PM To: Jacobs, Michael A. Cc: David Perlson; Jordan Jaffe; Gonzalez, Arturo J. Subject: RE: [EXT] Call Today?

Michael,

On the PO issue, tomorrow at 11:30 would be bad for us because we are required to send our letter-response within ½ hour of that time. Could we just schedule a short call today to try and made progress on that? Also, on the expedited discovery issue, I was hoping we could simply discuss Defendants’ position on whether they would agree to work with us to schedule bilateral discovery in principle. We could send a detailed proposal in writing later today and have a call tomorrow at 11:30 about that.

Again, I am available at your convenience this afternoon for a short call.

Charlie

From: Jacobs, Michael A. [mailto:[email protected]] Sent: Tuesday, March 14, 2017 11:53 AM To: Charles K Verhoeven Cc: David Perlson ; Jordan Jaffe ; Gonzalez, Arturo J. Subject: RE: [EXT] Call Today?

Charlie,

Thanks. We are working on both issues. We will be prepared and available to talk at 11:30 tomorrow. Hope that works for you.

Michael

From: Charles K Verhoeven [mailto:[email protected]] Sent: Tuesday, March 14, 2017 11:34 AM To: Jacobs, Michael A.; Gonzalez, Arturo J. Cc: David Perlson; Jordan Jaffe Subject: [EXT] Call Today?

3 Case 3:17-cv-00939-WHA Document 52-2 Filed 03/15/17 Page 5 of 5

Mike,

Given the Court’s orders and hearing this Thursday, I suggest it would make sense for us to have a call today concerning the outstanding PO and expedited discovery issues to see if we can reach agreement. I am available this afternoon. How about 2:00? If that does not work, is there another time you are available for a call today?

Best Regards,

Charlie

Charles K. Verhoeven Head of Northern California Offices Quinn Emanuel Urquhart & Sullivan, LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Main Phone: (415) 875-6600 Main Fax: (415) 875-6700 E-mail: [email protected] Web: www.quinnemanuel.com

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