Waymo LLC v. Uber Technologies, Inc.
870 F.3d 1350
| Fed. Cir. | 2017Background
- Waymo sued Uber, Ottomotto, and Otto Trucking alleging theft of trade secrets and patent claims tied to former Waymo employee Anthony Levandowski, who allegedly downloaded thousands of Waymo documents and later cofounded Ottomotto, which Uber sought to acquire.
- Before the acquisition closed, Uber and Ottomotto (but not Levandowski) jointly retained Stroz Friedberg to investigate Ottomotto employees, producing the "Stroz Report." Waymo sought that report in discovery.
- A magistrate judge granted Waymo’s motion to compel production from Uber/Ottomotto and denied motions to quash a subpoena to Stroz; the district court denied relief from those magistrate orders.
- Levandowski intervened limitedly to oppose production and petitioned the Federal Circuit via writs of mandamus, arguing (inter alia) attorney-client/common-interest privilege, work-product protection, Fifth Amendment self-incrimination, and invocation of the Perlman doctrine for immediate appealability.
- The Federal Circuit reviewed whether mandamus jurisdiction was appropriate and whether Levandowski met Cheney’s three mandamus prerequisites; the court found he did not and denied the petitions, ordering compliance subject to any district-court protective order.
Issues
| Issue | Plaintiff's Argument (Levandowski) | Defendant's Argument (Waymo/Uber) | Held |
|---|---|---|---|
| Availability of mandamus / appellate jurisdiction | Mandamus required because discovery would force disclosure that violates Fifth Amendment and is otherwise unreviewable | Ordinary post-judgment appeal or interlocutory avenues suffice; no exceptional circumstances for mandamus | Mandamus denied: Levandowski failed Cheney prerequisites; appellate review after final judgment or other avenues adequate |
| Attorney-client / common-interest privilege over Stroz Report | Communications with Stroz were privileged under common-interest/joint-defense and thus not subject to production | Stroz was retained by Uber/Ottomotto (not Levandowski); communications were not privileged and parties’ interests were adverse | District court correctly found no privilege: Levandowski failed to show initial attorney-client privilege and no common interest existed under the facts |
| Work-product protection for Stroz Report | Report is protected work product; common-interest preserves protection despite sharing | Report prepared for Uber/Ottomotto by their representatives; disclosure to adversarial interests waived protection | Work-product protection not available to Levandowski; even assuming protection for Uber, disclosure to adverse parties waived it; common-interest exception did not apply |
| Fifth Amendment self-incrimination claim | Production would incriminate Levandowski and thus mandamus/interlocutory review required to protect privilege | Fifth Amendment is personal; Levandowski was not compelled personally to produce the report; civil discovery rights apply and protective orders are available | Fifth Amendment not implicated to bar production in civil proceeding; court may craft confidentiality protections but privilege does not prevent disclosure here |
| Applicability of Perlman doctrine (immediate appealability) | Order compelling a third party to produce privileged materials is immediately appealable under Perlman | Perlman applies mainly to grand-jury/subpoena contexts and to truly disinterested third parties; not applicable here | Perlman doctrine does not apply: Levandowski is not a disinterested third party; civil context and available review mean Perlman inapplicable |
Key Cases Cited
- Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574 (1999) (jurisdiction and appellate review principles)
- Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100 (2009) (postjudgment appeal generally adequate to protect privilege; mandamus reserved for novel or particularly injurious rulings)
- Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367 (2004) (mandamus prerequisites and extraordinary-remedy framework)
- Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271 (1988) (mandamus is extraordinary remedy)
- Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368 (1981) (review of pretrial discovery orders generally denied)
- Couch v. United States, 409 U.S. 322 (1973) (Fifth Amendment privilege is personal; constructive possession limits)
- Perlman v. United States, 247 U.S. 7 (1918) (doctrine on immediate appealability for third-party production orders)
- Church of Scientology of Cal. v. United States, 506 U.S. 9 (1992) (discussion of Perlman and disinterested third-party context)
- In re Pacific Pictures Corp., 679 F.3d 1121 (9th Cir. 2012) (common-interest doctrine is an exception to waiver, not a standalone privilege)
- United States v. Richey, 632 F.3d 559 (9th Cir. 2011) (work-product and "because of" litigation standard)
- Hernandez v. Tanninen, 604 F.3d 1095 (9th Cir. 2010) (waiver of privilege/work product by disclosure)
- Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. en banc) (final-judgment rule for patent appeals)