Waymo LLC v. Uber Technologies, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
WAYMO LLC,
Plaintiff-Appellee
v.
UBER TECHNOLOGIES, INC., OTTOMOTTO LLC,
OTTO TRUCKING LLC,
Defendants
ANTHONY LEVANDOWSKI,
Intervenor-Appellant
STROZ FRIEDBERG, LLC, LYFT, INC., LIOR RON,
Movants
______________________
2017-2235, 2017-2253
______________________
Appeals from the United States District Court for the
Northern District of California in No. 3:17-cv-00939-
WHA, Judge William H. Alsup.
______________________
Decided: September 13, 2017
______________________
CHARLES KRAMER VERHOEVEN, Quinn Emanuel Ur-
quhart & Sullivan, LLP, San Francisco, CA, argued for
plaintiff-appellee. Also represented by DAVID ANDREW
PERLSON; DAVID MICHAEL COOPER, New York, NY.
2 WAYMO LLC v. UBER TECHS., INC.
MILES EHRLICH, Ramsey & Ehrlich LLP, Berkeley,
CA, argued for intervenor-appellant. Also represented by
ISMAIL RAMSEY, AMY CRAIG.
______________________
Before NEWMAN, WALLACH, and STOLL, Circuit Judges.
WALLACH, Circuit Judge.
Appellant Anthony Levandowski, an intervenor, seeks
to prevent discovery sought by Appellee Waymo LLC
(“Waymo”). 1 Waymo sued Uber Technologies, Inc. (“Ub-
er”), Ottomotto LLC, and Otto Trucking LLC (together,
“Ottomotto”) in the U.S. District Court for the Northern
District of California (“District Court”) alleging, inter alia,
claims of patent infringement and violations of federal
and state trade secret laws. Specifically, Waymo alleges
that its former employee, Mr. Levandowski, improperly
downloaded thousands of documents related to Waymo’s
driverless vehicle technology and then left Waymo to
found Ottomotto, which Uber subsequently acquired.
Before the acquisition closed, counsel for Ottomotto and
Uber (but not counsel for Mr. Levandowski) jointly re-
tained Stroz Friedberg, LLC (“Stroz”) to investigate
Ottomotto employees previously employed by Waymo,
including Mr. Levandowski. The resulting report (“the
Stroz Report”) is the subject of the discovery dispute at
issue on this appeal.
During discovery, Waymo sought to obtain the Stroz
Report using two separate mechanisms. First, Waymo
filed a motion to compel Uber and Ottomotto to produce
the Stroz Report. Appellant’s App. 62. Magistrate Judge
Jacqueline Scott Corley granted Waymo’s Motion to
1 Waymo spun off from Google Inc.’s (“Google”) self-
driving car project in 2016. For ease of reference, we use
“Waymo” when referring to either Google or Waymo.
WAYMO LLC v. UBER TECHS., INC. 3
Compel. See Waymo LLC v. Uber Techs., Inc. (Waymo I),
No. 17-cv-00939-WHA (JSC), 2017 WL 2485382, at *1
(N.D. Cal. June 8, 2017). Second, Waymo subpoenaed
Stroz to obtain the Stroz Report along with the communi-
cations, documents, and devices provided to Stroz. Appel-
lant’s App. 141–42. When Mr. Levandowski, Ottomotto,
and Uber moved to quash the subpoena by arguing that
the Stroz Report is subject to attorney-client privilege or
attorney work-product protection, the Magistrate Judge
denied the motion to quash. See Waymo LLC v. Uber
Techs., Inc. (Waymo II), No. 17-cv-00939-WHA (JSC),
2017 WL 2676424, at *1, *7 (N.D. Cal. June 21, 2017).
Mr. Levandowski, Ottomotto, and Uber then filed motions
for relief from the Magistrate Judge’s orders in Waymo I
and Waymo II, which the District Court denied. See
Waymo LLC v. Uber Techs., Inc. (Waymo III), No. C 17-
00939 WHA, 2017 WL 2694191, at *1 (N.D. Cal. June 21,
2017) (denying relief from the Magistrate Judge’s order in
Waymo I); Waymo LLC v. Uber Techs., Inc. (Waymo IV),
No. C 17-00939 WHA (N.D. Cal. June 27, 2017) (Appel-
lant’s App. 15–20) (denying relief from the Magistrate
Judge’s order in Waymo II). 2
2 The Magistrate Judge’s and District Court’s fac-
tual findings and analyses in Waymo II and Waymo IV do
not differ substantively from their factual findings and
analyses in Waymo I and Waymo III. See Appellant’s
App. 16 (stating that, “insofar as the instant motions
merely repeat arguments” from Waymo III, “those argu-
ments fail for the same reasons previously stated”); Way-
mo II, 2017 WL 2676424, at *1 (“Much of the parties’
arguments are addressed in [Waymo I].”). For ease of
reference, we thus refer to Waymo I and Waymo III,
unless otherwise noted.
4 WAYMO LLC v. UBER TECHS., INC.
Mr. Levandowski appeals the District Court’s denial
of relief from the Magistrate Judge’s orders. Because Mr.
Levandowski has failed to satisfy his burden to demon-
strate entitlement to a writ of mandamus, we dismiss.
JURISDICTION
Before addressing the merits of the appeal, we must
satisfy ourselves of our jurisdiction to receive and decide
this petition for mandamus. See Ruhrgas AG v. Marathon
Oil Co., 526 U.S. 574, 583 (1999). We have jurisdiction
over “appeal[s] from . . . final decision[s] of . . . district
court[s] of the United States . . . in any civil action arising
under . . . any Act of Congress relating to patents.” 28
U.S.C. § 1295(a)(1) (2012). In accordance with the final-
judgment rule, “a party may not take an appeal [pursuant
to § 1295(a)(1)] until there has been a decision by the
district court that ends the litigation on the merits and
leaves nothing for the court to do but execute the judg-
ment.” Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d
1305, 1308 (Fed. Cir. 2013) (en banc) (internal quotation
marks and citation omitted). 3 We also have jurisdiction
3 The collateral order doctrine provides a narrow
exception to the final-judgment rule and grants appellate
courts jurisdiction over certain orders of district courts.
See Microsoft Corp. v. Baker, 137 S. Ct. 1702, 1707, 1708
n.3 (2017). “To come within the ‘small class’ of decisions
excepted from the final-judgment rule by [the collateral
order doctrine], the order must conclusively determine the
disputed question, resolve an important issue completely
separate from the merits of the action, and be effectively
unreviewable on appeal from a final judgment.” Coopers
& Lybrand v. Livesay, 437 U.S. 463, 468 (1978) (footnote
and citations omitted); see Cohen v. Beneficial Indus.
Loan Corp., 337 U.S. 541, 546 (1949) (discussing the
“small class” of decisions “which finally determine claims
WAYMO LLC v. UBER TECHS., INC. 5
over three categories of interlocutory orders from district
courts: (1) those involving injunctions, receiverships, or
admiralty, 28 U.S.C. § 1292(a), (c)(1); (2) those certified
for immediate appeal by the district court, id. § 1292(b),
(c)(1); and (3) those involving patent infringement judg-
ments that are final except for an accounting, 4 id.
§ 1292(c)(2).
Mr. Levandowski acknowledges that the District
Court’s orders in Waymo III and Waymo IV are not ap-
pealable final judgments pursuant to § 1295(a)(1). Oral
Arg. at 9:05–10, http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2017-2235.mp3 (“Under the doctrine as I
understand it, I don’t think [the orders] are final.”). He
also acknowledges that those orders do not qualify as
of right separable from, and collateral to, rights asserted
in the action, too important to be denied review and too
independent of the cause itself to require that appellate
consideration be deferred until the whole case is adjudi-
cated”). Mr. Levandowski does not contend that the
collateral order doctrine applies here, see generally Appel-
lant’s Br.; however, even if he had, our analysis would
apply with equal force, see infra Section I.A–B (holding
that Mr. Levandowski has failed to establish that he lacks
alternative means to attain relief from the discovery
orders and that Mr. Levandowski is not entitled to attor-
ney-client privilege or work-product protection); see also
Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100, 114
(2009) (“[W]e conclude that the collateral order doctrine
does not extend to disclosure orders adverse to the attor-
ney-client privilege.”).
4 “An ‘accounting’ in the context of § 1292(c)(2) in-
cludes . . . . both the calculation of an infringer’s profits
and a patentee’s damages.” Robert Bosch, 719 F.3d at
1313.
6 WAYMO LLC v. UBER TECHS., INC.
routinely appealable interlocutory orders. Id. at 9:22–55
(acknowledging that the District Court did not certify the
orders pursuant to § 1292(b) and that the orders do not
fall within the categories enumerated in § 1292(a)(1)–(3),
(c)(2)). Instead, Mr. Levandowski presents two theories of
jurisdiction. First, Mr. Levandowski requests that we
treat his appeals from the District Court’s orders in
Waymo III and Waymo IV as petitions for writ of manda-
mus pursuant to 28 U.S.C. § 1651(a), asserting that the
discovery orders from which he appeals will violate his
Fifth Amendment right against self-incrimination, and
that the constitutional aspect, relating to an issue already
under criminal investigation, warrants immediate review.
See Appellant’s Br. 3. Second, Mr. Levandowski argues
that he has an immediate right to appeal the District
Court’s order in Waymo IV because the “Perlman doc-
trine,” as set forth in Perlman v. United States, 247 U.S. 7(1918), purportedly provides that “a third-party privilege
holder may immediately appeal an order compelling a
disinterested third party to produce privileged materials.”
Appellant’s Br. 2. We address these arguments in turn.
I. Mr. Levandowski Has Not Established His Entitlement
to a Writ of Mandamus, Although a Continuing Confiden-
tiality Order May Be Supported
The common law writ of mandamus is codified at 28
U.S.C. § 1651(a), which provides that “all courts estab-
lished by [an] Act of Congress may issue all writs neces-
sary or appropriate in aid of their respective jurisdictions
and agreeable to the usages and principles of law.” “[T]he
writ of mandamus is an extraordinary remedy[] to be
reserved for extraordinary situations.” Gulfstream Aero-
space Corp. v. Mayacamas Corp., 485 U.S. 271, 289
(1988). “The traditional use of the writ in aid of appellate
jurisdiction both at common law and in the federal courts
has been to confine the court against which mandamus is
sought to a lawful exercise of its prescribed jurisdiction.”
Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 380
WAYMO LLC v. UBER TECHS., INC. 7
(2004) (internal quotation marks, brackets, and citation
omitted).
The petitioner bears the burden of showing entitle-
ment to a writ of mandamus. Gulfstream, 485 U.S. at
289. To meet its burden, a petitioner must satisfy each of
the following “prerequisites”:
First, the party seeking issuance of the writ must
have no other adequate means to attain the relief
he desires—a condition designed to ensure that
the writ will not be used as a substitute for the
regular appeals process. Second, the petitioner
must satisfy the burden of showing that his right
to issuance of the writ is clear and indisputable.
Third, even if the first two prerequisites have
been met, the issuing court, in the exercise of its
discretion, must be satisfied that the writ is ap-
propriate under the circumstances.
Cheney, 542 U.S. at 380–81 (internal quotation marks,
brackets, and citations omitted). Failure to establish any
of these three prerequisites may suffice to deny a petition.
See Amgen Inc. v. Hospira, Inc., No. 2016-2179, 2017 WL
3427716, at *6 (Fed. Cir. Aug. 10, 2017) (denying a peti-
tion for writ of mandamus for failure to satisfy the second
Cheney prerequisite without addressing the first and
third prerequisites). We address the Cheney prerequisites
in turn.
A. Mr. Levandowski Fails to Satisfy Cheney’s First
Prerequisite
Under Cheney’s first prerequisite, “the party seeking
issuance of the writ must have no other adequate means
to attain the relief he desires.” 542 U.S. at 380 (internal
quotation marks, brackets, and citation omitted). Mr.
Levandowski contends that he lacks such alternative
means of relief because “an appeal after disclosure of the
privileged communication is an inadequate remedy.”
8 WAYMO LLC v. UBER TECHS., INC.
Appellant’s Br. 56 (internal quotation marks and citation
omitted). We disagree.
Appellate courts “generally den[y] review of pretrial
discovery orders,” Firestone Tire & Rubber Co. v. Risjord,
449 U.S. 368, 377 (1981), because “postjudgment appeals
generally suffice to protect the rights of litigants and
ensure the vitality of the attorney-client privilege . . . by
vacating an adverse judgment and remanding for a new
trial in which the protected material and its fruits are
excluded from evidence,” Mohawk, 558 U.S. at 109.
Although Mr. Levandowski is an intervenor, he is not
precluded from appealing a final judgment even if the
parties decline to do so. See Stringfellow v. Concerned
Neighbors in Action, 480 U.S. 370, 375–76 (1987) (“An
intervenor, whether by right or by permission, normally
has the right to appeal an adverse final judgment by a
trial court.”). While Mr. Levandowski contends that
“disclosure of privileged information would irreparably
taint the adversary process” because “[c]ourts cannot force
litigants to unlearn information,” Appellant’s Br. 56, he
has not specified why that general argument applies with
greater force here than in any other case, see id. at 55–58.
Therefore, we conclude that a post-judgment appeal by
either Uber or Mr. Levandowski would “suffice to protect
the rights of [Mr. Levandowski] and ensure the vitality of
attorney-client privilege,” Mohawk, 558 U.S. at 109; see
Stringfellow, 480 U.S. at 375–76, as to this civil action.
Mr. Levandowski contends that disclosure of the Stroz
Report would be “particularly injurious or novel.” Appel-
lant’s Br. 56 (quoting Mohawk, 558 U.S. at 110); see
Mohawk, 558 U.S. at 110 (discussing the “appellate
options,” including petitioning for writ of mandamus,
available to “litigants confronted with a particularly
injurious or novel privilege ruling”). His arguments are
unpersuasive, for it is apparent that Mr. Levandowski
cannot invoke attorney-client privilege or work-product
protection.
WAYMO LLC v. UBER TECHS., INC. 9
Regarding injury, Mr. Levandowski fails to articulate
any persuasive reasons why disclosure of the Stroz Report
should be barred in this civil litigation, for the possibility
of admissions against his interest is a valid function of
civil discovery. See Appellant’s Br. 55–58. While Mr.
Levandowski claims that the District Court would be
unable to “cleanse the trial of all taint from the improper
disclosure,” id. at 57, such an unsupported assertion is
insufficient, see, e.g., Birdsong v. Apple Inc., 590 F.3d 955,
959 (9th Cir. 2009) (“We review only issues which are
argued specifically and distinctly in a party’s opening
brief. We will not manufacture arguments for an appel-
lant, and a bare assertion does not preserve a claim . . . .”
(internal quotation marks, alteration, and citation omit-
ted)). Moreover, we take note that the District Court,
reviewing the Stroz Report in camera, declined to exclude
it, Waymo I, 2017 WL 2485382, at *1, and as explained
above, the Supreme Court has indicated that appellate
courts can remedy an improper disclosure of privileged
information by vacating an adverse judgment and re-
manding for a new trial, Mohawk, 558 U.S. at 109.
Regarding novelty, Mr. Levandowski mischaracterizes
the District Court’s orders in Waymo III and Waymo IV as
categorical and novel holdings that “parties in ongoing
transactional negotiations cannot invoke the common-
interest doctrine even when they are preparing for joint,
post-transaction litigation.” Appellant’s Br. 57. To the
contrary, the District Court clearly limited its holdings to
the facts at issue, see, e.g., Waymo III, 2017 WL 2694191,
at *6 (rejecting Uber’s arguments “[u]nder the facts of our
case” and referring to the Magistrate Judge’s “extensive
factual findings in reaching her conclusion that, under the
circumstances of our case, [Uber and Mr.] Levan-
dowski . . . had adverse rather than common interests” in
obtaining the Stroz Report).
Moreover, even if a privilege ruling is particularly in-
jurious or novel, a petition for writ of mandamus is one of
10 WAYMO LLC v. UBER TECHS., INC.
“several potential avenues of review,” including “ask[ing]
the district court to certify, and the court of appeals to
accept, an interlocutory appeal.” Mohawk, 558 U.S. at
110. Along with an appeal from a final judgment, these
avenues of immediate review may have been available to
Mr. Levandowski. See 15B Charles Alan Wright & Ar-
thur R. Miller, Federal Practice and Procedure § 3914.18
(updated Apr. 2017) (“[An] intervenor, once allowed to
become a party, is treated in the same way as any other
party.”); id. § 3902.1 (stating that “[p]ersons granted
intervention in the trial court become parties, and ordi-
narily have standing to appeal according to the rules that
govern any over party” and that “[t]he only limit should
be that standing is denied if the intervenor lacks standing
under the rules that govern appeal by any party”); cf.
Stringfellow, 480 U.S. at 375–76.
Therefore, we deny Mr. Levandowski’s petition for
writ of mandamus, see Amgen, 2017 WL 3427716, at *6,
taking note that he may be entitled to confidentiality of
the Stroz Report with respect to disclosure beyond the
District Court’s proceedings. We address the remaining
two Cheney prerequisites for completeness.
B. Mr. Levandowski Fails to Satisfy Cheney’s Second
Prerequisite
Under the second Cheney prerequisite, “the petitioner
must satisfy the burden of showing that his right to
issuance of the writ is clear and indisputable.” 542 U.S.
at 381 (internal quotation marks, brackets, and citation
omitted). Mr. Levandowski cannot establish a “clear and
indisputable” right to mandamus relief solely by identify-
ing ordinary error at the District Court. Id. (internal
quotation marks and citation omitted); see In re United
States, 791 F.3d 945, 955 (9th Cir. 2015) (requiring “clear
error” such that “the reviewing court is left with a definite
and firm conviction that a mistake has been committed”
(internal quotation marks and citation omitted)). Instead,
WAYMO LLC v. UBER TECHS., INC. 11
something more is required to grant a petition for writ of
mandamus because “only exceptional circumstances
amounting to a judicial usurpation of power, or a clear
abuse of discretion, will justify the invocation of this
extraordinary remedy.” Cheney, 542 U.S. at 380 (internal
quotation marks and citations omitted); see Hernandez v.
Tanninen, 604 F.3d 1095, 1101 (9th Cir. 2010) (finding
that mandamus was warranted because “the district court
clearly erred in finding a blanket waiver of the attorney-
client and work product privileges as to the entire case”).
We apply Ninth Circuit law to determine whether the
District Court erred in its privilege determination.
Promega Corp. v. Life Techs. Corp., 674 F.3d 1352, 1355–
56 (Fed. Cir. 2012).
Mr. Levandowski avers that he satisfies this prereq-
uisite because “the [D]istrict [C]ourt’s rulings constitute a
clear abuse of discretion.” Appellant’s Br. 55 (internal
quotation marks and citation omitted). Specifically, Mr.
Levandowski argues that the District Court erred by:
(1) determining that the common interest doctrine did not
apply, see id. at 23–47; (2) finding that Mr. Levandowski
waived work-product protection, see id. at 47–49; and
(3) rejecting Mr. Levandowski’s claim of Fifth Amendment
privilege, see id. at 49–55. None of Mr. Levandowski’s
arguments are persuasive.
1. The District Court Properly Determined That the
Common Interest Doctrine Did Not Apply
“Rather than a separate privilege, the common inter-
est or joint defense rule is an exception to ordinary waiver
rules designed to allow attorneys for different clients
pursuing a common legal strategy to communicate with
each other.” In re Pac. Pictures Corp., 679 F.3d 1121,
1129 (9th Cir. 2012) (internal quotation marks omitted).
It is insufficient “to justify a claim of privilege simply by
demonstrating that a confidential communication took
place between parties who purportedly share a common
12 WAYMO LLC v. UBER TECHS., INC.
interest.” OXY Res. Cal. LLC v. Superior Court, 9 Cal.
Rptr. 3d 621, 635 (Cal. Ct. App. 2004). Instead, “the party
seeking to invoke the doctrine must first establish that
the communicated information would otherwise be pro-
tected from disclosure by a claim of privilege.” Id. There-
fore, to invoke the common interest doctrine, a party first
must demonstrate the elements of privilege and then
must demonstrate that the communication was made in
pursuit of common legal claims including common defens-
es. Cf. Pac. Pictures, 679 F.3d at 1129; OXY, 9 Cal. Rptr.
3d at 635.
The Magistrate Judge determined that Mr. Levan-
dowski failed to satisfy his burden as to both require-
ments of the common interest doctrine. See Waymo I,
2017 WL 2485382, at *4–8 (finding that Mr. Levan-
dowski’s communications with Stroz were not protected
by attorney-client privilege and that the common interest
doctrine did not create attorney-client privilege on his
behalf), *9–13 (finding that Uber and Mr. Levandowski
did not share a common interest because they were ad-
versaries in the situation studied by Stroz). The District
Court agreed, holding that the common interest doctrine
was inapplicable because “[Mr.] Levandowski’s interview
with and disclosures to Stroz . . . did not qualify for attor-
ney-client privilege in the first place,” and “his interview
and disclosures did not become privileged merely by
virtue of his participation in a purported ‘common inter-
est’ or ‘joint defense’ arrangement.” Waymo III, 2017 WL
2694191, at *5. We agree with the District Court.
As to the first requirement of the common interest
doctrine, Mr. Levandowski does not take the position that
his communications with Stroz were “privilege[d] in the
first place.” Id. See generally Appellant’s Br. Instead, he
asserts that the doctrine creates a separate, standalone
form of privilege that does not require such a showing.
Oral Arg. at 11:38–47, http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2017-2235.mp3 (“There is no
WAYMO LLC v. UBER TECHS., INC. 13
requirement that there first be a document or a communi-
cation that is privileged and then only later shared with
the common interest group.”); see Appellant’s Br. 23–47.
Ninth Circuit precedent is contrary to Mr. Levandowski’s
assertion. See Pac. Pictures, 679 F.3d at 1129. Because
both the Magistrate Judge and the District Court made
extensive, record-supported factual findings as to privi-
lege, see Waymo III, 2017 WL 2694191, at *2–5; Waymo I,
2017 WL 2485382, at *4–6, and Mr. Levandowski fails to
negate or challenge these findings on appeal, see Appel-
lant’s Br. 23–47, we need not reconsider the District
Court’s determination that Mr. Levandowski’s communi-
cations with Stroz were not privileged, see Nan Ya Plas-
tics Corp. v. United States, 810 F.3d 1333, 1347 (Fed. Cir.
2016) (holding that failure to present arguments under
the operative legal framework “typically warrants a
finding of waiver”). 5
5 We note that neither Stroz, nor Uber’s counsel,
nor Ottomotto’s counsel represent Mr. Levandowski.
Appellant’s App. 64–65, 114, 135. “What is vital to the
privilege is that the communication be made in confidence
for the purpose of obtaining legal advice from the lawyer.”
United States v. Gurtner, 474 F.2d 297, 298 (9th Cir.
1973) (internal quotation marks and citations omitted).
Mr. Levandowski could not show that he was seeking and
obtained “legal advice from the lawyer” when communi-
cating with Stroz. Id. Therefore, we share the District
Court’s concern that Mr. Levandowski advances “the
remarkable proposition that information communicated in
confidence by anyone to Stroz . . . for the purpose of ena-
bling Uber and Ottomotto to obtain legal advice from
[their respective counsels] should be covered by the attor-
ney-client privilege” invoked by the provider of infor-
14 WAYMO LLC v. UBER TECHS., INC.
As to the second requirement of the common interest
doctrine, the record contradicts Mr. Levandowski’s asser-
tions that the District Court committed both legal and
factual error. Mr. Levandowski argues that the District
Court committed legal error by “adopt[ing] a blanket rule
that parties with ‘separate counsel on opposite sides of a
proposed transaction’ do not share a common legal inter-
est sufficient to protect against waiver of the attorney-
client privilege.” Appellant’s Br. 26 (quoting Waymo I,
2017 WL 2485382, at *6); see id. at 26–32, 36–39. Howev-
er, Mr. Levandowski supports his argument by selectively
quoting a small portion of one sentence in the midst of
thorough findings that properly were limited to the facts
of the case at hand. See Waymo I, 2017 WL 2485382, at
*4–13; see also Waymo III, 2017 WL 2694191, at *6 (limit-
ing its holdings to “the facts of our case” and “the circum-
stances of our case”). “We will not find legal error based
upon an isolated statement stripped from its context.”
VirnetX Inc. v. Apple Inc., 665 F. App’x 880, 886 (Fed. Cir.
2016).
Mr. Levandowski next argues that the District Court
committed factual error because “the record evidence—
including numerous sworn, uncontradicted declarations—
established the existence of a common interest agreement
prior to Stroz’s engagement and established that [Mr.]
Levandowski’s communications with Stroz were made in
furtherance of the . . . joint legal effort” of Mr. Levan-
dowski and Uber to prepare for litigation with Waymo.
Appellant’s Br. 47; see id. at 39–47 (discussing purported-
ly supportive evidence). While Mr. Levandowski asserts
that “[t]here is not a single piece of contrary testimony in
the record,” id. at 41, the Magistrate Judge expressly
mation to Stroz, which “has no basis in the law.” Waymo
III, 2017 WL 2694191, at *3.
WAYMO LLC v. UBER TECHS., INC. 15
considered this proffered evidence and found it unpersua-
sive as to Mr. Levandowski’s claim of privilege, see Way-
mo I, 2017 WL 2485382, at *11–12. Instead, the
Magistrate Judge found persuasive the term sheet be-
tween Uber and Ottomotto and the Stroz Report, see id. at
*9–10, and determined that these documents demonstrat-
ed that Uber’s interests “were not aligned” with those of
Mr. Levandowski, id. at *10; see id. at *13. We do not
discern reversible error in the District Court’s ruling.
The Magistrate Judge’s and the District Court’s fac-
tual findings are well-supported by the record. For exam-
ple, the following facts are undisputed: (1) Ottomotto and
Uber signed a term sheet regarding Uber’s potential
acquisition of Ottomotto, but that term sheet did not bind
the parties to the proposed acquisition, see Appellant’s
App. 126; Appellant’s Br. 4; (2) Uber and Ottomotto, but
not Mr. Levandowski, hired Stroz to investigate various
issues, including whether Mr. Levandowski improperly
retained confidential information from Waymo, see Appel-
lant’s App. 135; Appellant’s Br. 4; (3) Mr. Levandowski
did not hire or enter into any other formal arrangement
with Stroz, Oral Arg. at 10:13–24,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl
=2017-2235.mp3 (Q: “Was [Stroz] hired by Levandowski
or his attorney?” A: “[Stroz] was not engaged specifically
by Mr. Levandowksi’s attorney.”); see Appellant’s App.
135; (4) “[t]he purpose of the [Stroz] investigation was to
aid [Uber’s counsel] and [Ottomotto’s counsel] in provid-
ing legal advice to their respective clients about litigation
risks and potential claims that could be brought by
[Waymo] in connection with Uber’s acquisition of Ot-
to[motto],” Appellant’s App. 65; see id. at 135; and (5) Mr.
Levandowski could have lost a large sum of money if Uber
did not acquire Ottomotto and could have been required
to reimburse Uber’s indemnification expenses if he was
not truthful with Stroz, Oral Arg. at 5:46–7:01,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16 WAYMO LLC v. UBER TECHS., INC.
17-2235.mp3 (discussing indemnification and the risk
that the deal might not go forward absent full disclosure);
see Appellant’s App. 129–33. These facts support the
District Court’s conclusion that Uber’s interests were
adverse to Mr. Levandowski’s because he was the subject
of an investigation ordered by two parties on opposite
sides of a proposed transaction. These undisputed facts
are sufficient to uphold the District Court’s conclusion
that Mr. Levandowski did not share a common interest
with Uber. We thus decline to find error in the District
Court’s factual findings or legal conclusions.
2. The District Court Properly Determined That Work-
Product Protection Did Not Apply
The work-product doctrine protects from discovery
documents, tangible things, or compilations of materials
that were prepared in anticipation of litigation by a party
or its representative. See United States v. Richey, 632
F.3d 559, 567 (9th Cir. 2011). Documents that “w[ere] not
prepared exclusively for litigation,” known as “[d]ual
purpose documents,” may be entitled to work-product
protection if they were prepared “because of” litigation,
meaning “the document[s] can be fairly said to have been
prepared or obtained because of the prospect of litigation.”
Id. at 568 (internal quotation marks and citation omit-
ted). Even if a party has demonstrated that documents
are entitled to work-product protection, that protection
may be waived through disclosure to a third person. See
Hernandez, 604 F.3d at 1100. The common interest
doctrine, however, may serve as “an exception” to a waiv-
er of privilege, including work-product protection, that
“allow[s] attorneys for different clients pursuing a com-
mon legal strategy to communicate with each other.” Pac.
Pictures, 679 F.3d at 1129; see Pecover v. Elec. Arts Inc.,
No. C08-2820 CW (BZ), 2011 WL 6020412, at *2 (N.D.
Cal. Dec. 2, 2011) (stating that the common interest
doctrine “is a narrow exception to the rule of waiver” of
work-product protection).
WAYMO LLC v. UBER TECHS., INC. 17
The Magistrate Judge explained that, “[o]nce a party
has disclosed work product to one adversary, it waives
work-product protection as to all other adversaries. As
Uber disclosed its Stroz [Report] work product to its
adversaries Otto[motto and Mr.] Levandowski . . . , it
must disclose the same work product to Waymo.” Waymo
I, 2017 WL 2485382, at *13 (citation omitted). The Dis-
trict Court agreed. Waymo III, 2017 WL 2694191, at *6
(“[U]nder the circumstances of our case, [Uber and Mr.]
Levandowski . . . had adverse rather than common inter-
ests . . . and . . . Uber therefore waived any work-product
[protection] it may have had over the [Stroz R]eport by
disclosing the contents of that report to adversaries.”).
Mr. Levandowski argues that the District Court erred
because “waiver of work-product protection requires that
the information be disclosed . . . to an adversary,” and
“[s]haring work product among the members of a common
interest group is the antithesis of sharing it with an
adversary.” Appellant’s Br. 48, 49 (citation omitted).
This argument fails for three reasons.
First, Mr. Levandowski has not established that he is
entitled to assert work-product protection over the Stroz
Report. Both the Magistrate Judge and the District Court
“assum[ed] the Stroz [Report] qualifies as Uber’s attorney
work[ ]product” and did not discuss the protection as
applied to Mr. Levandowski. Waymo I, 2017 WL 2485382,
at *8 (emphasis added); see Waymo III, 2017 WL 2694191,
at *6 (stating that “Uber therefore waived any work-
product [protection] it may have had” (emphases added)).
However, whether Uber can assert work-product protec-
tion over the Stroz Report does not benefit Mr. Levan-
dowski. Work-product protection covers documents
prepared by a party or its representative, Richey, 632
F.3d at 567, and Mr. Levandowski concedes that he did
not hire Stroz as his representative, Oral Arg. at 10:13–
24, http://oralarguments.cafc.uscourts.gov/default.aspx?fl
=2017-2235.mp3. Instead, Stroz was hired by Uber’s
18 WAYMO LLC v. UBER TECHS., INC.
counsel and Ottomotto’s counsel, neither of whom repre-
sents Mr. Levandowski. Appellant’s App. 64, 135. There-
fore, even if the Stroz Report was prepared “because of”
litigation, Richey, 632 F.3d at 567, it was prepared by
Uber’s and Ottomotto’s representative rather than Mr.
Levandowski’s representative.
Second, even if Mr. Levandowski were entitled to as-
sert work-product protection, he waived that protection by
disclosing the information for the benefit of adverse third
parties. While the common interest doctrine potentially
could provide “an exception to ordinary waiver rules” and
allow representatives of Uber and Mr. Levandowski to
communicate in “pursui[t of] a common legal strategy,”
Pac. Pictures, 679 F.3d at 1129, we agree with the District
Court’s finding that Uber and Mr. Levandowski had
adverse rather than common interests in connection with
the Stroz Report. The common interest doctrine does not
apply and, therefore, cannot save Mr. Levandowski’s
waiver of the work-product protection.
Third, both the Magistrate Judge and District Court
applied the very standard that Mr. Levandowski argues
for on appeal. Although Mr. Levandowski argues that
“waiver of work[-]product [protection] requires that the
information be disclosed . . . to an adversary,” Appellant’s
Br. 48 (citation omitted), this is exactly what both the
Magistrate Judge and the District Court determined had
occurred, see Waymo III, 2017 WL 2694191, at *6; Waymo
I, 2017 WL 2485382, at *13. Therefore, Mr. Levan-
dowski’s argument regarding the appropriate legal stand-
ard is unavailing.
3. The District Court Properly Determined That the Fifth
Amendment Was Not Implicated
The Fifth Amendment provides, in relevant part, that
“[n]o person . . . shall be compelled in any criminal case to
be a witness against himself.” U.S. Const. amend. V.
“[T]he Fifth Amendment privilege is a personal privilege:
WAYMO LLC v. UBER TECHS., INC. 19
it adheres basically to the person, not to information that
may incriminate him.” Couch v. United States, 409 U.S.
322, 328 (1973). The District Court determined that
compelling Uber or Stroz to produce the Stroz Report
would not violate Mr. Levandowski’s Fifth Amendment
privilege, because he had not met his burden of showing
that he retained any privilege over the Stroz Report. See
Waymo II, 2017 WL 2676424, at *3; see also Appellant’s
App. 19. We agree that Mr. Levandowski is not entitled
to Fifth Amendment privilege with respect to disclosure in
this civil case. 6
Mr. Levandowski argues that he is entitled to assert
Fifth Amendment privilege because Waymo’s complaint
“plainly conjures the threat of criminal sanction” and the
District Court “formally referred this case to the [U.S.]
Attorney’s Office for investigation of possible theft of
trade secrets.” Appellant’s Br. 50 (internal quotation
marks, footnote, and citation omitted); see Appellant’s
App. 171. Mr. Levandowski states that the disclosure of
information contained in the Stroz Report would violate
6 Mr. Levandowski was accepted as an intervenor
under Federal Rule of Civil Procedure 24(b) “for the
limited purpose of opposing Waymo’s motion to compel
the Stroz Report,” Waymo I, 2017 WL 2485382, at *7, and
“for the limited purpose of objecting to the Stroz subpoe-
na,” Waymo II, 2017 WL 2676424, at *2. Therefore, Mr.
Levandowski can challenge the District Court’s holdings
as to Fifth Amendment privilege on appeal. See Wright &
Miller § 3914.18 (“Orders granting intervention, or grant-
ing intervention but limiting the intervenor’s role in the
action, are treated in the same way as other orders with
respect to party joinder.”); id. (“[T]he intervenor, once
allowed to become a party, is treated in the same way as
any other party.”).
20 WAYMO LLC v. UBER TECHS., INC.
his Fifth Amendment rights, since “the Constitution
protects an individual like [Mr.] Levandowski from being
compelled to testify against himself through the produc-
tion of records.” Appellant’s Br. 51; see U.S. Const.
amend. V; see also McCarthy v. Arndstein, 266 U.S. 34, 40
(1924) (holding that the Fifth Amendment “applies alike
to civil and criminal proceedings, wherever the answer
might tend to subject to criminal responsibility him who
gives it”). However, “the Fifth Amendment privilege is a
personal privilege,” Couch, 409 U.S. at 328 (emphasis
added), and Mr. Levandowski has not been compelled
personally to produce the Stroz Report.
Whether the information Mr. Levandowski provided
for the Stroz Report is relevant to and admissible in any
criminal action is not before us. Nor is it before us to
decide whether the District Court may choose to preserve
the Stroz Report’s confidentiality until its status in any
criminal proceeding is resolved. However, with respect to
the pending civil action, the District Court’s orders compel
Uber and Stroz to produce the Stroz Report. Appellant’s
App. 20; see Waymo III, 2017 WL 2694191, at *8. Mr.
Levandowski cannot prevent Uber and Stroz from produc-
ing the Stroz Report for consideration in this civil action
solely because it “may incriminate him.” Couch, 409 U.S.
at 328. We conclude, from the District Court’s and Magis-
trate Judge’s denial of his requests to prevent production
of the Stroz Report, that they deem it relevant to this civil
action; it is inappropriate to withhold relevant material in
the civil action. However, the District Court has authori-
ty to ensure that any appropriate protective order is
applied.
Mr. Levandowski’s counterarguments are unpersua-
sive. First, Mr. Levandowski argues that he maintains
constructive possession over the Stroz Report. Appellant’s
Br. 50−52. Although the Supreme Court has acknowl-
edged that “situations may well arise where constructive
possession is so clear or the relinquishment of possession
WAYMO LLC v. UBER TECHS., INC. 21
is so temporary and insignificant as to leave the personal
compulsions upon the accused substantially intact . . . ,
this is not the case before us.” Couch, 409 U.S. at 333–34
(footnote omitted). “Constructive possession is estab-
lished when a person, though lacking such physical custo-
dy, still has the power and intent to exercise control over
the object.” Henderson v. United States, 135 S. Ct. 1780,
1784 (2015). Mr. Levandowski cannot demonstrate the
requisite control because, as the Magistrate Judge ex-
plained, he “provided the statements and documents to an
unrelated party on the other side of a proposed acquisi-
tion to enable the unrelated party to decide whether to
agree to the acquisition and to create an evidentiary
record to govern indemnification rights if a certain
agreement is executed.” Waymo II, 2017 WL 2676424, at
*3; see, e.g., Appellant’s App. 64–65, 135. While Mr.
Levandowski argues that his attorney insisted by letter
that Stroz “agree[] to (a) ‘promptly return or destroy’ the
materials upon request, and (b) hold in strict confidence
all information derived from materials,” Appellant’s
Br. 52 (quoting Appellant’s App. 136), this very same
letter “provide[s] that Stroz may keep one archival copy”
of the materials, and the accompanying protocol for
Stroz’s investigation provides direction for “non-
privileged, relevant documents or communications . . . [to]
be shared with [Ottomotto’s counsel] and [Uber’s coun-
sel],” Appellant’s App. 136, 137–38 (footnote omitted).
Moreover, the letter fails to temporally limit Stroz’s
possession of the documents. See id. at 135–39. Under
these circumstances, we agree with the District Court
that neither is Mr. Levandowski’s possession “so clear”
nor is his relinquishment of possession “so temporary” as
to establish constructive possession. Couch, 409 U.S. at
333 (footnote omitted).
Second, Mr. Levandowski argues that, at minimum,
we must vacate and remand the District Court’s determi-
nations as to the Fifth Amendment privilege because the
22 WAYMO LLC v. UBER TECHS., INC.
District Court improperly deferred to the Magistrate
Judge rather than reviewing Mr. Levandowski’s conten-
tions de novo. Appellant’s Br. 53–55. 7 Although it is true
that “Article III judges are the ultimate decision makers
on matters involving substantial constitutional ques-
tions,” United States v. Rivera-Guerrero, 377 F.3d 1064,
1071 (9th Cir. 2004); see id. (explaining that, “[h]ad the
district court applied de novo review to the magistrate
judge’s order, we would have no need to remand the
case”), the District Court was only peripherally presented
with a constitutional issue. Both before the District Court
and on appeal, Mr. Levandowski conditioned his Fifth
Amendment argument upon his claim of attorney-client
privilege or common interest privilege. Oral Arg. at
33:50–35:15, http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2017-2235.mp3 (“If this is a valid common
interest privilege, . . . then a client giving an attorney
documents . . . as part of a privileged relation-
ship, . . . they’re the agent of counsel for the common
interest group. Under the Fifth Amendment, a client has
a right . . . to block production of those records from their
counsel. . . . It turns on the validity of the privilege. . . . If
there is a violation of the attorney-client privilege here
that leads to a determination that the Fifth Amendment
violation occurred, this will inevitably taint the record.”
(emphases added)); see, e.g., Appellant’s Br. 54 (“[Mr.]
Levandowski asserted in the [D]istrict [C]ourt
that . . . any records he may have transferred to Stroz as
part of a common interest privileged communication
remained subject to Fifth Amendment privilege.” (em-
7 During oral argument, counsel for Mr. Levan-
dowski acknowledged “that it is a little bit murky” wheth-
er “de novo review should occur” in this case. Oral Arg. at
36:54–37:00, http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2017-2235.mp3.
WAYMO LLC v. UBER TECHS., INC. 23
phasis added) (citations omitted)); Appellant’s Emergency
Mot. to Stay at 16, Waymo LLC v. Uber Techs., Inc., No.
17-2253 (Fed. Cir. June 30, 2017), ECF No. 3 (“[S]ince any
records he may have transferred to Stroz were part of a
privileged joint-defense communication, . . . such records
would remain privileged even if they are in the possession
of Stroz.” (emphasis added) (citations omitted)). The
District Court rejected Mr. Levandowski’s arguments as
to the common interest privilege.
C. Mr. Levandowski Fails to Satisfy Cheney’s Third
Prerequisite
Under Cheney’s third prerequisite, “even if the first
two prerequisites have been met, the issuing court, in the
exercise of its discretion, must be satisfied that the writ is
appropriate under the circumstances.” Cheney, 542 U.S.
at 381 (citation omitted). As explained above, Mr. Levan-
dowski has not satisfied his burden as to the first two
Cheney prerequisites, and he has not persuaded us to
exercise our discretion here and overrule the District
Court. We thus decline to do so.
Because Mr. Levandowski has not satisfied any of the
Cheney prerequisites, his petitions for writ of mandamus
with respect to the District Court’s orders in Waymo III
and Waymo IV are denied. Mr. Levandowski proffers no
other grounds for this court to reverse the District Court’s
order in Waymo III. Uber must comply with the District
Court’s order in Waymo III upon denial of Mr. Levan-
dowski’s petition for writ of mandamus, subject to any
protection the District Court might impose on Fifth
Amendment consideration.
II. The Perlman Doctrine Does Not Apply
As an alternative basis for reversal of the discovery
order in Waymo IV, Mr. Levandowski argues that he is
entitled to such action pursuant to the Perlman doctrine.
Appellant’s Br. 2–3. The Perlman doctrine provides that
24 WAYMO LLC v. UBER TECHS., INC.
“a discovery order directed at a disinterested third party
is treated as an immediately appealable final order be-
cause the third party presumably lacks a sufficient stake
in the proceeding to risk contempt by refusing compli-
ance.” Church of Scientology of Cal. v. United States, 506
U.S. 9, 18 n.11 (1992) (citation omitted). For several
reasons, we conclude that the doctrine is not implicated
here.
First, grand jury subpoenas are “by far the most
common area of application” of the Perlman doctrine.
Wright & Miller § 3914.23; see In re Nat’l Mortg. Equity
Corp. Pool Certificates Litig., 857 F.2d 1238, 1239 (9th
Cir. 1988) (“We conclude that Perlman does not apply in
the context of ongoing civil litigation.” (footnote omitted)).
Although the Ninth Circuit has applied the Perlman
doctrine in at least two civil cases of which we are aware,
those cases did not provide any reasoning for applying the
doctrine in the civil context. See In re Optical Disk Drive
Antitrust Litig., 801 F.3d 1072, 1076 (9th Cir. 2015); Sec.
& Exch. Comm’n v. CMKM Diamonds, Inc., 656 F.3d 829,
830–31 (9th Cir. 2011).
Second, the Perlman doctrine applies “[o]nly in the
limited class of cases where denial of immediate review
would render impossible any review whatsoever of an
individual’s claims.” United States v. Ryan, 402 U.S. 530,
533 (1971); see, e.g., id. at 533–34 (“In the present
case . . . , respondent is free to refuse compliance
and, . . . in such event[,] he may obtain full review of his
claims before undertaking any burden of compliance with
the subpoena. Perlman, therefore, has no application in
the situation before us.”). As we explained above, Mr.
Levandowski may be able to appeal following final judg-
ment. See supra Section I.A.
Third, the Perlman doctrine may be invoked by “dis-
interested third parties,” Church of Scientology, 506 U.S.
at 18 n.11, but Mr. Levandowski is closely affiliated with
WAYMO LLC v. UBER TECHS., INC. 25
all parties to this litigation. It is undisputed that Mr.
Levandowski has been employed by each party to this
litigation and that his actions are central to Waymo’s
claims. See Appellant’s Br. 9–14; Appellee’s Br. 7–9.
Therefore, “it seems clear that [Uber] is no ‘disinterested’
third party.” Knoll Pharm. Co. v. Teva Pharm. USA, Inc.,
138 F. App’x 302, 303 (Fed. Cir. 2005) (citation omitted).
Fourth, we have previously rejected Mr. Levan-
dowski’s arguments under the Perlman doctrine in a
substantively similar appeal. See Appellant’s Emergency
Mot. to Stay at 9, Waymo LLC v. Uber Techs., Inc., No. 17-
1904 (Fed. Cir. Apr. 13, 2017), ECF No. 2 (discussing
Perlman doctrine); Order at 2–3, Waymo LLC v. Uber
Techs., Inc., No. 17-1904 (Fed. Cir. Apr. 25, 2017), ECF
No. 9 (treating appeal as petition for writ of mandamus
and dismissing). Mr. Levandowski has not provided any
reasons why we should depart from that practice here, see
Appellant’s Br. 2–3, and we see none. Because the Perl-
man doctrine is not implicated, Stroz must comply with
the District Court’s order in Waymo IV.
CONCLUSION
We have considered Mr. Levandowski’s remaining ar-
guments and find them unpersuasive. Accordingly, Mr.
Levandowski’s appeal is
DISMISSED AND THE PETITIONS FOR WRIT OF
MANDAMUS ARE DENIED
COSTS
Costs to Waymo.