SAN FRANCISCO — Morrison & Foerster appears to have avoided getting the boot from the contentious trade secrets lawsuit between Uber and Waymo, Google’s driverless car division. But the law firm is also now on track to be one of the many characters at trial.
The result is an example of just how complicated things can get when a firm takes on different kinds of work for a single client. Although such arrangements can be lucrative and efficient, they also can get sticky in the context of litigation.
MoFo wore many hats in the series of events leading up to Waymo’s decision to sue Uber this past February. Deal lawyers from the firm represented Uber in its acquisition of a company founded by former Waymo engineer, Anthony Levandowski. MoFo also initially represented Levandowski when Waymo launched an arbitration over his employment contract last fall.
Now, MoFo is one of two firms defending Uber in Waymo’s trade secrets lawsuit, alongside Boies Schiller Flexner. Because of the various roles that MoFo has played throughout the Silicon Valley drama, attorneys from the firm earlier this month asked the judge presiding over the lawsuit to keep the firm’s name out of any evidence when the case goes to trial in October.
“MoFo’s role in the acquisition is irrelevant to the issues at trial and any remote relevance is substantially outweighed by the probability that the jury will be confused or that Uber will be prejudiced,” wrote MoFo partner Arturo Gonzalez, “because the only reason Waymo would mention MoFo’s involvement is to suggest wrongdoing by Uber’s trial counsel.”
Waymo’s attorneys at Quinn Emanuel Urquhart & Sullivan shot back, asking the judge to kick the MoFo lawyers off the case entirely, or, at least, block them from presenting at trial. Waymo argued that MoFo’s role in the acquisition is key to understanding what Uber executives knew about files that Levandowski took from Waymo—and when they knew it.
Rather than limiting testimony about MoFo or prohibiting its lawyers from being called as witnesses, “the appropriate remedy is disqualification,” wrote Quinn Emanuel partner Charles Verhoeven, one of the lead lawyers for Waymo.
In a hearing Wednesday, U.S. District Judge William Alsup of the Northern District of California laid out something of a middle-ground solution.
Waymo’s lawyers will be able to present evidence about MoFo’s role in the acquisition of Levandowski’s company and even put certain MoFo attorneys on the stand, with Uber’s permission, Alsup said. “MoFo is an actor in the case, and you can’t tell the story to the jury and somehow call it ‘Law Firm X.’ So MoFo is going to be front-and-center in the case.”
But to ensure that the jury’s impressions of Uber’s trial counsel from MoFo—including Gonzalez and partner Michael Jacobs—don’t “rub off” on their thoughts about the case itself, Alsup also said he would direct the parties only to refer to them by name and not by firm. Put simply, the jury won’t be told that some of Uber’s trial attorneys are from MoFo.
It’s a finely tailored solution, the success of which will depend upon jurors’ adhering to their obligation not to research the case outside the courtroom. But Alsup said he would emphasize to the jury they are strictly prohibited from doing so.
MoFo has come under pressure in another important way in the case. Waymo’s attorneys earlier suggested that the firm is withholding information stolen from the company that came into its possession when MoFo advised Uber on the acquisition deal. MoFo has denied that, but admitted that it inadvertently retained files from Levandowski that it received in the context of the arbitration. It’s not clear whether those files are from Waymo.
A motion by Waymo to hold Uber in contempt for not directing MoFo to turn over all those files is still pending, with a hearing set before Alsup in mid-August. But at the hearing Wednesday, the judge indicated that he’s wary of veering too much into what MoFo has in its files.
“You’ve got to have a better case than that,” Alsup told Quinn Emanuel partner Jordan Jaffe, another of Waymo’s lawyers. “If you can’t prove that Uber got these trade secrets, then maybe you’re in a world of trouble.”