UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

Ford Motor Company,

Plaintiff/

Counter-Defendant,

v.

Versata Software, Inc., f/k/a Trilogy 

Software, Inc., Trilogy Development 

Group, Inc. and Trilogy, Inc., 

Defendants/

Counter-Plaintiffs.

Case No. 15-10628-MFL-EAS 

(consolidated with Case No. 15-cv-11624)

Hon. Matthew F. Leitman

JURY TRIAL DEMANDED

FORD MOTOR COMPANY’S

MOTION FOR SUMMARY JUDGMENT

AND BRIEF IN SUPPORT

NON-CONFIDENTIAL

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CONCISE STATEMENT OF ISSUES PRESENTED

1. Is Plaintiff Ford Motor Company (“Ford”) entitled to summary judgment on 

Defendants’ trade secret claims where Defendants disclosed the alleged 

secrets to more than 160 individuals around the world, and two Ford 

competitors, who were under no apparent obligation of confidentiality?

2. Is Ford entitled to summary judgment on Versata’s copyright and related 

breach of contract claim where Versata does not own the copyrights, and 

where Ford was licensed to use the software at the time of the alleged 

infringement?

3. Is Ford entitled to summary judgment on Versata’s patent claims where Ford 

does not infringe asserted claims, and where asserted claims are invalid?

Ford answers each: Yes.

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CONTROLLING AUTHORITY

Fed. R. Civ. P. 56

Comp. Laws § 445.1901 et seq.

18 U.S.C. § 1836

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)

Rainbow Nails Enterprises, Inc. v. Maybelline, Inc., 93 F.Supp.2d 808 (E.D. Mich. 

2000)

Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003)

Pfaff v. Wells Electronics, 525 U.S. 55 (1998)

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)

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TABLE OF CONTENTS

CONCISE STATEMENT OF ISSUES PRESENTED ............................................. i

CONTROLLING AUTHORITY.............................................................................. ii

TABLE OF AUTHORITIES ................................................................................... vi

MOTION....................................................................................................................1

BRIEF IN SUPPORT.................................................................................................2

I. BACKGROUND .............................................................................................2

A. Summary of the Technology at Issue....................................................2

B. The ACM Software Performed Poorly Since the Time it Was 

First Launched.......................................................................................3

C. Frustration Over ACM and MCA Performance Continued to 

Grow, And Versata Eventually Declared the Software 

“Redlining” and “End of Life”..............................................................5

D. Ford Innovates to Build a Better Solution.............................................6

E. Instead of Improving ACM/MCA, Versata Significantly Raised 

Ford’s Fees and Then Terminated Ford’s License................................7

F. Ford Employees Were Walled-Off From the ACM/MCA 

“Source Code” And No ACM/MCA Code Is Used in PDOR1 ............8

II. SUMMARY JUDGMENT STANDARD .......................................................9

III. ARGUMENT...................................................................................................9

A. Trade Secrets: Versata Cannot Prove It Took Reasonable 

Measures to Maintain Secrecy When Versata Disclosed 

ACM/MCA to at Least 160 Individuals But “Lost” Their 

Alleged Confidentiality Agreements.....................................................9

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1. Versata Cannot Produce Confidentiality Agreements for 

at Least 160 Employees and Third-Party Developers ............. 11

2. Versata Cannot Produce Confidentiality Agreements with 

Ford Competitors to Whom It Disclosed ACM....................... 15

3. Ford’s Confidentiality Obligation on Information 

Disclosed to Ford Through December 10, 2004 (All of 

the Alleged Secrets) Expired December 10, 2007................... 16

4. Versata Published the ACM Screens and Software 

Functions in its Patents ............................................................ 19

B. Trade Secrets: Ford Paid For, and Owns, the Alleged Trade 

Secrets Developed Between 1999 and 2001 .......................................25

C. Copyrights: Defendants Do Not Own the Asserted Copyrights........28

D. Copyrights: Ford Used the ACM/MCA/ACS Software Only 

When it Was Licensed to Do So .........................................................29

E. Patents: Ford Does Not Infringe Versata’s Patent Claims, and 

Some of the Claims Are Invalid..........................................................32

1. U.S. Patent Nos. 7,200,582 and 7,464,064 Are Invalid 

and Not Infringed..................................................................... 32

Versata Violated the “On Sale Bar” Rendering the 

‘582 and ‘064 Patents Invalid........................................ 32

PDOR1 Does Not Infringe the ‘582 and ‘064 

Patents Because PDOR1 Does Not Use “set 

equations” to Represent “consistency error types” 

as Claimed in Those Patents.......................................... 38

2. Ford Does Not Infringe U.S. Patent No. 7,739,080 

Because Ford Does Not “extend” or “remove” 

Configuration Model Family Space......................................... 40

3. Ford Does Not Infringe U.S. Patent Nos. 6,405,308 and 

6,675,294.................................................................................. 43

“obtaining user input”/“sending user input” ................. 45

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“system” / “product”...................................................... 47

4. The Asserted Claims of U.S. Patent No. 7,882,057 are 

Unpatentable Because They Are Directed to an Abstract 

Idea........................................................................................... 49

Alice Step One: The ‘057 Patent Claims Are 

Directed to Unpatentable Abstract Ideas....................... 50

Alice Step Two: The ‘057 Patent Claims Do Not 

Include an “Inventive Concept” .................................... 54

IV. CONCLUSION..............................................................................................55

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TABLE OF AUTHORITIES

Cases

Allen Engineering Corp. v. Bartell Industries, 

299 F.3d 1336 (Fed. Cir. 2002).....................................................................36

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 

134 S.Ct. 2347 (2014)................................................................. 49, 50, 54, 55

Anderson v. Liberty Lobby, Inc., 

477 U.S. 242 (1986).........................................................................................9

Baystate Techs. Inc. v. Bentley Systems, Inc., 

946 F.Supp. 1079 (D. Mass. 1996)................................................................19

BDT Prod’s, Inc. v. Lexmark Int’l, 

274 F.Supp.2d 880 (E.D. Ky. 2003)..............................................................14

Best Hand Entm't LLC v. Wideawake-Deathrow Entm't, LLC, 

2014 WL 1304623 (E.D. Mich. Mar. 31, 2014)............................................30

Bilski v. Kappos, 

561 U.S. 593 (2010).......................................................................................49

CyberSource Corp. v. Retail Decisions, Inc., 

654 F.3d 1366 (Fed. Cir. 2011).....................................................................50

DB Riley, Inc. v. AB Eng'g Corp., 

977 F.Supp. 84 (D. Mass. 1997)....................................................................19

Dice Corp. v. Bold Techs., 

913 F. Supp.2d. 389 (E.D. Mich. 2012) ........................................................10

ECT Int'l, Inc. v. Zwerlein, 

228 Wis.2d 343, 597 N.W.2d 479 (Wisc. Ct. App. 1999) ............................18

Electromotive Div. of General Motors Corp v. Transportation Systems Division of 

General Electric Co., 

417 F.3d 1203 (Fed.Cir. 2005)......................................................................37

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Group One, Ltd. v. Hallmark Cards, Inc., 

254 F.3d 1041 (Fed.Cir. 2001)......................................................................35

In re Cygnus Telecomm. Tech., LLC Patent Litig., 

536 F.3d 1343 (Fed.Cir. 2008)......................................................................37

In re Kollar, 

286 F.3d 1326 (Fed.Cir. 2002)......................................................................35

Kohus v. Mariol, 

328 F.3d 848 (6th Cir. 2003).................................................................. 28, 29

Mas-Hamilton Grp. v. LaGard, Inc., 

156 F.3d 1206 (Fed. Cir. 1998).....................................................................38

Minton v. National Ass'n. of Securities Dealers, 

336 F. 3d 1373 (Fed.Cir. 2003).....................................................................35

New Railhead Mfg., LLC v. Vermeer Mfg. Co., 

298 F.3d 1290 (Fed.Cir. 2002)......................................................................37

Novak v. Farneman, 

2010 WL 4643002 (S.D. Ohio 2010)............................................................14

Pfaff v. Wells Electronics, 

525 U.S. 55 (1998)...................................................................... 32, 33, 36, 37

Rainbow Nails Enterprises, Inc. v. Maybelline, Inc., 

93 F.Supp.2d 808 (E.D. Mich. 2000) ..................................................... 14, 24

Rogers v. Desa Internat’l, Inc., 

183 F.Supp.2d 955 (E.D. Mich. 2002) ..........................................................14

SEC v. Sierra Brokerage Servs., Inc., 

712 F.3d 321 (6th Cir. 2013)...........................................................................9

Trilogy Software Inc. v. Selectica, Inc., 

405 F.Supp.2d 731 (E.D. Tex. 2005) ............................................................44

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Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 

587 F.3d 1339 (Fed. Cir. 2009).....................................................................19

Wahpeton Canvas Co. v. Frontier, Inc., 

870 F.2d 1546 (Fed. Cir. 1989).....................................................................38

Worldwide Church of God v. Philadelphia Church of God, Inc., 

227 F.3d 1110 (9th Cir. 2000).......................................................................30

Zacharin v. U.S., 

213 F.3d 1366 (Fed.Cir. 2000)......................................................................36

Statutes

18 U.S.C. § 1836......................................................................................................25

18 U.S.C. §1839.......................................................................................................10

35 U.S.C. §102............................................................................................ 32, 35, 37

Other Authorities

Knuth, Donald A., The Art of Computer Programming, 

Vol. 4, Fascicle 1, Addison-Wessley, 2010.....................................................7

Mich. Comp. Laws § 445.1902................................................................... 10, 14, 25

Milgrim on Trade Secrets, §1.03 Rel. 116-12/2017 ................................................15

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MOTION

Ford Motor Company (“Ford”) requests summary judgment on Defendants’ 

(collectively “Versata’s”) trade secret, copyright, contract and patent claims.

Versata’s trade secret claims fail because Versata disclosed the alleged 

secrets to more than 160 individuals throughout the world, and multiple Ford 

competitors, who were under no apparent obligation of confidentiality. In addition, 

Ford paid Versata for, and owns, a substantial portion of the alleged 

trade secrets developed between 1999 and 2001.

Versata’s copyright claim and its related breach of contract claim fails 

because Versata does not own the asserted copyrights, because Ford was licensed to 

use ACM/MCA at the time of the alleged infringement, and because Ford never 

“reverse engineered” the ACM/MCA software. 

Versata’s patent claims fail because the accused PDOR1 software represents 

a substantial innovation over, and does not practice, the approach implemented in 

many of the asserted claims. Other asserted claims are unpatentable and thus cannot 

be infringed as a matter of law. 

For these reasons, and as set forth in greater detail in the accompanying Brief 

in Support, Ford is entitled to summary judgment on Versata’s trade secret, patent, 

copyright and contract claims.

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BRIEF IN SUPPORT

I. BACKGROUND

A. Summary of the Technology at Issue

This case concerns computer software for keeping track of relationships 

among the various parts and features of a product, called “product definition” or 

“maintenance” software. An automobile, for example, has thousands of interrelated 

parts and features. Some parts (e.g., an engine and a transmission) require one 

another to construct a buildable vehicle. Other parts or features are optional, such 

as a moon roof or leather seats. 

Users of the product definition software input thousands of “rules” to define 

these relationships. Some vehicles have a few thousand rules. Other vehicles have 

hundreds of thousands of rules. And, when the rules are interacted with one another, 

an astounding number of buildable vehicle configurations may result. For example, 

the 2015 Ford Transit has over 27,000,000,000,000,000 buildable combinations.

Product definition software is generally designed to receive the user-input 

rules, and output the rules and/or buildable combinations to other computer systems

within an organization, such as manufacturing or sales systems.

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B. The ACM Software Performed Poorly Since the Time it Was 

First Launched

As explained in greater detail below, Versata developed product definition for 

Ford between 1999 and 2001 that was eventually named “ACM.” Versata asserts 

that it is an expert in “product definition” software, that the ACM software licensed 

to Ford performed exceptionally well, that Ford developed “copycat” software 

simply to avoid paying Versata annual license fees. The contemporaneous record 

tells a very different story.

Early in the parties’ relationship, Versata internally acknowledged that it “

” developing the type of “ ” or 

software it was developing for Ford. (Ex. 1, VRS855602.)1 Dozens 

of contemporaneous documents over the years confirm Versata’s early sentiment. 

When the software was first launched, users reported ongoing and 

 issues causing “ ” and “ ” to be 

” (Id. at VRS351744; VRS348702-03.) Because of the performance 

problems, users had to “come in over the weekend to get things done.” (Id. at 

VRS348703.) A Versata employee reported that “

.” (Id. at VRS1016570.) The employee also reported 

scenarios which “ .” (Id.) 

 

1 Documents assembled in Exhibits 1 and 2 are organized in Bates number 

order.

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Another Versata employee acknowledged “ 

.” (Id. at VRS348702.) Other 

Versata documents recorded “ ” in the software. (Id. at

VRS33011.) A Ford employee involved in deploying the ACM software in Europe 

reported “being bombarded with phone calls regarding performance.” (Id. at 

VRS207031.) Versata explained that ACM suffered performance problems because 

“ 

.” (Id. at VRS152484.) That was a stunning revelation considering those 

were the primary functions of ACM. 

Recognizing these material performance problems, Versata negotiated certain 

“ ” for the ACM software beyond which the software “ 

,” and beyond which Versata 

was “ .”

(Ex. 25, Subscription Schedule No. 4, at VRS3746.)

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The problem with the “ ,” however, is that Ford has many

vehicles which exceed them. Ford has more than vehicles exceeding

rules, vehicles exceeding rules, and vehicles exceeding rules –

more than times ACM’s “ .” (Ex. 2, FV128511.)

C. Frustration Over ACM and MCA Performance Continued to 

Grow, And Versata Eventually Declared the Software 

“Redlining” and “End of Life”

ACM’s continued performance problems naturally led to frustration within 

Ford. A 2005 account states “no improvements have been made to performance in 

over a year. Performance continues to get worse.” (Id. at FV1158332.) Another 

frustrated employee stated “Sometimes I get the response that Trilogy does not know 

how to fix certain issues or does not want to spend time on them. Not my issue, we 

are the customer!” (Id.) ACM users also testified at deposition about their 

experience with ACM performance problems. Ms. Cabinaw testified that it took 

“two days” to export certain vehicle files out of ACM. (Ex. 5, Cabinaw Dep. Tr., p. 

138.) Marty Pipoly testified that “It was slow. Everything was slow.” (Ex. 6, Pipoly 

Dep. Tr., p. 42.)

Separate from performance problems, ACM sometimes output inaccurate

information. One account explains that ACM “is not entirely error proof” and that 

“ACM returns false errors.” (Ex. 2 at FV1217285.) Another account explains 

“ACM may tell you something is buildable when in reality is not.” (Id. FV1217283.)

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In February 2011, Versata formally acknowledged the problems with the 

ACM (and MCA) software, stating that both applications were and 

 

(Ex. 42, 2/11/11 Presentation, at VRS6146.)

Versata declared the ACM software “ ”) effective April 

2011. (Id. VRS6147.) Versata later declared the MCA software “ ” 

effective January 2013. (Ex. 2 at FV111728.) 

D. Ford Innovates to Build a Better Solution

Facing no practical path forward with ACM and MCA, Ford turned to its 

Research and Innovation Center for a better solution. Based on a combination of 

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advanced mathematics, input from computer programming pioneer Donald Knuth,2

and patented Ford innovation, Ford developed its new PDOR1 software to replace 

ACM/MCA. Ford’s PDOR1 software can process in a fraction of a second complex 

relationships that the ACM/MCA software could never handle. For example, Ford’s 

software can process more than 147,000,000,000,000 buildable vehicle 

combinations in less than 1/1000th of a second. (Ex. 2 at FV1196273.)

Ford has received four U.S. patents for its innovation: U.S. Patent No. 

8,812,375, U.S. Patent No. 9,098,854, U.S. Patent No. 9,836,748, and U.S. Patent 

No. 9,852,429. (Ex. 7.) In issuing these patents to Ford, the Patent Office reviewed 

all of Versata’s patents asserted in this case. (Id., under “References Cited.”) The 

Patent Office issued Ford’s patents because they represent innovation over Versata’s 

patents and the and “ ” approach used in ACM and MCA.

E. Instead of Improving ACM/MCA, Versata Significantly 

Raised Ford’s Fees and Then Terminated Ford’s License

After recognizing the performance problems and declaring ACM/MCA “ 

,” Versata dramatically increased Ford’s license and maintenance fees. In 

2011, Versata tripled Ford’s annual maintenance fee from to , 

but Versata never improved the software performance. In 2013, Versata tripled

 

2 Knuth, Donald A., The Art of Computer Programming, Vol. 4, Fascicle 1, 

Addison-Wessley, 2010.

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Ford’s license fee for the MCA software from to . In 2014, 

Versata raised it again, to – more than 5 times the original license fee. 

In letters dated October 2014 and November 2014, Versata terminated Ford’s 

license to the ACM/MCA software effective January 15, 2015. (Ex. 3; Ex. 4.) Ford 

decommissioned the ACM/MCA software in December 2014, and deployed its new 

PDOR1 software.

F. Ford Employees Were Walled-Off From the ACM/MCA 

“Source Code” And No ACM/MCA Code Is Used in PDOR1

Ford employees involved in the design and development of Ford’s innovative 

PDOR1 replacement software were walled-off from access to any ACM/MCA 

“source code” – the human-readable version of the software. The ACM/MCA 

“source code” was maintained in an off-site escrow account accessible only under 

certain circumstances. (Ex. 15, MSSA §13.18 and Escrow Agmt., VRS4759-71.) 

Ford never accessed the ACM/MCA source code.

After having reviewed Ford’s PDOR1 replacement software in discovery, 

Versata no longer asserts that Ford “copied” any ACM/MCA code into its PDOR1 

replacement software. (Ex. 8, Malek Dep. Tr., pp. 123-124.)

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II. SUMMARY JUDGMENT STANDARD

A movant is entitled to summary judgment when it “shows that there is no 

genuine dispute as to any material fact....” SEC v. Sierra Brokerage Servs., Inc., 712 

F.3d 321, 326-27 (6th Cir. 2013) (citing Fed.R.Civ.P. 56(a) (quotations omitted)). 

When reviewing the record, “the court must view the evidence in the light most 

favorable to the non-moving party and draw all reasonable inferences in its favor.” 

Id. at 327. “The mere existence of a scintilla of evidence in support of the [nonmoving party's] position will be insufficient; there must be evidence on which the 

jury could reasonably find for [that party].” Anderson v. Liberty Lobby, Inc., 477 

U.S. 242, 252 (1986).

III. ARGUMENT

A. Trade Secrets: Versata Cannot Prove It Took Reasonable

Measures to Maintain Secrecy When Versata Disclosed 

ACM/MCA to at Least 160 Individuals But “Lost” Their

Alleged Confidentiality Agreements

Versata’s trade secrets claims fail as a matter of law because Versata cannot 

prove it took reasonable steps to maintain the secrecy of the ACM/MCA software 

Versata contends embodies the trade secrets. To qualify as a “trade secret” under 

the Michigan Uniform Trade Secrets Act (“MUTSA”), Versata must show that it 

undertook “efforts that are reasonable under the circumstances to maintain []

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secrecy.” MCL 445.1902 (d)(ii);3 Dice Corp. v. Bold Techs., 913 F. Supp.2d. 389, 

406 (E.D. Mich. 2012) (“To be a trade secret,” ... “the information must, of 

necessity, be a secret: specifically, there must be evidence presented that sufficient 

measures have been taken to guard the secrecy of the information and preserve its 

confidentiality.”). 

The record in this case proves that Versata did not take reasonable measures

to maintain the secrecy of the alleged trade secrets. First, Versata cannot produce 

confidentiality agreements for at least 160 Versata employees and third-party 

software developers who were given access to the ACM/MCA software and 

documentation Versata contends embodies the trade secrets. Second, Versata cannot 

produce confidentiality agreements with Toyota and Nissan to whom Versata 

disclosed the ACM software. Third, Ford’s confidentiality obligations expired on 

December 10, 2007 because Versata placed only a three-year confidentiality term 

for all “Confidential Information” that Versata disclosed to Ford between September 

30, 1998 and December 10, 2004. All the alleged trade secrets were disclosed within 

that time period. Fourth, Versata has regularly published the ACM software screens 

and software functions in several patents. 

 

3 Versata also asserts trade secret claims under the federal Defend Trade 

Secrets Act (“DTSA”). (Dkt. #244, ¶¶160-166.) Similar to the MUTSA, the DTSA 

requires that the owner of the alleged secret “has taken reasonable measures to keep 

such information secret.” 18 U.S.C. §1839(3)(B).

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1. Versata Cannot Produce Confidentiality Agreements 

for at Least 160 Employees and Third-Party 

Developers

Versata and its expert agree that confidentiality agreements are standard in the 

software industry. Versata’s expert stated in his report that confidentiality 

agreements are “customary to the software industry to protect the secrecy of [] trade 

secrets.” (Ex. 11, Malek TS Rept., ¶411.) He confirmed this at his deposition, 

testifying that confidentiality agreements are “standard in my opinion in the 

industry” and that “it’s important for employees to sign confidentiality and NDA 

agreements and many companies do so.” (Ex. 8, Malek Dep. Tr., p. 40, 51.)

Versata’s agreements with Ford confirm this industry practice. In both its 

1998 and 2004 license agreements with Ford, Versata expressly required that Ford 

obtain confidentiality agreements from everyone having access to the ACM/MCA 

software. (Ex. 13, Section 4; Ex. 15, Section 7.5.) Against this backdrop, one might 

expect that Versata practiced the level of confidentiality it demanded from Ford –

but it did not.

Versata admits it has “employed at least 100 developers through the 

development of the software.” (Ex. 16, Versata’s 11/21/17 Supp. Answer to Ford 

Int. No. 28.) Versata’s expert confirmed that “about a hundred developers that over 

the years have worked on ACM.” (Ex. 8, Malek Dep. Tr. at p. 45.) Versata has 

produced approximately a dozen confidentiality agreements in connection with its 

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relevant employees and third-party contractors. The record in this case, however, 

demonstrates that there are at least 160 Versata employees and third-party 

contractors who have had access to the ACM/MCA software and/or related 

documentation for which Versata has not produced any confidentiality 

agreement. (Ex. 17, Nikkila Decl., ¶¶2-4, attaching F.R.E. 1006 Summary.) 

Versata also hired third-party contractors located in foreign countries 

including Ukraine, United Arab Emirates, and India. (Id., ¶¶5-8.) The following 

graphic shows the geographic location of the relevant “Versata” entities and 

Versata’s third-party software development contractors (i.e., “gDev,” “DevFactory,” 

“gTeam,” and “SoftServe”) to/through whom Versata has outsourced development 

of the ACM/MCA software at various times over the last 15 years.

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In discovery, Ford requested that Versata identify all Versata employees and 

third-party contractors who had access to the ACM/MCA software, and produce 

each person’s confidentiality agreement. Versata objected, and refused to identify 

everyone who had access.

4

 (Ex. 18, Versata Ans. to Int. No. 34, pp. 5-6.) 

Versata’s highly-compensated5 Rule 30(b)(6) representatives stated that “all” 

Versata employees and third-party contractors signed confidentiality agreements. 

But Versata’s representatives left Versata years ago and admitted they have neither

seen the missing agreements nor interviewed the individuals. (Ex. 20, Krauss Dep. 

Tr., pp. 62-63; see also Ex. 19, Ratton Dep. Tr., pp. 15-16, 24, 30, 41-42.) These

witnesses cannot know whether the agreements existed, whether they contained 

confidentiality terms, nor whether they have expired over the last 15 years –

something Versata’s expert agrees is common. (Ex. 8, Malek Dep. Tr., pp. 54-55.) 

Even if all employees signed iron-clad confidentiality agreements with their 

respective employers as alleged, however, Versata still cannot show that it took 

 

4 Versata directed Ford to its other Interrogatory Responses, identifying only 

36 Versata employees. (Id. p. 6.) As explained above, however, Versata and its 

expert admitted elsewhere that over 100 Versata developers worked on the 

ACM/MCA software.

5 Mr. Ratton, an ex-Versata employee and fact witness, has been compensated 

/month since February 2017 in connection with this case, but has invested 

only 50 hours of his time; an effective hourly rate of /hr. (Ex. 19, Ratton Dep. 

Tr., p. 10.) Mr. Krauss is also an ex-Versata employee and fact witness. He has 

been compensated over in connection with this case. (Ex. 20, Krauss Dep. 

Tr., pp. 17-18.) He is unsure if he was compensated over . Id.

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reasonable steps to maintain secrecy. Versata has not provided, and its corporate 

representative is unaware of, any confidentiality agreements between Versata and 

its various third-party contractors who worked on ACM/MCA. (Ex. 20, Krauss 

Dep. Tr., pp. 91.) Versata has not produced confidentiality agreements with thirdparties “gTeam,” “DevFactory,” “gDev” and “SoftServe” – all of whom have 

worked on the ACM/MCA over the last 15-years.

On this record, there is no genuine dispute that Versata has not undertaken

“efforts that are reasonable under the circumstances to maintain [] secrecy.” MCL 

445.1902; see Rainbow Nails Enterprises, Inc. v. Maybelline, Inc., 93 F.Supp.2d 

808, 827 (E.D. Mich. 2000) (Rosen, J.) (granting defendants’ motion for summary 

judgment where purported trade secret was disclosed to 39 entities allegedly subject 

to confidentiality obligations, but where only 6 such agreements were produced); 

Rogers v. Desa Internat’l, Inc., 183 F.Supp.2d 955, 956-958 (E.D. Mich. 2002)

(granting summary judgment where plaintiff allowed some people to access 

invention without confidentiality agreements, stating plaintiff’s information “is not 

a trade secret because it was not subject to reasonable efforts under the circumstances 

to maintain its secrecy.”); BDT Prod’s, Inc. v. Lexmark Int’l, 274 F.Supp.2d 880, 

895-896 (E.D. Ky. 2003) (granting summary judgment where alleged confidentiality 

agreement cannot be found and despite deposition testimony alleging its existence); 

Novak v. Farneman, 2010 WL 4643002, *4-5, (S.D. Ohio 2010) (denying motion 

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for preliminary injunction where alleged secrets were disclosed to third-parties and 

plaintiff was unable to locate “approximately fifty” non-disclose agreements that 

were allegedly signed); Milgrim on Trade Secrets, §1.03 Rel. 116-12/2017

(“disclosure of information to third parties without adequate confidentiality 

arrangements extinguishes the trade secret”).

2. Versata Cannot Produce Confidentiality Agreements 

with Ford Competitors to Whom It Disclosed ACM

Versata’s trade secrets claims also fail because Versata disclosed the ACM 

software to automotive OEMs Toyota and Nissan, but has not produced a 

confidentiality agreement with either company. In particular, in November 2000, 

Versata gave Toyota access to the ACM application for a “ .” (Ex. 

21, VRS960910; Ex. 19, Ratton Dep. Tr., p. 24.) At that time, the ACM screens at 

issue lacked a “confidentiality” label.6 In January 2002, Versata provided Nissan 

with a set of PowerPoint slides describing the layout and functionality of the ACM 

screens in detail. (Ex. 22, VRS1289693-713.)

 

6 The ACM screens at issue in this case lacked a confidentiality label until 

April 2005 when Ford required a label be added to protect Ford confidential 

information. (Ex. 23, FV1159272, FV1159301-304.)

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3. Ford’s Confidentiality Obligation on Information

Disclosed to Ford Through December 10, 2004 (All of 

the Alleged Secrets) Expired December 10, 2007

Versata’s trade secret claims also fail because Ford’s relevant confidentiality 

obligations have long expired. On September 30, 1998, Versata executed the 

“Licensed Software Terms and Conditions” (the “1998 Master License Agreement 

or “MLA”), which set forth the terms on which Versata would license software and 

disclose “Confidential Information” to Ford. (Ex. 13.) The “CONFIDENTIALITY” 

section of the 1998 MLA states:

(Ex. 13, Section 4, VRS4795, emphasis added.)

The same day Versata executed the 1998 MLA, Versata executed a “Contract 

Services Agreement” (“1998 CSA”) which set forth the terms on which Versata 

would provide software development services to Ford as set forth in “Assignment 

Orders” attached to the CSA. (Ex. 14, ¶ 1.) Similar to the 1998 MLA, the 1998

CSA included a “CONFIDENTIALITY” provision setting a 

confidentiality term following termination of the Agreement. On November 5, 1999, 

Ford and Versata agreed to Assignment Order No. 15 (“AO15”) under the CSA. 

(Ex. 33.) Pursuant to AO15, Ford agreed to pay Versata to develop, 

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among other things, “product definition and configuration” software, i.e., the 

software at issue in this case. (Id., VRS3947.) 

The 1998 MLA and the 1998 CSA were the operative agreements between 

Versata and Ford until December 2004. At that time, the parties renegotiated,

resulting in the December 10, 2004 “Master Subscription and Services Agreement” 

(the “2004 MSSA”). Versata acknowledges that the 2004 MSSA “specifically 

supersedes . . . all prior contracts between Ford and Versata.” (Ex. 24, Versata’s

Ans. to Rog. No. 13 at p. 18, emphasis added.)

Like the 1998 MLA and the 1998 CSA, the 2004 MSSA included a 

“CONFIDENTIALITY” provision. But the MSSA defined “Confidential 

Information” as “

....” 

(Ex. 15, ¶7.1.1, emphasis added.) By its express language, therefore, the 2004 

MSSA does not cover information Versata disclosed to Ford before December 10, 

2004. Those earlier disclosures were subject to the 1998 MLA and the 1998 CSA. 

The 1998 MLA and the 1998 CSA thus terminated on December 10, 2004,

and pursuant to those Agreements, Ford’s confidentiality obligations with respect to 

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any software or information disclosed to Ford before December 10, 2004 expired 

December 10, 2007. 7

There is no genuine dispute that Versata disclosed the alleged trade secrets to 

Ford before December 10, 2004. Versata’s final set of trade secret contentions and 

Versata’s expert confirm that each of the alleged ACM/MCA trade secrets were 

disclosed to Ford before December 10, 2004.8 Pursuant to the express language of 

the 1998 MLA and the 1998 CSA, Ford’s confidentiality obligations on that 

information expired December 10, 2007.

Through the “ ” expiration language in the 1998 MLA and the 1998 

CSA, Versata relinquished its right to assert – more than 15 years later – that 

information disclosed to Ford under those agreements is trade secret. See, ECT Int'l, 

Inc. v. Zwerlein, 228 Wis.2d 343, 355-56, 597 N.W.2d 479 (Wisc. Ct. App. 1999)

(affirming summary judgment in defendant’s favor where relevant agreement 

included a one-year confidentiality term); Baystate Techs. Inc. v. Bentley Systems, 

 

7

 Effective January 1, 2005 Versata re-licensed the ACM software under the 

2004 MSSA. (Ex. 25, Subscription Schedule No. 4.) Versata previously licensed 

the ACM software under the 1998 MLA. (Ex. 26, Amendment No. 1 to License 

Schedule No. 2.) This further confirms that the 1998 MLA terminated December 

2004.

8

 Ex. 11, Malek TS Rept., ¶¶114, 150, 198, 199, 227, 257, 279, 371, and 392; 

Ex. 27, Second Supp. TS Contentions dated 6/20/2017 at 4-16. Ford is not aware of 

an alleged trade secret that was disclosed to Ford for the first time after December 

10, 2004.

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Inc., 946 F.Supp. 1079, 1093 (D. Mass. 1996) (finding no trade secret 

misappropriation in part because confidentiality agreement with a customer included 

an expiration date after which the alleged secrets would become “readily 

ascertainable,” i.e., not trade secrets under the applicable trade secret statute); DB 

Riley, Inc. v. AB Eng'g Corp., 977 F.Supp. 84, 91 (D. Mass. 1997) (denying motion 

for preliminary injunction where relevant confidentiality term carried a 10-year 

expiration); see generally Julianne M. Hartzell, “Time Limits in Confidentiality 

Agreements,” American Bar Association - Intellectual Property Litigation 

Quarterly, Spring 2009, Volume 20, No. 3. (Ex. 28).

4. Versata Published the ACM Screens and Software 

Functions in its Patents

Versata’s trade secret claims also fail because it published allegedly “secret” 

aspects of the at-issue software in its various patents. Subject matter disclosed in a 

patent is not a trade secret. Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 

587 F.3d 1339, 1355 (Fed. Cir. 2009) (granting summary judgment of no 

misappropriation where patents published purported secrets). Versata asserts that it 

patented many features and functions of the ACM/MCA software. (Ex. 29, 

Versata’s Ans. to Rog No. 3.) In doing so, however, Versata has disclosed several 

alleged ACM trade secrets. For example, Versata disclosed the ACM “grid” in U.S. 

Patent No. 7,953,779. The ACM “grid” is Versata’s lead “trade secret” because it 

is the primary user interface for the entire ACM application. It was the lead trade 

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secret Versata identified early in discovery,9it was the primary focus for Versata’s 

motion for preliminary injunction,10 and it is the primary focus of Versata’s expert 

report.11 The “grid” in ACM is where users input vehicle features and, in a rowcolumn format. The ACM grid alleged to be a trade secret is shown below.

(Ex. 30, VRS132180)

The ACM grid is not a trade secret because Versata published the ACM grid 

in 2011 in U.S. Patent No. 7,953,779:

 

9 Ex. 65, Versata’s 12/31/15 Contentions, Ex. I, p. 1.

10 Dkt. #128, Versata’s 7/18/16 Mot. for Prelim. Inj., pp. 7-9; Dkt. #129, 

7/18/16 Krauss Decl., ¶¶16-30.

11 Ex. 11, Malek TS Report, pp. 31-46.

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(Ex. 31, ‘779 patent, Fig. 8.)

The ACM grid that Versata published has the exact same layout, the exact 

same menu selections across the top (User, Vehicle Line, Workspace, etc.), the exact 

same top and middle toolbars and associated icons, the exact same “Non-buildables” 

and “Overlay” menu headings, the exact same row/column format for specifying 

standard “S” and optional “O” between the listed vehicle features, and the exact 

same dialogue boxes on the bottom (Code, Description, Type).12

 

12 The screen shots provide example vehicle feature codes (TRM, WHL, 

BAA, TRMAC), optionality (S/O) and other codes, but the codes themselves are not 

part of the ACM software or the alleged trade secret. 

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Voluntarily publishing ACM user screens verbatim in the ‘779 patent is the 

opposite of taking reasonable measures to maintain the secrecy of the ACM user 

screens as the law requires for “trade secret” status. And, Versata did more than 

simply disclose the ACM screens in its patents. Versata also described alleged trade 

secrets relating to how ACM operates. For example, Versata alleges that “

” is a trade secret. (Ex. 65, Versata’s 12/31/15 

Contentions, Ex. I, p. 2.) Yet, Versata’s expert admits that, at column 8 lines 40-48, 

Versata’s ‘779 patent discloses rule splaying to avoid overlap. (Ex. 8, Malek Dep. 

Tr., pp. 194-196.) While Versata’s expert alleges that the ‘779 patent “doesn’t 

disclose the entirety of this aspect of the grid trade secret,” he acknowledged that 

patent provides an “example” of the alleged trade secret. Id. 

In another example, Versata alleges that “ ” 

are a trade secret. (Ex. 65, Versata’s 12/31/15 Contentions, Ex. I, p.

3.) Yet, Versata’s expert admitted that “the basic concept of is disclosed” 

in the ‘779 patent. (Ex. 8, Malek Dep. Tr., p. 245.) Versata’s expert asserts that 

there are other aspects to the trade secret, but once again, Versata published the 

“basic concept” of the alleged secret in its patents.

In another example, Versata alleges that 

are trade secrets. (Ex. 65, Versata’s 12/31/15 

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Contentions, Ex. I, p. 1.) Yet, Versata expressly disclosed this technique in the ‘779 

patent. Figure 8 below (left) shows an expanded grid showing all rules (yellow) 

associated with the BAAAA feature (green). Figure 6 (right), in contrast, shows 

each of the rules corresponding to the BAAAA vehicle feature “rolled up” into a 

single cell (blue) under the heading “ALL.”

 

 (Ex. 31, ‘779 patent, Fig. 8.) (Ex. 31, ‘779 patent, Fig. 6.) 

The ‘779 patent explains that Figure 8 displays a “full grid” showing “all 

combinations” whereas compressed cell 608 in Figure 6 “displays the equivalent 

information.” (Ex. 31, ‘779 patent, col. 9, lines 4-8.) Thus, the ‘779 patent discloses 

 that Versata contends are trade secrets. 

(Ex. 65, Versata’s 12/31/15 Contentions, Ex. I, p. 1.) 

Finally, Versata alleges that its use of a 

. (Ex. 11, Malek TS Report, pp. 93-96.) Yet, Versata published the 

use of a TRIE data structure to determine buildable vehicle configurations in U.S. 

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Patent No. 8,370,408. Inventor Shawn Smith testified that the ‘408 patent “ 

.” (Ex. 32. Smith Dep. Tr., p. 30 noting “ 

”) Versata also published using the TRIE data structure and “TRIE 

minimization” in the ‘779 patent mentioned above. Specifically, Figure 11 of the 

‘779 patent “depicts a TRIE data structure in binary form,” Figure 14 “depicts a 

TRIE data structure in its minimized form with associated binary values,” and Figure 

15 “depicts a TRIE data structure minimization process. (Ex. 31, ‘779 patent, col. 

3, lines 52-57.) The written description corresponding to Figures 11, 14 and 15 

describes these figures in detail. (Id., col. 10, line 50 through col. 12, line 28.)

Collectively, these examples demonstrate that Versata routinely published

screens and technical details of the ACM software in its patents – the opposite of 

taking reasonable steps under the circumstances to maintain secrecy. Ultimax, 587 

F.3d at 1355; Rainbow Nails Enterprises, 93 F.Supp.2d at 827 n.26 (“By claiming 

that he had secured patents, Jacob effectively undermined his stated intention that 

others should carefully safeguard the confidentiality of the information he was 

disclosing.”)

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B. Trade Secrets: Ford Paid For, and Owns, the Alleged Trade 

Secrets Developed Between 1999 and 2001

Separate from Versata’s inability to show that it took reasonable steps under 

the circumstances to maintain confidentiality, Versata cannot show that it owns 

alleged trade secrets developed between 1999 and 2001 because Ford owns them.

Under Michigan law, trade secret misappropriation requires “acquisition of a 

trade secret of another.” Mich. Comp. Laws § 445.1902(b) (emphasis added). 

Similarly, the DTSA provides, “An owner of a trade secret . . . may bring a civil 

action under this subsection.” 18 U.S.C. § 1836 (b)(1) (emphasis added). 

As explained above, the 1998 CSA provided the global terms under which 

Versata would provide software development services to Ford up until December 

10, 2004 when the 2004 MSSA “superseded” the 1998 CSA. The CSA provided 

Ford broad rights to “

” developed under an Assignment Order. (Ex. 14, ¶6a.) If no special 

“ ” was made in an Assignment Order, Ford owns the 

resulting software design, coding, user interfaces and data models. Id.

Pursuant to Assignment Order 15 (“AO15”) under the CSA, Ford agreed to 

pay Versata to commence a two-year project to develop “ 

” including, among other things, “ ” 

software. (Ex. 33, VRS3947.) By operation of CSA Paragraph 6, Ford owned all 

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“ ” developed 

under AO15. (Id.; Ex. 14, ¶6a.)

According to a January 2000 “ ” project plan, 

. (Ex. 34, VRS1313409.) Technical specification documents 

from March 2000 describe in detail the “ 

” (Ex. 35, VRS73855.) In April 2000, Ford officially 

renamed the project to (“ ”). (Ex. 36, 

VRS1313544.) Versata’s corporate representative Kenny Ratton confirmed this 

name change. (Ex. 19, Ratton Dep. Tr., p. 144.) In a June 2001 communication, 

Versata admitted that the PROOF specifications were the “ 

.” (Ex. 37, VRS73851; Ex. 38, VRS97814.) 

“ACM” eventually became Versata’s marketing name for the 

software Ford paid Versata to develop. Versata concedes that “

.” (Ex. 39, Ans. to 

Rog. No. 5, emphasis added.)13 As explained above, all of the alleged ACM trade 

secrets were developed before the 2004 MSSA, i.e., under the 1998 CSA. Versata’s 

 

13 Versata also states in its interrogatory answer that ACM may contain some 

elements of Versata’s legacy “SC Config” software and publicly-available “open 

source” software. Versata does not allege that its SC Config software practiced any 

of the alleged trade secrets at issue.

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expert confirmed that “ 

” and 

“

.” (Ex. 40, Elson Report, p.6 n. 25.) These dates are consistent with the January 

2000 project plan addressed above showing 

. (Ex. 34.) Throughout its work at Ford, Versata has equated the 

ACM/MCA software with the “ project at Ford. (Ex. 42, 

VRS6146; Ex. 59, VRS145020.)

This record demonstrates that Ford paid Versata over in 

November 1999 to develop product definition software for Ford over the course of 

a “ ” project. Versata’s final set of trade secret contentions, and Versata’s 

expert, confirm that many of the alleged trade secrets were set forth in technical 

documentation and disclosed to Ford during this period. (Ex. 11, Malek TS Report, 

¶¶114, 150, 227, 257, and 371; Ex. 27, Second Supp. TS Contentions dated 

6/20/2017 at 4-6, 9, and 13-14.) Numerous production documents further 

demonstrate the scope and content of the software developed over the course of the 

AO 15 project. (Ex. 17, Nikkila Decl., ¶9, attaching F.R.E. 1006 Summary.) The 

1998 CSA, under which this development work was done, provides Ford unfettered 

rights to all ” 

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developed under AO 15. As a matter of law, Versata cannot assert that this subject 

matter constitutes Versata “trade secrets” that Ford misappropriated.14 

C. Copyrights: Defendants Do Not Own the Asserted 

Copyrights

Versata’s copyright claim fails at the threshold because it does not own the 

asserted copyrights. To establish a claim for copyright infringement, Versata must 

establish that it owns the copyrighted work. Kohus v. Mariol, 328 F.3d 848, 853 

(6th Cir. 2003). Versata’s counterclaim identifies five copyright registrations at 

issue in this case: (1) ACM Version 4.24.13.00 registered under TXu 1-937-188, (2) 

ACM version 02.02.16 registered under TXu 1-937-354, (3) ACM Version 1.0 

registered under TXu 2-017-880, (4) ACS, version 02.02.16 registered under TXu 

1-937-354, and (5) MCA version 02.02.14.01 registered under TXu 1-937-185 

(collectively the “Copyright Registrations”). (Dkt. #244, Counterclaim ¶¶83-85.)

Versata Development Group, Inc. (“VDG”) is the identified claimant for each 

of the Copyright Registrations attached to Versata’s counterclaim, but VDG is not a 

party to this case. Versata contends in its recent “Motion to Modify Caption” that 

“[t]he corporation formerly known as Trilogy Development Group, Inc. is now 

known as Versata Development Group, Inc.” (Dkt. #338, p. 1.) A close review of 

 

14 To the extent Versata asserts “ownership” of any physical software licensed 

to Ford pursuant to the 1998 MLA or the 2004 MSSA, it is undisputed that PDOR1 

contains no software licensed from Versata. (Ex. 8, Malek Dep. Tr., pp. 123-24.)

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the relevant corporate records reveals, however, that the “Trilogy Development 

Group, Inc.” Versata identifies in its Motion is not the “Trilogy Development Group, 

Inc.” named as a party in this case.15 

Because Versata does not own the Copyright Registrations asserted in this 

case, it cannot enforce them against Ford. Kohus, 328 F.3d at 853.

D. Copyrights: Ford Used the ACM/MCA/ACS Software Only 

When it Was Licensed to Do So

Versata’s copyright claim also fails because Versata has no evidence Ford

used any ACM/MCA/ACS software after January 15, 2015 when Versata terminated 

Ford’s license to use the software. Versata contends Ford improperly used the

software files (called “Jar” files) 16 in March 2012. (Ex. 11, Malek TS Report, ¶428.) 

The Ford witness who used the files, Ganesh Alla, explained that he did so as part 

of “comparative testing” between Ford’s old “FQV” software (which required the 

 

15 Ford sued “Trilogy Development Group, Inc.,” a California corporation

having file number C1509186 (“TDG I”) (Compare Dkt. # 6 ¶3 with Ex. 60.) TDG 

I merged into a Delaware corporation also named Trilogy Development Group, Inc. 

(“TDG II”) having a file number 2291421. (Ex. 61.) Similarly-named Trilogy 

Development Group, Inc. (“TDG III”) is a different Delaware corporation, however, 

having file number 2910800. (Ex. 62.) Neither TDG I (named party) nor TDG II

into which it merged, was renamed “Versata Development Group, Inc.” (“VDG”) as 

Versata’s Motion implies. (Compare Ex. 63 with Ex. 64.) Non-party TDG III was 

the entity renamed to non-party VDG. (Ex. 64.) 

16 A “Jar” file is a computer file (called an “executable” file or an “object 

code” file) comprised of 1s and 0s. A Jar file does not contain human-readable 

“source code.” (Ex. 11, Malek TS Report, ¶427.)

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ACM/MCA/ACS Jar files) and Ford’s new “super configuration generator” used in 

Ford’s PDOR1 replacement software. (Ex. 43, Alla Dep. Tr., p. 13.) Mr. Alla 

explained that FQV (using the Versata software) generated incorrect results, and 

that Ford’s “super configuration generator” in its replacement PDOR1 software 

produced correct results. (Id. at 43-44.) 17

Because Ford was licensed to use the ACM/MCA/ACS software at the time 

it was used, there can be no copyright infringement. Best Hand Entm't LLC v. 

Wideawake-Deathrow Entm't, LLC, 2014 WL 1304623, at *6 (E.D. Mich. Mar. 31, 

2014) (“The existence of a license creates an affirmative defense to a claim of 

copyright infringement.”), quoting Worldwide Church of God v. Philadelphia 

Church of God, Inc., 227 F.3d 1110, 1114 (9th Cir. 2000).

Versata contends Ford breached Section 1.7 of the 2004 MSSA when it used 

the “Jar” files in 2012. But Section 1.7 prohibits “disassembly,” “reverse 

engineering” and “decompiling” licensed software – something Ford never did (and 

had no interest doing). By simply comparing Ford data output from ACM/MCA

to Ford data output from PDOR1, Ford has not performed any of the activities 

prohibited under MSSA Section 1.7. 

 

17 The “results” output by the ACM/MCA and PDOR1 software are Ford data. 

The 2004 Master License Agreement in place at the time of the comparisons states 

that Ford owns the “Ford data that may be used in the Software.” (Ex. 15, MSSA 

¶7.6.)

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Versata’s expert asserts that, with access to the “Jar” files, a Ford developer 

“could reverse engineer” the files. (Ex. 11, Malek TS Report, ¶436.) Versata’s 

expert also asserts that having access to a human-readable version18 of the “Jar” files 

might “enable Ford PDO developers to examine the logic behind the ACM code.” 

(Id. at 437, emphasis added.) Despite these insinuations, there is no evidence that 

the Jar files at issue were ever “reverse engineered” or “decompiled” into a humanreadable format, or used for any purpose other than the comparison testing.

In the end, Ford used the “Jar” files only to perform comparisons between 

Ford data while Ford was licensed to use the software. Ford did not perform any of 

the activities prohibited under Master Agreement Section 1.7. Ford is thus entitled 

to summary judgment on Versata’s copyright claim.

 

18 Versata’s expert admits that “In their ordinary environment, these [JAR] 

files do not provide any human-readable information.” (Ex. 11, Malek TS Report, 

¶427, emphasis added.)

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E. Patents: Ford Does Not Infringe Versata’s Patent Claims, 

and Some of the Claims Are Invalid

1. U.S. Patent Nos. 7,200,582 and 7,464,064 Are Invalid 

and Not Infringed

Versata Violated the “On Sale Bar” Rendering 

the ‘582 and ‘064 Patents Invalid

The asserted claims19 of U.S. Patent No. 7,200,582 (the “‘582 patent”) and 

U.S. Patent No. 7,464,064 (the “‘064 patent) are invalid because Versata placed the 

claimed subject matter “on-sale” more than one year before the earliest effective 

filing date of the patents (called the “critical date”). 35 U.S.C. §102(b). The “onsale bar” invalidates a patent claim if, before the critical date: (1) a product 

embodying the claimed invention was the subject of a commercial offer for sale, and 

(2) the invention was ready for patenting. Pfaff v. Wells Electronics, 525 U.S. 55, 

67 (1998). “Ready for patenting” means (1) the invention was reduced to practice 

before the critical date, or (2) the inventor had prepared drawings or other 

descriptions sufficiently specific to enable a person skilled in the art to practice the 

invention. Id. at 67-68.

Because March 31, 2003 is the earliest effective filing date of the ‘582 and 

‘064 patents, the “critical date” is March 31, 2002. There is no genuine dispute that,

 

19 Versata asserts claims 1-3 of the ‘582 patent (Ex. 44), and claims 1, 2, 3, 9, 

11, 12, 14, and 15 of the ‘064 patent (Ex. 45). The ‘064 patent is a “continuation” 

of the ‘582 patent. The two patents have the same written description, and very 

similar claims. 

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before the critical date, Versata (1) reduced to practice software embodying the ‘582 

and ‘064 patent claims, and (2) commercially licensed that software to Ford 

rendering it “ready for patenting” under Pfaff.

Versata’s expert concedes that on March 29, 2002 Versata released to Ford 

ACM Version 3.2 which practices all claims of the ‘582 and ‘064 patents:

(Ex. 46, Shamos Dep. Tr., p. 144.)

Versata’s expert also admits that the claims of the ‘582 and ‘064 patents were 

“reduced to practice” prior to the critical date:

(Ex. 46, Shamos Dep. Tr., p. 160.)

Against this record, there is no genuine dispute that the claimed subject matter 

of the ‘582 and ‘064 patents was “reduced to practice” and thus “ready for patenting” 

under Pfaff before the March 31, 2002 critical date.

There is also no genuine dispute that ACM Version 3.2 delivered to Ford and 

“ ” on March 29, 2002 was the subject of a “commercial offer for 

sale” before the critical date. (Ex. 47.) Versata’s expert admits that ACM Version 

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3.2 was “ ” released to Ford pursuant to the parties’ software license 

agreement. (Ex. 46, Shamos Dep. Tr., p. 157.) Versata’s expert acknowledged that 

“ ” and that Versata was “ 

.” (Id. at 157-58.) Pursuant to License Schedule No. 2 

to the 1998 MLA, Versata agreed to license the ACM software to Ford in exchange 

for substantial annual license fees. (Ex. 26, Amendment No. 1 to License Schedule 

No. 2, VRS4948.) Thus, consistent with Versata’s expert’s admission, the ACM 

software delivered to Ford on March 29, 2002 was “ .”

The parties’ software license agreements are consistent with internal 

documents Versata created confirming that the March 29, 2002 release of ACM 3.2 

to Ford was a commercial software release. Multiple Versata documents confirm 

that Versata’s March 29, 2002 release to Ford of ACM 3.2 was a “ 

 commercial software release. (Ex. 48, VRS147273; Ex. 49, 

VRS198803 including Excel attachment.) The terms “Generally Available” and 

“GA” are terms of art in the software industry. Versata documents describe a 

software release as follows:

(Ex. 50, VRS855329.) The parties’ respective experts describe the term “ 

” in a similar manner. (Ex. 46, Shamos Dep. Tr., p. 156; Ex. 66, Myer’s 

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102(b) Reply Expert Report, ¶¶14-15.) Versata communications confirmed that 

once “ ” is delivered to Ford, “ 

” (Ex. 51, VRS1243922-25.)

This record firmly supports Versata’s expert’s admission that the subject 

matter of the asserted claims was “reduced to practice” and delivered as “licensed” 

software to Ford more than one year before the filing date of the ‘582 and ‘064 

patents.

Software that is the subject of a commercial software license is “on-sale” for 

purposes of 35 U.S.C. §102(b): 

a commercial transaction arranged as a license or a lease of a product 

or a device ... may be tantamount to a sale (e.g., a standard computer 

software license), whereupon the bar of § 102(b) would be triggered 

because “the product is ... just as immediately transferred to the ‘buyer’ 

as if it were sold”

In re Kollar, 286 F.3d 1326, n.3 (Fed.Cir. 2002) quoting Group One, Ltd. v. 

Hallmark Cards, Inc., 254 F.3d 1041, 1053 (Fed.Cir. 2001); Minton v. National 

Ass'n. of Securities Dealers, 336 F. 3d 1373, 1378 (Fed.Cir. 2003).

In Minton, Minton conveyed “a fully operational computer program 

implementing and thus embodying the claimed method.” Id. The Federal Circuit 

held that “Minton’s lease of TEXCEN, thereby enabling Starks to practice the 

invention, was an offer for sale within the meaning of the on-sale bar.” Id. Versata, 

like Minton, conveyed to Ford “a fully operational computer program implementing 

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and thus embodying the claimed method,” on March 29, 2002, more than one year 

before Versata filed its application for the ‘582/‘064 patents. Those patents are 

therefore invalid under the on-sale bar. 

Versata contends that its March 29, 2002 delivery of ACM 3.2 to Ford was 

not a commercial offer for sale because the software was released to Ford for 

“Integration and Test” (at Ford). But Ford’s “Integration and Test” procedure of 

ACM 3.2 is irrelevant to whether Versata placed ACM 3.2 “on-sale” under §102(b) 

and Pfaff. Versata’s “Integration and Test” argument is irrelevant for two different 

reasons. First, Versata’s expert admits that Versata/Smith had already reduced the 

claimed aspects of the software to practice on March 29, 2002. As a matter of law, 

testing (by anyone for any purpose) following reduction to practice of the claimed 

subject matter is irrelevant. Zacharin v. U.S., 213 F.3d 1366, 1369 (Fed.Cir. 2000)

(“[O]nce ... [the] invention is reduced to practice, there can be no experimental 

use.”); Allen Engineering Corp. v. Bartell Industries, 299 F.3d 1336, 1354 (Fed. Cir. 

2002).

Second, Versata presents no evidence that Versata or Ford tested the subject 

matter of the ‘582/’064 patent claims after Versata’s March 29, 2002 release to Ford 

– the only relevant subject matter in a 102(b) analysis.20 Versata contends that Ford 

 

20 To the extent Versata is asserting the “experimental use” exception to the 

on-sale bar, the Federal Circuit has held that “experimental use cannot occur after a 

reduction to practice.” In re Cygnus Telecomm. Tech., LLC Patent Litig., 536 F.3d 

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was not even aware that ACM 3.2 released March 29, 2002 practiced the subject 

matter of the ‘582/’064 patents. (Ex. 67, Shamos Rebuttal Rept., ¶294.) The Federal 

Circuit “has effectively made [inventor] control and customer awareness 

dispositive” in experimental use cases. Electromotive Div. of General Motors Corp 

v. Transportation Systems Division of General Electric Co., 417 F.3d 1203, 1214-

15 (Fed.Cir. 2005) (affirming E.D. Mich. grant of summary judgment of invalidity 

for on sale bar). Here, Versata can show neither inventor control over, nor customer 

awareness of, any alleged testing of the claimed subject matter – there was none after 

the ACM software was “ ” and released to Ford on March 29, 2002.

On this record, there is no genuine dispute that before the critical date, Versata 

sold (licensed) to Ford software embodying the ‘582 and ‘064 patent claims and that 

the software was ready for patenting. The ‘582 and ‘064 patent claims are therefore 

invalid under the “on sale” bar. 35 U.S.C. §102(b); Pfaff, 525 U.S. 55, 67 (1998).

 

1343, 1356 (Fed.Cir. 2008); New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F.3d 

1290, 1297-98 (Fed.Cir. 2002). (“Once an inventor realizes that the invention as 

later claimed indeed works for its intended purpose, further ‘experimentation’ may 

constitute a barring public use.”) 

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PDOR1 Does Not Infringe the ‘582 and ‘064 

Patents Because PDOR1 Does Not Use “set 

equations” to Represent “consistency error 

types” as Claimed in Those Patents.

Ford does not infringe the asserted independent claims of the ‘582 and ‘064 

patents because the accused PDOR1 software does not practice the “set equation” 

limitation recited in those claims. Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 

1206, 1211 (Fed. Cir. 1998) (“If even one limitation is missing or not met as claimed, 

there is no literal infringement.”). Because PDO does not infringe the asserted 

independent claims, it cannot infringe the asserted dependent claims as a matter of 

law. Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989).

21

 

The ‘582 and ‘064 patents relate to “consistency checking” – a process for 

making sure relationships between vehicle features are consistent with one-another 

according to pre-defined error types. In a simple example, each vehicle requires one 

and only one steering wheel. Thus, user input defining two steering wheels for a 

single vehicle, or no steering wheel at all, would be a consistency error.

Versata’s ‘582 and ‘064 patents acknowledge that Versata did not invent 

consistency checking. (Ex. 44, ‘582 patent, col. 2, line 58-col. 3, line 11, Figs. 1, 2a 

and 2b.) Instead, the patents claim a specific approach to consistency checking –

 

21 Ford does not repeat this authority for its other non-infringement assertions 

in this Brief, but the law applies equally to all non-infringement arguments.

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one that uses “set equations” to define the various types of consistency errors. The 

‘582 and ‘064 patents provide examples of “set equations”:

• [F1] = -[SOML-R]

• [F2a] = ([SML-R])

• [F2c] = ([ML-R]^[O-R]) 

(Ex. 44, ‘582 patent, col. 7, line 56 through col. 8, line 31.)

The asserted claims each require a “set equation.” The agreed construction of 

the term “‘set equation” is “one or more equations that operate on sets.” (Dkt. #181,

at 48-49 emphasis added.) Thus, to prove infringement, Versata must demonstrate 

that Ford’s PDOR1 software includes “one or more equations that operate on sets.”

Versata cannot establish infringement because PDOR1 does not use 

“equations that operate on sets.” While Versata asserts “literal” infringement of this 

claim limitation,

22

 Versata’s expert does not show a literal “set equation” in the 

PDOR1 software. Instead, he makes the generalized conclusion that “java methods”

in PDOR1 “correspond to equations.” (Ex. 12, Malek Patent Report, ¶¶294, 301, 

354, emphasis added.) He reaches this unfounded conclusion without any support, 

and the ‘582/‘064 patents do not mention “java methods,” let alone equate such

 

22 Ex. 12, Malek Patent Report at ¶¶7-8; Ex. 9, Malek Dep. Tr., 372:17-21.

Versata has not asserted infringement of the “set equation” limitation under the 

Doctrine of Equivalents (a very different legal analysis), and the deadline for doing 

so was December 30, 2015. (Dkt. #71, p. 2-3.)

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methods with the claimed “set equation.” As a matter of plain English, a “method” 

is not an “equation.” Versata’s reliance on the vague “correspond to” language

tacitly admits that Ford’s PDOR1 software does not literally include a “set 

equation.”

During his deposition, Versata’s expert asserted that the claimed “set 

equation” was located within two pages of the PDOR1 “source code.” (Ex. 10, lines 

50-156; Malek Dep. Tr., 335:17-336:16, 505:21-506:2.) A simple review of the 

source code he identified confirms that there is no “equation” (let alone the claimed 

“set equation”) in the PDOR1 software. (Id., see also Ex. 52, Myers Report, ¶¶194, 

217.)

Because PDOR1 does not practice the “set equation” limitation of the asserted 

independent claims of the ‘582 and ‘064 patents, Ford does not infringe those claims. 

2. Ford Does Not Infringe U.S. Patent No. 7,739,080

Because Ford Does Not “extend” or “remove” 

Configuration Model Family Space

Ford does not infringe the asserted claims23 of U.S. Patent No. 7,739,080 (the 

“’080 patent”) because the accused PDOR1 software does not perform the 

“extending” and “removing” limitations of each asserted independent claim. As 

explained in the Background, supra, the software at issue relates to modelling 

relationships between vehicle components and features, referred to as “product 

 

23 Versata asserts claims 1, 3, 11-13, and 18 of the ‘080 patent.

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definition.” The ‘080 patent relates to combining different product definition models 

together, which can sometimes create conflicts between the underlying relationships. 

The ‘080 patent acknowledges that Versata was not the first to combine product 

definition models. (Ex. 53, ‘080 patent, col. 3, line 51 through col. 7, line 2, Figs. 5 

and 6.) Instead, the ‘080 patent describes and claims a specific approach for doing 

so, which includes identifying “conflicts” between the models and then resolving 

them in a very specific way:

(1) extending at least one of the ancestor configuration model 

family spaces of the conflicting configuration models so that the 

ancestor configuration model family spaces of the first and second 

conflicting configuration models represent the same ancestor 

configuration model family space.

(2) removing from the child configuration model family space any 

configuration space extended in the ancestor of the child 

configuration family space.

(Id., ‘080 patent at claims 1, 3, 4, 11-13 (through claim 3), 18 (through claim 4), 

emphasis added.)

As claimed, the “extending” step requires adding “spaces” to the “model 

family,” and the “removing” step requires removing “space” from the “model 

family.” As shown in Figure 8 of the ‘080 patent below (color annotations added), 

the patent discloses an example of combining configuration model families, which 

adds configuration space (i.e., extends) to one family (the ancestor configuration 

model family space), and then removes the added space from a different family (the 

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child configuration model family space). (Id., ‘080 patent at 9:4-24, Fig. 8, claims 1, 

3 and 4 (18).) 

Versata asserts that Ford’s PDOR1 software meets the claimed “extending” 

and “removing” limitations simply by re-ordering information within Ford’s data 

model, called an “MDD.” (Ex. 12, Malek Report, ¶¶450-453; Ex. 9, Malek Dep. 

Tr., 272:22-273:3.) Again, Versata’s expert uses wiggle words to show “literal” 

infringement where none exists. He asserts that the “move” functions used to reorder information Ford’s MDDs “has the effect” of extending. (Ex. 12, Malek 

Report at ¶449, emphasis added.) When moving family levels in Ford’s software, 

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however, the configuration spaces within the MDD and the family levels remain the 

same. Versata’s expert admitted that the information and values in Ford’s MDDs 

do not change simply by moving the family levels. (Ex. 9, Malek Dep. Tr., 297:5-

298:4.) This admission confirms that Ford’s PDOR1 software does not literally

infringe the asserted claims of the ‘080 Patent because “space” is never added to 

Ford’s MDD (the “extending” step) or removed from Ford’s MDD (the “removing” 

step) as recited in each asserted claim.

3. Ford Does Not Infringe U.S. Patent Nos. 6,405,308 and 

6,675,294

Ford does not infringe the asserted claims24 of U.S. Patent No. 6,405,308 (the 

“‘308 patent”) and U.S. Patent No. 6,675,294 (the “‘294 patent) because the accused 

PDOR1 software does not perform the claim limitations pertaining to product 

“configuration.” The ‘308 and ‘294 patents relate to a method for “defining” 

relationships between features of a product (sometimes referred to as “product 

definition” or “maintenance”), and a method for “configuring” a particular product 

based on the product definition. As illustrated below in Figure 2 of the ‘308/’294 

patents, the “Maintenance” function is distinct from, and generally precedes, the 

 

24 Versata asserts claims 1, 2, 7, 8, 18, 22, 23, 24, and 28 of the ‘308 patent, 

and claims 1, 2, 7, 8, 9, 21, 22, 23, 24, 25, 26, and 31 of the ‘294 patent. The ‘294 

patent is a “continuation” of the ‘308 patent. The two patents have the same written 

description. (Ex. 54.)

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“Configuration.” The Configuration is based on the “Part Relationships” and 

“Product Definition” generated in the Maintenance function.

The patents detail the distinction between the “Maintenance” and 

“Configuration” functions.

25 The distinction between Maintenance and 

Configuration was also the focus of two separate claim construction orders. (Dkt. 

#181, at 9-10; Trilogy Software Inc. v. Selectica, Inc., 405 F.Supp.2d 731, 736-737 

(E.D. Tex. 2005).

While the asserted claims use somewhat differing terminology addressed 

below, Ford’s non-infringement positions arise from the settled distinction between

the Maintenance-related steps and the Configuration-related steps recited in the 

asserted claims. As explained below, Ford’s PDOR1 software performs only 

“Maintenance” functions (creating the product definition through feature 

relationships), not the subsequent product “configuration” functions.

Each asserted independent claim of the ‘294 and ‘308 patents requires at least 

one of the following limitations or steps associated with product “Configuration” (as 

 

25 Ex. 54, ‘308 patent, col. 2, line 40 through col. 3 line 2.)

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distinct from “Maintenance”): (1) obtaining/sending “user input,” and (2) 

“system”/“product.” The table below identifies which asserted independent claims

include which limitations. 

Patent/Claims “obtaining user input”

“sending user input” “system”/“product”

‘294 Claims 1, 21 1, 21, 26

‘308 Claims 1 1, 18, 28

“obtaining user input”/“sending user input”

Ford does not perform the “obtaining user input” and “sending user input” 

claim limitations as the Court has construed them. In the claim construction Order, 

the Court distinguished these limitations from the “Maintenance” function during 

which the product definition is created. More specifically, the Court construed these 

terms to require that “the definition of a ‘system’ or the definition of a ‘product’ 

must exist prior to the step of ‘obtaining’ or ‘sending’ the user input (although the 

definition may be modified thereafter).” (Dkt. #181, at 28, emphasis added.) In other 

words, the claimed “user input” is not part of the product definition process.

Versata contends that a user’s interactions with the “Rule Authoring Table”

in Ford’s PDOR1 software satisfy these limitations. (Ex. 12, Malek Report at ¶¶111-

112, 149-152, 214-216.) But users interact with Ford’s Rule Authoring Table only 

to define relationships between vehicle features, i.e., the “Maintenance” a/k/a 

“product definition” function described in the patents. Versata’s expert 

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acknowledges that the PDOR1 Rule Authoring Table exists to create rules for 

product definition:

• “A Rule Authoring Table is used to create and edit rules.” (Ex. 12, 

Malek Report, ¶205.)

• “the PDO user creates and edit rules using the rule authoring table.” 

(Id. at ¶211.)

• “The definition is then rendered in the rule authoring table by PDO.” 

(Id. at ¶242.)

Thus, Ford’s Rule Authoring Table does not receive “user input” after

creation of the definition as the Court’s construction expressly requires. This 

sequence, and the distinction between the Maintenance and Configuration, was the

whole focus of the claim construction dispute that this Court resolved. (Dkt. #181, 

at 22-28.)

Versata also contends that the “mouse clicks within the Rule Authoring Table 

Setup. . .tab” constitute the claimed “user input.” (Ex. 12, Malek Report, ¶¶112, 

215.) But those mouse clicks create and edit product definitions – the definitions do 

not exist prior to the mouse clicks as the Court’s claim construction requires. This 

is true even if information is input into the Rule Authoring Table to edit a preexisting definition. That input remains part of the definition, albeit a new part – it is 

not the claimed user input that must follow the definition.

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For these reasons, PDOR1 does not practice the “obtaining user 

input”/“sending user input” limitations of the asserted claims of the ‘294 and ‘308 

Patents.

“system” / “product”

Ford does not perform the “system” and “product” claim limitations as the 

Court has construed them. Like the previous limitations, these limitations are 

distinguished from the “Maintenance” function during which the product definition 

is created. The Court construed the term “system” as “a collection of components, 

combined to form a particular product or service.” (Dkt. #181, at 36, emphasis 

added.) The Court emphasized that the claimed “system” is something specific, 

“which results from a configuration process for that specific thing.” (Dkt. #181 at 

36, emphasis added.) 

The Court also concluded that the claim terms “system” and “product” are 

interchangeable and are synonymous with one another. (Dkt. #181 at 2, 8, 11-12 and 

34-35.) The Court equated “system” and “product” in several instances: 

• “As with ‘configuration user,’ however, . . . the definition of a ‘system’ 

or definition of a ‘product’. . .” (Dkt. #181 at 28, emphasis added.)

• “The term ‘system’ means ‘a collection of components combined to 

form a particular product or service.” (Id. at 36, emphasis added.)

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Thus, to establish that PDOR1 meets the “system” and “product” limitations of the 

asserted claims, Versata must prove that PDOR1 configures a particular product or 

service – something that “results from a configuration process for that specific 

thing.” (Dkt. #181 at 36, emphasis added.) 

Like the previous claim limitations, Versata contends that the PDOR1 “Rule 

Authoring Table” satisfies the “system” and “product” limitations. (Ex. 12, Malek 

Report, ¶¶173, 188-189, 242-246.) But the Rule Authoring Table in PDOR1 is never 

used to configure a “particular product or service” as construed or as part of a 

configuration process.” Versata’s expert admits that the PDOR1 Rule Authoring 

Table is used, as its name implies, to input relationships between vehicle features

(product definition), not to determine a particular configuration for any “particular” 

product or service based on that product definition as construed. (Ex. 12, Malek 

Report, ¶¶205, 211; see also Ex. 52, Myers Report, ¶¶82-83, 97-98, 113, 129-150.) 

As explained above, this is the fundamental distinction between the Maintenance 

and Configuration aspects of the ‘308/’294 patents. 

For these reasons, PDOR1 does not infringe the asserted claims of the ‘308 

and ‘294 patents. 

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4. The Asserted Claims of U.S. Patent No. 7,882,057 are 

Unpatentable Because They Are Directed to an 

Abstract Idea

The asserted claims26 of U.S. Patent No. 7,882,057 (the “’057 patent”) are

invalid because they recite unpatentable subject matter. The Supreme Court defines

three subject matter categories that are not patentable: laws of nature, physical 

phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010). “The 

‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of itself is 

not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 

(2014). In Alice, the Court described a two-step framework “for distinguishing 

patents that claim laws of nature, natural phenomena, and abstract ideas from those 

that claim patent-eligible applications of those concepts.” Alice, 134 S.Ct. at 2355.

In the first step, “we determine whether the claims at issue are directed to one 

of those patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in 

the claims before us?’” Id. In the second step, “we consider the elements of each 

claim both individually and as an ordered combination to determine whether the 

additional elements transform the nature of the claim into a patent-eligible 

application.” Id. This second step of the analysis is “a search for an ‘inventive 

concept’—i.e., an element or combination of elements that is sufficient to ensure 

 

26 Versata asserts claims 1, 18, 19, 21, 22, 23, 25, and 27 of the ‘057 patent. 

(Ex. 57.)

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that the patent in practice amounts to significantly more than a patent upon the 

ineligible concept itself.” Id.

For the reasons below, the Alice analysis demonstrates that the asserted ‘057 

claims recite unpatentable subject matter.

Alice Step One: The ‘057 Patent Claims Are 

Directed to Unpatentable Abstract Ideas 

A claim is abstract under Alice when “[a]ll of [the claim’s] method steps can 

be performed in the human mind, or by a human using a pen and paper.” 

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). 

As shown below, the asserted ‘057 claims recite the abstract concept of 

answering a query by dividing the query and an associated data model into subqueries and sub-models, answering the sub-queries using the sub-models, and 

combining the answers to generate a response to the original query. 

Each step of the asserted ‘057 claims can be performed in the human mind 

and/or by a human using a pen and paper. Nathan Little, one of the inventors of the 

‘057 patent, agrees that the example from the ‘057 patent discussed below could be 

performed by a human using pen and paper. (Ex. 55, Little Dep. Tr., pp. 43-64.) 

Similarly, Versata’s expert witness, Dr. Wilson, agreed that the example provided 

below (and by Ford’s expert witness Deborah McGuiness) can be performed by a 

human with pen and paper. (Ex. 56, Wilson Dep. Tr., 56:12-20.)

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Claims 1 and 18 recite the following steps implemented on a generic 

computer:

[a.] receiving one or more configuration queries representing one or 

more questions involving parts and part relationships in a configuration 

of a configurable product; 

and performing with the computer system: 

[b.] dividing one or more configuration queries into multiple 

configuration sub-queries, wherein the multiple configuration subqueries represent the one or more configuration queries;

[c.] processing each sub-query using at least one configuration submodel per sub-query, wherein each configuration sub-model 

collectively models the configurable product and each configuration 

sub-model includes data to define compatibility relationships between 

parts included in the configuration sub-model and each configuration 

sub-model (i) represents a portion of a configuration model of the 

configurable product and (ii) allows answers from each configuration 

sub-model to be combined to provide a consolidated answer to the one 

or more configuration queries; 

[d.] generating a response to the one or more configuration queries 

based upon the processing of each sub-query using at least one 

configuration sub-model per sub-query; 

[e.] and providing the response to the one or more configuration queries 

as data for display by a display device.

(Ex. 57, ‘057 patent, claims 1 and 18.)

As explained below, the ‘057 patent specification demonstrates that a human 

can perform each of the claim limitations using pen and paper.

Limitation [a]: The ‘057 Patent demonstrates that a human could receive a 

conventional query such as: “Are A1, B1 and X1 buildable together?” (Ex. 57, ‘057 

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patent at 7:64.) In this example, the “conventional query” represents the claimed 

questions involving the claimed parts (A1, B1 and X1) and part relationships. (Ex. 

58, McGuinness Dec., ¶¶17, 26-27.)

Limitation [b]: The ‘057 Patent demonstrates that a human could write the 

“conventional query” as divided-up sub-queries. The ‘057 Patent discloses dividing 

the “Conventional Query” into three sub-queries: (1) “Is A1 buildable?;” (2) “Are 

A1 and B1 buildable together?;” and (3) “Is X1 buildable?” (Ex. 57, ‘057 patent at 

8:35-37; Ex. 58, McGuinness Dec., ¶¶20, 26-27.)

Limitation [c]: The ‘057 Patent demonstrates that a human could then write 

out the steps of processing the sub-queries using sub-models, which represent a 

portion of a model for a configurable product. A human could take a “conventional 

model” (Table 2 below) and divide the model into three sub-models (Tables 3-5 

below), which collectively models the configuration of the “conventional model,” 

and includes compatibility relationships between parts (e.g., B2 S (standard) to A2 

in the Family B sub-model). (Ex. 58, McGuinness Dec., ¶¶18-19, 26-27.) 

(Ex. 57, ‘057 patent at 7:54-66, 8:5-27 (annotated).)

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As shown below, the ‘057 Patent further demonstrates that a human using pen 

and paper could answer (i.e., process) each divided-out sub-query using the submodels disclosed in Tables 3-5. (Ex. 58, McGuinness Dec., ¶¶21, 26-27.)

Limitations [d] and [e]: The ‘057 Patent demonstrates that a human using 

pen and paper could use the answers to the various sub-queries from Table 6 to 

prepare a response to the “conventional query” (limitation [d.] above). Specifically, 

Sub-query 1 (yes) + Sub-query 2 (yes) + Sub-query 3 (yes) = Conventional 

Query (yes). (Ex. 58, McGuinness Dec., ¶¶21, 26-27; Ex. 57, ‘057 patent at 8:48-

52.) The human could then write down the answer to the “conventional query” for 

display (limitation [e.] above) as: “A1, B1 and X1 are buildable together.” (Ex. 58, 

McGuinness Dec., ¶¶26-27.) 

Nathan Little, one of the inventors of the ‘057 patent, agrees that the example 

from the specification discussed above could be performed by a human using pen 

and paper. (Ex. 55, Little Dep. Tr., pp. 43-64.) Further, Dr. Wilson, Versata’s expert 

witness, agreed that Ford’s expert analysis (Ex. 58, McGuinness Dec., ¶26) 

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demonstrated that the example in the ‘057 Patent can be performed by a human with 

pen and paper. (Ex. 56, Wilson Dep. Tr., 56:12-20.) There is thus no genuine 

dispute that the subject matter of claims 1 and 18 can be performed on pen and paper.

Accordingly, the steps of claims 1 and 18 of the ‘057 Patent constitute abstract 

steps, which could be done by a human in either the mind or using pen and paper.27

Alice Step Two: The ‘057 Patent Claims Do Not 

Include an “Inventive Concept”

In the Second Step, the Court must determine whether the claims have an 

inventive concept, i.e., an element or combination of elements sufficient to ensure 

that the patent in practice amounts to significantly more than a patent on the abstract 

idea itself. Alice, 134 S.Ct. at 2358. The Supreme Court in Alice cautioned that 

merely limiting the use of an abstract idea “to a particular technological 

environment” or implementing the abstract idea on a “wholly generic computer” is 

not sufficient as an additional feature to provide “practical assurance that the process 

is more than a drafting effort designed to monopolize the [abstract idea] itself.” Id.

at 2358.

The independent claims of the ‘057 Patent add nothing inventive to the 

abstract steps discussed above. Indeed, the “divide and conquer” approach recited 

 

27 Dependent claims 19, 21-23, 25 and 27 are also directed towards abstract 

ideas which can be carried out on pen and paper. (Ex. 58, McGuinness Dec., ¶¶30-

38, 42-52, 55, 58-59.)

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in the claims – breaking problems into sub-problems – is a common approach to 

problem solving. (Ex. 58, McGuinness Dec., ¶53, and exhibits 057-2 and 057-3 

thereto.) 

Whether the elements of the ‘057 claims are considered separately or as an 

ordered combination under Alice, they add nothing beyond implementation of an 

abstract idea on a generic computer. (Ex. 57, ‘057 Patent at 11:57-60; Ex. 58, 

McGuinness Dec., ¶¶28, 37, 43, 46, 50, 52, 59.) The ‘057 claims are thus 

unpatentable as both abstract and without an inventive concept.

IV. CONCLUSION

For the above reasons, Ford is entitled to summary judgment on Versata’s 

trade secret, copyright and patent claims.

Respectfully submitted, 

Dated: February 1, 2018 By: /s/ John S. LeRoy 

John S. LeRoy (P61964)

Thomas A. Lewry (P36399)

Frank A. Angileri (P45611)

Chanille Carswell (P53754)

Christopher C. Smith (P73936)

John P. Rondini (P72254)

Jonathan D. Nikkila (P75666)

1000 Town Center, 22nd Floor

Southfield, MI 48075

Tel.: 248-358-4400 / Fax: 248-358-3351

jleroy@brookskushman.com

tlewry@brookskushman.com

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fangileri@brookskushman.com

ccarswell@brookskushman.com

jrondini@brookskushman.com

jnikkila@brookskushman.com

James P. Feeney (P13335)

DYKEMA GOSSETT PLLC

39577 Woodward Ave, Suite 300

Bloomfield Hills, MI 48304

Ph: 248-203-0841

jfeeney@dykema.com

Attorneys for Plaintiff, Ford Motor 

Company

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CERTIFICATE OF ELECTRONIC SERVICE

I hereby certify that on February 1, 2018, I electronically filed a REDACTED

NON-CONFIDENTIAL copy of FORD MOTOR COMPANY’S MOTION 

AND BRIEF IN SUPPORT FOR SUMMARY JUDGMENT and all NONCONFIDENTIAL Exhibits in Support with the Clerk of the Court for the Eastern 

District of Michigan using the ECF System which will send notification to the 

following registered participants of the ECF System as listed on the Court's Notice 

of Electronic Filing: Rodger D. Young at efiling@youngpc.com; James P. Feeney 

at jfeeney@dykema.com, srobb@dykema.com & docket@dykema.com; Steven 

Mitby at smitby@azalaw.com; Martha J. Olijnyk at mjo@millerlawpc.com & 

aad@millerlawpc.com; Lanny J. Davis at ldavis@lannyjdavis.com; Stephen W. 

King at sking@kingandmurray.com; Iftikhar Ahmed at IftiAhmed@azalaw.com; 

Sharoon Saleem - sharoon.saleem@jonesspross.com; Jaye Quadrozzi –

efiling@youngpc.com; Kyril Talanov – ktalanov@azalaw.com; M. Jason Ballard –

mjballard@azalaw.com. 

I also certify that on the above date, I electronically filed UNREDACTED

CONFIDENTIAL copies of FORD MOTOR COMPANY’S MOTION AND 

BRIEF IN SUPPORT FOR SUMMARY JUDGMENT and all 

CONFIDENTIAL Exhibits in Support using the Court ECF System’s SEALED 

DOCUMENT EVENT which will send notification to the above identified registered 

participants of the ECF System. I have also submitted paper copies of all sealed 

documents via electronic means to counsel using the following information: 

Counsel for Defendants:

Versata Software, Inc., f/k/a Trilogy Software, Inc., Trilogy 

Development Group, Inc. and Trilogy, Inc.

AZA-Versata-Ford@AZALAW.COM

(which includes all the ECF Registered users listed above)

 /s/ John S. LeRoy 

John S. LeRoy (P61964)

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