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’S RESPONSE TO VERSATA’S 

SUPPLEMENTAL BRIEF OPPOSING FORD’S

MOTION TO STRIKE DR. MALEK’S COPYRIGHT 

INFRINGEMENT OPINIONS (Dkt. #475)

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During the April 24, 2018 Daubert hearing, the Court asked Versata to file “a 

three-page supplement. . . pointing to every place in the record that says [Dr. Malek] 

reviewed the jar files.” (Dkt. #472, at 199:20-21.) Because Dr. Malek testified that 

he did not review the jar files, Versata made new arguments beyond the scope of the 

Court’s request. Specifically, Versata asserted that “the abstraction-filtrationcomparison test is inapplicable” to Ford’s Daubert motion because this is a “direct 

copying” case. (Dkt. #475 at 4.) Versata’s assertion is both factually and legally 

incorrect.

Factually, this is not a “direct copying” case. Versata registered copyrights 

in certain versions of source code, but alleges that Ford copied “jar” files which 

Versata admits are a different format,

1

and a different version, than the registered 

source code. It is undisputed that Ford did not directly copy the registered works.

Legally, filtering-out unoriginal and unprotectable elements is the first step in 

any copyright infringement analysis, regardless of whether “direct” or “indirect” 

copying is asserted. In RC Olmstead, the Sixth Circuit held that the filtering step 

takes place before addressing the copying issue: 

The elements of the copyrighted work that are copied must be original, 

and “before comparing similarities between two works a court should 

 

1 Versata incorrectly asserts—without citation—that the “jar” files comprise

a “translated series of 0s and 1s.” Dr. Malek asserts that the “jar” files are “byte 

code” that humans (experts) can read. (Dkt. #473-2, Ex. 7 at 126:6-13; 127:15-23.) 

Regardless, the “jar” files are not the “source code” that Versata registered with the 

U.S. Copyright Office. (Id. at 128:19-129:1.)

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first identify and eliminate those elements that are unoriginal and 

therefore unprotected.”

2

RC Olmstead, Inc. v. CU Interface, LLC, 606 F. 3d 262, 274-275 (6th Cir. 2010)

(granting summary judgment where “Olmstead has not attempted to identify any 

original elements of its software that CUI copied”), quoting Kohus, 328 F.3d at 853.

In Integrated Bar Coding Sys., Co. v. Wemert, Judge Battani explained that 

filtering non-protectable elements precedes the copying question, regardless of 

whether the case involves “direct” or “indirect” copying:

Once the non-protectable elements have been filtered out, the trier of 

fact then determines whether any of the protectable elements have been 

copied in substantial enough part to constitute infringement. To do so, 

the plaintiff must show evidence of direct, literal copying of the 

original elements of the work, or raise an inference of infringement by 

establishing: (1) access to the allegedly-infringed work by the 

defendant(s) and (2) a substantial similarity between the two works at 

issue.

Integrated Bar Coding Sys., Co. v. Wemert, 2007 U.S. Dist. LEXIS 9952, *10 (E.D. 

Mich. Feb. 12, 2007) (citations and quotations omitted). Similarly, in Automated 

Data Soln’s Corp. v. Paragon Data Sys., the court held:

a plaintiff alleging copyright infringement of computer software under 

either a theory of direct copying or by an inference of copying must 

initially identify those elements of its software that are original" and 

thus entitled to protection, thereby filtering out those elements of the 

purportedly copied software “that would be expected to be common to 

any [industry] software, those dictated by the particular business 

practices [of that industry].”

 

2 Unless otherwise stated, all emphasis has been added.

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2012 U.S. Dist. LEXIS 172606, *21-22 (N.D. Ohio July 2012) aff’d 756 F.3d 504, 

512 (6th Cir. 2014), citing RC Olmstead, 606 F. 3d at 275.

This threshold requirement arises from the established legal principle that not 

all copying is actionable: 

Not all “copying” is actionable, however: it is a constitutional 

requirement that a plaintiff bringing an infringement claim must 

prove “copying of constituent elements of the work that are original.”

Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003) quoting Feist Publ'ns, Inc. v. 

Rural Tel. Serv. Co., 499 U.S. 340, (1991). In Feist—a direct copying case—the 

Supreme Court held that “[o]riginality remains the sine qua non of copyright; 

accordingly, copyright protection may extend only to those components of a work 

that are original to the author.” 499 U.S. at 348. And, independent of the originality 

requirement, Congress has expressly carved-out unprotectable elements that are 

common in computer software:

In no case does copyright protection for an original work of authorship 

extend to any idea, procedure, process, system, method of operation, 

concept, principle, or discovery, regardless of the form in which it is 

described, explained, illustrated, or embodied in such work.

17 U.S.C. § 102(b) (emphasis added). 

Dr. Malek’s “copyright infringement” opinions fail to apply the controlling 

law. He ignores Versata’s admissions that third-parties authored a significant 

portion of the at-issue software, rendering it unoriginal to Versata. (Dkt. #155-2, 

Krauss Dep. Tr., p. 187; Dkt. #357-3, pp. 4-5; Dkt. #155, p. 31; Dkt. #159, ¶7.) Dr. 

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Malek also ignores that the at-issue software implements ideas, procedures, 

processes, and methods of operation—all of which the Copyright Act expressly 

excludes from protection. 17 U.S.C. §102(b). 

Versata cites three cases to support its incorrect assertion that filtration of 

unoriginal and unprotectable elements is unnecessary in “direct copying” cases. 

(Dkt. #475 at 4.) The first case, Dun & Bradstreet Software Servs., Inc. v. Grace 

Consulting, Inc., 307 F.3d 197, 214 (3d Cir. 2002), makes no mention of filtration, 

nor a distinction between direct and indirect copying. The second case, Goldman v. 

Healthcare Mgmt. Sys., 628 F. Supp. 2d 748, 753 n.3 (W.D. Mich. 2008) also makes 

no mention of filtration, nor does it distinguish between direct and indirect copying. 

The third case, Advanced Recovery Sys., LLC v. Am. Agencies, LLC, 2017 U.S. Dist. 

LEXIS 144259, *25 (D. Utah Sept. 6, 2017), declined to address the threshold 

originality requirement because it was not properly before the court. The court’s 

analysis focuses on copying, noting that the plaintiff provided “side-by-side 

comparisons” between the registered software and the alleged copy—something Dr. 

Malek has not done. 

Versata also suggests that Ford bears the burden of proving the lack of original 

and protectable elements in the registered software. (Dkt. #475 at 5.) But the Sixth 

Circuit has held that the copyright owner “must still prove that the defendants copied 

protectable elements of the work,” and that “only original material is subject to 

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copyright protection and, even then, elements of a computer program dictated by 

practical realities may not be protectable.” Dice Corp. v. Bold Tech’s, 556 

Fed.Appx. 378, 387 (6th Cir. 2014). 

Dr. Malek fails to apply the Sixth Circuit’s test for copyright infringement, 

and renders opinions contrary to controlling law. The Court should exclude his 

unreliable opinions pursuant to Daubert and Fed.R.Civ.P. 702.

Respectfully submitted,

Dated: June 11, 2018 By: /s/ John S. LeRoy 

John S. LeRoy (P61964)

Thomas A. Lewry (P36399)

Christopher C. Smith (P73936)

Jonathan D. Nikkila (P75666)

1000 Town Center, 22nd Floor

Southfield, MI 48075

Tel.: 248-358-4400 / Fax: 248-358-3351

jleroy@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 June 11, 2018 , I electronically filed the foregoing 

FORD’S RESPONSE TO VERSATA’S SUPPLEMENTAL BRIEF 

OPPOSING FORD’S MOTION TO STRIKE DR. MALEK’S COPYRIGHT 

INFRINGEMENT OPINIONS (Dkt. #475) 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.

I also certify that I have mailed by United States Postal Service the paper to 

the following non-participants in the ECF System: NONE.

 /s/ John S. LeRoy 

John S. LeRoy (P61964)

Frank A. Angileri (P45611)

Chanille Carswell (P53754)

John P. Rondini (P72254)

Amy C. Leshan (P69328)

BROOKS KUSHMAN P.C.

Attorneys for Plaintiff

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