EXHIBIT 5

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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

Ford Motor Company,

Plaintiff,

v.

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

Software, Inc., Trilogy Development 

Group, Inc. and Trilogy, Inc., 

Defendants.

Case No. 15-10628-MFL-EAS

JURY TRIAL DEMANDED

DECLARATION OF MONTY G. MYERS IN 

SUPPORT OF FORD’S MOTION TO 

COMPEL SPECIFIC PATENT

INFRINGEMENT CONTENTIONS

I, Monty G. Myers, state as follows:

1. I have been engaged by Ford Motor Company to review and analyze

Versata’s infringement contentions, and the Ford materials identified in those

infringement contentions, in preparation of rebutting Versata’s claims of patent 

infringement against Ford.

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2. I am Founder and CEO of Eureka Software Solutions, Inc. (“Eureka 

Software”), a custom software development and IT services company based in 

Austin, Texas.

3. During my time at Eureka Software, the company and I personally have 

worked on and had access to and been responsible for creating and working with the 

most sensitive and often complex, software, source code, and other materials for 

hundreds of clients, including recognizable names such as American Airlines, 

AT&T, AMD, IBM, Chevron, Motorola, Progressive Insurance, Samsung, Siemens, 

UBS, Xerox, and many more.

4. While my professional experience over the last 3 decades encompasses 

a wide range on technologies and industries, I have been involved in several projects 

involving the development and use of configuration systems.

5. I have served as an expert consultant/witness in over seventy (70) 

complex litigation matters over the past several years in both state and federal court. 

Most of these cases involve disputes concerning technology related trade secrets and 

patents and, technology services performance under contract and/or software, many 

of which required expert review and analysis of one or both party’s software, source 

code, and other similar materials. The parties in these cases ranged from 

sophisticated startups, to the largest, well-known multinational, public companies, 

to sovereign governments and government agencies.

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6. A material portion of my litigation experience has involved patent 

infringement cases, where like this case, I was asked to review and analyze a patent 

owner’s infringement contentions in order to rebut allegations of patent 

infringement. Based on my experience in previous patent cases, and my analysis

below in relation to my understanding of the standards applicable to this case, it is 

my opinion that Versata’s infringement contentions do not identify specifically 

where each limitation of each asserted patent claim is found within Ford’s system.

7. It is my understanding that the parties in this matter have stipulated that 

infringement contentions shall include:

i. Each patent claim that is allegedly infringed by each opposing party;

ii. For each asserted claim, the accused product of each opposing party of 

which the patentee is aware. This identification shall be as specific as 

possible. Plaintiff shall identify each accused product by name or model 

number, if known.

iii. A chart identifying specifically where each limitation of each asserted 

patent claim is found within each accused product. ...

(Dkt. #71 at 2-3.)

8. The agreed standard requires a chart identifying specifically where each 

limitation of each asserted claim is found within each accused product. In my 

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experience in a case such as this involving software patents and products, the agreed

standard would require a separate chart identifying:

i. each claim 

ii. of each asserted patent 

iii. and each claim limitation

iv. with the specific location of each limitation

v. within each specific version

vi. of each accused software product.

9. In my experience, when the identification of the specific location of 

each limitation within each specific version of each accused product involves 

software source code, the specific location of each limitation would 

normally/generally involve the highlighting of the specific portions/sections of the 

code that actually perform the claim limitation in question and distinguishing such 

portions/sections from other portions/sections that are separate from or have nothing 

to do with the performance of the claim limitation.

10. Lastly, it must be noted that for purposes of my non-infringement 

analysis, I must operate under the assumption that the patent claims asserted in this 

matter are valid. However, it is my understanding that Ford is challenging the 

validity of these patents on various grounds in both this court and through the Inter 

Partes Review process before the Patent Trial and Appeal Board. It is further my 

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understanding that such invalidity challenges are based on a number of prior art 

publications that indicate that the asserted patent claims were likely known in the art 

at the time of the invention. The significance of this invalidity challenge to my 

analysis and opinions regarding Versata’s noninfringement contentions is that in the 

context of patents that are potentially or even likely to be very close to what is 

generally known in the industry, it is particularly important that the patent holder be 

very specific with its infringement contentions in order to properly allow the accused 

infringer and its experts to properly compare the accused products to the asserted 

claim limitations and to the prior art. Without such specificity, it becomes 

challenging, if not impossible, to know if the accused products infringe the asserted 

claim limitations or are covered by the prior art, which may be indistinguishable if 

the infringement contentions are insufficient.

The ‘825 Patent

11. Below is Versata’s infringement chart for claim 1 of the ‘825 Patent. 

This chart is demonstrative of Versata’s infringement charts for independent claims 

1, 6 and 11 of the ‘825 Patent.

12. As an initial matter, Versata’s infringement chart for the ‘825 Patent

shown below identifies three accused Ford software products 

 as well as “other Ford systems that use 

. While Versata’s contentions appear to suggest that these 

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identified Ford products work together in some fashion, Versata does not state 

whether it is one Ford product that infringes all of the asserted claim limitations or 

some combination of two or more of such products. Furthermore, if Versata is 

accusing a combination of two or more of the Ford products of infringing their 

asserted claims, Versata does not specifically identify which one of the Ford 

products performs which of the asserted claim limitations. The detrimental effect of 

this failure to properly identify which of the Ford products is accused of infringing 

each asserted claim limitation is expanded by Versata’s failure to specifically 

identify the product versions that are accused of infringing the asserted claims of the 

‘825 Patent. Rather, Versata identifies pages, screenshots, and other materials from 

Ford’s source code and software without clearly indicating the version of the source 

code and software being accused of infringing the asserted claim limitations

13. Additionally, Versata’s infringement chart shown below fails to break 

down the independent claims on a limitation-by-limitation basis so that it is clear 

which identified Ford source code and other materials correspond to which 

limitation. 

14. Indeed, as shown below, Versata’s infringement chart for claim 1 does 

not tie any section of the identified Ford source code to any corresponding limitation 

of claim 1. Instead, I must speculate as to which source code excerpts correspond to 

which claim limitation.

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(Ex. 6 [‘825 Patent Infringement Contentions] at Claim 1.)

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15. In my experience, it is very uncommon to include all limitations of a 

multi-limitation asserted claim in as single cell of an infringement contention claim 

chart/table and not separate each claim limitation into its own cell. This is 

particularly unusual when the asserted claim has a clear list of limitations such as 

that in claim 1 of the ‘825 patent, which limitations include performing, receiving, 

processing, predetermining, storing, retrieving, receiving, prioritizing, and 

providing. Further support for my position regarding this separation of asserted 

claim limitation approach is provided by Versata’s own infringement contentions in 

this case for the ‘651, ‘294, ‘080, ‘064, ‘582, and ‘308 Patents.

16. Further in my experience, it is equally uncommon to separately describe 

the accused products using terminology and structure/categories not contained in or 

correlated to the terms and language of the asserted claims. As more specifically 

described below, Versata describes the alleged features and functionality of Ford’s 

accused products using terminology and structure/categories that are found nowhere 

in the claim limitations and do not directly correspond to the manner in which its 

own patent limitations are described and delineated.

17. Versata’s failure to separate out and address each asserted claim

limitation from the ‘825 Patent using the terminology and structure/categories of 

each such claim limitation is not only counter to what I understand to be the clear 

agreement of the parties, it is inconsistent with my experience with the reasonable 

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practice typically used in software patent infringement cases where infringement 

contention charts separate out each claim limitation and then identify the specific 

feature or functionality of the accused product that allegedly correlates directly to 

the claim language and satisfies such limitation. Without such separation, 

specificity, and correlation, an undue burden is placed on Ford and its experts to try 

to speculate and guess what aspect or portion of its product or products allegedly 

infringe Versata’s asserted patent claims.

19. The sizeable actual and potential amounts of source code identified in 

Versata’s contentions regarding the ‘825 Patent also make effectively determining

which aspects of Ford’s source code Versata is accusing for particular limitations

essentially complete speculation and guessing on the part of Ford and its experts. 

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For example, in the chart example above (and the charts for claims 6 and 11), Versata 

identifies dozens of pages of source code (e.g., FORD-SOURCECODE_000318-

331, 000929-938, 000002-000013, 000681-702) without specifically identifying 

which claim limitations correspond to which of the identified pages or excerpts of 

source code. (Ex. 6 at claims 1, 6 and 11.)

20. While the number of pages of source code expressly identified in 

Vesata’s infringement contentions is significant, the general manner in which such 

code is identified without clear identification of the actual lines of code 

performing/carrying out each claim limitation suggests that Versata may be 

attempting to claim not only the expressly identified pages of source code, but all of 

the source code underlying such expressly identified source code, which is a much 

broader and larger set of source code potentially encompassing large portions of 

code unrelated to Versata’s asserted patents. Without more specific identification

distinguishing the actual source code portions accused of infringing Versata’s 

asserted patent claims from the large portions of unrelated source code, Ford and I 

and my team are left to sift through an unreasonably large amount of source code 

expressly identified and tangentially related thereto and speculate as to what portions 

purportedly satisfy each asserted claim limitation of the ‘825 Patent.

21. Moreover, because Versata’s charts regarding the ‘825 Patent asserted 

independent claims provides no guidance on which source code pages correspond to 

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which limitations, I must also speculate as to the relevance each excerpt has to each 

limitation. For many excerpts, because they cover such a broad set of code 

functionality or on their surface are not immediately related to or easily connected 

to the asserted claim functionality, to even begin my analysis I must guess or 

manufacture the claimed relevance of such excerpts to the independent claims of the 

‘825 Patent. 

The ‘057 Patent

22. Below is Versata’s infringement chart for claim 1 of the ‘057 Patent. 

This chart is demonstrative of Versata’s infringement charts for independent claims 

1, 17-18, 30-31 and 44 of the ‘057 Patent.

23. Versata’s infringement chart for the ‘057 Patent shown below identifies 

two accused Ford software products ( . While Versata’s 

contentions appear to suggest that these identified Ford products work together in 

some fashion, Versata does not state whether it is one Ford product that infringes all 

of the asserted claim limitations or some combination of two or more of such 

products. Furthermore, if Versata is accusing a combination of two or more of the 

Ford products of infringing their asserted claims, Versata does not specifically 

identify which one of the Ford products performs which of the asserted claim 

limitations. The detrimental effect of this failure to properly identify which of the 

Ford products is accused of infringing each asserted claim limitation is expanded by

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Versata’s failure to specifically identify the product versions that are accused of 

infringing the asserted claims of the ‘057 Patent. Rather, Versata identifies pages, 

screenshots, and other materials from Ford’s source code and software without

clearly indicating the version of the source code and software being accused of 

infringing the asserted claim limitations.

24. Versata’s infringement chart shown below fails to break down each 

limitation of the independent claims on a limitation-by-limitation basis so that it is 

clear which identified source code (and other referenced materials) corresponds to 

which limitation.

25. Indeed, as shown below, Versata’s infringement chart for claim 1 does 

not tie any section of the identified Ford source code to any corresponding limitation 

of claim 1. Instead, I must speculate as to which source code excerpts correspond to 

which claim limitation.

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(Ex. 7 [‘057 Patent Infringement Contentions] at claim 1.)

26. As previously described above under my discussion of the ‘825 Patent, 

Versata’s failure to separate out and address each asserted claim limitation of the 

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‘057 Patent using the terminology and structure/categories of each such claim 

limitation is not only counter to what I understand to be the clear agreement of the

parties, it is inconsistent with my experience with the reasonable practice typically 

used in software patent infringement cases where infringement contention charts 

separate out each claim limitation and then identify the specific feature or 

functionality of the accused product that allegedly correlates to the claim language 

and satisfies such limitation.

27. As shown in the example below, Versata’s narrative descriptions of its 

infringement position for the independent claims of the ‘057 Patent selectively 

chooses and uses a limited number of phrases and snippets from the claim language

combined with their own separate description that is not part of the asserted claim 

limitation and is not readily equated or correlated to that actual asserted claim 

language. Such rewriting or paraphrasing of the asserted claim limitation is 

problematic because it ignores/avoids the asserted claim limitation language granted 

by the USPTO and potentially alters or expands the scope of the asserted claim. It 

is further problematic because it makes it very difficult to directly see and understand 

how Versata claims that the accused Ford products and the identified source code 

practices any particular asserted claim limitation.

28. Versata’s narrative descriptions for the ‘057 Patent follow a pattern:

(1) begin with a narrative that revises and paraphrases selective portions, but not all,

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of the claim limitation language, and which purports to describe how Ford’s accused 

products work (red box below), and (2) follow that with a string of citations to Ford’s 

source code (blue box below). (Ex. 7 at Claims 1, 17-18, 30-31 and 44.) 

29. However, Versata’s descriptions do not specifically point out which 

source code pages or portions pertain to which purported claim limitation, nor do 

they explain which portion of the Ford accused products practice which asserted 

claim limitation. As previously described with regard to the ‘825 Patent, because 

Versata’s infringement chart does not identify which pages/portions of the code for 

Ford’s products correspond to which claim limitation, I am left to speculate as to

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which source code should be analyzed for which limitation for purposes of 

formulating my opinions as to non-infringement.

30. The sizeable actual and potential amounts of source code identified in 

Versata’s contentions regarding the ‘057 Patent also make effectively determining 

which aspects of Ford’s source code Versata is accusing for particular limitations 

essentially complete speculation and guessing on the part of Ford and its experts.

31. As indicated above with regard to the ‘825 Patent, while the number of 

pages of source code expressly identified in Vesata’s infringement contentions is 

significant, the general manner in which such code is identified without clear 

identification of the actual lines of code performing/carrying out each claim 

limitation suggests that Versata may be attempting to claim not only the expressly 

identified pages of source code, but all of the source code underlying such expressly 

identified source code, which is a much broader and larger set of source code 

potentially encompassing hundreds or even thousands of pages that include large 

portions of code unrelated to Versata’s asserted patents. Without more specific 

identification distinguishing the actual source code portions accused of infringing 

Versata’s asserted patent claims from the large portions of unrelated source code, 

Ford and I and my team are left to sift through an unreasonably large amount of 

source code expressly identified and tangentially related thereto and speculate as to 

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what portions thereof purportedly satisfy each asserted claim limitation of the ‘057 

Patent.

32. Moreover, because Versata’s charts regarding the ‘057 Patent asserted 

independent claims provide no guidance on which source code pages correspond to 

which limitations, I must also speculate as to the relevance each excerpt has to each 

limitation. For many excerpts, because they cover such a broad set of code 

functionality or on their surface are not immediately related to or easily connected 

to the asserted claim functionality, to even begin my analysis I must guess or 

manufacture the claimed relevance of such excerpts to the independent claims of the 

‘057 Patent. 

The ‘582 Patent Family

33. Versata’s infringement charts for the ‘582 and ‘064 patents are also 

unclear because I cannot determine what Versata is identifying in Ford’s system as 

practicing certain key claim limitations. For example, for the claim limitation 

“wherein each consistency error type is represented by a `set` equation” – a 

limitation included in every independent claim of the ‘582 and ‘064 Patents –

Versata identifies the following:

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(Ex. 8 [‘582 Infringement contentions] at claims 1 and 4; Ex. 9 [‘064 Infringement 

Contentions] at claims 9, 17 and 25.)

34. Although Versata’s infringement charts identify particular lines in 

Ford’s source code, Versata’s contentions do not clearly disclose what Versata 

contends are the “set equation” or “consistency error type[s]” in Ford’s system. 

Rather than expressly link the term “set equation” and “consistency error type[s]” 

with source code excerpts or particular variations in the source code, Versata’s 

contentions use the terms to describe the 

identified code. However, Versata’s contentions do not explain how these terms 

relate to the claimed “set equation” and “consistency error type[s].” As written, this

chart requires me to speculate as to what Versata contends are the “set equation[s]” 

and “consistency error type[s]” in Ford’s system.

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35. Similarly, Versata’s contentions for claim 13 of the ‘064 Patent are

unclear. Claim 13 includes the limitation “performing set math routines in 

accordance with the set equation associated with the consistency error type.” (Ex. 9

at claim 13.) Versata relies on the following citations in its contentions for this 

limitation. 

(Ex. 9 at claim 13.)

Again, although Versata’s infringement chart identifies particular lines in Ford’s 

source code, it does not clearly disclose what Versata contends are “set math 

routines” in Ford’s system. 

36. Further, this excerpt is also relied on by Versata for “wherein each 

consistency error type is represented by a ‘set’ equation,” however, Versata does not 

explain which portion of the excerpt relates to “set equation” and which portion 

relates to “set math routines.” Because “set equation” is a different term from “set 

math routines,” I presume those terms have different meanings. But by identifying 

the same source code excerpts for “set equation” as “set math routines,” I cannot 

determine how Versata is applying this same excerpt of Ford’s source code to 

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demonstrate both “set equation” and “set math routines.” Thus, I must speculate as 

to what Versata contends are the “set math routines” in Ford’s system. 

The ‘651 Patent

37. Versata asserts infringement of claims 60-72 of the ‘651 patent.

38. Versata’s infringement contentions for independent claim 60 of the 

‘651 Patent at least on the surface divides such claim up into individual claim 

limitations and then provides a set of citations to the source code, screenshots and 

other materials related to the Ford products for each claim limitation.

39. However, upon a closer look, Versata’s infringement contentions cite 

to large swaths of source code numbering in the hundreds of pages without ever 

specifically identifying where within such large body of code or what particular 

portions of such large body of code actually carry out or perform the specific 

functionality or process described in each separate claim limitation.

40. For example, nowhere in the infringement contentions for Claim 60 of 

the ‘651 Patent does Versata point out or identify specifically where in the source 

code or other materials for Ford’s products the specific limitation functionality of 

“generating”, “convey[ing] graphically”, “receiving”, “validating” and 

“identifying”, although each of those terms and the functionality they represent is 

contained in Claim 60. Rather, Versata simply points to hundreds of pages of source 

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code and dozens of pages of screenshots and generally contends that such 

functionality is in there. (Ex. 10 [‘651 Patent Infringement Contentions] at claim 60.)

41. Further support for the conclusion that Versata’s wide-reaching citation 

to source code and other materials for the asserted claims of the ‘651 Patent is 

deficient comes from the fact that Versata lists virtually the identical source code 

and other material citations for several of the separate claim 60 limitations (i.e. the 

same source code and screenshots for generating and receiving, and again for 

receiving and validating). (Id.) Versata uses this practice of citing identical source 

code and other materials for separate claim limitations, not only within the same 

claim, but from one patent to another within the “651 Patent family. Thus, the same 

source code cited for independent claim 60 of the ‘651 Patent is cited for several 

different limitations of the independent claims of the ‘308 Patent, as well as those of 

the ’294 Patent. In these patents, the same Ford source code and screenshots cited 

for “generating” and “receiving” in the ‘651 Patent is cited for “obtaining,”

“providing,” and “defining” in the ‘308 patent and “configuring”, “obtaining”, 

“identifying”, or “analyzing” in the ‘294 patent. (Ex. 11 [‘308 Patent Infringement 

Contentions] at claim 1; Ex. 12 [‘294 Patent Infringement Contentions] at claim 1.)

42. The fact that Versata’s infringement contentions identify the same large 

body of source code for multiple different claim limitations, from multiple different 

independent claims, in multiple patents, would seem to be almost irrefutable 

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evidence that Versata’s infringement contentions do not identify where in the Ford 

products each asserted claim limitation is found with adequate specificity.

43. In addition to the general deficiencies described above, there are some 

more specific examples of identified deficiencies which I describe below.

44. Independent claim 60 requires, among other things, graphically 

conveying “product relationships” and “part relationships.” These terms were 

construed in 2005, and adopted by Versata in this case:

Claim Term 2005 Construction

product relationship

“An association between a 

product and one or more parts, 

the association having a left-hand 

side and a right-hand side. The 

product represents the left-hand 

side of the relationship, and the set 

of elements represents the righthand side of the relationship.”

part relationship

“An association that exists 

between a first set of parts and a 

second set of parts, the association 

having a left-hand side and a 

right-hand side. The first set of 

parts represents the left-hand side 

of the relationship and the second 

set of parts represents the righthand side of the relationship.”

45. Versata’s infringement charts identify dozens of pages of source code 

and screenshots corresponding to the “product relationships” and the “part 

relationships” limitations, but the charts do not identify: (1) where in particular the 

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“product relationships” are found, (2) where the “left hand side” of that relationship 

is located, (3) where the “right hand side” of that relationship is located, (4) where 

in particular the “part relationships” are allegedly found, (5) where the “left hand 

side” of that relationship is located, or (6) where the “right hand side” of that 

relationship is located. (Ex. 10 at claim 60.)

46. Claim 60 also requires input from a “configuration user.” This term 

was construed to mean “a person using a computer to configure a system.” The term 

“system” was construed to mean “a collection of components, combined to form a 

particular product or service.” (Dkt. #181 [Special Master’s R&R] at 70.) Versata’s 

infringement charts do not identify (or attempt to identify) a user that meets these 

constructions. Versata’s charts merely assert that 

 (Ex. 10 at claim 60.) Versata identifies 

various users, and dozens of pages of source code and screenshots, but does not

attempt to explain how the identified users meet the construction for the term 

“configuration user” (and “system”).

47. The last limitation of claim 60 requires identifying a set of “valid 

configuration options” using the product and part relationships discussed above, as 

well as a “current configuration state.” Versata’s claim charts cite dozens of pages 

of source code and screen shots, but do not identify what, in particular, the “valid 

configuration options are in the PDO software, or how those options are identified 

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using the claimed product/part relationships or the “current configuration state.” The 

charts do not identify a “current configuration state” in the accused PDO software, 

and as explained above, do not identify the product or part relationships as construed 

(each having a distinct left hand side and right hand side). 

The ‘308 Patent

48. The ‘308 patent is a continuation of the ‘651 patent addressed above. 

49. Versata asserts infringement of every claim of the ‘308 patent.

50. Like with the ‘651 patent, Versata’s infringement contentions for 

independent claim 1 of the ‘308 Patent at least on the surface divides the claim up 

into individual claim limitations and then provides a set of citations to the source 

code, screenshots and other materials related to the Ford products for each claim 

limitation.

51. However, just as with the ‘651 patent, Versata’s infringement 

contentions for the ‘308 patent cite to large swaths of source code numbering in the 

hundreds of pages without ever specifically identifying where within such large 

body of code or what particular portions of such large body of code actually carry 

out, or perform, the specific functionality or process described in the separate claim 

limitation. (Ex. 11 at claim 1.) 

52. For example, nowhere in the infringement contentions for Claim 1 of 

the ‘308 Patent does Versata point out or identify specifically where in the source 

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code or other materials for Ford’s products the specific limitation functionality of 

“providing”, “defining”, “obtaining”, “identifying”, or “analyzing”, although each 

of those terms and the functionality they represent is contained in Claim 1. Rather, 

Versata simply points to hundreds of pages of source code and dozens of pages of 

screenshots and generally contends that such functionality is in there. (Id.)

53. Further support for the conclusion that Versata’s wide-reaching citation 

to source code and other materials for the asserted claims of the ‘308 Patent is 

deficient comes from the fact that Versata lists virtually the identical source code

and other material citations for several of the separate claim 1 limitations (i.e. the 

same source code and screenshots for providing, defining, and obtaining). (Id.) As 

previously pointed out, Versata uses this practice of citing identical source code and 

other materials for separate claim limitations, not only within the same claim, but 

from one patent to another within the “651 Patent family. Thus, the same source 

code cited for independent claim 1 of the ‘308 Patent is cited for several different 

limitations of the independent claims of the ‘651 Patent, as well as those of the ’294 

Patent. In these patents, the same Ford source code and screenshots cited for 

“obtaining,” “providing,” and “defining” in the ‘308 patent is cited for “generating” 

and “receiving” in the ‘651 Patent and “configuring”, “obtaining”, “identifying”, or 

“analyzing” in the ‘294 patent. (Ex. 10 at claim 60; Ex. 12 at claim 1.)

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54. As noted above, the fact that Versata’s infringement contentions 

identify the same large body of source code for multiple different claim limitations, 

from multiple different independent claims, in multiple patents, would seem to be 

almost irrefutable evidence that Versata’s infringement contentions do not identify 

where in the Ford products each asserted claim limitation is found with adequate 

specificity.

55. In addition to the general deficiencies described above, there are some 

more specific examples of identified deficiencies which I describe below.

56. Similar to the “part relationships” in claim 60 of the ‘651 patent, claim 

1 of the ‘308 patent recites “component relationships” which has been construed to 

mean “an association that exists between a first set of components and a second 

set of components, the association having a left-hand side and a right-hand side. 

The first set of components represents the left-hand side of the relationship and the 

second set of components represents the right-hand side of the relationship.” (Dkt. 

#181 at 71.)

57. Versata’s infringement chart for claim 1 of the ‘308 patent identifies 

dozens of pages of source code and screenshots, but does not identify where, in 

particular, the “component relationships” are found, let alone the “left hand side” 

and “right hand side” of those relationships as construed. (Ex. 11 at claim 1.)

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58. Claim 1 (and similarly claim 9) also requires determining whether 

activating a set of component relationships “results in a valid system configuration.” 

The term “system” was construed to mean “a collection of components, combined 

to form a particular product or service.” (Dkt. #181 at 70.) Again, Versata identifies 

dozens of pages of source code and screenshots, but does not identify where or how, 

in particular, the PDO software allegedly performs this step. (Ex. 11 at claims 1 and 

9.)

59. Independent claim 18 of the ‘308 patent requires both “product 

relationships” and “component relationships.” Similar to the other claims addressed 

above, Versata does not show where in the accused PDO software these two types 

of relationships are allegedly located, or how they meet the constructions for those 

terms. (Id. at claim 18.)

60. Independent claim 28 requires including elements in a configuration of 

a “system.” The term “system” was construed to mean “a collection of components, 

combined to form a particular product or service.” (Dkt. #181 at 70.) Again, Versata 

identifies dozens of pages of source code and screenshots, but does not identify 

where or how a “system” as construed is configured in the accused PDO software.

(Ex. 11 at claim 28.)

The ‘294 Patent

61. The ‘294 patent is a continuation of the ‘651 and ‘308 patents.

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62. Versata asserts infringement of every claim of the ‘294 patent.

63. Like with the ‘651 and ‘308 patents, Versata’s infringement contentions 

for independent claim 1 of the ‘308 Patent at least on the surface divides such claim 

up into individual claim limitations and then provides a set of citations to the source 

code, screenshots and other materials related to the Ford products for each claim 

limitation. (Ex. 12 at claim 1.)

64. However, just as with the ‘651 and ‘308 patent, Versata’s infringement 

contentions for the ‘294 patent cite to large swaths of source code numbering in the 

hundreds of pages without ever specifically identifying where within such large 

body of code or what particular portions of such large body of code actually carry 

out or perform the specific functionality or process described in the separate claim 

limitation.

65. For example, nowhere in the infringement contentions for Claim 1 of 

the ‘294 Patent does Versata point out or identify specifically where in the source 

code or other materials for Ford’s products the specific limitation functionality of

“configuring”, “obtaining”, “identifying”, or “analyzing” although each of those 

terms and the functionality they represent is contained in Claim 1. Rather, Versata 

simply points to hundreds of pages of source code and dozens of pages of 

screenshots and generally contends that such functionality is in there. (Id. at claim 

1.)

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66. Further, support for the conclusion that Versata’s wide-reaching 

citation to source code and other materials for the asserted claims of the ‘294 Patent 

is deficient comes from the fact that Versata lists virtually the identical source code 

and other material citations independent claim 1 of the ‘294 Patent as cited for 

several different limitations of the independent claims of the ‘651 Patent, as well as 

those of the ’308 Patent. The same Ford source code and screenshots cited for

“configuring”, “obtaining”, “identifying”, or “analyzing” in the ‘294 patent is cited 

for “obtaining,” “providing,” and “defining” in the ‘308 patent and for “generating” 

and “receiving” in the ‘651 Patent. (Ex. 10 at claim 60; Ex. 11 at claim 1.)

67. As noted above, the fact that Versata’s infringement contentions 

identify the same large body of source code for multiple different claim limitations, 

from multiple different independent claims, in multiple patents, would seem to be 

almost irrefutable evidence that Versata’s infringement contentions do not identify 

where in the Ford products each asserted claim limitation is found with adequate 

specificity.

68. In addition to the general deficiencies described above, there are some 

more specific examples of identified deficiencies which I describe below.

69. Claims 1 and 11 of the ‘294 patent requires the use of “element 

relationships” (having “classifications”) to determine if a selected element “results 

in a valid product configuration.” As with the above claims in the ‘651 family, 

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Versata’s claim charts identify dozens of pages of source code and screen shots, but 

do not identify a particular “element relationship,” or “valid product configuration” 

in the code or screenshots. (Ex. 12 at claims 1 and 11.)

70. Claim 21 recites a “first computer system” and a “second computer 

system,” and communicating particular information (such as a “configuration state”) 

between those two systems. Versata’s infringement charts fail to identify the two 

claimed computer systems, let alone the claimed information that is communicated 

between them. Versata’s charts also fail to identify where in the dozens of pages of 

source code and screenshots the claimed “element relationships,” “valid product 

configuration” or “classifications” are allegedly found. (Id. at claim 21.)

71. Claim 26 also recites a “first computer system” and a “second computer 

system,” and communicating particular information (such as a “configuration state”) 

between those two systems. Versata’s infringement charts fail to identify the two 

claimed computer systems. And, despite identifying dozens of pages of source code 

and screen shots, Versata’s charts for this claim also fail to show where or how in 

particular the PDO software allegedly displays the claimed “included,” “optional,” 

or “required choice” indications. (Id. at claim 26.)

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I declare under penalty of perjury that the foregoing is true and correct.

___________________________

Monty G. Myers

Dated: __12/28/2016_____________

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