UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

Ford Motor Company,

Plaintiff,

v.

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

Software, Inc., Trilogy Development 

Group, Inc. and Trilogy, Inc.,

Defendants.

Case No. 2:15-cv-11264

JURY TRIAL DEMANDED

COMPLAINT FOR DECLARATORY JUDGMENT

Pursuant to the Declaratory Judgment Act, 28 U.S.C. §2201, Plaintiff Ford 

Motor Company (“Ford”) requests a Declaratory Judgment that Ford has not

infringed any copyrights owned by defendants Versata Software, Inc. f/k/a Trilogy 

Software, Inc., Trilogy Development Group, Inc., and Trilogy, Inc. (individually 

and collectively “Defendants”).

Ford’s Complaint for Declaratory Judgment is based on the following 

allegations:

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I. THE PARTIES

1. Ford is a Delaware corporation with its principal place of business at 

One American Road, Dearborn, Michigan.

2. On information and belief, Versata Software, Inc. f/k/a Trilogy 

Software, Inc. (“Versata”) is a Delaware corporation having its principal place of 

business in Austin, TX.

3. On information and belief, Trilogy Development Group, Inc. 

(“Trilogy Development”) is a California corporation having its principal place of 

business in Austin, TX.

4. On information and belief, Versata became a wholly-owned 

subsidiary of Trilogy Development in 2006, and Trilogy Development is the parent 

company of Versata and its subsidiaries.

5. On information and belief, Trilogy, Inc. is a Delaware corporation 

having its principal place of business in Austin, TX.

II. JURISDICTION AND VENUE

6. Ford incorporates the allegations of paragraphs 1-5. 

7. This Court has jurisdiction over these claims pursuant to 28 U.S.C. 

§§1331, 1338, and 2201.

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8. As detailed below, an actual case and controversy exists concerning 

the alleged infringement of one or more of Defendants’ copyrights.

9. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b).

III. BACKGROUND FACTS

10. Ford incorporates the allegations of paragraphs 1-9.

Ford’s Early Vehicle Configuration Software

11. Ford is an Original Equipment Manufacturer (“OEM”) of 

automobiles.

12. Ford sells a wide range of vehicle lines in different vehicle categories, 

such as compact cars, SUVs, sedans and pick-up trucks. Each vehicle line in each 

category has many different configurations and options. For example, most 

vehicles are offered with more than one engine choice, more than one transmission 

choice, more than one wheel choice and several other configurations and options.

13. Not all vehicle components are compatible with one another. For 

example, a particular engine may not be compatible with a particular transmission. 

A particular transmission, however, may be compatible with several different (but 

not all) available engine selections.

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14. Given the complexity and options available on a particular vehicle, 

millions of configurations are possible for each vehicle line. 

15. Beginning in the 1990s, Ford developed the Marketing Feature 

Availability List (“MFAL”) and the “Product Feature Database” (“PFDB”) 

software to help Ford define and manage valid vehicle configurations within Ford.

Defendants’ Configuration Software

16. In October 1998, Ford licensed “SC Config” software from 

Defendants. The SC Config software proved incapable of handling the complexity 

and volume of data required to support Ford’s needs. 

17. So, at the same time Ford licensed SC Config, Ford and Defendants 

entered into in a Contract Services Agreement (“CSA”) for the development of 

customized software for Ford.

18. The CSA states that Ford either owns, or has a royalty-free license to 

reproduce the software deliverables and customizations for the SC Config 

software.

19. Between 1999 and 2004, Defendants and Ford jointly developed the 

“Automotive Configuration Manager” (“ACM”) pursuant to the CSA.

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20. The ACM was an adaptation of SC Config for use within Ford. This 

was required due to the high levels of data volumes and the complexity of Ford’s 

vehicle offerings.

21. Ford paid Defendants tens of millions of dollars for the ACM 

development services pursuant to the CSA.

22. In December 2004, Ford and Defendants entered into a Master 

Subscription and Services Agreement (“MSSA”), governing the licensing of, inter 

alia, the ACM software.

23. Similar to the CSA, the MSSA included provisions establishing 

Ford’s ownership, or license to reproduce, deliverables created under the MSSA.

Defendants Unilaterally Declare The ACM Software “Obsolete” And Terminate

Ford’s Maintenance & Support For The ACM Software

24. In November 2010, Defendants informed Ford that the ACM software 

was “obsolete,” and that Ford was required to license Defendants’ new “cloudbased” computing platform going forward. For security reasons, Ford was not 

willing to move its proprietary vehicle configuration data off-premises to the 

“cloud,” i.e., the Internet.

25. Prior to these discussions, Defendants threatened Ford with 

termination of the license for the original ACM software if Ford refused to move to 

the “cloud-based” platform. 

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26. During subsequent discussions with Ford, however, Defendants later 

permitted Ford to continue using the “obsolete” ACM software at an annual license 

fee of several million dollars, but without Defendants’ maintenance or support

services.

27. However, Ford and Defendants ultimately entered into an agreement 

that provided Ford with maintenance and support services for an extended period. 

Under the agreement, an addendum to the ACM license, Ford paid Defendants a 

substantial additional fee for an “Extended Support Term” for the original ACM 

software and for Defendants to waive their right to terminate the ACM license for 

convenience during the Extended Support Term.

Defendants Terminated Ford’s ACM License, And Described Their Exorbitant 

Licensing Fees As “Extortion”

28. Defendants notified Ford on October 7, 2014 that they were 

terminating Ford’s ACM license, effective January 1, 2015. Defendants’ letter 

stated that Ford was to cease using the ACM software by January 1, 2015.

29. On November 13, 2014, Defendants extended the termination date to 

January 15, 2015 and again stated that Ford was to cease using the ACM software 

by the extended date.

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30. In parallel with these termination notices, Defendants offered Ford 

new license terms for Defendants’ “obsolete” ACM software that Ford had been 

using since 2005.

31. Defendants’ new licensing proposal was for 5 years at a dollar amount 

that is incrementally greater than the amount Ford would have paid for the exact 

same “obsolete” ACM software previously licensed to Ford on an annual basis.

32. During a conference call regarding Defendants’ new licensing 

proposal, a Defendant representative stated to Ford representatives that “we could 

have extorted a lot more money out of you three years ago.”

33. Ford did not accept Defendants’ unreasonable license proposal. On 

December 19, 2014, Ford notified Defendants that Ford would no longer be using 

the ACM software. 

Ford Research Engineers Invented, Developed And Patented Their Own 

Configuration Software; Defendants Forced Ford To Changeover

34. Defendants’ October 2014 notice that the ACM license would be 

terminated in January 2015 prompted Ford to expedite the implementation of 

alternate software that it began developing when Defendants’ threats first began. In 

2010, engineers from Ford’s Research and Advanced Engineering department 

began working to develop software that Ford might use in the future to determine 

which vehicle configurations sell the best.

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35. The objective of the new software was to determine, of the millions of 

possible vehicle configurations, which configurations were likely to sell the 

quickest to minimize the amount of time the vehicles sit in dealer inventory, 

referred to as “days on lot.”

36. To accomplish this objective, the engineers needed to swiftly define 

and analyze millions of possible vehicle configurations, all in an attempt to narrow 

the universe of possible configurations to those buildable configurations relevant to 

an individual dealer and further constrained to avoid combinations of options likely 

to lengthen the “days on lot.” 

37. Ford’s research engineers ultimately invented software that managed 

the millions of possible vehicle configurations very reliably, and in a very efficient 

manner. The engineers referred to their invention as the “super configurator.”

38. In parallel with Ford’s efforts in research, Ford Product Definition

engineers were trying to better understand vehicle complexity so that they could

reduce number of manufactured configurations and ultimately reduce cost. These 

efforts utilized the output of the Feature Query Validation (FQV) Service and data 

from ACM rule reports. The efforts yielded some basic tools to assess complexity 

and some proofs-of-concept, but proved to be of limited broader use due to the 

computing power required. Analyzing moderately complex programs required a 

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supercomputer to run for days and complex programs failed to complete 

processing.

39. In 2011, Ford’s Product Definition engineers and Research engineers 

recognized that the super configurator technology developed in Ford’s research 

department was orders of magnitude more powerful than the approaches developed 

using FQV or ACM. The super configurator was able to work successfully with 

vehicle programs of great complexity. Also, with the greater processing power, the 

super configurator technology could enable many uses beyond the simple 

complexity assessments that were initially targeted by the Product Definition 

engineers. The new technology could be used as the basis for a replacement for 

the ACM software – software that Defendants had declared “obsolete” and 

threatened to terminate.

40. The two teams joined forces and, under the heading of Total 

Configuration Management (TCM), continued to improve the performance and 

extend the capabilities of the super configuration technology.

41. Ford filed a patent application on its super configurator software in 

October 2011, and received a patent covering its invention in August 2014, U.S. 

Patent No. 8,812,375 (the ‘375 patent).

42. As explained in the ‘375 Patent, Ford’s invention approaches vehicle 

configuration very differently, and more efficiently, than Defendants do. 

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43. Ford disclosed Defendants’ configuration patents to the U.S. Patent & 

Trademark Office (“PTO”) during examination of the ‘375 Patent. The PTO 

allowed Ford’s ‘375 patent over Defendants’ patents because Ford’s software 

operates fundamentally differently.

44. From 2011 to 2014, Ford developed the “PDO” vehicle configuration 

software to replace the obsolete ACM software. Ford’s PDO software was 

constructed using Ford’s patented super configurator invention and provides 

several significant technical advantages over the ACM software.

45. For example, the patented configuration engine used in Ford’s PDO

software is more accurate than the ACM software, providing Ford with higher data 

integrity than the ACM software.

46. In addition, Ford’s PDO software provides a foundation that is 

capable of managing in a coherent manner a broad range of related data including 

integrating data representing vehicle volumes, configuration mix and weight –

something the ACM software cannot do. The PDO software also provides the 

potential for extended analytic capabilities over the ACM software.

47. Another significant advantage of Ford’s PDO software over the ACM

software is that PDO has been architected to support future extensions planned to 

enable Ford’s business people to easily define vehicle configurations themselves, 

without requiring the expert configuration codification analysts that the ACM 

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software required. This will dramatically increase the efficiency and utility of the 

configuration software within Ford.

48. Ford’s PDO software also allows Ford to develop and deploy reusable 

powerful global data services. ACM was geared to support a small group of core 

codification analysts and was not capable of handling high volumes of complex 

real-time data requests. PDO is architected to support hundreds of users 

interacting with PDO data services on a daily basis.

49. From the hardware perspective, Ford’s PDO software runs on a 

modern computing platform, which is more closely aligned with Ford’s computing 

infrastructure strategy.

50. Ford’s PDO software is also scalable to meet Ford’s global needs 

without a significant upgrade, unlike the ACM software.

51. Driven by the technical drawbacks of the ACM software, Defendants’

repeated termination notices, and their unreasonable unilateral escalation of license 

fees (which Defendants referred to as “extortion”), Ford was forced to incur costs 

to prepare and deploy the patented PDO software into production prior to January 

1, 2015.

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Defendants Threatened Ford With Patent Infringement, Copyright 

Infringement, And Misappropriation of Trade Secrets, and Demanded an Audit 

of Ford’s PDO Software and Ford’s PDO Developers

52. In its termination letter sent October 7, 2014, Defendants attached a 

list of 86 U.S. patents and stated that Ford “has no right nor license to use any such 

claimed inventions outside of its now expiring licensed use of [Defendants’]

Software.”

53. At a meeting in Dearborn, MI on December 19, 2014 between counsel 

and client representatives for Defendants and Ford, Ford notified Defendants of 

Ford’s intention to switch to Ford’s patented configuration software. A

representative of Defendants responded stating that Ford’s replacement 

configuration software must infringe Defendants’ intellectual property, including 

its patents, copyrights and trade secrets.

54. On December 23, 2014, Defendants notified Ford of their “inten[t] to 

exercise its on-premises audit rights pursuant to Section 3.5 of the [MSSA].” In 

particular, Defendants demanded an audit of “the development of an internal (or 

third party) Ford solution to replace [Defendants’] Software.”

55. Defendants’ audit notice also requested interviews of “Ford personnel 

who at any time worked with any of [Defendants’] Software, Materials, 

Confidential Information and/or Intellectual Property and also who at any time 

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worked on the development of a Ford internal (or third party) solution to replace 

[Defendants’] Software.”

56. In a second meeting between the parties on March 27, 2015, 

Defendants again asserted that Ford’s PDO software infringes Defendants’ 

copyrights. Defendants further threatened to seek damages, including 

disgorgement of Ford’s profits, for the alleged copyright infringement.

57. There is no factual basis for Defendants’ claims of copyright 

infringement. Ford’s PDO software was independently developed by Ford and 

includes no ACM software. 

COUNT #1:

DECLARATORY JUDGMENT OF 

NON-INFRINGEMENT (COPYRIGHT)

58. Ford incorporates the allegations of paragraphs 1-57.

59. Defendants claim that the ACM software is protected under the 

Copyright Act, 17 U.S.C. §501, et seq. and that Ford’s PDO software infringes 

Defendants’ copyrights.

60. However, Ford did not copy or use any portion of the ACM software 

to create the PDO software. 

61. Ford’s PDO software is not derived from the ACM software and is not 

based in whole or part on the ACM software.

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62. Ford’s PDO software and the ACM software are not substantially 

similar. On the contrary, they function in distinctly and fundamentally different 

ways, with the PDO software offering greater efficiency, functionality, and other 

technical advantages absent from the ACM software.

63. For at least these reasons, Ford’s use of the PDO software does not 

violate Defendants’ alleged rights under the Copyright Act.

64. Because of Defendants’ allegations, an actual, present and justiciable 

controversy has arisen between Ford and Defendants concerning Ford’s right to 

use the PDO software.

65. Therefore, Ford seeks a declaratory judgment from this Court that its 

use of the PDO software does not infringe any rights Defendants claim under the 

Copyright Act or otherwise violate other applicable federal or state laws.

IV. RELIEF REQUESTED

Ford prays that this Court enter judgment against Defendants and in favor of 

Ford on its claims as follows:

a. For a declaration that Defendants’ alleged rights under the Copyright 

Act, or other applicable federal or state laws, are not infringed or 

otherwise violated by Ford’s use of the PDO software;

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b. For recovery of damages adequate to compensate Ford for Defendants’ 

baseless allegations of infringement and threats of litigation;

c. For an assessment against Defendants for Ford’s costs and attorneys’ 

fees;

d. For a declaration permanently enjoining Defendants from asserting 

claims against Ford, filing actions against Ford, maintaining actions 

against Ford, or making threats against Ford for infringement or 

interfering in any way in Ford’s use of the PDO software; and

e. For such other relief as the Court may deem just and proper.

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JURY TRIAL DEMAND

Pursuant to Fed. R. Civ. P. 38(b) and 5(d), Plaintiff demands a jury trial of 

all issues triable by jury.

Dated: April 2, 2015 Respectfully submitted,

By: /s/ John S. LeRoy 

John S. LeRoy (P61964)

Frank A. Angileri (P45611)

Chanille Carswell (P53754)

John P. Rondini (P72254)

BROOKS KUSHMAN P.C.

1000 Town Center, 22nd Floor

Southfield, MI 48075

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

jleroy@brookskushman.com

fangileri@brookskushman.com

ccarswell@brookskushman.com

jrondini@brookskushman.com

Attorneys for Plaintiff, Ford Motor 

Company

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