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UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

FORD MOTOR COMPANY, 

 Plaintiff, Case No. 15-cv-10628 

 (consolidated with Case No. 15-11624) 

v. Hon. Matthew F. Leitman 

VERSATA SOFTWARE, INC. et al.

 Defendants. 

__________________________________________________________________/ 

ORDER (1) SUSTAINING FORD’S OBJECTIONS (ECF No. 730) TO 

SPECIAL MASTER’S REPORT AND RECOMMENDATION (ECF No. 725) 

AND (2) ADOPTING FORD’S PROPOSED CONSTRUCTIONS 

In this action, Plaintiff Ford Motor Company and Defendants Versata 

Software, Inc., Versata Development Group, Inc., and Trilogy, Inc. (collectively, 

“Versata”) dispute whether Ford infringed Versata’s software patents and 

misappropriated Versata’s trade secrets. The intellectual property at issue relates to 

computer software used in vehicle configuration. 

On August 23, 2019, the Court referred to Special Master Larry Graham a 

claim construction dispute relating to two claim limitations in United States Patent 

Number 7,739,080 (the “‘080 Patent”). (See Order Appointing Special Master, ECF 

No. 101; Order Referring Claim Construction Dispute, ECF No. 698.) The Special 

Master filed a report and recommendation (the “R&R”) recommending that the 

claim limitations did not need further construction on February 11, 2020. (See R&R 

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ECF No. 725.) Ford filed timely objections to the R&R on March 5, 2020. (See 

Objections, ECF No. 730.) For the reasons that follow, Ford’s objections are 

SUSTAINED. 

I 

 “The ‘080 [Patent] is entitled ‘Consolidation of Product Data Models,’” and 

it “relates to a method for combining multiple configuration models into a single 

unified configuration model, with the resulting unified configuration model 

containing the union of the allowable combinations from each of the models being 

combined while automatically resolving any such errors.” (R&R, ECF No. 725, 

PageID.53974-53975.) The ‘080 Patent is thoroughly and accurately described at 

pages 3-11 of the R&R, and the Court adopts that description for the purposes of this 

Order. (See id., PageID.53974-53982.) 

 The two claim limitations at issue are found in Claim 1 of the ‘080 Patent. 

Claim 1 “defines a method for consolidating multiple configuration models.” (Id., 

PageID.53975.) It provides as follows: 

1. A method of using a computer system to consolidate 

multiple configuration models of a product, the method 

comprising: 

performing with the computer system: 

identifying a conflict between at least two of the 

configuration models, wherein the configuration models 

are organized in accordance with respective directed 

acyclic graphs, each configuration model includes at least 

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one ancestor configuration model family space and a child 

configuration model family space below the ancestor 

configuration model family space, a first of the conflicting 

configuration models comprises an ancestor configuration 

model family space that is different than an ancestor 

configuration model family space of a second of the 

conflicting configuration model, and each child 

configuration model family space constrains the ancestor 

configuration model family space above the child in 

accordance with configuration rules of the configuration 

model to which the child belongs; 

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; 

removing from the child configuration model family 

space any configuration space extended in the ancestor 

of the child configuration family space; and 

combining the first and second configuration models into 

a single, consolidated model that maintains a non-cyclic 

chain of dependencies among families and features of 

families for use in answering configuration questions 

related to the product. 

(Id., PageID.53975-53976; emphasis added.) The “extending” and “removing” 

claim limitations bolded in the quote above are the two limitations now at issue. 

 The “extension process” referenced in Claim 1 “is further described in the 

‘080 [P]atent with reference to Figure 8.” (Id., PageID.53978.) Figure 8, with the 

accompanying language from the ‘080 Patent, is reproduced below. (See ECF No. 

710-3, PageID.53181, 53192.) As reflected below, Figure 8 refers to, among other 

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things, “adding space to ENG family and removing space from SER.” (Id., 

PageID.53181; emphasis added.) 

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II 

A 

 The parties have two disagreements related to the claim limitations “extending 

at least one of the ancestor configuration model family spaces” and “removing from 

the child configuration model family space any configuration space extended in the 

ancestor of the child configuration family space.” First, the parties disagree as to 

whether there is an active claim construction dispute concerning these limitations. 

Ford says there is an active dispute; Versata says there is not. Second, if and to the 

extent there is an active dispute, the parties offer different approaches to the 

limitations. Ford insists that the limitations require construction by the Court, and 

Ford offers proposed constructions. Versata contends that the limitations need no 

construction by the Court and that the limitations “are best understood within their 

plain and ordinary meaning.” (Versata Resp., ECF No. 736, PageID.54283.) A table 

displaying the parties’ respective positions is produced below: 

Claim Limitation Ford’s Proposed 

Construction 

Versata’s Proposed 

Construction 

extending at least one of 

the ancestor 

configuration model 

family spaces 

Adding configuration 

information to at least 

one of the ancestor 

configuration model 

family spaces 

Plain and ordinary 

meaning. 

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Claim Limitation Ford’s Proposed 

Construction

Versata’s Proposed 

Construction 

removing from the child 

configuration model 

family space any 

configuration space 

extended in the ancestor 

of the child configuration 

family space 

Removing from the child 

configuration model 

family space the same 

configuration information 

added to at least one of 

the ancestor 

configuration model 

family spaces during the 

extending step. 

Plain and ordinary 

meaning. 

B 

The construction of the claim limitations at issue has been debated for several 

years. That history is described in detail in the R&R. (See R&R, ECF No. 725, 

PageID.53982-53987.) 

 In brief summary, the dispute related to these claim limitations initially arose 

in the context of initial claim construction. There were two aspects to the dispute at 

that time: whether the term “automatically” should be included in the construction 

and whether the term “adding” should be used instead of “extending.” (See Versata 

Resp., ECF No. 736, PageID.54280, quoting 9/13/2016 Hr’g Tr. at 186.) “At that 

time, Ford contended that ‘extending at least one of the ancestor configuration model 

family spaces’ meant ‘automatically adding configuration space into the parent 

family,’ while Versata asserted that no construction was necessary.” (R&R, ECF No. 

725, PageID.53982.) The parties focused primarily on the aspect of the dispute 

concerning whether to add “automatically” to the construction, but Ford carefully 

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explained its rationale for proposing the word “adding.” More specifically, Ford 

said that it was “concern[ed]” that Versata was “going to say extending is something 

other than what’s shown in Figure 8 somehow, that it’s just taking what’s in one 

model and putting into the other model, which is why [Ford] used [the term] adding.” 

(9/13/2016 H’rg Tr. at 207, ECF No. 739-2, PageID.54311.) Versata responded and 

appeared to agree with Ford that “adding” properly captured the meaning of the 

limitation: 

No, we’re not trying to read anything other than what’s 

disclosed in the patent. It’s just the specification refers to 

it as extending. It says on column 9, ‘extend the engine 

family in model 612,’ so we just wanted to change it to 

adding. 

(Id. at 208, PageID.54312; emphasis added.) It does not appear that the Special 

Master definitively resolved whether “adding” should be included in the 

construction of this claim limitation in his report and recommendation on claim 

construction. 

 Issues related to the construction of the “extending” and “removing” claim 

limitations arose again in the context of the parties’ summary judgment motions. “In 

its motion, Ford argued that its accused [] software did not meet the extending and 

removing limitations [in Claim 1 of the ‘080 Patent] because [Ford’s] software 

rearranges the order of family levels, but the information in the families remains the 

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same; according to Ford no family space is ‘extended’ (or, in Ford’s words, ‘added’) 

and then ‘removed’ after being extended.” (R&R, ECF No. 725, PageID.53984.) 

The Court referred the patent portions of the summary judgment motions to 

the Special Master for a report and recommendation, and he held a hearing on those 

potions of the motions. As the Special Master accurately noted, during that hearing, 

Versata “sometimes used ‘adding’ interchangeably with ‘extending.’” (Id., 

PageID.53986.) Indeed, Versata suggested that “you need to add” in order to meet 

the “extending” limitation: 

Now you get to the claim language. So the claim language 

you have the extending, so you’re extending to a – to at 

least one ancestor configuration model family. It can be 

multiple, you don’t have to just – you are not limited to 

one space, you can add to more than one, of the 

conflicting configuration. So that’s the ‘612. You are 

going to add to that so that ancestor matches the ancestor 

of ‘602. So you need to add to at least one ancestor 

configuration model family space. Okay. So you can do 

it to one space in that ancestor, you could add 

information to all spaces, but as long as you add 

information to one space, you’ve satisfied the claim 

limitation. And if the software does something in 

addition to that, that’s okay as long as you are adding 

space – adding information to the model family space, 

and then you remove from the child configuration, model 

family space, the corresponding space that was extended. 

Okay. 

(9/13/2018 Hr’g Tr. at 147, ECF No. 710-4, PageID.53346; emphasis added.) 

“Versata also argued that moving families up or down adds data to the ancestor 

space.” (R&R, ECF No. 725, PageID.53986, citing 9/13/2018 Hr’g Tr. at 153-154, 

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ECF No. 710-4, PageID.53352-53353; emphasis added.) As at the claim 

construction phase of this action, it does not appear that the Special Master 

definitively resolved on summary judgment whether “adding” should be included in 

the construction of these limitations. 

C 

 On July 7, 2019, Ford sent a letter to the Court in which it asserted that there 

was an active claim construction dispute with respect to both the “extending” and 

“removing” claim limitations described above. (Ford 7/7/2019 Ltr., ECF No. 677-

3.) Ford insisted that the Court needed to “resolve” the claim construction dispute 

“in advance of trial.” (Id., PageID.52124.).) Versata disagreed that there was a live 

claim-construction dispute. (Versata 7/7/2019 Ltr., ECF No. 677-2.) Versata said 

that “Ford had its opportunity to present claim construction issues on these terms 

through the Markman process” and that the Special Master “issued recommended 

constructions on these terms in November 2016.” (Id., PageID.52121.) Versata 

insisted that “[n]othing justifie[d] new claim construction briefing at this late stage 

of the case.” (Id.) 

The Court referred this dispute to the Special Master for a report and 

recommendation. (See Order, ECF No. 698.) More specifically, the Court referred 

the following two questions to the Special Master: 

(1) Is there a claim construction dispute between the 

parties that the Court should resolve at this point in the 

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proceedings, or do Mr. Graham’s previous claim 

construction and summary judgment recommendations, as 

adopted (or adopted in part) by the Court already resolve 

the allegedly-live claim construction dispute described 

above?; and 

(2) What is the proper construction for the “extending” 

and “removing” limitations of the ‘080 Patent? The Court 

asks Mr. Graham to answer this second question no matter 

how he answers first question. 

(Id., PageID.52770.) 

 The parties submitted briefs on these questions to the Special Master, and he 

held a telephonic hearing on November 21, 2019. (See R&R, ECF No. 725, 

PageID.53972-73.) He then issued the R&R on February 11, 2020. (See R&R, ECF 

No. 725.) He first determined that “there is no active [claim construction] dispute” 

with respect to the “extending” and “removing” claim limitations. (Id., 

PageID.53989.) He concluded that because “this dispute presents an issue which 

was asserted by Ford during the prior claim construction proceedings but rejected 

[by him], [it] is therefore a restatement of a previously settled claim construction 

argument that does not generate an active dispute.” (Id.) 

 Next, the Special Master considered “the meaning of [the] extending and 

removing [limitations].” (Id.) He found that if the limitations “are to be given a 

construction other than [their] plain and ordinary meaning, neither party provide[d] 

a viable candidate.” (Id.) He therefore recommended that the limitations “be given 

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their plain and ordinary meaning, with no further construction needed.” (Id., 

PageID.53996.) 

D 

 Ford filed timely objections to the R&R on March 5, 2020. (See Objections, 

ECF No. 730.) Ford insists that there is an active dispute regarding the construction 

of the “extending” and removing” claim limitations and that the Special Master erred 

when he left the terms unconstrued and recommended that they be given their “plain 

and ordinary meaning.” (Id., PageID.54050.) Versata opposed Ford’s objections 

(see Versata Resp., ECF No. 736), and the Court held a hearing on the objections on 

June 4, 2020. 

III 

 The Court greatly appreciates the Special Master’s efforts to resolve this 

dispute. However, it respectfully disagrees with his recommendations and declines 

to adopt them. 

A 

 First, there plainly is a dispute between Ford and Versata with respect to how 

the “extending” and “removing” claim limitations should be construed. Ford says 

that the Court must construe the limitations, and it has provided the Court a 

construction of both terms. Versata counters that construction “beyond [the 

limitations’] plain and ordinary meaning [is] unnecessary, redundant, [] unhelpful 

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..., would not add clarity for the jury, would change the meaning of the claim, and 

would not be easier to grasp than the plain and ordinary meaning [of the 

limitations].” (Versata Resp. Br., ECF No. 736, PageID.54283.) Thus, there is 

clearly a dispute between the parties about (1) whether the “extending” and 

“removing” claim limitations need to be construed and (2) the construction of those 

terms. 

 Second, the Court respectfully rejects the Special Master’s conclusion that the 

“extending” and “removing” claim limitations do not need a construction beyond 

their plain and ordinary meaning. In the R&R, the Special Master noted that “[t]he 

word ‘extending’ suggests making something larger, or expanding its coverage area, 

and this general usage of ‘extending’ is ‘non-technical and within the ken of an 

average juror.’” (R&R, ECF No. 725, PageID.53990.) But the use of the term 

“extending” in the claim limitation is neither “general” nor “non-technical.” Instead, 

as Versata repeatedly acknowledged, the term involves “adding” information, and 

that is not necessarily synonymous with the “general” understanding of the term 

“extending” as “expanding” a “coverage area.” 

 Moreover, the need for the Court to construe the “extending” and “removing” 

claim limitations is underscored by Versata’s struggles to supply the “plain and 

ordinary” meaning that the jury would ascribe to the claims absent a construction by 

the Court. Versata did not provide such a meaning in its written response to Fords’ 

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objections to the R&R. (See Versata Resp. Br., ECF No. 736.) Moreover, during the 

hearing on Ford’s objections to the R&R, the Court gave Versata several 

opportunities to provide the plain and ordinary meaning of the claim limitations, but 

Versata could not provide a satisfactory definition. Since Versata could not 

sufficiently provide the plain and ordinary meaning of these limitations, it follows 

that a jury will not be able to sensibly ascribe such a meaning to the limitations. 

 Finally, the Court is not persuaded by Versata’s reliance on the Federal 

Circuit’s decision in ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 

F.3d 1312, 1324-25 (Fed. Cir. 2012). In ActiveVideo, the parties disputed whether 

the limitation “superimposing” needed further construction beyond the plain and 

ordinary meaning of that term. See id. The Federal Circuit concluded that it did not. 

The court held that “[i]t was up to the jury to determine from the evidence presented 

at trial whether the ActiveVideo system satisfied the plain and ordinary meaning of 

the ‘superimposing’ limitations.” Id. at 1325. But ActiveVideo did not contain any 

detailed analysis concerning how a district court should determine whether a claim 

limitation requires construction, and the court’s conclusion that the term 

“superimpose” as used in the particular limitation at issue in that case says little, if 

anything, about whether the “extending” and “removing” limitations here require 

construction by this Court. 

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B 

 Having concluded that it is necessary to provide a construction of the two 

claim limitations at issue, the Court must determine that proper construction. As 

explained above, Ford has provided specific constructions of each claim limitation 

while Versata has not. The parties’ respective constructions are repeated below: 

Claim Limitation Ford’s Proposed 

Construction 

Versata’s Proposed 

Construction 

extending at least one of 

the ancestor 

configuration model 

family spaces 

Adding configuration 

information to at least 

one of the ancestor 

configuration model 

family spaces 

Plain and ordinary 

meaning. 

removing from the child 

configuration model 

family space any 

configuration space 

extended in the ancestor 

of the child configuration 

family space 

Removing from the child 

configuration model 

family space the same 

configuration information 

added to at least one of 

the ancestor 

configuration model 

family spaces during the 

extending step. 

Plain and ordinary 

meaning. 

 

The Court is persuaded by Ford’s proposed constructions for several reasons. 

First, the constructions are consistent with the specifications included in the ‘080 

Patent itself. As noted above, one of the specifications included in the ‘080 Patent 

– Figure 8 included and described above – specifically uses the phrase “adding 

space.” (ECF No. 710-3, PageID.53181.) Where, as here, the claim limitations do 

not have an “ordinary meaning to a skilled artisan at the time of filing of the patent 

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application ... the specification usually supplies the best context for deciphering 

claim meaning.” Honeywell Intern. Inc. v. Universal Avionics Systems, Inc., 488 

F.3d 982, 991 (Fed. Cir. 2007). Thus, Figure 8 of the ‘080 Patent supports Ford 

construction of these claim limitations that includes the term “adding.” See also 

Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (“[O]ur cases 

recognize that [a] specification may reveal a special definition given to a claim term 

by the patentee that differs from the meaning it would otherwise possess. In such 

cases, the inventor’s lexicography governs”). 

 Moreover, as described in detail above and as the Special Master 

acknowledged, Versata has repeatedly “used ‘adding’ interchangeably with 

‘extending.’” (R&R, ECF No. 725, PageID.53986.) While that conduct by Versata 

certainly does not compel the Court to adopt Ford’s proposed constructions, it 

provides a good indication that even Versata understands that the claim limitations 

involve “adding,” as Ford contends. 

 Nor is the Court persuaded by the Special Master’s reasons for rejecting 

Ford’s proposed construction and adopting Versata’s proposal to give the terms their 

plain and ordinary meaning. The Special Master first concluded that “Ford’s 

proposal does not add clarity for the jury.” (R&R, ECF No. 725, PageID.53992.) He 

asserted that “[t]he word ‘extending’ is an everyday word” and it is “used in its 

ordinary sense in the claims.” (Id.) But for all of the reasons stated above, the Court 

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disagrees. The term “extending” is not used in isolation; it is part of larger claim 

limitation. And that claim limitation, as a whole, is not an “everyday word” and 

does not have an “ordinary sense” in which it is used. Put simply, without a defined 

construction from the Court, the claim limitation has no clarity at all. 

 The Special Master next concluded that “Ford’s proposal is a substitution that 

may change the meaning of the claim.” (Id., PageID.53992.) However, Ford’s 

proposed construction is consistent with the ‘080 Patent itself – specifically, Figure 

8 which expressly refers to “adding space.” There is no persuasive evidence in the 

record that Ford’s proposed constructions would change the meaning of the claim 

limitations. 

 The Special Master then asserted that “there is no claim construction presently 

offered for consideration which would settle a claim construction debate.” (Id.) But 

the Court’s adoption of Ford’s proposed construction does settle the debate. The 

claim limitations at issue will be given Ford’s proposed constructions. That settles 

the debate about whether the Court should construe the claim limitations or whether 

the limitations should be given their plain and ordinary meaning. 

 The Special Master next found that “nothing in the intrinsic or extrinsic record 

supports a particular construction, or requires Ford’s proposed construction.” (Id., 

PageID.53993.) But again, the specification included at Figure 8 supports Ford’s 

construction because it uses the phrase “adding space.” And, as described in detail 

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above, Versata itself has repeatedly referred to the claim limitations as “adding 

space” and “adding information.” (9/13/2018 Hr’g Tr. at 147, ECF No. 710-4, 

PageID.53346.) 

 Finally, the Special Master found that no construction of the claim limitations 

was necessary beyond their plain and ordinary meaning because “the surrounding 

claim language provides sufficient clarity.” (R&R, ECF No. 725, PageID.53992.) 

But for all of the reasons stated in this order, the Court believes that the claim 

limitations, when read as a whole, are not clear, and that construction of the claims 

is necessary. Indeed, when asked specifically at the hearing on Ford’s objections 

how the claims should be understood in the absence of a construction by the Court, 

Versata could not provide a satisfactory or persuasive answer. And the Court 

concludes that Ford’s proposed constructions – the only proposed constructions 

provided by either party – should be adopted. 

IV 

 For all of the reasons stated above, Ford’s objections to the R&R (ECF No. 

730) are SUSTAINED and Ford’s proposed constructions of the claim limitations 

at issue are ADOPTED. 

IT IS SO ORDERED. 

 s/Matthew F. Leitman 

 MATTHEW F. LEITMAN 

Dated: June 11, 2020 UNITED STATES DISTRICT JUDGE 

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 I hereby certify that a copy of the foregoing document was served upon the 

parties and/or counsel of record on June 11, 2020, by electronic means and/or 

ordinary mail. 

 s/Holly A. Monda 

 Case Manager 

 (810) 341-9764 

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