1 

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 REFERRING CLAIM CONSTRUCTION DISPUTE TO 

SPECIAL MASTER LAWRENCE GRAHAM 

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 in question relates 

to computer software used in vehicle configuration. 

 On March 31, 2016, the Court, with the consent of the parties, entered an order 

appointing attorney Larry Graham as a special master to oversee the patent claim 

construction portion of this action. (See ECF #101.) The parties jointly selected Mr. 

Graham for this role. (See id. at Pg. ID 3093.) As the Court explained in its March 

31 order, Mr. Graham has extensive experience in patent law. (See id.) 

In the order appointing Mr. Graham as Special Master, the Court authorized 

him “to hold a claim construction hearing, to receive evidence on claim construction 
2 

issues consistent with the evidence the parties submitted [...], and to file a Rule 53 

report and recommendation with the Court on the correct construction and/or 

definiteness of the patent terms at issue in this case.” (Id. at Pg. ID 3093-94.) Mr. 

Graham thereafter issued a report and recommendation on claim construction (see 

ECF #181), and the parties stipulated to the entry of an order adopting Mr. Graham’s 

proposed constructions. (See ECF #317.) The Court also referred the patent portions 

of the parties’ summary judgment motions to Mr. Graham. (See ECF #509.) Mr. 

Graham then held an in-person hearing and issued a report and recommendation on 

those portions of the summary judgment motions. (See ECF #551.) 

The parties have now raised an issue with the Court that arises out of Mr. 

Graham’s previous rulings on claim construction and summary judgment. More 

specifically, Ford asserts that during the summary judgment proceedings in front of 

Mr. Graham, a dispute arose regarding the construction of two claim limitations in 

United States Patent Number 7,739,080 (the “‘080 Patent”): the “extending” and 

“removing” limitations. Ford insists that the Court “must resolve” this claim 

construction dispute “in advance of trial.” (Ford 7/7/2019 Letter, ECF #677-3 at Pg. 

ID 52124.) Versata disagrees that there is a live claim-construction dispute with 

respect to the ‘080 Patent. Versata says that Mr. Graham resolved that dispute in his 

initial claim construction report and recommendation and that “[n]othing justifies 
3 

new claim construction briefing at this late stage of the case.” (Versata 7/7/2019 

Letter, ECF #677-2 at Pg. ID 52121.) 

The Court concludes that because this issue arises out of Mr. Graham’s 

previous rulings and hearings in this action, he is in the best position to efficiently 

address both the procedural and substantive components of this dispute. 

Accordingly, the Court refers the following questions to Mr. Graham for a report 

and recommendation as set forth in this order: 

(1) Is there a claim construction dispute between the parties that the Court 

should resolve at this point in the 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. 

Mr. Graham is best positioned to “effectively and timely address” the patent 

portions of the motions. See Fed.R.Civ.P. 53(a)(1)(C) (emphasis added) (authorizing 

district court to refer any pretrial matter to a special master where the matter “cannot 

be effectively and timely handled by an available district judge or magistrate judge 

of the district”). Mr. Graham’s extensive familiarity with the claim construction and 
4 

summary judgment arguments related to the ‘080 Patent, his technical background, 

and his patent law experience will enable him to analyze and recommend a 

disposition of current dispute on an efficient basis. Finally, the Court’s staff has 

spoken with Mr. Graham and confirmed that he is available to resolve this dispute 

in a timely manner. For all of these reasons, the Court exercises its discretion to 

refer this claim construction dispute to Mr. Graham for a report and 

recommendation.1

 

Accordingly, IT IS HEREBY ORDERED that the parties’ claim 

construction dispute as described above and as described in the parties’ July 7, 2019, 

letters to the Court (see ECF ## 677-2 and 677-3) is REFERRED to Mr. Graham 

for a report and recommendation as set forth in this order. 

IT IS FURTHER ORDERED as follows: 

1. The parties shall jointly contact Mr. Graham at their earliest convenience 

to make all necessary and appropriate arrangements for his immediate 

consideration of this dispute. 

                                                            

1 See, e.g., TracFone Wireless, Inc. v. LaMarsh, 98 F.Supp.3d 828, 831 (W.D.Pa. 

2015) (“Whether to appoint a Special Master, and the scope and extent of the 

Master’s duties, rests with the sound discretion of the Court”); Trentadue v. U.S. 

Central Intelligence Agency, 2015 WL 1968263, at *3 (D. Utah Apr. 30, 2015) 

(“Rule 53 of the Federal Rules of Civil Procedure authorizes the court, in its 

discretion, to appoint a special master....”).
5 

2. Mr. Graham shall confer with the parties to arrange a schedule for any 

briefing necessary to resolve this dispute. 

3. Mr. Graham may, at his discretion, hold a hearing where he may hear oral 

argument with respect to the parties’ current claim construction dispute. 

Mr. Graham shall determine the procedure (i.e., hearing format) employed 

at the hearing at his discretion. At any such hearing, a court reporter shall 

be engaged so that an adequate record can be generated. Mr. Graham shall 

conduct the hearing in Flint, Michigan, in Judge Leitman’s courtroom 

unless Mr. Graham and the parties agree on an alternative location. 

4. Mr. Graham shall prepare a report and recommendation to the Court 

recommending a resolution to the procedural and substantive components 

of the claim construction dispute as described above. Mr. Graham shall 

proceed with all reasonable diligence and shall have the rights, powers, 

and duties provided in Rule 53, as limited by this order. Mr. Graham shall 

file his report and recommendation with the Court upon its completion. 

Mr. Graham shall file any privileged and/or confidential information under 

seal. 

5. During the term of appointment, Mr. Graham shall preserve any records 

necessary for the Court’s review of any orders, reports, or 

recommendations made during the course of this assignment. All evidence 
6 

Mr. Graham considers in preparing his report should be recorded, 

preserved, and filed with the Court. 

6. Mr. Graham shall not communicate ex parte with the individual parties. 

Any documents exchanged between Mr. Graham and the Court shall also 

be timely served on the parties. 

7. Mr. Graham may communicate with the Court ex parte on procedural 

matters. 

8. The Court’s review of the report and recommendation that Mr. Graham 

will prepare shall be governed by Federal Rule of Civil Procedure 53(f). 

Specifically, the parties may file objections to—or a motion to adopt or 

modify—Mr. Graham’s report and recommendation no later than seven (7) 

days after a copy is served. Such a filing may not exceed 10 pages. The 

parties may file a response no later than seven (7) days after an objection 

or motion is filed, which shall also not exceed 10 pages. The moving party 

may thereafter file a reply brief, no later than five (5) days after a response 

is filed, that shall not exceed 7 pages. 

9. Mr. Graham may use a law clerk or paralegal at his discretion, and Mr. 

Graham shall keep detailed records of his time and expenses. Mr. Graham 

shall render detailed monthly bills for all fees and expenses at the rate of 

$485.00 per hour, which is his normal hourly rate for his services, and such 
7 

bills shall be paid promptly as follows: fifty percent (50%) by Ford and 

fifty percent (50%) by Versata. These monthly bills shall be submitted 

directly to counsel for the parties who shall take responsibility for prompt 

payment by their respective clients. 

The Court may modify this order, if necessary, after providing notice to the 

parties and an opportunity to be heard. 

IT IS SO ORDERED.

 s/Matthew F. Leitman 

 MATTHEW F. LEITMAN 

Dated: August 23, 2019 UNITED STATES DISTRICT JUDGE 

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

parties and/or counsel of record on August 23, 2019, by electronic means and/or 

ordinary mail. 

 s/Holly A. Monda 

 Case Manager 

 (810) 341-9764