UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

Ford Motor Company,

Plaintiff/

Counter-Defendant,

v.

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

Software, Inc., Trilogy Development 

Group, Inc. and Trilogy, Inc., 

Defendants/

Counter-Plaintiffs.

Case No. 15-10628-MFL-EAS 

(consolidated with Case No. 15-cv-11624)

Hon. Matthew F. Leitman

JURY TRIAL DEMANDED

FORD MOTOR COMPANY’S

OBJECTIONS TO VERSATA’S AMENDED 

OMNIBUS MOTIONS IN LIMINE

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TABLE OF CONTENTS

TABLE OF AUTHORITIES ................................................................................. ii

INTRODUCTION ................................................................................................. 1

1. Versata MIL #1: References to foreigners, outsourcing, and 

unpronounceable names............................................................................... 1

2. Versata MIL #2: Previously asserted causes of action, dismissed and 

abandoned claims......................................................................................... 5

a. Versata’s shifting trade secret theories............................................... 5

b. Versata’s dismissed or abandoned claims .......................................... 9

3. Versata MIL #3: Parties’ claim construction arguments and 

“reasoning” from the Court’s claim construction Orders............................ 11

4. Versata MIL #4: Comparison of Ford software to prior art with 

respect to Versata’s patent infringement claims ......................................... 13

5. Versata MIL #5: Ford’s alleged implementation of any designarounds or non-infringing alternatives ....................................................... 14

6. Versata MIL #6: Assertion that Ford cannot infringe Versata’s 

intellectual property merely because Ford has its own patents ................... 18

7. Versata MIL #7: Ford patents, including any suggestion that a patent 

or patent application is a defense to infringement, except to the extent 

that Ford’s experts or Versata’s experts have specifically asserted that 

a Ford patent discloses a Versata trade secret............................................. 21

8. Versata MIL #8: Versata’s current agreements or negotiations with 

automotive companies other than Ford ...................................................... 21

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TABLE OF AUTHORITIES

Cases

AWGI, LLC. v. Atlas Trucking Co., LLC, No. 17-12131, 

2019 U.S. Dist. LEXIS 222203 (E.D. Mich. Dec. 30, 2019) .......................13

BDT Prod’s, Inc. v. Lexmark Int’l, 

274 F.Supp.2d 880 (E.D. Ky. 2003)............................................................. 3

Big Vision Private v. EI DuPont De Nemours & Co., 

1 F.Supp.3d 224 (S.D.N.Y. 2014).............................................................5, 6

Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., No. 09-290, 

2012 U.S. Dist. LEXIS 157335 (W.D. Pa. Nov. 2, 2012)............................20

Eidos Display, LLC v. Chi Mei Innolux Corp., Case No. 6:11-CV-00201-JRG, 

2017 U.S. Dist. LEXIS 157062 (E.D. Tex. May 26, 2017) .........................10

Elledge v. Bacharach Instruments Co., Nos. 91-1931/1952, 

1992 U.S. App. LEXIS 20762 (6th Cir. Aug. 25, 1992)............................... 9

Fannon v. Johnston, 

88 F.Supp.2d 753 (E.D. Mich. 2000) ................................................9, 11, 13

Finjan, Inc. v. Blue Coat Sys., No. 13-CV-3999, 

2015 U.S. Dist. LEXIS 88760 (N.D. Cal. July 8, 2015) ..............................10

Georgia-Pacific Corp. v. United States Plywood Corp., 

318 F. Supp. 1116 (S.D.N.Y. 1970), 

mod. and aff’d, 446 F.2d 295 (2d Cir. 1971)...............................................23

Grain Processing Corp. v. American Maize-Products Co., 

185 F.3d 1341 (Fed. Cir. 1999).............................................................15, 22

Hoist Fitness Sys. v. Tuffstuff Fitness Int’l, Inc., No. ED CV 17-01388-AB, 

2019 U.S. Dist. LEXIS 209987 (C.D. Cal. Aug. 27, 2019) .........................20

Lipian v. Univ. of Mich., No. 18-13321, 

2020 U.S. Dist. LEXIS 41935 (E.D. Mich. Mar. 11, 2020).........................13

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Metaswitch Networks Ltd. v. Genband US LLC, 2016 WL 3618831, 

No. 2:14-cv-744 (E.D. Tex. March 1, 2016) ...............................................18

Plew v. Ltd. Brands, Inc., Case No. 08 Civ. 3741 (LTS)(MHD), 

2012 U.S. Dist. LEXIS 14966 (S.D.N.Y. Feb. 6, 2012) ..............................10

Rainbow Nails Enterprises, Inc. v. Maybelline, Inc., 

93 F.Supp.2d 808 (E.D. Mich. 2000) ........................................................... 2

Riles v. Shell Exploration & Prod. Co., 

298 F.3d 1302 (Fed. Cir. 2002).......................................................15, 17, 22

Rogers v. Desa Internat’l, Inc., 

183 F.Supp.2d 955 (E.D. Mich. 2002) ......................................................... 2

Sperberg v. Goodyear Tire & Rubber Co., 

519 F.2d 708 (6th Cir. 1975).......................................................................13

Statutes

18 U.S.C. § 1836.................................................................................................... 8

MCL § 445.1902.............................................................................................2, 3, 4

Other Authorities

Milgrim on Trade Secrets, §1.03 Rel. 116-12/2017................................................ 3

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INTRODUCTION

The Court should deny Versata’s eight motions in limine (“MILs”) because 

they are either contrary to law, unfairly prejudicial to Ford and a fair trial, or are 

too vague to render an informed in limine ruling. Ford responds to each Versata 

MIL separately below.

1. Versata MIL #1: References to foreigners, outsourcing, 

and unpronounceable names

Versata Motion in limine (“MIL”) No. 1 seeks to preclude Ford from 

introducing the undisputed fact that, when Versata downsized its operations in the 

United States, it outsourced support and development for the at-issue ACM and 

MCA software (including the alleged trade secrets) to dozens of foreign entities 

and individuals with whom Versata lacks any confidentiality agreement. The 

Court should deny MIL #1.

Versata admits it has “employed at least 100 developers through the 

development of the software.” (Dkt. #355-5 [Ford MSJ Ex. 16, Versata’s 11/21/17 

Supp. Answer to Ford Int. No. 28].) Versata’s expert confirmed that “about a 

hundred developers that over the years have worked on ACM.” (Dkt. #354-9

[Ford MSJ Ex. 8, Malek Dep. Tr. at p. 45].) Versata has produced approximately a 

dozen confidentiality agreements in connection with its relevant employees and 

third-party contractors. The record in this case, however, demonstrates that there 

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are at least 160 Versata employees and third-party contractors who have had access 

to the ACM/MCA software and documentation for which Versata has not 

produced any confidentiality agreement. (Dkt. #355-6 [Ford MSJ Ex. 17, Nikkila 

Decl., ¶¶2-4, attaching F.R.E. 1006 Summary].) 

Versata hired third-party contractors located in foreign countries including 

Ukraine, United Arab Emirates, and India, including “gTeam,” “DevFactory,” 

“gDev” and “SoftServe” and various foreign individuals. (Id., ¶¶5-8.) Versata has

not provided, and its corporate representative is unaware of, any confidentiality 

agreements between Versata and its various third-party contractors who worked on 

ACM/MCA. (Dkt. #355-9 [Ford MSJ Ex. 20, Krauss Dep. Tr., pp. 91].)

The fact that Versata downsized in the United States and outsourced access 

to alleged trade secrets to foreign entities without confidentiality obligations to 

Versata is directly relevant to rebut Versata’s assertion under the Michigan Trade 

Secrets Act that it has undertaken “efforts that are reasonable under the 

circumstances to maintain [] secrecy.” MCL § 445.1902, see also Rainbow Nails 

Enterprises, Inc. v. Maybelline, Inc., 93 F.Supp.2d 808, 827 (E.D. Mich. 2000)

(Rosen, J.) (summary judgment where purported trade secret was disclosed to 39 

entities allegedly subject to confidentiality obligations, but where only 6 such 

agreements were produced); Rogers v. Desa Internat’l, Inc., 183 F.Supp.2d 955, 

956-958 (E.D. Mich. 2002) (summary judgment where plaintiff allowed 

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individuals to access invention without confidentiality agreements); BDT Prod’s, 

Inc. v. Lexmark Int’l, 274 F.Supp.2d 880, 895-896 (E.D. Ky. 2003) (summary 

judgment where alleged confidentiality agreement cannot be found); Milgrim on 

Trade Secrets, §1.03 Rel. 116-12/2017 (“disclosure of information to third parties 

without adequate confidentiality arrangements extinguishes the trade secret”). 

Clearly, the absence of confidentiality agreement with individuals whom had 

access to the alleged trade secrets is relevant and admissible.

The fact that these entities are located outside the United States and were 

outsourced as a result of Versata’s domestic downsizing are some of the key 

“circumstances” the Michigan Trade Secrets Act requires the fact finder to 

consider. MCL § 445.1902. Because these individuals are subject to foreign laws 

enforceable only in their domestic courts, it was even less “reasonable” for Versata 

to disclose the alleged “trade secret” ACM software to them without obtaining 

confidentiality agreements pursuant to their country’s laws and enforceable in their 

country’s courts.

In addition, Versata’s outsourcing access to the alleged trade secrets to many 

foreign entities and individuals without confidentiality obligations to Versata is 

relevant to rebut Versata’s assertion that it operated under a “culture of protection.” 

(Dkt. #429 at 8.) These are relevant and admissible facts to rebut Versata’s 

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assertion that it has taken steps that are reasonable “under the circumstances” to 

maintain secrecy. MCL § 445.1902.

The two cases Versata cites, Dyson Tech. and Ben-Trei Overseas, are not 

trade secrets cases and did not involve granting foreign entities access to alleged 

trade secrets without any confidentiality obligations to the trade secret owner.

Ben-Trie Overseas concerned the last paragraph of an expert report 

containing a general “condemnation of foreign companies” who purportedly “do 

business differently than American companies.” Ben-Trei Overseas, L.L.C. v. 

Gerdau Ameristeel US, Inc., No. 09-CV-153-TCK-TLW, 2010 WL 1541641, *6-7

(N.D. Okla. Apr. 16, 2010). Ben-Trei Overseas is inapposite as Ford makes no 

such attacks in this case.

Dyson Tech provides no context for the witness’ “foreigner” status, holding 

only that it had “marginal probative value” to the issues in that case. Dyson Tech. 

Ltd. v. Maytag Corp., No. CIV.A. 05-434GMS, 2007 WL 6599027, *2 (D. Del. 

May 25, 2007). Ford, in contrast, has explained in detail the relevance of the fact 

that Versata provided multiple foreign entities with unfettered access to the alleged 

trade secrets without a confidentiality agreement, much less one that was

enforceable in the countries in which the entities reside.

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Versata separately requests that Ford not describe an individual’s name as 

being difficult to pronounce. Ford agrees not to do so. With the exception of that 

agreement, the Court should deny MIL #1.

2. Versata MIL #2: Previously asserted causes of action, 

dismissed and abandoned claims

a. Versata’s shifting trade secret theories

Versata wants to prevent Ford from introducing the fact that (1) when 

Versata allegedly disclosed the “combination” trade secrets to Ford, Versata did 

not tell Ford that the combinations were a trade secret, and (2) that Versata’s trade 

secret theories have shifted substantially over the course of the litigation, revealing 

that even Versata did not know what its trade secrets were. 

Both facts are highly relevant to Versata’s trade secret claim. See Big Vision 

Private v. EI DuPont De Nemours & Co., 1 F.Supp.3d 224, 248-250 and 263-266 

(S.D.N.Y. 2014) (granting summary judgment due to Big Vision’s failure to 

identify its trade secrets at the time of disclosure and its shifting trade secret 

positions during litigation), aff'd, 610 Fed. Appx. 69 (2d Cir. 2015).

In Big Vision, the court surveyed trade secret law, which holds that 

particularity in defining a trade secret is required both (i) at the time of disclosure, 

and (ii) throughout litigation. Id. at 256. The court explained “requirement of 

particularity exists for the simple reason that a defendant must know what 

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constitutes a plaintiff’s trade secret, so that it does not infringe upon that trade 

secret and so that the defendant can defend itself at any trial.” Id. at 257. The 

court noted, “each Circuit Court of Appeals to have opined on this issue has 

required a comparable degree of specificity.” Id. at 258-259.

The court cataloged Big Vision’s shifting trade secret disclosures—in its 

pleadings, its discovery disclosures, and in its expert report—to show that, at 

different times, the alleged trade secrets comprised varying combinations of 

elements. Id. at 248-251. The court granted summary judgment in DuPont’s favor 

because Big Vision did not describe the final version of the alleged trade secret 

with particularity “at the time of the disclosure.” Id. at 259-262. The Court also 

held that Big Vision’s shifting theories during litigation compelled summary 

judgment in DuPont’s favor:

Perhaps because Big Vision did not define its trade secret with 

sufficient particularity at the time of disclosure, it has similarly 

struggled to define it with sufficient particularity throughout the 

litigation. It does not require a chemistry degree to realize that the 

putative trade secret has differed meaningfully and materially 

throughout the litigation.

Id. at 263.

Big Vision makes clear that what a plaintiff identifies as its trade secret, and 

when those identifications are made, are both relevant to liability for 

misappropriation—especially where the scope of the alleged trade secrets have 

changed over time. Like Big Vision, Versata (1) never told Ford that the purported 

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“combination” trade secrets were secrets comprising specific elements when first 

disclosed to Ford, and (2) substantially changed the descriptions of its trade secret 

over the course of this litigation.

The following chart summarizes Versata’s evolving trade secret disclosures.

Date

# of Alleged 

Secrets Disclosure

2000-2014 0

No disclosure to Ford that ACM/MCA 

contains any trade secret “combinations”

December 31, 2015 14 Versata’s Disclosure of Asserted Claims 

and Infringement Contentions (Dkt. #359-6)

February 1, 2016 14 Versata’s Amended Trade Secret 

Contentions (Dkt. #260-6)

July 18, 2016 12 Versata’s Motion for Preliminary Injunction 

(Dkt. #128)

February 28, 2017 29 Versata’s Supplemental Amended Trade 

Secret Contentions (Dkt. #568-8)

June 20, 2017 27 Versata’s Second Supplemental Amended 

Trade Secret Contentions (Dkt. #421-9)

August 17, 2017 31 Versata’s Opening Trade Secret Expert 

Report (Dkt. #568-9)

Feb. 1, 2019 4

Versata’s Response to Ford’s Motion to 

Exclude Krauss (Dkt. #605, p. 13)

March 6, 2019 4

Versata’s Response to Ford’s Second 

Motion for Reconsideration (Dkt. #628)

Versata’s counsel expressly acknowledged the increased “risk” Versata

faced in establishing liability due to its shift to a “combination” trade secret theory

in 2019:

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MR. MITBY: Well, let me -- let me explain it because I think you're 

focusing on a risk that Versata is taking and a risk that we thought 

about a lot, that if we don't prove that they misappropriated all the 

elements of a trade secret, that we can't prove liability and we can't get 

damages. And that is absolutely right.

(Ex. 1, 6/10/19 Hrg. Tr. at p. 66.)

Versata’s failure to tell Ford that the “combinations” were trade secrets 

when they were purportedly disclosed to Ford, and Versata’s continuously shifting 

disclosures in the litigation, cannot be disputed. These facts are highly relevant to 

Versata’s ability to establish liability for misappropriation.

Versata’s shifting positions on the identity of its alleged trade secrets is also 

highly relevant to Versata’s assertion that Ford’s alleged misappropriation was 

“willful and malicious.” (Dkt. #244, Counterclaim at p. 66, ¶165.) Versata seeks 

“double the amount of damages and losses” as a result of Ford’s alleged “willful 

and malicious” misappropriation pursuant to 18 U.S.C. § 1836(b)(3). (Id., pp. 78-

79.) How can Ford have willfully infringed trade secret “combinations” that it did 

not know about and Versata did not identify until long after the close of discovery 

in this case? The absence, timing, and shifting of Versata’s trade secret 

contentions is directly relevant to Versata’s willfulness claim.

Versata cites no authority prohibiting a defendant from presenting the jury 

with the trade secret owner’s shifting and contrary descriptions of its trade secrets. 

The only case Versata cites concerning trade secret disclosures, CardiAQ Valve 

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Techs., Inc. v. Neovasc Inc., 2016 WL 8203206, at *1 (D. Mass. Apr. 25, 2016),

held “Neovasc can1 contest, question and challenge the accuracy of CardiAQ’s 

written list of alleged trade secret claims.” In other words, CardiAQ Valve

undermines Versata’s position that its trade secret disclosures are inadmissible at 

trial.

For these reasons, the court should deny Versata’s request to exclude the fact 

that its trade secret disclosures changed throughout the litigation.

b. Versata’s dismissed or abandoned claims

Unless Versata opens the door on the issue, Ford has no intention of 

introducing the fact that some of Versata’s prior claims have been dismissed or 

abandoned. See Fannon v. Johnston, 88 F.Supp.2d 753, 763 (E.D. Mich. 2000)

(once a party “has opened the door, and testimony of both a general and specific 

nature may be elicited to provide a complete picture of the subject raised”); 

Elledge v. Bacharach Instruments Co., Nos. 91-1931/1952, 1992 U.S. App. LEXIS 

20762, at * 6-7 (6th Cir. Aug. 25, 1992) (“the introduction of inadmissible 

evidence by one party opens the door for an opponent to introduce evidence on the 

same issue to rebut any false impression that was given”).

An issue over Versata’s copyright claim arises because, despite the Court 

dismissing Versata’s copyright claim on the merits, Versata intends to assert at trial 

1 Unless otherwise indicated, Ford added all emphasis.

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that Ford “copied” aspects of the ACM/MCA software. (Versata Am. MIL, p. 6.) 

As Ford explained in Ford MIL #1, courts generally prohibit use of the term

“copying” and other pejorative terms such as “stealing. See Finjan, Inc. v. Blue 

Coat Sys., No. 13-CV-3999, 2015 U.S. Dist. LEXIS 88760, at *6 (N.D. Cal. July 8, 

2015); Plew v. Ltd. Brands, Inc., Case No. 08 Civ. 3741 (LTS)(MHD), 2012 U.S. 

Dist. LEXIS 14966, at *6 (S.D.N.Y. Feb. 6, 2012); Eidos Display, LLC v. Chi Mei 

Innolux Corp., Case No. 6:11-CV-00201-JRG, 2017 U.S. Dist. LEXIS 157062, at 

*7 (E.D. Tex. May 26, 2017). 

Versata cites Mike’s Train House, Inc. v. Lionel, LLC, 472 F.3d 398, 404 

(6th Cir. 2006) to support Versata’s use of the term “copying” to support its trade 

secret claim. But in that case, the defendant “copied design drawings for MTH 

trains onto computer disks” and “admitted to copying.” Id. In the present case, in 

contrast, it is undisputed that Ford’s replacement PDO software does not include a 

single line of code from Versata’s ACM/MCA software. Versata has no evidence 

of “copying” in this case, and its use of that term at trial is unfairly prejudicial—

especially in view of the Court’s dismissal of Versata’s copyright claim. (Dkt. 

#601, Summary Judgment Order.)

If Versata refrains from alleging at trial that Ford “copied” or “stole” 

Versata’s ACM/MCA software, Ford will not introduce the Court’s order 

dismissing Versata’s copyright claim on the merits. But if Versata opens the door 

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and uses such pejorative and improper terms over Ford’s objection here, and 

Ford’s objection in MIL #1, Ford should be permitted to introduce the Court’s 

substantive dismissal of Versata’s copyright claim. See Fannon, 88 F.Supp.2d at

763.

In addition, Ford will address—consistent with the Court’s two Exclusion 

Orders—the fact that Mr. Krauss did not properly carve-out Versata’s non-asserted 

intellectual property, including its non-asserted, abandoned, and dismissed patents, 

and its dismissed copyrights. In doing so, and unless Versata opens the door, 

Ford’s experts will not introduce the fact that a particular Versata patent or 

copyright was previously-asserted, abandoned or dismissed—just that Krauss did 

not properly carve them out of his apportionment analysis.

3. Versata MIL #3: Parties’ claim construction arguments 

and “reasoning” from the Court’s claim construction 

Orders

MIL #3 seeks to preclude Ford from introducing “claim construction 

positions, evidence, or arguments advocated by the parties” and the Court’s 

“reasoning” set forth in its claim construction Orders. (Versata Am. MIL, pp. 6-7.) 

Versata’s motion is an improper attempt to avoid the Court’s findings in its 

claim construction order which flatly reject Versata’s infringement theory on, at 

least, the asserted ’308 and ’294 patents.

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In its claim construction Order, the Court held “[i]t may be fair to conclude 

that the ’651 patent describes an invention having a maintenance system and a 

configuration system fulfilling distinct roles.”2(Dkt. #181, Report and 

Recommendation at 11, adopted “in its entirety” at Dkt. #317.) The Court’s Order 

noted Versata’s admission that “[t]here is no dispute that the maintenance system

‘is used to define a product,’ while the configuration system ‘is used to configure a 

system using a definition created by the maintenance system.’” (Id. at 10.) These 

statements draw an important legal distinction between product “definition” on the 

one hand, and product “configuration” on the other—two different functions.

For example, ignoring these distinctions, Versata’s expert (Dr. Malek) 

improperly asserts that “product definition” features of Ford’s PDO software 

satisfy “product configuration” limitations of the asserted claims of the ’308/’294 

patents. Ford’s technical expert explained that Dr. Malek’s infringement opinions 

on the ’308 and ’294 patents are contrary to the Court’s claim construction Order. 

(Ex. 2, Myers Patent Inf. Rebuttal, ¶¶63-70, 77-79.) 

To the extent Dr. Malek opens the door and introduces improper 

infringement theories that are contrary to the Court’s findings in its claim 

construction ruling(s), the Court should permit Ford to introduce the relevant 

2 Although Versata is no longer asserting the ’651 patent against Ford in this 

litigation, it is the parent patent to both the ’308 and ’294 patents with which it 

shares a specification. Accordingly, the Court’s holdings with respect to the 

described invention of the ’651 patent apply equally to the ’308 and ’294 patents.

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aspects of those rulings into evidence to rebut Dr. Malek’s assertions. See Fannon, 

88 F.Supp.2d at 763. Versata appears to agree that, in the event it presents 

evidence or argument at trial that is contrary to the “reasoning” set forth in the 

Court’s claim construction rulings, Ford may bring that issue to the Court’s 

attention at the bench and outside the presence of the jury. (Versata Am. MIL, p. 

8.) Ford agrees with this approach.

4. Versata MIL #4: Comparison of Ford software to prior art

with respect to Versata’s patent infringement claims

MIL #4 seeks to preclude Ford from asserting non-infringement of Versata’s 

patents by comparing Ford’s accused PDO software to the prior art. (Versata Am. 

MIL, p. 8.) The Court should deny Versata’s motion at the threshold because the 

motion is not specific as to the particular evidence or assertions Versata is 

concerned about. See Sperberg v. Goodyear Tire & Rubber Co., 519 F.2d 708, 

712 (6th Cir. 1975) (“Orders in limine which exclude broad categories of evidence 

should rarely be employed.”); AWGI, LLC. v. Atlas Trucking Co., LLC, No. 17-

12131, 2019 U.S. Dist. LEXIS 222203, at *12 (E.D. Mich. Dec. 30, 2019)

(denying the movant’s motion in limine because it failed to identify any specific 

evidence it sought to exclude.).3

3

It would be improper for Versata to introduce new arguments and evidence 

for the first time in its reply brief. See Lipian v. Univ. of Mich., No. 18-13321, 

2020 U.S. Dist. LEXIS 41935, at *8 (E.D. Mich. Mar. 11, 2020).

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The Court should deny Versata’s motion for additional reasons as well. 

First, the asserted patents expressly describe prior art when introducing the 

purported inventions. For example, each asserted patent includes a “Background 

of the Invention” and “Background Art” section explaining the context in which 

the purported inventions arise. (Ex. 3, e.g., ’308 patent, col. 1, lines 7-62.) This 

information is relevant background information for each asserted patent. There is 

no basis for excluding it; it is already in evidence as part of the patents. Versata 

cites no authority for excluding descriptions of prior art expressly stated in the 

patent specifications. 

Second, Ford’s patent and trade secret experts have identified prior art 

software in their reports that is directly relevant to other issues in the case, such as 

Ford’s patent invalidity counterclaims, and Ford’s rebuttal to Versata’s trade secret 

claims, as set forth in the relevant expert reports. Versata does not address these 

other claims and defenses in MIL #4. Thus, evidence of Ford’s prior art software 

remains both relevant and admissible at trial.

For these reasons, the Court should deny MIL #4.

5. Versata MIL #5: Ford’s alleged implementation of any 

design-arounds or non-infringing alternatives

MIL #5 seeks to prevent Ford from introducing the fact that Ford 

successfully tested the commercially available “Configit” software to prove that 

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Configit was an acceptable low-cost alternative to the at-issue ACM/PDO 

software. The court should deny MIL #5 because these facts are directly relevant 

to the damages issues this case. Configit is more capable than, and costs much less 

than, the ACM software for which Versata charged Ford annually. The 

Federal Circuit has long recognized the relevance of available non-infringing 

alternatives in determining a “reasonable royalty” for alleged infringement. See 

Grain Processing Corp. v. American Maize-Products Co., 185 F.3d 1341, 1347

(Fed. Cir. 1999); Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1312 

(Fed. Cir. 2002) (“The economic relationship between the patented method and 

non-infringing alternative methods, of necessity, would limit the hypothetical 

negotiation.”).

Ford disclosed Configit as a non-infringing alternative throughout discovery. 

As Versata acknowledges, Ford disclosed Configit in its original and supplemental 

interrogatory responses. (Versata Am. MIL, p. 9, Exs. B and E.) Ford produced 

demonstrations of Configit in discovery, and hundreds of pages of communications 

between Ford and Configit concerning Ford’s evaluation and testing of the 

software. Ford attaches representative examples of these documents at Exhibit 4. 

Ford’s damages expert disclosed Configit, its pricing, and its relevance to the 

damages issues, in her October 26, 2017 rebuttal damages report. (Ex. 5 at 65-70.) 

She also explained that Jaguar Land-Rover had successfully implemented Configit 

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(coincidentally to replace Versata’s “End of Life” ACM software). Id. Similarly, 

Ford’s technical expert explained in his expert report that the commercially 

available Configit software did not practice any of Versata’s patents asserted 

against Ford. (Ex. 2, Myers Patent Inf. Rebuttal, pp. 156-168.) The commercial 

availability and commercial success of Configit reveals that, at the time of the 

“hypothetical negotiation” in this case, ACM was dramatically over-priced.

Versata requests that the Court prevent Ford from asserting that Ford 

“actually implemented” Configit because, according to Versata, “Ford has never 

disclosed that it actually implemented any of these alternatives, including 

Configit.” (Versata Am. MIL, p. 9.) But Ford disclosed to Versata the evidence 

that it had, in fact, implemented Configit software and confirmed that the software 

could meet the demands of even Ford’s most complex vehicles—something 

Versata’s ACM software could never do. For example, the 2017 “PDO Compile 

Prototype” specification prepared by Ford and Configit expressly defines and 

details multiple phases of Ford’s integration of Configit’s configuration software. 

(Ex. 6, FV_129978-130001.) Additionally, Ford produced numerous workshop 

agendas and related notes along with multiple rounds of software pricing proposals 

and negotiations underlying the joint Ford-Configit work. (See, e.g., Ex. 4 at 

FV_129324-38, FV_129780-81, and FV_127056-66.) In addition to producing 

these and many other documents describing Ford’s installation and testing of 

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Configit software, Ford also identified a representative set of such documents in its 

responses to Interrogatory Nos. 18 and 38.

Moreover, in May 2017, Versata questioned Ford’s 30(b)(6) witness 

Michael Sullivan about Ford’s relationship with Configit, which was just 

beginning at that time. (Ex. 7, Sullivan 5/25/17 Dep. Tr. at 264-65, 269-70, and 

275-76.) Mr. Sullivan confirmed both that Configit’s software appeared to provide 

a viable alternative to PDO and that Ford was “plan[ning] on pursuing Configit.” 

(Id.) More than a year later, Versata served a second 30(b)(6) deposition notice. 

Versata’s notice included three topics expressly relating to Ford’s implementation 

and analysis of non-infringing alternatives. (Ex. 8, Topic Nos. 32-34.) Although 

Ford prepared its 30(b)(6) witness extensively on these issues—including Ford’s 

continued work with Configit—Versata’s counsel did not ask any questions 

relating to Configit or any other non-infringing alternatives Ford identified.

Ford has the right to present its evidence of Configit as a non-infringing 

alternative to the jury in this case. Riles, 298 F.3d at 1312. Ford disclosed its 

implementation of Configit throughout discovery and Versata largely ignored it. 

For these reasons, the Court should deny MIL #5.

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6. Versata MIL #6: Assertion that Ford cannot infringe 

Versata’s intellectual property merely because Ford has 

its own patents

MIL #6 seeks to exclude references to Ford patents for all patent and trade 

secret issues. Versata asserts that Ford’s patents are irrelevant “to the infringement 

analysis with respect to Versata’s asserted patents” and “to Versata’s trade secret 

misappropriation claims.” (Versata Am. MIL, p. 11.)4 None of the three cases 

Versata cites support this MIL—and one confirms that Ford may use its patents to 

rebut Versata’s allegations of “copying” and willful infringement.

Versata asserts that Two-Way Media LLC v. AT&T Operations, Inc., No. 

5:09-cv-476-OLG (Dkt. #501) (W.D. Tex. Feb. 27, 2013) granted an “identical 

motion in limine with respect to patent infringement.” (Id.) That decision, 

however, merely lists several dozen MILs by number, without explanation or 

discussion. (Ex. 9.) Versata does not identify which of the MILs purportedly 

relates to this issue, let alone explain how it is “identical” to Versata’s MIL #6.

Likewise, Metaswitch Networks Ltd. v. Genband US LLC, 2016 WL 

3618831 at *2, No. 2:14-cv-744 (E.D. Tex. March 1, 2016) does not support 

Versata’s MIL #6. There, the parties “agreed” to exclude evidence “that practicing 

4 Versata also asserts that Ford’s patents “are indisputably different than the 

Versata patents at issue in this case.” (Versata Am. MIL, p. 11.) Ford is not 

certain what Versata means by “different than” in this context. Ford’s patents 

cover its accused PDO software and Versata asserts that its patents cover Ford’s 

PDO software. Because both sets of patents cover the same software, Ford’s 

patents are not “different than the Versata patents at issue in this case.” 

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a party’s own patent or patent application is a defense to infringement.” Id. 

(“Agreed Motion in Limine No. 15”). The Court did not discuss or analyze the 

issue.

Only one of Versata’s cases analyzes the issue, and it supports Ford’s use of 

its patents to defend against Versata’s baseless allegations of “copying” and 

willfulness. Retractable Techs., Inc. v. Becton, Dickenson & Co., No. 2:07–CV–

250 (Dkt. #262) at 13 (E.D. Tex. Oct. 8, 2009) (Ex. 10). Like Versata here, the 

plaintiff in Retractable Techs. “claimed that BD has ‘copied’ RTI’s technology.” 

Id. (Dkt #261, p. 3) (Ex. 11.) Like the defendant in Retractable Techs., Ford 

contends that it developed its software independently and did not copy. 

Affirming that the defendant could use its patents for this purpose, the Court 

held, “Defendants should be allowed to present evidence of independent

development to rebut allegations that Defendant willfully infringed or that 

Defendant copied Plaintiffs’ technology.” Id. (Dkt #262, p. 13) It also held, 

“evidence of Defendant’s development efforts and intellectual property, including

patents, may be relevant to a reasonable royalty analysis.” Id. The Court said it 

would give a limiting instruction that owning or licensing patents “is not a defense 

to infringement in this case.” Id. 

Another case Versata cites, albeit in connection with MIL #2, holds that 

evidence of a defendant’s patents on to the accused technology is relevant and 

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admissible to “show lack of malicious theft of trade secrets.” VIA Techs., Inc. v. 

ASUS Computer Int’l, 2017 WL 3051048, *1 (N.D. Cal. July 19, 2017). Thus, two 

of the cases Versata cites undermine Versata’s requested exclusion.

Other cases are consistent with the cases Versata cited—allowing evidence 

of a defendant’s patents to rebut claims of willful infringement and copying. See 

Hoist Fitness Sys. v. Tuffstuff Fitness Int’l, Inc., No. ED CV 17-01388-AB, 2019 

U.S. Dist. LEXIS 209987, at *3-4 (C.D. Cal. Aug. 27, 2019) (denying plaintiff’s 

Motion in limine to exclude defendant’s patents to as evidence of independent 

development and to rebut plaintiff’s claims of willful infringement); Carnegie 

Mellon Univ. v. Marvell Tech. Group, Ltd., No. 09-290, 2012 U.S. Dist. LEXIS 

157335, at *7 (W.D. Pa. Nov. 2, 2012) (finding the evidence regarding defendant’s 

patents relevant to several issues including alleged copying and willfulness).

Versata cites no case supporting its requested exclusion. Ford should be 

allowed to present its evidence of independent development, including its work 

before contracting with Versata and its patents obtained afterward, to rebut 

Versata’s allegations of copying and willful infringement.

For these reasons, the Court should deny MIL #6.

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7. Versata MIL #7: Ford patents, including any suggestion 

that a patent or patent application is a defense to 

infringement, except to the extent that Ford’s experts or 

Versata’s experts have specifically asserted that a Ford 

patent discloses a Versata trade secret

MIL #7 is a subset of MIL #6. MIL #7 asks for the relief of MIL #6 with an 

exception to allow a party to present “Ford patents . . . to the jury if a party has 

directly relied on a Ford patent as disclosing an asserted trade secret.” (Versata 

Am. MIL, p. 14.) This MIL is unnecessary because MIL #6 resolves this issue and 

because Ford does not seek to exclude any Versata expert from asserting that a 

Ford patent discloses an asserted trade secret if raised in an expert report.

For these reasons, the Court should deny MIL #7.

8. Versata MIL #8: Versata’s current agreements or 

negotiations with automotive companies other than 

Ford

MIL #8 seeks to prevent Ford introducing relevant facts that undermine 

positions Versata’s damages experts have taken in this case. The Court should 

deny MIL #8.

In their October 9, 2018 joint expert report, Versata’s damages experts 

(Bokhart and Elson) asserted that Versata’s ACM license with is a 

“market indicator” of the “reasonable royalty” the jury should award for Ford’s 

alleged misappropriation of trade secrets and patent infringement. (Ex. 12, pp. 36-

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37.) At that time, Versata’s relationship with was, from Versata’s 

perspective, both relevant and admissible.

Today, Versata’s ACM license with is expiring and 

has no apparent intention of renewing the license. has publicly 

announced its conversion to “Configit,” a lower-cost and commercially available 

alternative to ACM addressed in Ford’s response to MIL #5 above. Ford’s 

technical and damages experts have extensively addressed Configit as a viable and 

lower-cost alternative to (and improvement over) ACM. Configit is relevant to the 

“reasonable royalty” in this case. See Grain Processing, 185 F.3d at 1347; Riles, 

298 F.3d at 1312.

Versata seeks to prevent Ford from introducing the fact that 

, a fact that undermines Bokhart’s and 

Elson’s assertions that Versata’s license with is a “market indicator” 

of a reasonable royalty in this case. From Ford’s perspective, 

unwillingness to renew the ACM license corroborates Versata’s statement to Ford 

that the ACM software is “End of Life” and was “Redlining”—statements Versata 

is attempting to distance itself from in this case. Also, the fact that Versata has 

tried, but failed, to license ACM to others is directly relevant to the determination 

of a reasonable royalty under the well-established Georgia–Pacific factors, 

specifically Factor No. 8: “The established profitability of the product made under 

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the patent; its commercial success; and its current popularity.” Georgia-Pacific 

Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), mod. 

and aff’d, 446 F.2d 295 (2d Cir. 1971). 

The facts surrounding Versata’s current “negotiations” with are 

directly relevant to the damages issue, as Versata’s experts have already indicated. 

It would be unfair to permit Versata’s damages experts to introduce Versata’s 

ACM license with as evidence of damages but prevent Ford from 

introducing the fact that is dissatisfied with ACM, is not renewing the 

ACM license, and is transitioning to the lower-cost and more reliable alternative 

that Ford’s experts have identified in their respective reports as an acceptable noninfringing alternative.

For these reasons, the Court should deny MIL #8.

Respectfully submitted, 

Dated: March 26, 2020 By: /s/ John S. LeRoy 

John S. LeRoy (P61964)

Thomas A. Lewry (P36399)

Christopher C. Smith (P73936)

Jonathan D. Nikkila (P75666)

1000 Town Center, 22nd Floor

Southfield, MI 48075

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

jleroy@brookskushman.com

tlewry@brookskushman.com

csmith@brookskushman.com

jnikkila@brookskushman.com

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James P. Feeney (P13335)

DYKEMA GOSSETT PLLC

39577 Woodward Ave, Suite 300

Bloomfield Hills, MI 48304

Ph: 248-203-0841

jfeeney@dykema.com

Attorneys for Plaintiff, Ford Motor 

Company

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CERTIFICATE OF ELECTRONIC SERVICE

I hereby certify that on March 26, 2020, I electronically filed an 

REDACTED CONFIDENTIAL copy of FORD MOTOR COMPANY’S 

OBJECTIONS TO VERSATA’S AMENDED OMNIBUS MOTIONS IN 

LIMINE and all Exhibits in Support with the Clerk of the Court using the ECF 

System’s SEALED DOCUMENT EVENT which will send notification to all 

registered participants of the ECF System. I have also submitted paper copies of 

all sealed documents via electronic means to counsel using the following 

information: 

Counsel for Defendants:

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

Development Group, Inc. and Trilogy, Inc.

AZA-Versata-Ford@AZALAW.COM

(which includes all the ECF Registered users listed above)

 /s/ John S. LeRoy 

John S. LeRoy (P61964)

BROOKS KUSHMAN P.C.

Attorneys for Plaintiff

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