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 (1) DENYING IN PART PLAINTIFF’S MOTION FOR SUMMARY 

JUDGMENT (ECF ## 354, 358), (2) GRANTING IN PART AND DENYING 

IN PART DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT (ECF 

## 379, 380), AND (3) GRANTING DEFENDANTS’ REQUEST TO FILE 

SUPPLEMENTAL EXPERT REPORTS 

 Defendant/Counter-Plaintiffs Versata Software, Inc., Versata Development 

Group, Inc., and Trilogy, Inc. (collectively, “Versata”) are computer software 

developers based in Austin, Texas. (See Sec. Am. Counterclaims at ¶6, ECF #244 at 

Pg. ID 12997.) For more than two decades, Versata licensed automotive 

configuration software programs called “ACM,” “MCA,” and “ACS” (collectively, 

the “Versata Software”) to Plaintiff Ford Motor Company. (See id. at ¶8, Pg. ID 

12997.) In 2014, Ford decided to replace the Versata Software with an automotive 

configuration software program that it developed internally. (See Sec. Am. Compl. 

at ¶46, ECF #226 at Pg. ID 11723.) Ford called this software “PDO.” (See id.) 

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 In this action, Ford seeks a declaratory judgment that PDO does not infringe 

and/or misappropriate patents, copyrights, and trade secrets belonging to Versata. 

(See generally, id.) Ford also claims Versata breached certain licensing agreements 

and contracts that the parties had executed, including a “Master Subscription and 

Services Agreement” executed in 2004 (the “MSSA”). (See id.) Versata has filed 

counterclaims for infringement of the same patents and copyrights, misappropriation 

of the same trade secrets, and breaches of the same contracts. (See Ans. and Sec. 

Am. Counterclaims, ECF #244.) 

 On February 1, 2018, and February 13, 2018, Ford and Versata filed crossmotions for summary judgment with respect to many of these claims and 

counterclaims. (See Ford Mot., ECF ## 354, 358; Versata Mot., ECF ## 379, 380.) 

On July 10, 2018, the Court entered an order referring the patent portions of the 

summary judgment motions to Special Master Lawrence Graham. (See ECF #509.) 

The Court then held a hearing on the non-patent portions of the cross-motions on 

July 24, 2018. (See ECF #497.) During that hearing, the Court ruled on some 

portions of the cross-motions, and it took other aspects of the motions under 

advisement. (See ECF #516.) The Court now issues this order resolving the 

remaining non-patent portions of the summary judgment motions. 

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I 

(Ford’s Motion for Summary Judgment on Counts 4 and 6 of its Second 

Amended Complaint and Counts 9 and 13 of Versata’s Counterclaims – 

Dispute Regarding Who Owns the Relevant Trade Secrets) 

In Count 4 of Ford’s Second Amended Complaint, Ford seeks a declaratory 

judgment that it “owns, or is licensed to reproduce” the ACM software. (See Sec. 

Am. Compl. at ¶¶ 73-78, ECF #226 at Pg. ID 11728-29.) In Count 6 of Ford’s 

Second Amended Complaint, Ford seeks a declaratory judgment that it did not 

misappropriate, and indeed could not have misappropriated, the trade secrets 

embedded in the Versata Software because, among other things, it “either owns, or 

has a royalty-free license to reproduce the [Versata] [S]oftware.” (Id. at ¶89, Pg. ID 

11731.) 

Versata raises the same ownership issues in Counts 9 and 13 of its 

counterclaims. In those counterclaims, Versata says that it “developed and owns” 

the trade secrets embedded in the Versata Software and that Ford “misused, 

misappropriated, and disclosed” those trade secrets. (Sec. Am. Counterclaims at ¶¶ 

136-139, 160-166, ECF #244 at Pg. ID 13029-30, 13034-36.) 

Ford moved for summary judgment on the claims and counterclaims 

identified above on the ground that it “owns” the trade secrets embedded within the 

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Versata Software.1 (Ford Mot., ECF #354 at Pg. ID 18659.) The Court concludes 

that Ford is not entitled to summary judgment on that ground. When Ford agreed to 

the MSSA in 2004, it “irrevocably acknowledge[d] ... that [it] ha[d] no ownership 

interest in the Software....” (MSSA at § 6.1, ECF #366-16 at Pg. ID 20774. See also 

MSSA at § 7.6, Pg. ID 20774: “Subject to the licenses granted herein, Ford has no 

ownership interest in the Software....”). And as defined in the MSSA, the 

“Software” that Ford disclaimed an ownership interest in included the Versata 

Software.2

 Based on this unambiguous acknowledgment, Ford cannot now claim an 

ownership interest in the trade secrets embedded in the Versata Software. 

Ford counters that the trade secrets embedded within the Versata Software are 

distinct from the Versata Software itself. Ford therefore insists that even if it 

disclaimed ownership of the Versata Software, it still may claim an ownership 

                                                            

1

 Ford also argued that it is entitled to summary judgment on Count 6 of its Second 

Amended Complaint and Counts 9 and 13 of Versata’s Second Amended 

Counterclaims because Versata did not take reasonable measures to maintain the 

secrecy of the trade secrets at issue. (See Ford Mot., ECF #354 at Pg. ID 18643-58.) 

The Court denied this portion of Ford’s motion on the record at the summary 

judgment hearing. (See ECF #516 at Pg. ID 40420-21.) 

2

 The MSSA defined “Software” as, among other things, “the Applications listed in 

any Subscription Schedule issued hereunder.” (MSSA, ECF #366-16 at Pg. ID 

20770.) Subsequent Subscription Schedules listed “Automotive Configuration 

Services (ACS) v.2.1,” “Material Cost Analytics (MCA) v.05,” and “the Trilogy 

ACM Software” as “Applications.” (See ECF #372-2 at Pg. ID 22562; ECF #372-3 

at Pg. ID 22572.) Therefore, the Versata Software qualifies as “Software” under the 

MSSA. 

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interest in the relevant trade secrets. The Court simply is not persuaded that, for 

ownership purposes, the trade secrets are distinct from the software that Ford 

“irrevocably acknowledge[d]” it did not own. 

Accordingly, because Ford “irrevocably acknowledge[d]” in the MSSA that 

it did not own the Versata Software, the Court DENIES Ford’s motion for summary 

judgment with respect to Counts 4 and 6 of its Second Amended Complaint and 

Counts 9 and 13 of Versata’s Second Amended Counterclaims. 

II 

(Versata’s Motion for Summary Judgment on Counts 4 and 5 of Ford’s 

Second Amended Complaint – Dispute Regarding Who Owns the Relevant 

Trade Secrets) 

As noted above, in Count 4 of Ford’s Second Amended Complaint, Ford seeks 

a declaratory judgment that it owns the ACM software. (See Sec. Am. Compl. at ¶¶ 

73-78, ECF #226 at Pg. ID 11728-29.) And in Count 5 of Ford’s Second Amended 

Complaint, Ford seeks a declaratory judgment that it owns other “software 

deliverables” that Versata produced and delivered to Ford (i.e., the Versata 

Software). (Id. at ¶¶ 79-83, Pg. ID 11729-30.) 

 Versata sought summary judgment on these two counts of Ford’s Second 

Amended Complaint on the basis that it (Versata), not Ford, owns the Versata 

Software and the trade secrets embedded within that software. (See Versata Mot., 

ECF #379 at Pg. ID 22787-89.) The Court agrees. For all of the reasons stated in 

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Section I above, Versata owns the Versata Software under the MSSA. Indeed, Ford 

“irrevocably acknowledge[d]” in the MSSA that it did not own the Versata Software. 

(MSSA at § 6.1, ECF #366-16 at Pg. ID 20774.) 

Thus, because Versata owns the Versata Software and the trade secrets 

embedded within that software under the MSSA, the Court GRANTS Versata 

summary judgment on Counts 4 and 5 of Ford’s Second Amended Complaint.3

III 

(Versata’s Motion for Summary Judgment of Count 11 of its Second 

Amended Counterclaims – Versata’s Allegations that Ford Breached the 

MSSA By “Reverse Engineering” the Versata Software) 

 In Count 11 of Versata’s Second Amended Counterclaims, Versata alleges, 

among other things, that Ford breached Section 1.7 of the MSSA when Ford 

developed PDO. (See Sec. Am. Counterclaims at ¶¶ 148-156, ECF #244 at Pg. ID 

13032-33.) Section 1.7 prohibits Ford from “reverse engineering” the Versata 

Software. (See id. at ¶155, Pg. ID 13033.) That section defines “reverse 

engineering” in relevant part as follows: 

                                                            

3

 The Court notes for clarity that in Counts 4 and 5 of Ford’s Second Amended 

Complaint, Ford seeks only a declaration that it owns the Versata Software. Versata 

has not moved for summary judgment on its affirmative claim that Ford 

misappropriated Versata’s trade secrets, and the Court makes no such holding today. 

The Court holds only that Versata, not Ford, owns the Versata Software – and the 

trade secrets embedded within that software – under the MSSA and that Versata is 

therefore entitled to summary judgment on Counts 4 and 5 of Ford’s Second 

Amended Complaint. Whether Ford misappropriated Versata’s trade secrets is an 

issue to be decided at trial. 

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Disassembling, Decompiling, and reverse engineering 

include[s], without limitation, “(i) converting the Software 

from a machine-readable form into a human-readable 

form;” [....] (iii) examining the machine-readable object 

code that controls the Software’s operation and creating 

the original source code or any approximation thereof by, 

for example, studying the Software’s behavior in response 

to a variety of inputs;” [and] (iv) performing any other 

activity related to the Software that could be construed to 

be reverse engineering, disassembling, or decompiling. 

(MSSA at § 1.7, ECF #366-16 at Pg. ID 20771.) 

 In Versata’s summary judgment motion, it argues that Ford “reverse 

engineered” the Versata Software in violation of Section 1.7 when Ford inputted 

identical data into both ACM and PDO and then “studied” the “outputs” from 

Versata’s software “for the purpose of ensuring that [PDO] produced identical 

outputs.” (Versata Mot., ECF #379 at Pg. ID 22790.) 

The Court declines to grant Versata summary judgment on the basis that Ford 

breached Section 1.7 by “reverse engineering” the Versata Software. For the reasons 

stated on the record in the Court’s questions to the parties on this issue at the 

summary judgment hearing, the “reverse engineering” clause in Section 1.7 is 

ambiguous and not subject to interpretation as a matter of law. (See 7/24/2018 

Hearing Tr., ECF #519 at Pg. ID 40587-95.) In particular, it is not clear whether 

Section 1.7 prohibits any and all “studying [of] the Software’s behavior in response 

to a variety of inputs,” or whether Section 1.7 prohibits only such studying that is 

part of an effort to “examin[e] the machine-readable object code that controls the 

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Software’s operation and create[e] the original source code or any approximation 

thereof....” This ambiguity precludes summary judgment because, on this record, a 

jury could reasonably find that even if Ford studied the Versata Software’s output in 

response to certain inputs, it did not do so as part of an effort to examine the Versata 

Software’s machine-readable object code and/or to create the original source code 

or an approximation thereof. 

Therefore, the Court DENIES Versata summary judgment on its claim in 

Count 11 of its Second Amended Counterclaims that Ford breached Section 1.7 by 

“reverse engineering” the Versata Software. 

IV 

(Versata’s Motion for Summary Judgment of Count 14 of its Second 

Amended Counterclaims – Versata’s Allegation That Ford Infringed 

Versata’s Copyrights) 

 In Count 14 of Versata’s Second Amended Counterclaims, Versata alleges 

that Ford infringed Versata’s “exclusive copyrights” in the Versata Software in a 

variety of ways. (Sec. Am. Counterclaims at ¶¶ 172-73, ECF #244 at Pg. ID 13036-

37.) In Versata’s summary judgment motion, it moved for summary judgment on 

its copyright infringement claim in two respects. The Court concludes that Versata 

is not entitled to summary judgment in either respect. 

First, Versata argued in its summary judgment motion that Ford infringed its 

(Versata’s) copyrights when Ford used the Versata Software in a manner that 

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exceeded Ford’s license under the MSSA. (See Versata Mot., ECF #379 at Pg. ID 

22797.) For example, Versata asserted that Ford copied Versata’s copyrighted 

“.jar” files into Ford’s “PDO repository” for the purpose of “reverse engineering” 

the Versata Software. (Id.) Versata insisted that because Section 1.7 of the MSSA 

prohibited “reverse engineering,” Ford’s copying and use of Versata’s copyrighted 

files in this manner was unlicensed, and thus constituted copyright infringement. 

(See id.) However, for all of the reasons stated in Section III above, a jury could 

reasonably find that Ford did not conduct “reverse engineering” in violation of 

Section 1.7. Therefore, the Court cannot conclude as a matter of law that Ford’s 

actions exceeded the scope of its software license under the MSSA and constituted 

infringement of Versata’s copyrights. 

Second, Versata argued in its summary judgment motion that its copyrighted 

“.jar” files “existed in Ford’s PDO environment after [Ford’s] license to the ACM 

software expired.” (Id. at Pg. ID 22798.) Versata insisted that this unlicensed use of 

the Versata Software also infringed its copyrights. But Ford has presented evidence 

that, if credited by a jury, could establish that it did not have any of Versata’s 

copyrighted files in its possession after Ford’s license to use the files terminated. 

(See ECF #464-10.)4

 Therefore, there is a material factual dispute with respect to 

                                                            

4

 This exhibit consists of screenshots from Ford’s PDO software repository which 

show, according to Ford, that Versata’s copyrighted “.jar” files were “missing” and 

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whether Ford possessed any of Versata’s copyrighted software files after its software 

license expired. 

For all of these reasons, the Court DENIES Versata’s motion for summary 

judgment on its claim in Count 14 of its Second Amended Counterclaims that Ford 

infringed Versata’s copyrights. 

V 

(Ford’s Motion for Summary Judgment of Count 1 of Ford’s Complaint in 

Case No. 15-cv-11264 and Count 14 of Versata’s Second Amended 

Counterclaims – Versata’s Allegation That Ford Infringed Versata’s 

Copyrights) 

 In Count 1 of Ford’s Complaint in Case No. 15-cv-11264, Ford seeks a 

declaratory judgment that its PDO software “does not infringe any rights [Versata] 

claim[s] under the Copyright Act or otherwise violate other applicable federal or 

state laws.”5

 (Compl. at ¶65, Case No. 15-cv-11264, ECF #1 at Pg. ID 14.) As 

described above, in Count 14 of Versata’s Second Amended Counterclaims, Versata 

alleges that Ford infringed Versata’s copyrights in the Versata Software. (Sec. Am. 

Counterclaims at ¶¶ 172-73, ECF #244 at Pg. ID 13036-37.) In Ford’s summary 

                                                            

did not exist in the repository after Ford’s license to use the Versata Software 

expired. 

5

 On July 14, 2015, the Court entered a stipulated order consolidating this action 

(Case No. 15-cv-10628) with the action Ford filed in Case No. 15-cv-11624. (See 

ECF #28.) The parties have made all subsequent filings in this action. Unless 

otherwise indicated, all citations and ECF references in this order correspond to the 

docket numbers in this action (Case No. 15-cv-10628). 

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judgment motion, it moved for summary judgment on these claims on two grounds. 

The Court concludes that Ford is not entitled to summary judgment on either ground. 

 First, Ford argued that it only used the Versata Software in accordance with 

its license, and it did not “reverse engineer” the Versata Software in violation of 

Section 1.7 of the MSSA. (See Ford Mot., ECF #354 at Pg. ID 18664-65.) Ford 

therefore insisted that its use of the Versata Software could not have infringed 

Versata’s copyrights. (See id.) However, as described above, the “reverse 

engineering” language in Section 1.7 is ambiguous and is not susceptible to 

interpretation as a matter of law. A jury could reasonably conclude that Ford’s study 

of the outputs of the Versata Software did violate Section 1.7 and did exceed the 

scope of Ford’s license under the MSSA. Thus, Ford is not entitled to summary 

judgment on Versata’s copyright infringement claim on the ground that Ford’s use 

of the Versata Software fell entirely within the scope of Ford’s license (and permitted 

uses) under the MSSA. 

 Second, Ford argued that it did not infringe Versata’s copyrights by using or 

possessing Versata’s copyrighted software files after Ford’s right to use or possess 

those files expired. (See id. at Pg. ID 18664.) But there is a material factual dispute 

with respect to whether Ford had Versata’s copyrighted software files in the PDO 

environment after the term of Ford’s license to use those files ended. Indeed, Versata 

has identified evidence that, if credited by a jury, could establish that Ford did have 

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Versata’s copyrighted files in its possession after Ford’s license to use the files 

terminated. (See Supplemental Declaration of Seth Krauss at ¶¶ 2-8, ECF #201 at 

Pg. ID 9631-34.) Ford is therefore not entitled to judgment as a matter of law on the 

basis that it did not use or possess Versata’s copyrighted software files after the term 

of its license expired. 

Accordingly, the Court DENIES Ford summary judgment with respect to 

Count 1 of its Complaint in Case No. 15-cv-11264 and Count 14 of Versata’s Second 

Amended Counterclaims. 

VI 

(Versata’s Motion for Summary Judgment of Count 8 of Ford’s Second 

Amended Complaint – Ford’s Allegation that Versata Breached the MSSA by 

Improperly Terminating the Agreement) 

In Count 8 of Ford’s Second Amended Complaint, Ford alleges that Versata 

improperly terminated the MSSA and “prohibited Ford from exercising its option to 

continue use of [the Versata] [S]oftware through December 31, 2015.” (Sec. Am. 

Compl. at ¶106, ECF #226 at Pg. ID 11734.) In Versata’s summary judgment 

motion, it argued that it is entitled to summary judgment on this claim for two 

reasons. The Court concludes that neither ground supports judgment as a matter of 

law in Versata’s favor. 

 First, Versata argued that it did not breach the MSSA when it terminated that 

agreement. According to Versata, the termination provision of the MSSA allowed 

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it to terminate the agreement “by providing written notice sixty days prior” to what 

the MSSA defined as the “Annual Renewal Period.” (Versata Mot., ECF #379 at Pg. 

ID 22785.) Versata said that the last relevant “Annual Renewal Period” began on 

January 15, 2014, and ended on January 14, 2015. (See id. at 22785-86.) Versata 

therefore insisted that it fully complied with the MSSA’s termination provision when 

it provided Ford termination notices on October 7, 2014, and November 13, 2014, 

and then terminated Ford’s access to the Versata Software on January 15, 2014. 

 However, as the Court indicated in its questions to the parties on the record 

during the motion hearing, an addendum to the MSSA creates an ambiguity 

concerning when Versata could start the termination process. (See 7/24/18 Hearing 

Tr., ECF #519 at Pg. ID 40601-08.) A jury could reasonably conclude that under 

the addendum, Versata was not permitted to start the termination process by sending 

notices of termination until January 15, 2015. Thus, a jury could reasonably 

conclude that Versata breached the MSSA when it sent termination notices to Ford 

in October and November of 2014. Moreover, there are material factual disputes 

concerning when the last Annual Renewal Period started and ended. For these 

reasons, the Court cannot conclude as a matter of law that Versata properly 

terminated the MSSA. 

 Second, Versata argued in its summary judgment motion that even if it 

breached the termination provision of the MSSA, Ford did not suffer any damages 

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from that breach. (See Versata Mot., ECF #379 at Pg. ID 22784-22787.) But Ford 

has presented evidence from which a jury could reasonably conclude that it did suffer 

damages from Versata’s termination of the MSSA. For example, Ford’s manager of 

software development, Mike Sullivan, said in a sworn declaration that Versata’s 

improper termination of the MSSA caused “Ford [to] incur[] more than $50,000 in 

unexpected overtime costs due to the accelerated deployment of [PDO] and 

decommissioning of [the Versata Software].” (Sullivan Declaration at ¶6, ECF 

#427-18 at Pg. ID 28931.) In addition, even if Ford did not suffer actual damages 

from Versata’s improper termination, it still is entitled to seek “nominal damages” 

for breach of contract under Michigan law. See McElwee v. Wharton, 7 F. App’x 

437, 438 (6th Cir. 2001) (affirming award of $1 in nominal damages in breach of 

contract action under Michigan law). For all of these reasons, Versata is not entitled 

to summary judgment on the basis Ford did not suffer damages from Versata’s 

alleged breach of the MSSA. 

Accordingly, the Court DENIES Versata’s motion for summary judgment 

with respect to Count 8 of Ford’s Second Amended Complaint. 

VII 

(Versata’s Request to Serve Supplemental Expert Reports) 

On July 9, 2018, the Court issued an Opinion and Order on several motions 

that the parties had filed to exclude expert witnesses. (See ECF #507.) Among other 

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things, the Court granted Ford’s motions to exclude the testimony of Versata 

damages experts Christopher Bokhart and Craig Elson as to the damages that Versata 

allegedly suffered as a result of Ford’s implementation of the PDO software. (See 

id.) The Court concluded that Bokhart’s damages model was flawed because, among 

other things, he did not “apportion” damages between the patented and unpatented 

features of the Versata Software. (Id. at Pg. ID 40210-14.) And the Court held that 

Elson’s damages model was insufficient because he did not use a “reasonable 

royalty” model and did not take into consideration the parties’ licensing history when 

he calculated Versata’s claimed damages. (Id. at Pg. ID 40219-26.) The Court also 

determined that Elson did not properly apportion Versata’s alleged damages. (See 

id. at Pg. ID 40227-34.) 

On July 16, 2018, Versata requested that the Court “give Versata an 

opportunity to revise its damages model in light of the Court’s July 9, 2018,” 

Opinion and Order. (ECF #514 at Pg. ID 40348.) Specifically, Versata asked for 

leave to “supplement the reports of [] Bokhart and [] Elson to provide reasonably 

royalty calculations for patent damages and trade secrets damages based on the 

parties’ past business relationship, as well as [to] address the Court’s guidance 

regarding apportionment [of damages].” (Id. at Pg. ID 40352.) Ford opposed 

Versata’s request. (See ECF #513.) 

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 Ford and Versata have each acknowledged that whether to allow a party to 

serve supplemental expert reports to address defects identified in a Daubert ruling 

is left to a court’s discretion. (See ECF #513 at Pg. ID 40344; ECF #514 at Pg. ID 

40350.) District courts have exercised that discretion to allow a party to supplement 

expert reports after an expert is excluded in a Daubert ruling. See, e.g., Digital Reg 

of Texas, LLC v. Adobe Systems, Inc., 2014 WL 4090550, at *4 (N.D. Cal. Aug. 19, 

2014) (excluding expert report but allowing expert “to submit a revised damages 

report curing [] the problems identified in [the court’s] order”); Golden Bridge 

Technology v. Apple, Inc., 2014 WL 2194501, at *14 (N.D. Cal. May 18, 2014) 

(refusing to admit expert opinions “in their current form” but allowing expert 

“another shot” to “tender a new damages report in accordance with the [court’s] 

guidance”); Prism Technologies, LLC v. Sprint Spectrum L.P., 2015 WL 350503, at 

** 2-3 (D. Neb. Jan. 23, 2015) (granting motion to supplement expert reports 

following entry of order resolving Daubert motions).6

                                                            

6

 Ford relies on two cases from the United States Court of Appeals for the Sixth 

Circuit for the proposition that the Court should not grant Versata leave to 

supplement its expert reports: Nelson v. Tenn. Gas Pipeline Co., 243 F.3d 244, 250 

(6th Cir. 2001), and Pride v. BIC Corp., 218 F.3d 566, 579 (6th Cir. 2000). In both 

Nelson and Pride, the Sixth Circuit recognized that district courts have discretion to 

allow a party to supplement an expert report and held that the trial courts did not 

abuse that discretion where the trial courts denied leave to supplement. But those 

holdings do not prohibit a district court from exercising its discretion to allow a party 

to file supplemental reports. 

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 The Court concludes that allowing Versata to serve supplemental expert 

reports, under the strict conditions described in this order, is appropriate for two 

reasons. First, allowing Versata to supplement its expert reports will not cause a 

material disruption in the schedule in this action. There is no currently-scheduled 

trial date, and there is a substantial amount of work left to be done before this case 

could conceivably go to trial. That additional pre-trial work includes, at a minimum: 

(1) the Special Master must issue a Report and Recommendation on the patent 

portions of the summary judgment motions, (2) the Court must review that 

recommendation and rule on any objections the parties may raise to it, (3) the parties 

must fully brief, and the Court must rule on, Ford’s recently-filed summary judgment 

motion with respect to Versata’s claims that Ford infringed Versata’s copyrights (see 

ECF ## 526, 532), (4) the parties must complete discovery with respect to Ford 

computer software commonly referred to as “PDOR2” and resolve any potential 

disputes related to that discovery, (5) the parties must file Daubert and summary 

judgment motions with respect to the issues related to PDOR2, and (6) the Court 

must rule on those motions. In short, the Court does not believe that the schedule 

will be significantly affected if Versata is allowed to serve supplemental expert 

reports. 

 Second, precluding Versata from supplementing its expert reports and 

presenting its proposed expert testimony would create a risk of jury confusion. At 

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trial, Versata will be seeking trade secret and patent infringement damages based 

upon Ford’s use and development of both the PDO software and the PDOR2 

software. Versata’s damages experts completed their analysis and reports 

concerning damages related to PDOR2 after the Court issued its ruling on their PDO 

damages reports, and thus the experts presumably modified their PDOR2 reports and 

analysis to conform to the Court’s requirements. Thus, as things currently stand, 

even though the jury will be asked to award damages related to PDO and PDOR2, 

Versata will only be permitted to present expert testimony as to how to determine 

those damages with respect to PDOR2 alone. The Court is concerned that this 

dichotomy may confuse the jury and that the jury would be left to speculate as to 

how to reconcile the lack of expert testimony on PDO damages with the presence of 

such testimony on PDOR2 damages. The Court believes that permitting Versata to 

present expert damages testimony with respect to claimed damages from both PDO 

and PDOR2 will enhance the reliability of the jury’s analysis and conclusions.7

The Court recognizes that there are important policy considerations that weigh 

against allowing Versata to supplement its expert reports. The parties spent 

                                                            

7

 The Court does not mean to suggest that it has already decided to admit Versata’s 

expert damages testimony on PDOR2 or that the Court will necessarily admit the 

revised analysis of Bokhart and Elson concerning PDO damages. If Ford challenges 

the admissibility of such testimony, the Court will evaluate the admissibility of the 

testimony at that time. At this time, the Court is simply ruling that Versata should 

have the opportunity to present supplemental reports from its experts. 

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substantial time and money preparing the first round of expert reports and Daubert

motions, and the Court is loath to allow a party to submit an expert report, have the 

Court explain why that expert report is insufficient, and then get a “second bite of 

the apple.” But under the circumstances of this action, and given the posture of these 

proceedings, the Court concludes that allowing Versata to serve supplemental expert 

reports is appropriate. However, the Court will place strict conditions on these 

reports. Versata must serve the supplemental reports on Ford within 30 days of this 

order, and Versata must make Bokhart and Elson available for deposition within 30 

days after serving their supplemental expert reports. Ford will not be required to 

serve rebuttal reports in response to the supplemental reports, nor will Ford be 

required to make its own damages experts available for another deposition with 

respect to the issues addressed in the supplemental reports. 

VIII 

 For all of the reasons stated above, and the reasons stated at the hearing on the 

parties’ cross-motions for summary judgment, IT IS HEREBY ORDERED that: 

 Ford’s motion for summary judgment (ECF ## 354, 358) is DENIED with 

respect to Counts 4 and 6 of its Second Amended Complaint (ECF #226), 

Count #1 of its Complaint in Case No. 15-cv-11264, and Counts 9, 13, and 14 

of Versata’s Second Amended Counterclaims (ECF #244); 

Case 2:15-cv-10628-MFL-EAS ECF No. 534 filed 09/07/18 PageID.40845 Page 19 of 20
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 Versata’s motion for summary judgment (ECF ## 379, 380) is GRANTED

with respect to Counts 4 and 5 of Ford’s Second Amended Complaint and 

DENIED with respect to Count 8 of Ford’s Second Amended Complaint and 

Counts 11 and 14 of its Second Amended Counterclaims; and 

 Versata’s experts Christopher Bokhart and Craig Elson may file supplemental 

expert reports under the conditions described in this order. 

 s/Matthew F. Leitman 

 MATTHEW F. LEITMAN 

Dated: September 7, 2018 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 September 7, 2018, by electronic means and/or 

ordinary mail. 

 s/Holly A. Monda 

 Case Manager 

 (810) 341-9764 

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