UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

FORD MOTOR COMPANY, CASE NO. 15-10628-MFL-EAS 

Plaintiff/Counter-Defendant, (Consolidated with 

Case No. 15-11624-MFL-EAS) 

v. Hon. Matthew F. Leitman 

VERSATA SOFTWARE, INC., F/K/A 

TRILOGY SOFTWARE, INC., TRILOGY 

DEVELOPMENT GROUP, INC. AND 

TRILOGY, INC., 

Defendants/Counter-Plaintiffs. 

___________________________________ 

VERSATA DEFENDANTS’ 

MOTION FOR SUMMARY JUDGMENT 

AND BRIEF IN SUPPORT - CORRECTED 

FILED UNDER SEAL

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CONCISE STATEMENT OF THE ISSUE PRESENTED 

Should the Court grant partial summary judgment for defendants Versata Software, 

Inc., Trilogy Development Group, Inc., and Trilogy, Inc., on the following issues: 

 Ford’s request for a declaratory judgment that it owns or has a perpetual 

license to ACM, because the parties’ contracts demonstrate that Versata owns 

ACM and Ford’s license was for a limited term only? (Ford’s Causes of 

Action 4-5) 

 Ford’s request for a declaratory judgment that its contract with Versata does 

not permit Versata to inspect Ford’s software programs or interview its 

personnel, when the plain language of the contract provides otherwise? 

(Ford’s Cause of Action 7) 

 Ford’s claim for breach of contract for improper termination, because the 

contract language allowed termination and also Ford has no evidence of 

damages? (Ford’s Cause of Action 8) 

 Ford’s claim that Versata’s patents are unpatentable and invalid, because Ford 

has offered no evidence to show that the patents are not directed to patentable 

subject matter under 35 U.S.C. § 101? (Ford’s Causes of Action 9–16) 

 Ford’s claim that Versata breached the parties’ contract by not paying a refund 

due only if other manufacturers subscribed to ACM from 2002–04, when no 

other manufacturers subscribed to ACM over that period? (Ford’s Cause of 

Action 17) 

 Versata’s claim for infringement of the ’582 and ’064 patents, because Ford’s 

only argument against infringement relies on claim construction that is 

different from the court’s claim construction? (Versata’s Counterclaims 5–6) 

 Versata’s claim for breach of contract, because Ford reverse engineered ACM 

in violation of the parties’ contract? (Versata’s Counterclaim 11) 

 Versata’s claim for copyright infringement, because the undisputed facts 

show that Ford engaged in unauthorized distribution and use of Versata’s 

copyrighted materials? (Versata’s Counterclaim 14) 

Plaintiff answers: No 

Defendants answer: Yes 

The Court should answer: Yes 

 

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CONTROLLING AUTHORITY 

In accordance with L.R. 7.1(d)(2), the following is the most important 

authority relevant to the relief sought: 

 Fed. R. Civ. Pro. 56. 

 Celotex Corp. v. Catrett, 477 U.S. 317 (1986). 

 Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). 

 Bank of Am., NA v. First Am. Title Ins. Co., 499 Mich. 74 (2016). 

 Webster v. Edward D. Jones & Co., 197 F.3d 815 (6th Cir. 1999). 

 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). 

 SAS Inst., Inc. v. World Programming, Ltd., 874 F.3d 370 (4th Cir. 

2017). 

 

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TABLE OF CONTENTS 

CONCISE STATEMENT OF THE ISSUE PRESENTED ...................................... ii

CONTROLLING AUTHORITY ............................................................................. iii

TABLE OF CONTENTS ......................................................................................... iv

INDEX OF AUTHORITIES .................................................................................... vi

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

STATEMENT OF FACTS ........................................................................................ 2

Versata provided Ford cutting-edge product definition and configuration 

software. .................................................................................................................. 2

Factual background regarding Versata’s patents. ....................................... 11

Claim construction of the asserted patents. ................................................. 12

Summary Judgment Evidence. .................................................................... 13

LEGAL STANDARD .............................................................................................. 13

ARGUMENT ........................................................................................................... 14

I. Versata is entitled to summary judgment on Ford’s claim for Breach of 

Contract for improper termination. (Ford’s COA 8) ............................................ 14

A. Versata was entitled to terminate under the plain language of the MSSA.

 15

B. Ford has failed to show any damages for termination. ............................ 16

Under the 1998 CSA and SLA, the 2002 SSA, and the 2004 MSSA, 

Versata owns ACM (Ford’s COA 4 & 5). ............................................................ 17

Ford reverse engineered ACM in violation of the MSSA. (Versata’s 

Counterclaim 11) .................................................................................................. 19

A. Ford reverse engineered ACM and MCA using .jar files. ....................... 21

B. Ford reverse engineered ACM and MCA using Comparator Tools and 

Excel macros. ................................................................................................... 22

There is no genuine issue of material fact as to Ford’s infringement of 

Versata’s copyright. (Versata’s Counterclaim 14) .............................................. 25

There is no genuine issue of material fact as to Ford’s infringement of the 

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’582 and ’064 patents. (Versata’s Counterclaim 5–6) ......................................... 29

A. Ford’s PDO software infringes claim 1 of the ‘582 patent. ..................... 32

B. Ford’s construction of “set equation” is inconsistent with the Court’s 

construction. ..................................................................................................... 33

Ford cannot show facts sufficient to support its invalidity claims. (Ford’s 

COA 9–16) ............................................................................................................ 35

A. Ford has offered no evidence of invalidity for the ’080, ’651, ’825 patent 

claims and the dropped claims from the remaining asserted patents. ............. 35

B. Ford has offered no evidence that Versata’s patent claims are not directed 

to patentable subject matter. ............................................................................ 37

C. Ford has offered no evidence of invalidity of the ‘582 and ‘064 patent 

claims. .............................................................................................................. 44

D. Ford has offered no evidence of invalidity of the ‘057 patent claims 

because Dr. Greenspun fails to identify any disclosure of dividing a 

configuration query in either of the prior art references. ................................. 47

Versata has a contractual right to an audit. (Ford’s COA 7) .................. 50

Versata did not breach the SSA. (Ford’s COA 17) .................................. 51

CONCLUSION ........................................................................................................ 52

PROOF OF SERVICE ............................................................................................. 54

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INDEX OF AUTHORITIES 

Cases

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 

 134 S. Ct. 2347 (2014) ....................................................................... 38, 43, 44 

Anderson v. Liberty Lobby, Inc., 

 477 U.S. 242 (1986) ...................................................................................... 35 

Bank of America, NA v. First American Title Ins. Co., 

 499 Mich. 74, 100, 878 N.W.2d 816 (2016) ................................................. 14 

Becton Dickinson & Co. v. C.R. Bard, Inc., 

 922 F.2d 792 (Fed. Cir. 1990) ....................................................................... 31 

Bilski v. Kappos, 

 561 U.S. 593 (2010)....................................................................................... 38 

Calibrated Success, Inc. v. Charters, 

 72 F. Supp. 3d 763 (E.D. Mich. 2014) .......................................................... 28 

Celotex Corp. v. Catrett, 

 477 U.S. 317 S. Ct. 2548; 91 L.Ed. 2d 265 (1986) ....................................... 13 

Core Wireless Licensing v. LG Elecs., Inc., 

 No. 2016-2684, 2018 WL 542672 (Fed. Cir. Jan. 25, 2018) ........................ 40 

Corel Corp. v. Ford Motor Co., 

 No. 05-71130, 2006 WL 680846 (E.D. Mich. Mar. 15, 2006) ..................... 28 

CyberSource Corp. v. Retail Decisions, Inc., 

 654 F.3d 1366 (Fed. Cir. 2011) ..................................................................... 39 

DDR Holdings, LLC v. Hotels.com, L.P., 

 773 F.3d 1245 (Fed. Cir. 2014) .................................................................... 43 

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Diamond v. Diehr, 

 450 U.S. 175, 188 (1980) .............................................................................. 38 

Edge Sys. LLC v. Aguila, 

 No. 2016-2189, 2017 WL 3971469 (Fed. Cir. Sept. 8, 2017) ....................... 32 

FenF, LLC v. Healio Health Inc., 

 No. 5:08CV404, 2009 WL 10688713, (N.D. Ohio Sept. 4, 2009) ................ 28 

Gottschalk v. Benson, 

 409 U.S. 63 (1972) ......................................................................................... 39 

In re Independent Servs. Organizations Antitrust Lit., 

 864 F. Supp. 1469 (D. Kan. 1997) ................................................................ 26 

In re Smith Trust, 

 745 N.W. 2d 754, 757-758 (Mich. 2008) ...................................................... 15 

Innovention Toys, LLC v. MGA Entm't, Inc., 

 637 F.3d 1314 (Fed. Cir. 2011) .............................................................. 32, 33 

JCW Software, LLC v. Embroidme.com, Inc., 

 No. 10-80472-CIV, 2011 WL 13225174 (S.D. Fla. July 26, 2011) .............. 26 

Lisle Corp. v. A.J. Mfg. Co., 

 289 F. Supp. 2d 1048 (N.D. Ill. 2003), aff’d 398 F.3d 1306 

 (Fed. Cir. 2005) .............................................................................................. 31 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 

 132 S. Ct. 1289 (2012) .................................................................................. 38 

Microsoft Corp. v. I4I Ltd. Partn., 

 564 U.S. 91 (2011) ......................................................................................... 35 

 

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Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corp., 

 236 F.3d 312 (6th Cir. 2004) ........................................................................ 27 

Nat’l Presto Indus., Inc. v. W. Bend Co., 

 76 F.3d 1185 (Fed. Cir. 1996). ...................................................................... 35 

Oravec v. Sunny Isles Luxury Ventures, L.C., 

 527 F.3d 1218 (11th Cir. 2008) ..................................................................... 26 

Regents of Univ. of Minnesota v. AGA Med. Corp., 

 717 F.3d 929 (Fed. Cir. 2013) ....................................................................... 46 

Service & Training, Inc. v. Data General Corp., 

 963 F.2d 680 (4th Cir. 1992) ......................................................................... 25 

Streck, Inc. v. Research & Diagnostic Sys., Inc., 

 665 F.3d 1269 (Fed. Cir. 2012). .................................................................... 36 

Streetwise Maps, Inc. v. VanDam, Inc., 

 159 F. 3d 739 (2nd Cir. 1998) ....................................................................... 26 

Stromback v. New Line Cinema, 

 384 F.3d 283 (6th Cir. 2004 .......................................................................... 25 

TechSearch, LLC v. Intel Corp., 

 286 F.3d 1360 (Fed. Cir. 2002) ..................................................................... 46 

Tiseo Architects, Inc. v. SSOE, Inc., 

 431 F. Supp. 2d 735 (E.D. Mich. 2006) ........................................................ 25 

Ward v. Knox County Bd. of Educ., 

 612 Fed. Appx. 269 (6th Cir. 2015) .............................................................. 28 

Webster v. Edward D. Jones & Co., 

 197 F.3d 815 (6th Cir. 1999) ......................................................................... 14 

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Wilcom Pty. Ltd. v. Endless Visions, 

 128 F. Supp. 2d 1027 (E.D. Mich. 1998) ...................................................... 28 

Rules

FED. R. CIV. P. 56 ..................................................................................................... 13 

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INTRODUCTION 

The parties’ contracts are clear and unambiguous. Versata owns ACM. 

Despite its current “litigation claims,” Ford “irrevocably acknowledged” that 

Versata owns ACM; indeed, Ford intended that 

 Ford 

paid millions of dollars in license fees to license Versata’s cutting-edge software, 

including ACM, which became the “heart of Ford’s enterprise systems.” 

ACM allowed Ford to manage and validate product definitions (valid 

combinations of features) containing hundreds of thousands of rules and trillions 

upon trillions of feature combinations. Although Ford was satisfied with ACM, Ford 

decided to build a “like-for-like” replacement in secret. This replacement was called 

PDO. In order to replicate ACM’s and companion product MCA’s technology, Ford 

compared the run inputs through Versata’s software and Ford’s intended 

replacement, seeking to ensure that its replacement software would produce the same 

results as Versata’s software. Similarly, Ford placed Versata’s ACM code into its 

PDO development environment to compare the interactions between ACM and 

downstream systems with the interactions between PDO and downstream systems. 

Ford’s studying of Versata’s software and its code are prohibited by the parties’ 

contracts and infringe on Versata’s copyrights in its software. 

In connection with Versata’s work on product definition and configuration 

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software, Versata received numerous patents. Unsurprisingly, Ford’s “like-for-like” 

replacement infringes on certain Versata patents. These patents were issued by the 

U.S. Patent and Trademark Office and are valid—even though Ford has 

unsuccessfully filed 16 sixteen different petitions with the Patent Office seeking to 

invalidate them. 

Because these contractual, patent, and copyright causes of action involve 

undisputed facts and can be decided as a matter of law, Versata moves for summary 

judgment on these issues. 

STATEMENT OF FACTS 

Versata provided Ford cutting-edge product definition and configuration 

software. 

Every Ford vehicle consists of numerous characteristics, or features.1

 Features 

can be physical parts, such as wheels, engines, transmissions, and air bags, or 

features can be marketing items, such as option packages, trim, and market. When 

designing vehicles, Ford needs to know how these different features work together 

and which features will sell well together. The process of creating rules defining the 

relationships between features is known as product definition. 

Because Ford vehicles have many different types of features (or feature families), 

and each feature family has many different options, the product definition of Ford 

 

1

 Dkt. #226 at 3–4. 

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vehicles can become very complex.2

 For example, Ford has identified certain 

models that have more than 36 unique configurations.3

 In the 1990s, Ford’s 

process of creating and validating product definitions was largely manual.4

 This 

manual process was time consuming and error prone, resulting in vehicle recalls and 

misbuilds.5

 

Ford selected Versata (then known as Trilogy), a pioneer in product 

configuration software,6

 to address its product definition and configuration 

problems. In September 1998, Ford and Versata entered into two contracts: the 

Software Licensing Agreement (SLA) and the Contract Services Agreement (CSA).7

 

The SLA governed the terms under which Ford licensed Versata’s proprietary 

software, and the CSA governed consulting services that Versata performed on a 

time-and-materials basis for Ford (including work such as installing and customizing 

Versata’s software products for use at Ford).8

Under the SLA, Ford licensed several Versata software programs, including 

SC Config.9

 The SLA described the licensed products in License Schedules, which 

 

2 Id.

3 See Declaration of Steve Mitby, at Ex. 60, p.65 ( White Paper). 

4 See Ex. N, Cabinaw Dep. at 70:4-71:13. 

5 See Ex. A-61, 45343-46 (Business issue #2); Ex. Q, FMS, Sullivan Dep. at 35:16-

36:12 

6 See Ex. H, ‘651 patent. 

7 See Ex. A-25, (herein SLA); Id. at Ex. A-4, (herein CSA). 

8 See Ex. A-4 [CSA]; Ex. A-25 [SLA]. 

9 See SLA; Ex. A-11 (License Schedule), herein LS1; Ex. A-12 (License Schedule 

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the parties entered into from time to time, as Versata updated its product line, and 

Ford began to license additional software products from Versata. See, e.g., LS 1; LS 

2. The parties referred to the proprietary software Ford licensed from Versata 

(including documentation) as “Software.” See SLA at preamble. Ford 

acknowledged that the Software belonged to Versata, agreeing that it would “not 

make any claim contrary to [Versata’s] ownership of the Software,” and that it would 

not reverse-engineer the Software. Id. at §§ 6 and 4. Versata provided maintenance, 

updates, and support for the Software. SLA § 8. 

Under the CSA, Versata and Ford set out the terms under which Versata would 

provide professional consulting services to Ford, such as installation, customization, 

and training. See generally CSA; see also SLA § 23 (noting that all “professional 

consulting services performed by [Versata] for Ford shall be in accordance with” the 

CSA). When Ford wished Versata to perform consulting work, the parties would 

agree on an “Assignment Order” describing the services to be performed. To the 

extent those services involved developing software beyond what Ford had licensed 

under the SLA, such as user interfaces and installation tools, Section 6 stated that 

the ownership of such custom code would be designated in the relevant Assignment 

Order. CSA § 6.a. Ford and Versata clarified in the CSA that other than those 

custom portions, Versata retained “all rights, title and interest in and to the software 

 

#2), herein LS2. 

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and/or related documentation provided to [Ford] by [Versata] ... [including] all 

copyright, trade secret, and other rights relating thereto.” CSA § 6.b. Moreover, 

Ford acknowledged that Versata owned any element of custom portions that “is not 

specific to, or can be made nonspecific to” Ford. CSA § 6.b. Unlike with the 

Software licensed under the SLA, Versata had no obligation to provide support or 

maintenance for software developed under the CSA. CSA § 6.c. 

In November 1999, the parties executed License Schedule 2. See LS2. 

License Schedule 2 maintains the distinction between Versata’s proprietary 

Software, managed under the SLA and paid for by a subscription payment, and 

custom code, developed for Ford under the CSA and paid for by time-and-materials 

pricing.10 It was around this time—late 1999—that the parties began referring to 

“Deliverables” in their contracts with each other. While the parties later fell into a 

pattern whereby “Deliverables” typically referred to custom code developed under 

an Assignment Order (or later, a Statement of Work), at this time the parties used 

the term both to refer to Versata proprietary software (“Core Deliverables”) as well 

as custom code (“Custom Deliverables”). LS2 ¶ 4; see also ¶ 10 (assigning 

ownership to Versata of all intellectual property relating to Ford’s contributions 

“with regard to the development of the Core Deliverables”). Ford understood, and 

intended, that the software would be owned and maintained by Versata. See Ex. Q, 

 

10 See Ex. A-13 [LS2] ¶ 4. 

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FMS 5/25/17, at 252:22-256:11 

 

In 2001, Versata introduced ACM, its flagship rule authoring and 

configuration software.11 By December 2001, ACM maintained the product 

definition of all market models.12 The improvement over Ford’s prior systems was 

so stark that Ford modelers called Trilogy “a new star in our sky.”13 Ford models 

that had previously had numerous errors now had zero errors.14

 Soon thereafter, in January 2002, Ford and Versata entered into a Software 

Subscription Amendment (“2002 SSA”), under which Ford licensed ACM—which 

the parties also referred to as GPD—including the Engineering view of ruleauthoring and configuration.15 The 2002 SSA maintained the parties’ previous 

practice whereby Ford subscribed to Versata’s major, proprietary Software, and 

purchased (under time-and-materials pricing) custom work, such as installation and 

customization, which were still handled under the CSA. Ex. A-1, 2002 SSA §§ 2.E, 

 

11 See Ex. A-23, Myers Trade Secret Rebuttal, at ¶25. 

12 See A-62 ACM at Ford 

13 See Ex. C, Kenny Ratton Declaration VKR, at Ex. C-1, (email from Kenny Ratton 

to Versata); see also Ex. Q, FMS 5/25 at 308:8-15; 310:8-13 (indicating that ACM 

reduced manual validation of data at Ford.) 

14 Ex. C, VKR, at Ex. 1, (email). 

15 See Ex. A-1 2002 SSA, at §§ 2, 2.B; and its exhibit A.; see also Ex. A-23 Myers 

Trade Secret Report, at ¶ 37 (acknowledging “GPD” as an early name for ACM). 

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2.F, 4.A. Ford additionally covenanted to “provide reasonable assistance in 

perfecting and protecting GPD Software intellectual property for Trilogy.” Id. § 2.F. 

Also consistent with the parties’ previous practice, Versata provided maintenance 

services for the licensed Software, as opposed to the custom-developed code, which 

it did not support. Id. § 4.B; Ex. A-4, CSA § 6.c. 

 2002 Ex. A-1 SSA § 

2.A. The discount was dependent on other automobile original equipment 

manufacturers (“OEMs”) subscribing to ACM, which unfortunately did not occur 

during the pendency of the 2002 SSA. See id. at 2.E. 

Two years later, in December 2004, the parties entered into a new agreement: 

the Master Subscription and Services Agreement (“MSSA”).16 The MSSA 

superseded all the previous software agreements between Ford and Versata relating 

to ACM, MCA, and services relating to those software suites, including the prior 

agreements relating to software licensing (such as the SLA and 2002 SSA) and 

contract services (including the CSA).17 

 

16 See Ex. A-21, (MSSA). 

17 See Ex. A-21, MSSA § 13.10; Ex. C-2, Kenny Ratton Declaration, (MSSA 

Subscription Schedule #1), herein SS#1 (licensing MCA and ACS); Ex. C-3, Kenny 

Ratton Declaration (MSSA Subscription Schedule #4), herein SS#4 (licensing 

ACM); Ex. A-21 (MSSA Subscription Schedule #7), herein SS#7 (licensing ACR); 

Ex. A-63 (MSSA Subscription Schedule #121031), herein SS#121031 (licensing 

MCA and ACS).

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The MSSA contains several key provisions worth highlighting. First, the 

MSSA maintains the distinction between (1) Versata proprietary software, licensed 

to Ford and set out in Subscription Schedules (referred to, together with its 

documentation and support releases, as the “Software”), and (2) consulting services 

(“Work”)—including the development of custom software elements specifically for 

Ford—paid for on a time-and-materials basis (“Deliverables”). Ex. A-21, MSSA at 

1; § 1; § 5. The licensed, proprietary Software included ACM and MCA. Ex. C-3, 

SS4; Ex. C-2, SS1. As before, Versata generally agreed to provide support and 

enhancements for the licensed Software, but not for the Deliverables. Ex. A-21, 

MSSA § 4; see also § 8.1 (only Software is warranted). 

The parties reiterated in the MSSA that Ford’s license to the Software was for 

a fixed term, extended only to the object code version of the Software, and permitted 

Ford to use the Software solely to perform the intended functions of the Software 

(as set out in the documentation). Ex. A-21, MSSA § 1.1. It further prohibited Ford 

from using the Software in any operating software environment other than the ones 

specified in the applicable Subscription Schedules. Ex. A-21, MSSA § 1.5. 

Importantly, the MSSA prohibited Ford from reverse engineering the software—

specifically including “studying the Software’s behavior in response to a variety 

of inputs.” Id. at § 1.7(iii). 

The parties explicitly reaffirmed Versata’s sole ownership interest in the 

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licensed Software as well, agreeing that Ford “irrevocably acknowledges that, 

subject to the licenses granted herein, Ford has no ownership interest in the 

Software,” and that “Nothing in this Agreement shall be construed to convey any 

title or ownership rights to the Software or other Trilogy Confidential 

Information to Ford or to any patent, copyright, trademark, or trade secret 

embodied therein, or to grant any other right, title, or ownership interest to the 

Trilogy Confidential Information.” Ex. A-21, MSSA §§ 6.1, 7.4 (emphasis added); 

see also § 7.6 (“Subject to the licenses granted herein, Ford has no ownership interest 

in the Software”). And the parties agreed that upon termination of the MSSA or any 

license thereunder, Ford’s rights to the affected Software would cease. Ex. A-21, 

MSSA § 11.4. 

During this time, the U.S. Patent and Trademark Office (“PTO”) awarded 

numerous patents to protect Versata’s revolutionary configuration technology, 

including US Patents 7,200,582 (the ‘582 Patent); US 7,464,064 (the ‘064 Patent); 

US 7,739,080 (the ‘080 Patent), and US 7,882,057 (the ‘057 Patent).18 In 2006, 

Trilogy Development Group, Inc. changed its name to Versata Development Group, 

Inc.19

Versata’s revolutionary ACM technology became the “heart of [Ford’s] 

 

18 See Ex. G (the ‘582 Patent); Ex. E (the ‘064 Patent); Ex. I (the ‘080 Patent), and 

Ex. D (the ‘057 Patent).

19 See Ex. A-3, (certified name change).

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enterprise systems.”20 Ford could not 

 Perhaps because Ford became reliant on Versata, Ford 

developed a plan to replace ACM (and MCA) with PDO in secret.22 Ford wanted 

PDO to provide “like-for-like” functionality to Versata’s software.23 In order to 

achieve this “like-for-like” functionality, Ford relied heavily on its knowledge of 

Versata software. Ford studied ACM and MCA outputs, or exports, to validate that 

its replacement software would generate results consistent with ACM.24 Ford also 

placed Versata .jar files in its PDO development environment for the purposes of 

doing “side-by-side” comparisons of ACM outputs to PDO outputs.25 

On October 7, 2014, after the breakdown of the parties’ negotiations on terms 

for further licensing, Versata sent a letter to Ford notifying it that Versata was 

terminating Subscription Schedules 1, 4, 7, and 121031 (including the subscriptions 

to ACM and MCA).26 Shortly thereafter, Versata requested an audit of Ford’s 

 

20 Ex. A-64 at 99242, (PDO Plans) 

21 Id.

22 Ex. M, Deposition of David Baxter, at 21:19-23:15. 

23 See Ex. A-65 (EPIC-PDO Presentation) at 1181866 (“PDO-R1 is a like-for-like 

toolset change”); Ex.A-66 (PDO Test Strategy) at 5 (indicating that Ford intended a 

“like-for-like intent of imported PDO data with [ACM]”). 

24 See Ex. Q, Sullivan Dep. at 109:16-119:22; see also A-66 (PDO Test Strategy) at 

13 (Compare PDO and Legacy export files using BeyondCompare); Ex. A-2 

(Comparison Files). 

25 See Ex. A-23 Myers Trade Secret Report at ¶¶ 706-08. 

26 See Ex. A-67 (10/7/14 Termination letter); see also Ex. A-68 (11/13/14 

Termination letter). 

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records to verify Ford’s compliance with the termination, as provided by Sections 

3.5 and 12.2 of the MSSA.27 Despite clear contractual language granting ACM audit 

rights, Ford refused to allow Versata to perform an audit. Dkt. 226 at ¶ 96. 

Factual background regarding Versata’s patents. 

Versata asserts that Ford’s Accused Software infringes certain patents 

(“Asserted Patents”) and specifically certain claims of these patents (“Asserted 

Claims”).28 The ‘651 Patent, ‘308 Patent, and ‘294 Patent are held by Versata 

Software, Inc.29 The remaining Asserted Patents are held by Trilogy Development 

Group, Inc., which is now known as Versata Development Group, Inc.30 

In support of their allegations of invalidity for the Asserted Claims, Ford relies 

upon the expert reports of Dr. Philip Greenspun and Dr. Rajeev Surati. Neither of 

 

27 See Ex. A-69 (11/20/14 audit request). 

28 Versata’s Asserted Claims are: 

 US Patent 6,405,308: Claims 1, 2, 7, 8, 18, 22, 23, 24, and 28; 

 US Patent 6,675,294: Claims 1, 2, 7, 8, 9, 21, 22, 23, 24, 25, 26, and 31; 

 US Patent 7,200,582: Claims 1, 2, and 3; 

 US Patent 7,464,064: Claims 1, 2, 3, 9, 11, 12, 14, and 15; 

 US Patent 7,882,057: Claims 1, 18, 19, 21, 22, 23, 25, and 27; and 

 US Patent 7,739,080: Claims 1, 3, 4, 11, 12, 13, and 18. 

At the time that Versata served its opening expert reports, Versata dropped its 

infringement allegations as to certain claims of the Asserted Patents and dropped 

infringement allegations of two additional patents: U.S. Patent 5,825,651 and 

8,805,825. 

29 These patents were assigned in 1996 to Trilogy Development Group, Inc., which 

changed its name to Trilogy Software, Inc., which changed its name to Versata 

Software, Inc. See Ex A-29, (VSI History). 30 These patents were assigned to Trilogy Development Group, Inc. which changed 

its name to Versata Development Group, Inc. See Ex. A-28 (VDG History)

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these experts, however, submitted a report regarding the ’080 patent. 

 Ford separately alleges that the Asserted Claims are not directed to 

patentable subject matter under 35 U.S.C. § 101, for which Ford relies upon the 

expert report of Dr. Deborah McGuinness. 

Claim construction of the asserted patents. 

The Special Master issued a report and recommendation as to claim 

construction of the Asserted Patents. Dkt. 181. The Court entered an order adopting 

the Special Master’s constructions and incorporating additional claim terms that had 

been construed in a prior litigation involving some of the Asserted Patents. Dkt. 

317. The Court’s relevant constructions are: 

I. The ’651 Patent Family31

 “Configuration user”—“a person using a computer to 

configure a system.” 

II. The ’582 Patent Family32

 “Set equation” - “one or more equations that operate on sets.” 

III. The ’057 Patent 

 The “processing” within the term “processing each subquery using at least one configuration sub-model per subquery” must be performed entirely by the computer system, 

and not by a human. 

 

31 The ’308 and ’294 Patents are continuations of the ’651 Patent. (Ex. J & Ex. K) 

32 The ’064 Patent is a continuation of the ’582 Patent. (Ex. E) 

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IV. The ’080 Patent 

 The step of “extending at least one of the ancestor 

configuration model family spaces” must be substantively 

performed by the computer or computer system, not by a 

human. 

The step of “removing [the added space] from the child 

configuration model family space . . . ” must be substantively 

performed by the computer or computer system, not by a 

human. 

Summary Judgment Evidence. 

For the purposes of this motion, Versata relies upon and incorporates by 

reference the attached exhibits A through R (including their attachments). 

LEGAL STANDARD 

Rule 56 provides that “[t]he court shall grant summary judgment if the movant 

shows that there is no genuine dispute as to any material fact and the movant is 

entitled to judgment as a matter of law.” FED. R. CIV. PRO. 56(a). If the non-moving 

party bears the burden of proof on a disputed issue, the moving party does not need 

to support its motion “with affidavits or other similar materials negating the 

opponent’s claim.” Celotex Corp. v. Catrett, 477 U.S. 317, 323; 106 S. Ct. 2548 

(1986) (emphasis in original). Instead, the movant may meet its burden “by 

‘showing’—that is, pointing out to the district court—that there is an absence of 

evidence to support the nonmoving party's case.” Id. at 325; FED. R. CIV. PRO. 

56(c)(1)(B). 

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ARGUMENT 

I. Versata is entitled to summary judgment on Ford’s claim for Breach of 

Contract for improper termination. (Ford’s COA 8)33

To prevail on a claim for breach of contract, the claimant “must establish by 

a preponderance of the evidence that (1) there was a contract, (2) the other party 

breached the contract, and (3) the breach resulted in damages to the party claiming 

breach.” Bank of America, NA v. First American Title Ins. Co., 499 Mich. 74, 100, 

878 N.W.2d 816 (2016); see also Webster v. Edward D. Jones & Co., 197 F.3d 815, 

819 (6th Cir. 1999) (“To recover for breach of contract under Michigan law, [the 

plaintiff] had to prove: 1) the existence of a contract between [defendant] and 

himself, 2) the terms of the contract, 3) that [defendant] breached the contract, and 

4) that the breach caused [plaintiff’s] injury.”). 

Under the plain language of the MSSA, Versata was entitled to terminate any 

Ford Subscription Schedule by providing sixty days’ notice, which the parties agree 

was provided. Therefore, Versata’s termination was effective and Ford’s license 

was terminated at the end of January 14, 2015. Additionally, Ford documents show 

that, well before Versata provided a termination notice, Ford anticipated its licenses 

expiring and intended to launch its PDO replacement in December 2014, and it did 

so. Therefore, even assuming arguendo that Versata’s termination was improper, 

 

33 Complaint, Dkt. 226 at ¶ 35. 

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Ford has not shown damages resulting from Versata’s termination. For these 

reasons, the Court should grant the Versata’s summary judgment on Ford’s breach 

of contract claim for improper termination. 

A. Versata was entitled to terminate under the plain language of the 

MSSA. 

Under Michigan law, a contract should be read according to its plain and 

ordinary meaning. In re Smith Trust, 745 N.W. 2d 754, 757-758 (Mich. 2008). 

Pursuant to the MSSA between Versata and Ford, either party could terminate a 

Subscription Schedule at will by providing written notice sixty days prior to the 

Annual Renewal Period. Ex. A-21, MSSA at § 11.2. Due to failed negotiations with 

Ford regarding the renewal of Ford’s licenses, Versata provided notice to Ford on 

October 7, 2014 and again on November 13, 2014, of its intent to terminate 

Subscription Schedules 1, 4, 7, and 121031, covering ACM, MCA, and ACS, and 

ACR.34 The Annual Renewal Period for each of these Subscription Schedules ran 

from January 15 – January 14 of the following year.35 

In 2011, Ford and Versata entered into an Addendum to Subscription 

Schedule #4 (the “Addendum”) in which Versata waived its right to terminate the 

contract for convenience “[d]uring the Extended Support Term.”36 Pursuant to the 

 

34 See Termination letters at fn. 26, supra. 35 See Subscription Schedules at fn. 17, supra. 36 See Ex. A-72, Addendum. 

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Addendum, the Extended Support Term “commences on September 1, 2011 and 

ends on January 14, 2015.” Ex. A-72, Addendum at ¶ 12. Thus, on January 14, 

2015, the Extended Support Term ended and Versata had a contractual right to 

terminate for convenience, which it exercised. 

When Versata terminated the Subscription Schedules, Ford maintained its 

licenses to the Software covered by those schedules “until the expiration of the then 

current Annual Renewal Period.” Ex. A-21, MSSA at § 11.2. Therefore, when 

Versata exercised its right to terminate, Ford’s license to the covered Software 

expired with the “then current Annual Renewal Period,” at the end of January 14, 

2015. See Ex. A-21, MSSA at § 1.1. 

B. Ford has failed to show any damages for termination. 

Ford has failed to show any damages from Versata’s termination, an essential 

element of its breach of contract claim. Bank of America, 878 N.W.2d at 829. Ford 

admits that it terminated the agreement when it “did not accept Defendants’ 

unreasonable license proposal.” (Dkt. 226 at ¶ 35). Indeed, on December 19, 2014, 

Ford notified Versata that it would no longer be using the software. Id. This is 

further supported by Ford documents showing that Ford intended to discontinue the 

use of Versata’s software at the end of 2014, well before Versata sent its letter to 

Ford indicating that it intended to terminate Agreement.37 Thus, even if the Court 

 

37 See Ex. A-37 (FV1089020); Id. at Ex. A-38, FV1001141. 

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were to conclude that Versata’s termination of Ford’s license were improper, Ford 

documents conclusively show that Ford was not damaged, because Ford intended to 

discontinue use of the ACM software before its license expired. 

Under the 1998 CSA and SLA, the 2002 SSA, and the 2004 MSSA, 

Versata owns ACM (Ford’s COA 4 & 5). 

In its fourth and fifth causes of action, Ford seeks a declaratory judgment that 

it owns ACM (or is entitled to a perpetual, royalty-free license to ACM) pursuant to 

the parties’ series of agreements. But those agreements are uniform and clear: 

Versata owns the proprietary Software that Ford licensed, the licenses are for a fixed 

term, and that proprietary, fixed-term licensed Software includes ACM. SLA 

preamble and § 6 (acknowledging Versata’s ownership of the licensed Software); 

Ex. A-1, 2002 SSA §§ 2, 2.B., 2.F; Ex. A-21, MSSA at 1 (“Software” includes 

“Applications” described in Subscription Schedules), § 1.1 (license is for a fixed 

term and requires payment of subscription fees), § 6.1 (Ford irrevocably 

acknowledges Versata’s ownership of the Software), § 7.4 (reiterating that Ford has 

no title or ownership interest in the Software), § 7.6 (again specifying that Versata 

owns the licensed Software); SS4 (ACM is “Software”). Ford cannot point to 

anywhere in the SLA, CSA, 2002 SSA, or MSSA that says that Ford paid Versata to 

develop ACM and MCA on Ford’s behalf, particularly since (as cited above) those 

contracts repeatedly and explicitly stated that Versata owned the Software listed in 

the subscription schedules. As Ford’s corporate representative Mike Sullivan 

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testified, Ford intended for Versata to own ACM.38

Even if Ford believed—for whatever reason—that ACM had been developed 

for Ford under the CSA, Ford abandoned that claim in the MSSA. See MSSA § 

13.10 (integration clause providing that the MSSA “shall constitute the entire 

agreement between the parties regarding the subject matter hereof and supersede all 

proposals and prior discussions and writing between the parties with respect 

thereto.”) and § 6.1 (in which Ford “irrevocably acknowledges that, subject to the 

licenses granted herein, Ford has no ownership interest in the Software”) 

(emphasis added). Additionally, the MSSA is clear that Ford’s license to the 

Software is not a perpetual, royalty-free license, but is instead for a fixed term, 

ending with the termination of the applicable Subscription Schedules. See MSSA § 

1.1. 

The parties’ actions back this up. If Ford indeed believed that it had paid 

Versata “tens of millions of dollars pursuant to the CSA to develop the ACM 

software” between 1999 and 2004, or that Ford was entitled to a perpetual, royaltyfree license, why did Ford spend the next ten years paying Versata tens of millions 

of dollars more to license ACM? See Dkt. 226 at 15 ¶ 76. Why would Mike Sullivan 

and Samantha Balinski

 

38 Ex. Q, [Sullivan Dep. at 252:22-256:11]. 

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39 Why is it that the first time Ford claimed that it owned 

or had a perpetual license to ACM was when Versata caught Ford copying its 

software, and Ford filed its declaratory judgment action? The answer is that Ford 

and Versata both clearly understood and intended—as the contracts reiterate—that 

Versata owned ACM, and that Ford’s license required the payment of subscription 

fees and was only valid until the license agreements were terminated. Ford’s 

argument to the contrary is merely after-the-fact lawyer creativity. Because the 

contracts clearly provide that Versata, not Ford, owns ACM, and that Ford’s license 

was for a fixed term that ended with the termination of the relevant Subscription 

Schedules in January 2015, Versata is entitled to summary judgment on Ford’s 

fourth and fifth causes of action. 

Ford reverse engineered ACM in violation of the MSSA. (Versata’s 

Counterclaim 11) 

Ford breached the MSSA with Versata by reverse engineering Versata’s 

ACM, MCA, and ACS licensed Software. The MSSA prohibits Ford from reverse 

engineering Versata’s Software. Ex. A-21, MSSA § 1.7. The MSSA gives several 

examples of “reverse engineering” including “studying the Software’s behavior in 

response to a variety of inputs.” Id. Studying software outputs is a recognized form 

of reverse engineering. See SAS Inst., Inc. v. World Programming, Ltd., 874 F.3d 

 

39 See Ex. A-5 (Decommissioning Doc) (telling “former PDO team members” to 

delete Versata’s “licensed and proprietary” documents and .jar files.) 

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370, 382 (4th Cir. 2017) (“It is clear that WPL violated the unambiguous reverse 

engineering prohibition. By all accounts, WPL analyzed the Learning Edition to 

learn how it worked in order to better recreate its functionality in its own products.”). 

Notably, the Fourth Circuit rejected the district court’s holding that reverse 

engineering requires access to source code. Id. (“That WPL did not access the 

Learning Edition's source code is simply insufficient to overcome the ample 

evidence that WPL analyzed the broader ‘design’ of the Learning Edition.”). 

Ford admits that it studied ACM and MCA outputs for the purpose of ensuring 

that its replacements produced identical outputs. Ford’s corporate representative 

admitted that Ford would compare PDO outputs with ACM outputs, or exports, to 

“ensure [the PDO outputs] were accurate on the way out.”40 These comparisons 

were a part of Ford’s validation process for PDO.41 

Ford’s documents show that Ford’s analysis of ACM’s behavior in response 

to inputs was widespread at Ford. Ford PDO developers were “trying to figure out 

given an [ACM] input x what will be the value of y.”42 Mike Sullivan told PDO 

developers that it was appropriate for Ford to derive requirements by “modifying 

input and view [sic] the output as this can be used to determine how the code is 

 

40 See Ex. Q, FMS, Sullivan Dep. at 109:16-22; Id. at 109:16-119:22. 

41 Id. at 113:4-22. 

42 Ex. A-56 email re: meeting minutes. FV1102606. Ford frequently referred to 

ACM as “Legacy.” See Ex. A-57 (ACM Legacy Docs). 

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currently handling scenarios that requirements are unknown.”43 Mr. Sullivan further 

indicated that “[f]rom inputs and outputs you are ok to assess what the business rules 

are for creating the exports.”44 However, this type of input/output analysis is 

expressly prohibited by the MSSA.45

Ford’s reverse engineering took numerous different forms: (1) use of ACM 

.jar files, (2) use of comparator tools, and (3) use of Excel macros. Indeed, as early 

as 2009, Ford planned to compare ACM-generated results with the results of 

replacement prototypes to ensure that the “rule writing format and consistency logics 

conform[] to existing .”46 

A. Ford reverse engineered ACM and MCA using .jar files. 

As noted by Seth Krauss and by Versata’s technical expert, Dr. Sam Malek, 

Ford placed ACM jar files in its PDO repository in Accurev.47 Ganesh Alla, a Ford 

employee and PDO developer, admitted that these .jar files were used for testing 

PDO.48 Ford’s technical expert, Monty Myers, acknowledged that these .jar files 

were placed in its PDO environment so that ACM’s and PDO’s outputs to 

 

43 Id.

44 Ex. A-58, Sullivan Comparison Email, FV1018350. 

45 Ex. A-21 [MSSA] § 1.7. 

46 Ex. A-59, Ford Testing Email, FV1032443. 

47 See Doc. 129, Krauss Declaration (PI); Ex. A-23, Ex. A-22, Myers Report at ¶70-

72. 

48 See Ex. L, Ganesh Alla Dep., at p.23:21-25:11. 

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downstream systems could be “compared side-to-side.”49 Similarly, Ford used 

ACM .jar files so that its outputs to FQV could be “compared side-by-side” to 

PDOR1 outputs to FBI, Ford’s FQV replacement.50 Ford understood that these .jar 

files were a licensed part of Versata’s Software.51 These side-by-side comparisons 

are precisely the type of behavior that is prohibited by the MSSA.52 

B. Ford reverse engineered ACM and MCA using Comparator Tools 

and Excel macros. 

Ford’s studying of ACM and MCA outputs was so widespread at Ford that 

Ford developed software programs for the sole purpose of comparing ACM’s and 

MCA’s outputs with their PDO replacements. 

For example, Ford developed an “MCA Comparator Tool” as a part of its 

PDO development. The purpose of the MCA Comparator Tool was to “compare the 

Legacy MCA response file with the PDO MCA response file in order to prove that 

PDO is producing valid answers to MCA requests.”53 Using the MCA Comparator 

Tool, the “PDO and Legacy Response files relating to a single request are retrieved 

for comparison.”54 The MCA Comparator Tool would generate a report “showing 

 

49 Ex. A-23 Myers Trade Secret Rebuttal at ¶ 709. 

50 Id. at ¶ 707. This was a part of a regular pattern at Ford. Id. at ¶¶706-711. 

51 See Ex. A-5, Decommissioning Doc, supra, at fn. 39. 

52 See Ex. A-15, VSM, Ex. A-16, Trade Secret and Copyright report of Dr. Sam 

Malek. 

53 See Ex. A-39 MCA Comparator Tool, at p. 8552. 

54 Id. at 8553. 

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the differences between” the Legacy MCA response and the PDO MCA response.55 

This report was designed to “provide a detailed level of comparison results.”56 Other 

documentation similarly shows that the purpose of the MCA Comparator tool was 

to compare the outputs of Versata’s MCA with the outputs of PDO MCA in response 

to a single output, indicating that “the MCA comparator tool will receive two 

response files generated by a single request. These structurally identical files will 

be compared and any differences in data will be reported.”57 

This MCA Comparator tool was implemented and used at Ford.58 Ex. A-14, 

[Malek Report]. Numerous Ford documents show that Ford performed such 

comparisons generated by the MCA Comparator tool. For example, a Ford 

document shows Ford assessing the risks of differences between Versata MCA 

results and PDO MCA results.59 Numerous other documents show Ford studying the 

results of Versata MCA-generated feature strings and PDO MCA-generated feature 

strings.60 

 

55 Id. at 8558. 

56 Id. 57 See Ex. A-40 MCA Comparator Iteration 45815. 

58 See Ex. A-41, PDO developer .jar files, at FV0038369; FV53164, FV53167, 

FV53181, FV53184, FV53186, FV53197, FV 1017199-204, FV1021980.

59 See Ex. A-41, PDO developer .jar files, at FV0038369; FV53164, FV53167, 

FV53181, FV53184, FV53186, FV53197, FV 1017199-204, FV1021980; Ex._ A45 (Ford spreadsheet analyzing differences between Versata MCA and PDO MCA); 

see also Ex. A-23, Myers Trade Secret Report at ¶ 622 (confirming this spreadsheet 

is a comparison between Versata MCA and PDO MCA outputs). 

60 Ex. A-46, FV1089182 (stating that Ford “took the MCA-generated maximally 

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Ford performed similar testing on ACM, in addition to the .jar file testing. 

Indeed, Ford documentation shows Ford’s intent to “come up with the strategy for 

Comparing Export Files between [ACM] and PDO.”61 Ford developed numerous 

tools for this purpose. For example, a spreadsheet produced by Ford includes 

instructions to compare “Legacy Feature” with “PDO Vehicle Line” files.62 

Ford also built a tool for comparing ACM outputs with PDO outputs, called 

the “Export Validation Tool.” Like the MCA Comparator Tool, the Export 

Validation Tool was to perform “automated rule validation of only rule files between 

PDO/Legacy.”63 This tool would generate comparison reports between ACM Export 

and PDO Export by comparing ACM’s exported rules with PDO’s exported rules 

and identifying any mismatches.64 In addition to Mike Sullivan’s admissions that 

Ford compared PDO outputs to ACM outputs, numerous Ford documents show that 

this comparison tool was in wide use at Ford.65 

Versata is entitled to summary judgment that Ford breached the MSSA with 

Versata by reverse engineering Versata’s ACM, MCA, and ACS. 

 

standard configuration” and compared to the “Super-Configuration Based 

maximally standard [] configuration.”); Ex. A-47, [FV46210 – Comparing to hand 

calculated results]; Ex. A-48, FV0047314. 

61 See Ex. A-49, Comparing Export Files at 20644. 

62 See Ex. A-50, Feature File Comparison FV0020176. 

63 See Ex. A-51, Export Validation Tool at 005607(8) 

64 Id. at FV0056079-80. 

65See Ex. A-8 

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There is no genuine issue of material fact as to Ford’s infringement of 

Versata’s copyright. (Versata’s Counterclaim 14) 

A claim of copyright infringement under federal law “requires proof that (1) 

the plaintiff had a valid copyright in the work allegedly infringed and (2) the 

defendant infringed the plaintiff’s copyright” by violating one of the exclusive rights 

that 17 U.S.C. § 106 bestows upon the copyright holder. See Stromback v. New Line

Cinema, 384 F.3d 283, 293 (6th Cir. 2004). Versata has registered copyrights on 

ACM 1.0, ACM 4.23.13.01, ACS 02.26.01, and MCA 02.02.14.01 that are presumed 

to be valid. Ex. A-31 through A-36; see Tiseo Architects, Inc. v. SSOE, Inc., 431 F. 

Supp. 2d 735, 740–41 (E.D. Mich. 2006) (in a claim for copyright infringement, a 

copyright registration is prima facie evidence that provides a presumption of 

validity”) (citing Service & Training, Inc. v. Data General Corp., 963 F.2d 680, 688 

(4th Cir. 1992)). 

These or earlier versions of this software was provided by Versata to Ford.66 

The copyrighted software was provided to Ford in form of Java “jar” files, including 

the following jar files: 

.

67 Under the effective registration doctrine, 

 

66See Ex. B VSK, Krauss Decl., at ¶ 9; Ex. A-31-36 Copyright Registrations to 

ACM,ACS, and MCA. 

67 See Ex. B. VSK, Krauss Decl., at ¶¶ 9, 10. The following .jar files are associated 

with and included in the ACM application: trie.jar, cm.jar, acmui.jar, 

cmresources.jar, acmuiresources.jar, and testcore.zip. 

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Versata’s registration of these versions of the software are sufficient to cover its 

earlier versions of the software. See Oravec v. Sunny Isles Luxury Ventures, L.C., 

527 F.3d 1218, 1229 (11th Cir. 2008) (registration of the derivative work has been 

deemed sufficient to permit a claim based on the underlying work, even if that work 

was not registered); Streetwise Maps, Inc. v. VanDam, Inc., 159 F. 3d 739, 747 (2nd 

Cir. 1998) (“[B]ecause Streetwise is the owner of the copyright of both the derivative 

and pre-existing work, the registration certificate relating to the derivative work in 

this circumstance will suffice to permit it to maintain an action for infringement 

based on defendants’ infringement of the pre-existing work.”); JCW Software, LLC 

v. Embroidme.com, Inc., No. 10-80472-CIV, 2011 WL 13225174, at *6 (S.D. Fla. 

July 26, 2011) (allowing plaintiff to pursue its copyright infringement claims for a 

later unregistered version based on plaintiff’s registration of earlier version of the 

same software); In re Independent Servs. Organizations Antitrust Lit., 864 F. Supp. 

1469, 1473 (D. Kan. 1997) (“Xerox’s registration of the derivative works is 

sufficient to allow an infringement claim based on copying of material, either newly 

added or contained in the underlying work.”). 

There is ample direct evidence of Ford’s unauthorized copying and use of 

 

the following .jar files are associated with and included in MCA: mca.jar, 

mcamonitoringtool.jar, trilcommons.jar, mcaresources.zip, mca_test_data.zip, 

mca_test.jar. Id. 

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Versata’s copyrighted software.68 See Murray Hill Publications, Inc. v. Twentieth 

Century Fox Film Corp., 236 F.3d 312, 316 (6th Cir. 2004) (“the central question on 

a copyright infringement claim is whether the defendant ‘copied’ the plaintiff’s 

copyrighted creation”). As noted above, Ford admits that it placed .jar files in it 

PDO repository to perform input/output testing, in violation of the MSSA.69 Ford 

developers had unauthorized access to Versata code in a format that could allow for 

easy reverse engineering of Versata’s software, including well after Ford’s license 

to use the software had been terminated. 

In addition, these .jar files became human-readable when placed in Ford’s 

PDO repository, allowing Ford’s software developers to examine and understand the 

logic behind the code.70 Versata .jar files were made available to Ford as part of the

licensed software in order to enable execution of the license software.71 If used in 

the licensed manner, Ford would never have had access to Versata’s source code in 

a format that human-readable. See Ex. B, Krauss Dec. Ford does not deny that it 

placed these files in its PDO repository. See Ex. A-23, Myers [706-708]72 

Ford was never authorized to make copies of these files in a development 

 

68 The versions of the software provided to Ford overlap functionally with the 

versions that Versata registered with the Copyright Office. See Ex. B, Krauss Decl. 

69 See Section III, supra. 70See Ex. B, Krauss Decl. 

71 See also Ex. A-15, Dr. Malek Report, at ¶¶ 427-37. 

72 See also Ex. A-15, Dr. Malek Report, at ¶428 (citing screenshots from Ford’s 

repository, attached as Ex. A-54, - FORD_SOURCECODE_000510, 600, 601) 

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environment to permit readable access to Versata’s code.73 Nor was Ford authorized 

to place them in a central repository allowing distribution of these files to anyone 

who had access to the Ford computer network and repository. It is undisputed that 

numerous developers who authored the Ford infringing software, PDO, had these 

.jar files saved on their computers.74 Moreover, these .jar files existed in Ford’s 

PDO environment after its license to the ACM software expired.75 

No genuine issue of material fact exists as to Ford’s unauthorized distribution 

and use of these copyrighted materials. See Ward v. Knox County Bd. of Educ., 612 

Fed. Appx. 269, 277 (6th Cir. 2015) (affirming a grant of summary judgment of 

infringement where the evidence in the record does not create a genuine dispute of 

material fact regarding copying); Calibrated Success, Inc. v. Charters, 72 F. Supp. 

3d 763, 773 (E.D. Mich. 2014); Wilcom Pty. Ltd. v. Endless Visions, 128 F. Supp. 

2d 1027, 1031–32 (E.D. Mich. 1998); FenF, LLC v. Healio Health Inc., No. 

5:08CV404, 2009 WL 10688713, at *3 (N.D. Ohio Sept. 4, 2009); Corel Corp. v. 

Ford Motor Co., No. 05-71130, 2006 WL 680846, at *3 (E.D. Mich. Mar. 15, 2006) 

(“If Ford’s use of the FlowCharter software exceeds its license in that Ford has 

copied the software on more desktops than it has paid a license fee, . . . Corel may 

 

73 See, e.g., Ex. A-55, FORD_SOURCECODE_001589 (showing human readable 

version of a .jar file); Ex. A-21, MSSA 1.7 (prohibition on reverse engineering) 

74 See Ex. A-41, PDO developer .jar files. 

75 See Dkt. 129, Krauss Dec. ISO of Preliminary Injunction at ¶ 118; Dkt. 201, 

Krauss Supplemental Declaration ISO Preliminary Injunction at ¶ 3. 

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be able to establish its copyright infringement claim.”). Accordingly, Versata is 

entitled to summary judgment on its copyright infringement claim. 

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Ford cannot show facts sufficient to support its invalidity claims. (Ford’s 

COA 9–16) 

Ford has the burden, under section 282 of the Patent Act, to prove its invalidity 

defense to be proved by clear and convincing evidence. See Microsoft Corp. v. I4I 

Ltd. Partn., 564 U.S. 91, 97 (2011). In deciding a motion for summary judgment of 

invalidity the burden of proof must be considered. See Anderson v. Liberty Lobby, 

Inc., 477 U.S. 242, 250 (1986); Nat’l Presto Indus., Inc. v. W. Bend Co., 76 F.3d 

1185, 1189 (Fed. Cir. 1996). 

A. Ford has offered no evidence of invalidity for the ’080, ’651, ’825 

patent claims and the dropped claims from the remaining 

asserted patents. 

As discussed above, at the time of opening reports, Versata dropped 

infringement allegations as to two of the previously asserted patents, and some of 

the claims originally asserted from the Asserted Patents.97 Versata provided Ford 

 

97 Versata’s reduction of asserted claims was in part due to the stipulation entered 

into by the parties to reduce asserted claims and invalidity reference. See Dkt. 123. 

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with a list of the Asserted Claims in Dr. Malek’s report.98 

Neither Dr. Greenspun nor Dr. Surati submitted an expert report as to the 

invalidity of the ’080 patent under 35 U.S.C. §§ 102, 103. And although Ford’s 

invalidity experts, Dr. Greenspun and Dr. Surati, offered opinions as to invalidity of 

the ’651 and ’825 patents (no longer asserted) as well as a larger set of asserted 

claims, they later limited their expert opinions to the Asserted Claims.99 The only 

claims that Ford’s experts no offer invalidity opinions are those asserted by Versata, 

i.e., the Asserted Claims. Ford cannot raise a genuine issue of material fact as to the 

validity of the ’080, ’651, and ’825 patent or as to any claims other than those 

presently asserted by Versata. Further, as the Special Master found with regard to 

claims that Versata previously dropped in the case, there remains no active case or 

controversy as to the validity of these claims.100 As a result, Versata asks the Court 

enter a partial summary judgment of validity and patent-eligibility as to claims of 

the ’651 and ’825 patents, and all claims other than the Asserted Claims of the ’294, 

’308, ’057, ’080, ’582, and ’064 patents as well as summary judgment of patent 

validity as to claims of the ’080 patent.101 

 

98 Ex. A-14, Malek Patent Rep. at 4. 

99 See Ex. O, Greenspun Dep. at 9:16-10:24; Ex. R, Surati Dep. at 8:17-9:7. 

100 See Dkt. 181, at 41-48 (relying on Streck, Inc. v. Research & Diagnostic Sys., 

Inc., 665 F.3d 1269 (Fed. Cir. 2012). 

101 Specifically, these claims are claims 3-6, 10-21, 25-27, 29-36 of U.S. Patent 

6,405,308; claims 3-6, 9-17, 19-21, 30, 32-33 of U.S. Patent 6,675,294; claims 4, 5 

of U.S. Patent; 7,200,582; claims 4-8, 10, 13, 16-27 of U.S. Patent 7,464,064; and 

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B. Ford has offered no evidence that Versata’s patent claims are not 

directed to patentable subject matter. 

For each of the Asserted Claims, Ford’s expert, Dr. McGuiness opines that 

each of the claimed invention can be performed with a pen and paper, and are 

“mental processes” that should each be considered an abstract idea. With regard to 

the ’308 and ’294 patents, Dr. McGuinness opines that an automobile seller’s use of 

a Ford Explorer Brochure could perform each functional element of each of the 

asserted claims of those patents.102 On the ’582, ’064, ’080 and ’057 patent claims, 

Dr. McGuinness opines that the examples provided in the patent specification show 

that a human being, using pen and paper, can perform the claimed invention.103 For 

each of the Asserted Claims, Dr. McGuinness states in conclusory fashion that 

because generic computer system and components add nothing to the claim 

limitations, the claim does not provide any technological improvement or 

innovation.104 

 

claims 2-17, 20, 24, 26, 28-46 of U.S. Patent 7,882,057; claims 2, 5-10, 14-17, 19-

22 of U.S. Patent 7,739,080. Ford’s amended complaint (Dkt. 161) includes eight 

causes of action (Nos. 9-16) and eight counterclaims (Nos. 1-8) relating to invalidity 

of Versata’s patents. Ford patent-eligibility expert, Dr. McGuiness does offer 

opinions as to the ’080 patent claims, which Versata addresses below. 

102 See, e.g., Ex. A-19, McGuinness ’651 Report at 25-33 (’308 patent, claim 1). 

103 See, e.g., Ex. A-18, McGuinness ’582 Report at 6-10 (’582 patent, claim 1); Ex._ 

A-16, McGuinness ’057 Report at 7-17 (’057 patent, claim 1); Ex. A-17, 

McGuinness ’080 Report at 2-12 (’080 patent, claim 1). 

104 See, e.g., Ex. A-19, McGuinness ’651 Report at 33; Ex. A-18, ’582 Report at 10; 

Ex. A-16, McGuinness ’057 Report at 17; Ex. A-17, McGuinness ’080 Report at 12. 

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Patentable subject matter under § 101 broadly encompasses processes, 

machines, manufactures, and compositions of matter but is subject to exceptions for 

“laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos, 561 U.S. 

593, 601 (2010). These exceptions are applied narrowly because “too broad an 

interpretation of this exclusionary principle could eviscerate patent law.” Mayo 

Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). 

 In step one of the Supreme Court’s Alice analysis, the court determines 

“whether the claims at issue are directed to one of th[e] patent-ineligible concepts.” 

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). The claim 

must be viewed as a whole, and all claim limitations must be considered. See 

Diamond v. Diehr, 450 U.S. 175, 188 (1980). 

If the court finds an abstract idea at step one, it proceeds to step two, where it 

examines whether the claim contains an “inventive concept sufficient to transform 

the claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 

2357. The claim limitations must be considered both individually and “as an ordered 

combination.” Id. at 2359. 

1. Ford’s analysis as to Step 1 of the Alice Analysis for each of 

the Asserted Claims is deficient. 

For each of the Asserted Claims, Ford does not allege that the claim is directed 

toward a conventional idea that had long been performed with pen and paper that 

Versata’s patents simply implemented using a generic computer. Instead, Ford’s 

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allegation is, based on its expert’s incorrect opinions, that each of the asserted claim 

can be performed “mentally or with pencil and paper,” and thus the claims are each 

directed at an abstract idea. Ford misapplies law related to a narrow subcategory of 

patents directed at unpatentable mental processes to Versata’s computer-centric 

inventions. “[M]ental processes are not patent-eligible subject matter because the 

application of only human intelligence to the solution of practical problems is no 

more than a claim to a fundamental principle.” CyberSource Corp. v. Retail 

Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (citing Gottschalk v. Benson, 

409 U.S. 63, 67 (1972)). In Benson, for example, the unpatentable method was 

directed to converting binary-coded decimals numbers into pure binary through the 

use of a mathematical algorithm. Id. The Federal Circuit has applied this reasoning 

to a narrow set of inventions that can be performed entirely in the human mind. In 

CyberSource, for example, the Court found a method directed to detecting fraud 

based on the internet address data relating past transactions to be “a method that can 

be performed by human thought alone.” Id. at 1373 (emphasis added). Citing 

Benson, the court explained: 

Methods which can be performed entirely in the human mind 

are unpatentable not because there is anything wrong with 

claiming mental method steps as part of a process containing 

non-mental steps, but rather because computational methods 

which can be performed entirely in the human mind are the 

types of methods that embody the “basic tools of scientific and

technological work” that are free to all men and reserved 

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exclusively to none. 

Id. (emphasis in original). 

 Versata’s patent claims are directed at specific and detailed improvements to 

configuration systems and can hardly be considered the basic tools of technological 

work.105 More importantly, the claims recite limitations that are inherently tied to a 

computer and cannot be performed in the human mind. 

The ’308 and ’294 Patent Claims 

Each of the Asserted Claims recite limitations clearly directed at computer 

components. For example, the claims recite the term “graphically displayed,” 

“conveyed graphically,” “display,” “displayed by a first computer system” or even 

“displaying on a display of a first computer system.”106 When read in context of the 

claims and the specification, these limitations are necessarily implemented on a 

computer, not in the human mind. Contrary to Ford’s allegation, the Federal Circuit 

has specifically held that inventions directed at user interface improvements—one 

aspect of the claimed inventions here—are indeed patent eligible. See Core Wireless 

Licensing v. LG Elecs., Inc., No. 2016-2684, 2018 WL 542672, at *4 (Fed. Cir. Jan. 

25, 2018). Other ’294 patent claims require transmission of data between two 

 

105 Dr. Wilson’s report details the flaws in Ford’s approach. Ex. A-30, Wilson 

Report at 17-39 (’651 patent family), 58-63 (’582 patent family), 71-75 (’080 

patent), 97-106 (‘057 patent). 

106 See independent claims 1 and 18 of the ’308 patent (Ex. J) and independent claims 

1, 21 and 26 of the ’294 patent (Ex. K). 

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computers.107 Ford’s step one analysis improperly ignores each of these limitations 

to conclude—as its expert does—that the inventions are merely computational 

methods which can be performed entirely in the human mind.

The ’582 and ’064 Patent Claims 

The asserted claims of these two patents are directed to methods and systems 

for detecting consistency errors. Even a cursory review of these patents makes clear 

that these are improvements to a configuration system used to define product 

configuration.108 The last limitation of the independent claims requires providing 

data to the user indicating consistency error that has been detected. The ’064 patent 

claims expressly recite providing such error data “to a computer system for display 

by a display device.”109 The purpose of detecting errors is to fix them. Ford’s 

reading of the claims, excluding the computer related limitations, once again renders 

the claims meaningless. 

The ’057 Patent Claims 

Ford’s claim that the ’057 patent claims can be performed by a human are 

surprising. At claim construction, Ford argued that at least one of the limitations of 

the independent claims of this patent cannot be performed by humans. See Dkt. 181, 

 

107 See, e.g., independent claims 21 and 26. (Ex. K) 

108 See, e.g., Ex. G, ‘582 patent, Abstract. 

109 See, e.g., Ex. E, ‘064 patent, claims 1, 9. 

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at 50. After all, Ford argued, the only support in the specification for the claim 

limitation requires that the processing step be performed on a computer. Id. at 51. 

Versata as well as the Special Master generally agreed that the substantive 

processing of the claim has to be done by a computer, not a human, and the Special 

Master therefore construed the claim accordingly. Id. at 52. Ford now makes a Uturn on its own argument, claiming that the ’057 claims can be performed entirely

in the human mind. Not only does it contradict the claim construction, which the 

parties agreed to adopt, and the Court entered an order doing so,110 but also ignores 

numerous limitations in the claims that expressly recite a computer system or aspects 

of a computer system such a processor, a storage medium, and a display device.111 

The ’080 Patent Claims 

Ford’s patent ineligibility allegation as to the ’080 patent claims is just as 

remarkable at that for the ’057 patent. Here too, Ford argued for, and obtained a 

claim construction limiting the independent claims to be performed by the computer 

or computer system. See Dkt. 181, at 56-62. And like the ’057 patent claims, the 

’080 patent claims expressly recite “performing with a computer system,” as well as 

use of specific computer components.112 Ford’s allegation that these are systems 

and methods that can be performed entirely in a human mind is unsupported. 

 

110 See Stipulation and Order Regarding Claim Construction, Dkt. 317. 

111 See, e.g., independent claims 1, 18. (Ex. D) 

112 See, e.g., independent claims 1, 3, 4. (Ex. I) 

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2. Ford has offered no evidence of as to Step 2 of the Alice

Analysis 

As discussed above, Dr. McGuinness offers a single conclusory statement as 

to Alice step 2. The statement follows her conclusion that each of the claimed 

invention can be performed using pen and paper: 

As established above, the steps of claim 1, considered separately, are 

conventional steps that can be done by a person either in the mind or 

using pen and paper. Viewed as a whole, with the steps considered 

in the order presented in the claim, generic computer system and 

components add nothing that is not already present when the steps 

are considered separately or when the steps are considered in the 

order presented, so the claim does not provide any technological 

improvement or innovation.113 

 Even if Dr. McGuinness is correct on her claim that each of the claimed 

inventions can be done by humans using a pen and paper—and she is not—there can 

be no question that each of the asserted claims recite an “inventive concept,” 

particularly in light of the evidence that demonstrates how the patented inventions 

revolutionized configuration systems. The Supreme Court has made clear that 

claims that solve “technological problems,” “improve the functioning of a computer 

itself,” or “effect an improvement in other technology or technical field” likely meet 

this test. Alice, 134 S. Ct. at 2359; DDR Holdings, LLC v. Hotels.com, L.P., 773 

F.3d 1245, 1255 (Fed. Cir. 2014). Here, the evidence of the novelty of the patented 

 

113 See, e.g., Ex. A-19, McGuinness ’651 Report at 33. 

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inventions’ improvement to configuration systems refutes any argument that the 

patents are no more than an ineligible concept itself. This includes not just the 

intrinsic evidence (the claims, specification, and prosecution history) but also 

opinions provided by Dr. Wilson as to the claims of each of the Asserted Patents, 

explaining inventive concepts found in each of the claimed inventions.114

Moreover, this inquiry differs from, and is in fact a lower bar than, novelty 

and non-obviousness in that it focuses on whether the claims “purport” to set forth a 

technological solution or improvement rather than focusing on the question of 

whether, in light of the prior art, the patent actually does set forth a novel 

improvement over the prior art. Alice, 134 S. Ct. at 2359. Dr. McGuinness’ single 

conclusory statement gives short shrift to the step two analysis and is insufficient to 

meet Ford’s burden of clear and convincing evidence as to its challenge to § 101 

eligibility of Versata’s patents. 

Versata asks the Court to reject Ford’s expert’s paper and pen arguments as 

to Versata’s inventions and enter summary judgment that each of the Asserted 

Claims is directed to patentable subject matter. 

C. Ford has offered no evidence of invalidity of the ‘582 and ‘064

patent claims. 

As discussed above, each of asserted claims of the ‘582 and ‘064 patent 

 

114 Ex. A-30, Wilson Report at 39-47 (’651 patent family), 51-58 (’582 patent 

family), 76-77 (’080 patent), 106-108 (‘057 patent). 

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require that a consistency error type be represented by a set equation — equations 

that operate on sets.115 Ford alleges that these claims are anticipated or rendered 

obvious by two nearly identical references, namely, Felfernig 1999 and Felfernig 

2000.116 Ford’s expert, Dr. Surati, identifies a single disclosure in Felfernig 2000117

as meeting the “set equation” limitation: 

e1+ = {∃ (PC, MB, SOS): type(PC, pc). type(MB, 

motherboard-3). type(SOS, server-os-1). conn(PC, 

motherboard-port, MB, pc-port). conn(PC, server-os-port, 

SOS, pc-port).} 

This is not an equation that operates on anything. Dr. Surati admits that the 

symbol “∃” is used to connote “there exists.”118 Felfernig explains that this 

statement signifies that e1+ represents the proposition that “there exists”—a 

PC(personal computer), MB(motherboard), and SOS(server operating systems) 

such that the PC is the type pc, the MB is the type motherboard-3, the SOS is type 

server-os-1, the PC’s motherboard-port is connected to the MB’s pc-port, and the 

PC’s server-os-port is connected to the SOS’s pc-port.

119 A statement that declares 

that something exists, does not “operate on” that something. The only disclosure 

 

115 The Court has construed a “set equation” as “one or more equations that operate 

on sets.” 

116 Ex. A-27, Dr. Surati Rep. at ¶ 23-26. 

117 Ex. A-6, Felfernig at 180-181. Ex. A-27, Dr. Surati Rep. at ¶¶ 96-99. 

118 Ex. R, Surati Dep. at 151-159. 

119 Ex. R, Surati Dep. at 152:24-153:24. 

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that Dr. Surati relies on therefore does not meet the “set equation” limitation.120

What that statement instead connotes is that a specific configuration exists. 

Felfernig calls these statements, (e1+ and e1-

) “examples”—assertions of 

configurations describing a set of parts being combined to form a product.121 There 

are valid and invalid “example” configurations that define possible valid or invalid 

configurations as permitted by the product definition.122 The two example 

configurations serve complementary purposes. The goal of the positive examples in 

E+ is to check whether the knowledge base will accept correct configurations. 

Conversely, a negative example in E-

 serves to check that the knowledge base will 

not accept an incorrect configuration. A configuration is in no sense an “equation,” 

Felfernig does not refer to them as such, and does not disclose them as operating on 

anything—they serve merely as a comparison tool. The only evidence that Ford has 

to offer are unsupported opinions that contradict the clear disclosure of the actual 

references. Ford cannot escape summary judgment by offering such conclusory 

opinions of invalidity. See Regents of Univ. of Minnesota v. AGA Med. Corp., 717 

F.3d 929, 941 (Fed. Cir. 2013) (“Conclusory expert assertions cannot raise triable 

issues of material fact on summary judgment.”); see also TechSearch, LLC v. Intel 

Corp., 286 F.3d 1360, 1371 (Fed. Cir. 2002) (“A party may not overcome a grant of 

 

120 Ex. R, Surati Dep. at 159. 

121 Ex. A-6, Felfernig 2000 at 180. 

122 Ex. A-6, Felfernig 2000 at 181 

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summary judgment by merely offering conclusory statements.”). 

D. Ford has offered no evidence of invalidity of the ‘057 patent 

claims because Dr. Greenspun fails to identify any disclosure of 

dividing a configuration query in either of the prior art 

references. 

The ‘057 patent claims methods for answering complex configuration queries 

by dividing the query into subqueries. Ford relies on a combination of two 

references—Loomans123 in view of Stahl124—to claim that the ’057 patent claims are 

obvious.125

All of the asserted claims of the ’057 patent require “dividing one or more 

configuration queries into multiple configuration sub-queries, wherein the multiple 

configuration sub-queries represent the one or more configuration queries.”126 

Neither of the references relied on by Ford expressly disclose a configuration query, 

let alone sub-queries or the dividing step as claimed. Ford’s expert instead argues 

that when the references are combined, viewed from a person of skill in the art’s 

perspective, and a series of inferences are drawn based on how the systems disclosed 

in each reference may (or may not) operate, the “dividing” limitation is disclosed 

somewhere.127 This can be hardly sufficient to meet Ford’s burden, to show by clear 

 

123 Ex. F, U.S. Patent 7,873,503. 

124Ex. A-26, Stahl, et.al, A Customization Approach for Structured Products in 

Electronic Shops. 

125 Ex. A-9, Greenspun ‘057 Rep. at pg.35.. 

126 Ex. D, ‘057 patent. 

127 Ex. A-9, Greenspun Rep. at ¶¶103-112. 

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and convincing evidence, that each of the limitation is present in the prior art. 

On the Stahl reference, Dr. Greenspun points to Figure 3 as disclosing 

“partitioning a query into sub-problems (i.e., sub-queries).”128 

First, even a cursory reading of Stahl, an English reference by three German 

authors, reveals that the word “query”129 is a result of a mistranslation—a “query” 

in Stahl refers to “an incomplete product description.”130 Regardless, even if the 

Court were to agree that an incomplete product description can be a “query,” 

nowhere does Stahl discuss “dividing” this incomplete product description into 

subqueries. Rather, “[t]he starting point of the configuration process is the query 

represented by an incomplete instantiation of the compositional structure.”131 In 

 

128 Ex. A-9, Greenspun Rep. at ¶103. 

129 Ex. A-71, Merriam-Webster’s Dictionary defines “query” as a question or 

inquiry, which is what any English speaker would understand the word to mean. See

Merriam-Webster.com, Merriam-Webster, n.d. Web. 31 Jan. 2018. Notably, Ford 

did not seek a construction of the term as something different than its plain and 

ordinary meaning. 

130 Ex. A.-26, Stahl at 4; Figure 3 reproduced above itself looks nothing like a 

question, let alone a configuration question. 

131 id. 

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other words, Stahl begins with an already partitioned compositional data structure. 

There is no need to divide anything. Dr. Greenspun’s analysis that the “dividing” 

limitation is disclosed to a person of skill in the art is far and divorced from both the 

claim language and the purpose of the ’057 patent—which is to solve complex 

configuration questions—and cannot raise a genuine issue as to the lack of disclosure 

of this limitation. 

Dr. Greenspun’s claims as to Loomans disclosing a “query” and the 

“dividing” limitation is even more baffling.132 Loomans does not even mention the 

word “query.”133 Instead, Dr. Greenspun opines that the disclosure relating to

building sub-models and models implicitly discloses queries, subqueries, and 

anything else that the claim may require.134 This is clear from the Dr. Greenspun 

statements—he does not state Loomans expressly discloses “dividing,” but instead 

that a query would be needed and that it would need to be divided. Id. Once again, 

when divorced from the language and purpose of the claims as well as from express 

statements in the prior art, one could imagine any disclosure. That however cannot 

be enough to create a genuine issue of material fact barring summary judgment. 

 

132 Ex. A-9, Greenspun Report at ¶107-111. 

133 It mentions “queried” in reference to a child sub-model querying its parent model 

for information about itself but that’s not the disclosure that Greenspun relies on. 

Ex. F, Loomans at 4:59-67. 

134 Ex. A-9, Greenspun Report at ¶109-110. 

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Versata has a contractual right to an audit. (Ford’s COA 7) 

Ford also seeks a declaratory judgment that the provisions of the MSSA do 

not permit Versata to inspect Ford’s PDO software or interview Ford’s PDO 

developers. Dkt. 226 at 18. But the MSSA verification provision provides that 

Versata is entitled to inspect “records pertaining to the Software licensed hereunder 

or other Trilogy Confidential Information.” MSSA § 3.5. Section 12.2 elaborates 

on the audit right, stating that “Ford will, upon reasonable request, reasonably make 

available to Trilogy certain of its facilities, computer resources, software programs, 

networks, personnel, and business information as are required to perform any

Work, service, or other obligation hereunder.” Ex. A-21, MSSA § 12.2. 

Because Ford had the obligation to permit Versata to inspect records 

pertaining to Versata’s Confidential Information and the licensed Software, because 

Ford’s obligation included providing access to its software programs and personnel, 

and because Versata sought to inspect a software program (PDO) and interview 

personnel (PDO developers) in furtherance of its right of inspection, the MSSA 

permits the requested inspection and interviews. To be entitled to its declaratory 

judgment, Ford would need to present evidence that Versata’s request was 

unreasonable. Ford has presented no such evidence. Versata is entitled to summary 

judgment on Ford’s seventh cause of action.

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Versata did not breach the SSA. (Ford’s COA 17) 

In its seventeenth cause of action, Ford claims that Versata breached the 2002 

SSA by not paying an annual refund to Ford for its ACM subscription fees. Dkt. 

#226 at 24. As an initial matter, Ford claims—and Versata agrees—that the MSSA 

superseded the 2002 SSA as to issues covered by the MSSA, such as pricing, and 

the refund provision of the SSA is no longer enforceable. Id. at 25 ¶¶ 128–29; see 

Ex. A-21, MSSA § 13.10 (integration clause providing that the MSSA “shall 

constitute the entire agreement between the parties regarding the subject matter 

hereof and supersede all proposals and prior discussions and writing between the 

parties with respect thereto.”). Therefore, Versata is entitled to summary judgment 

on this basis alone. 

Moreover, the discount provision applies only if Ford, in its discretion, 

participated in Trilogy marketing initiatives, and a non-Ford automobile OEM 

became an ACM customer. Ex. C-2, SSA 2.A. Ford has provided no evidence that 

it participated in Trilogy marketing initiatives. Nor has Ford provided any evidence 

that a non-Ford OEM became an ACM customer during the relevant time period. 

The 2002 SSA provides that the refund is contingent on another OEM subscribing 

to ACM. Ex. C-2, SSA § 2.E. That, however, did not occur during the pendency of 

the SSA, and Ford has not provided any evidence to the contrary. Therefore, on 

either ground, Versata is entitled to summary judgment on Ford’s seventeenth cause 

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of action. 

CONCLUSION 

For the reasons set forth above, Versata respectfully requests this Court to 

grant partial summary judgment, as described above, in Versata’s favor on counts 4, 

5, and 7–17 of Ford’s second amended complaint (Dkt. 226) and counterclaims 5, 6, 

11, and 14 of Versata’s answer to Ford’s second amended complaint (Dkt. 244). 

Date: February 13, 2018 Respectfully submitted, 

AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI &

 MENSING P.C. 

 

/s/ Steven J. Mitby 

 Steven J. Mitby 

Texas State Bar No. 24037123 

smitby@azalaw.com 

Reed N. Smith 

Texas State Bar No. 24067875 

rsmith@azalaw.com 

Iftikhar Ahmed 

 Texas State Bar No. 24064795 

 iftiahmed@azalaw.com 

Kyril Talanov 

Texas State Bar No. 24075139 

ktalanov@azalaw.com

Matthew Caldwell 

Michigan State Bar No. P79462 

mcaldwell@azalaw.com 

1221 McKinney, Suite 2500 

Houston, Texas 77010 

(713) 655-1101 (Phone) 

(713) 655-0062 (Fax) 

Case 2:15-cv-10628-MFL-EAS ECF No. 380 filed 02/13/18 PageID.22898 Page 61 of 63
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Sharoon Saleem 

Texas State Bar No. 24072321 

Jones Spross, PLLC 

1605 Lakecliff Hills Lane, Suite 100 

Austin, Texas 78732 

(713) 446-0217 

sharoon.saleem@jonesspross.com 

Rodger D. Young 

Jaye Quadrozzi 

Young & Associates 

27725 Stansbury Blvd., Suite 125 

Farmington Hills, Michigan 48334 

(248) 353-8620 

efiling@youngpc.com 

 

ATTORNEYS FOR DEFENDANTS 

VERSATA SOFTWARE, INC., F/K/A 

TRILOGY DEVELOPMENT GROUP, 

INC., AND TRILOGY, INC. 

Case 2:15-cv-10628-MFL-EAS ECF No. 380 filed 02/13/18 PageID.22899 Page 62 of 63
54 

UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

FORD MOTOR COMPANY, CASE NO. 15-10628-MFL-EAS 

Plaintiff/Counter-Defendant, (Consolidated with 

Case No. 15-11624-MFL-EAS) 

v. Hon. Matthew F. Leitman 

VERSATA SOFTWARE, INC., F/K/A 

TRILOGY SOFTWARE, INC., TRILOGY 

DEVELOPMENT GROUP, INC. AND 

TRILOGY, INC., 

Defendants/Counter-Plaintiffs. 

__________________________________________________________________ 

PROOF OF SERVICE 

Rodger D. Young certifies that on February 13, 2018, he served the Versata 

Defendants’ Motion for Summary Judgment – Corrected and this Proof of Service 

upon all counsel of record via electronic filing. 

I declare under the penalty of perjury that the statements made above are true 

to the best of my knowledge, information, and belief. 

YOUNG & ASSOCIATES 

/s/ Rodger D. Young 

Rodger D. Young (P22652) 

27725 Stansbury Blvd., Suite 125 

Farmington Hills, MI 48334 

248.353.8620 

efiling@youngpc.com 

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