1 

UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

VERSATA SOFTWARE, INC. et al., 

 Plaintiffs, Case No. 15-cv-10628 

 (consolidated with Case No. 15-11264) 

v. Hon. Matthew F. Leitman 

FORD MOTOR COMPANY, 

 Defendant. 

__________________________________________________________________/ 

ORDER (1) DENYING PLAINTIFFS’ MOTION FOR A PERMANENT 

INJUNCTION OR AN ONGOING ROYALTY (ECF No. 1056) AND 

(2) DIRECTING PARTIES TO SUBMIT JOINT STATUS REPORT 

 In this action, Plaintiffs Versata Software, Inc., Trilogy Development Group, 

Inc., and Trilogy, Inc. (collectively, “Versata”) alleged that Defendant Ford Motor 

Company misappropriated Versata’s trade secrets and breached the parties’ software 

license agreements. The case proceeded to trial. A jury found that Ford 

misappropriated three of Versata’s trade secrets and breached the parties’ license 

agreements in several ways. Versata has now moved for a permanent injunction 

barring Ford from, among other things, using its trade secrets and confidential 

information. (See Mot., ECF No. 1056.) In the alternative, Versata asks the Court 

to award it an ongoing royalty for each year that Ford continues to use its trade 

secrets. (See id.) For the reasons explained below, Versata’s motion is DENIED. 

 

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I 

A 

The Court has repeatedly recited the background of this action, most recently 

in its Opinion and Order granting Ford’s motion for judgment as a matter of law. 

(See Op. and Order, ECF No. 1054, PageID.67183-67186.) The Court incorporates 

that background here. In summary, Ford hired Versata to develop computer software 

that would allow Ford to more efficiently configure the millions of cars that it 

manufactures each year. Versata created that software and called it “ACM.” Versata 

then licensed ACM and other related software to Ford through a series of licensing 

agreements. In 2014, the parties were unable to agree on a renewed software license, 

and Ford implemented its own automotive configuration software program to 

replace ACM. Ford called this software “PDO.” 

At trial, Versata claimed that Ford breached the parties’ license agreements 

and misappropriated its (Versata’s) trade secrets when Ford developed PDO. The 

jury agreed and returned a verdict in Versata’s favor. (See Verdict Form, ECF No. 

1004.) The jury first concluded that Ford breached the parties’ license agreements 

by, among other things, misusing and disclosing Versata’s confidential information 

and reverse engineering Versata’s software. (See id., PageID.65558-65559.) Next, 

the jury concluded that Ford misappropriated three of Versata’s trade secrets. (See 

id., PageID.65560-65563.) 

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B 

On May 11, 2023, Versata filed a motion for a permanent injunction pursuant 

to the federal Defend Trade Secrets Act (the “DTSA”), 18 U.S.C. § 1836(b)(3)(A), 

and Michigan’s Uniform Trade Secrets Act (the “MUTSA”), Mich. Comp. Laws § 

445.1903. (See Mot., ECF No. 1056, PageID.67251.) Versata also says that it is 

entitled to an injunction based on Ford’s breach of the license agreements. (See id.) 

In its motion, Versata seeks a permanent injunction that “(1) prohibits Ford from 

continuing to use PDO; (2) prohibits Ford from continuing to use Versata’s trade 

secrets and confidential information; (3) requires that Ford return or destroy all 

confidential and trade-secret information in its possession, and (4) prohibits Ford 

employees and contractors with former or current access to Versata’s trade secrets 

and confidential information from developing or implementing other configuration 

software at Ford.” (Id., PageID.67246.) In the alternative, Versata asks the Court to 

award it “an ongoing royalty of at least $13,555,000 for every year that Ford 

continues to use Versata’s trade secrets and confidential information.” (Id.) Ford 

denies that it is currently using any of Versata’s trade secrets, and it opposes all of 

Versata’s requested relief. (See Ford Resp., ECF No. 1068.) The Court held a 

hearing on Versata’s motion on October 2, 2023. 

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II 

 “According to well-established principles of equity, a plaintiff seeking a 

permanent injunction must satisfy a four-factor test before a court may grant such 

relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) 

that remedies available at law, such as monetary damages, are inadequate to 

compensate for that injury; (3) that, considering the balance of hardships between 

the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public 

interest would not be disserved by a permanent injunction.” eBay Inc. v. 

MercExchange, LLC, 547 U.S. 388, 391 (2006). See also Audi AG v. D’Amato, 469 

F.3d 534, 550 (6th Cir. 2006) (“A plaintiff seeking a permanent injunction must 

demonstrate that it has suffered irreparable injury, there is no adequate remedy at 

law, ‘that, considering the balance of hardships between the plaintiff and defendant, 

a remedy in equity is warranted,’ and that it is in the public’s interest to issue the 

injunction”) (quoting eBay, 547 U.S. at 391). 

III 

Versata is not entitled to permanent injunctive relief for two independent 

reasons. First, Versata has not shown that it would suffer irreparable harm in the 

absence of an injunction. Second, the so-called “head start” period – the length of 

time it would have taken Ford to independently develop a non-infringing alternative 

without the benefit of Versata’s trade secrets – has expired, and thus even if Versata 

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could potentially have been entitled to injunctive relief at some point, it is not entitled 

to that relief now (or going forward). 

A 

The Court begins with Versata’s failure to show irreparable harm. While 

courts have often described the four elements of injunctive relief described above as 

factors that need to be balanced, the sin qua non of injunctive relief is irreparable 

harm. Indeed, the Supreme Court in eBay confirmed that, to be entitled to permanent 

injunctive relief, a plaintiff “must demonstrate [...] that it has suffered an irreparable 

injury.” eBay, 547 U.S. at 391 (emphasis added). Likewise, the Sixth Circuit has 

repeatedly held that “in order to obtain [... a] permanent injunction, a party must 

demonstrate that failure to issue the injunction is likely to result in irreparable harm.” 

U.S. v. Miami University, 294 F.3d 797, 816 (6th Cir. 2002) (emphasis added; 

internal punctuation removed). See also Audi AG, 469 F.3d at 550 (same). Simply 

put, a court may not grant injunctive relief unless the moving party demonstrates 

that it would suffer irreparable harm absent that relief. Here, Versata has not 

identified any irreparable harm that it would suffer without its requested permanent 

injunction. 

1 

 Versata first says that the Court may “presume[]” the existence of irreparable 

because it proved at trial that Ford misappropriated its trade secrets. (Mot., ECF No. 

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1056, PageID.67253-67254.) The Court disagrees. While federal courts may once 

have presumed that the victim of trade secret misappropriation would suffer 

irreparable harm without an injunction, that presumption did not survive the 

Supreme Court’s decision in eBay. 

In eBay, the Supreme Court rejected a similar presumption that had been 

applied by the United States Court of Appeals for the Federal Circuit in patent cases. 

The Federal Circuit described that presumption as a “general rule that courts will 

issue permanent injunctions against patent infringement absent exceptional 

circumstances.” eBay, 547 U.S. at 391 (quoting MercExchange, LLC v. eBay, 401 

F.3d 1323, 1339 (Fed. Cir. 2005)). The Supreme Court disapproved of the Federal 

Circuit’s approach because it was inconsistent with “traditional equitable 

considerations” that do not lend themselves to categorical rules. Id. at 392-93. 

Given the logic of eBay, several courts of appeals have concluded that it is no 

longer permissible to presume the existence of irreparable harm. In the words of the 

Federal Circuit, eBay “jettisoned the presumption of irreparable harm as it applies 

to determining the appropriateness of injunctive relief.” Robert Bosch LLC v. Pylon 

Mfg. Corp., 659 F.3d 1142, 1149 (Fed. Cir. 2011). See also Perfect 10, Inc. v. 

Google, Inc., 653 F.3d 976, 981 (9th Cir. 2011) (“[W]e conclude that our 

longstanding rule that a showing of a reasonable likelihood of success on the merits 

in a copyright infringement claim raises a presumption of irreparable harm is clearly 

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irreconcilable with the reasoning of the [Supreme] Court’s decision in eBay and has 

therefore been effectively overruled”). And the Second Circuit has held that after 

eBay, it is inappropriate to presume irreparable harm where, as here (and as 

described in more detail below), “a [trade secret] misappropriator seeks only to use 

[the misappropriated] secrets—without further dissemination or irreparable 

impairment of value—in pursuit of profit.” Faiveley Transport Malmo AB v. Wabtec 

Corp., 559 F.3d 110, 118-19 (2d Cir. 2009). The Court concurs with these courts of 

appeals and concludes, in light of eBay, that it may not presume that Versata would 

suffer irreparable harm absent an injunction. 

2 

Versata next argues that apart from any presumption, it has made an actual 

showing that it will suffer irreparable harm without injunctive relief. The Court 

disagrees. 

a 

Versata identifies the “loss of control” of its trade secrets as one type of 

irreparable harm that it is facing. (Mot., ECF No. 1056, PageID.67256-67257.) 

According to Versata, “[a]s things stand, Versata has no way to oversee Ford’s 

misuse of Versata’s information” or any way to “dictate” Ford’s “future use” of its 

trade secrets. (Id.) Simply put, Versata seems to suggest that Ford will misuse its 

trade secrets and/or confidential information in new ways going forward and that 

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these new misuses will cause new harms to Versata. But Versata has not shown that 

there is any meaningful risk that Ford will make any new or additional uses of 

Versata’s confidential information and/or trade secrets. While Versata presented 

evidence at trial that Ford used Versata’s confidential information and secrets to 

develop PDO, Versata has not presented persuasive proof that Ford has used the 

confidential information and/or trade secrets for other purposes – or that Ford intends 

to do so in the future. 

Versata also claims that it needs an injunction to protect against Ford’s future 

“disclosure” of its confidential information and/or trade secrets. (Id.) But Versata 

has not presented any persuasive evidence that there is a meaningful risk of such 

disclosure moving forward. The evidence at trial showed that Ford misappropriated 

Versata’s trade secrets to develop PDO internally at Ford, and Versata did not make 

a convincing showing at trial that Ford ever took steps that created a significant risk 

that Versata’s trade secrets and/or confidential information would be disclosed to 

Versata’s competitors. Moreover, there is no proof before the Court that, going 

forward, Ford will be sharing either Versata’s trade secrets (or the portions of PDO 

the embody those trade secrets) or Versata’s confidential information with anyone 

outside of Ford. Nor is there any persuasive evidence that on a going-forward basis, 

Ford will take any steps that would create a meaningful risk that Versata’s trade 

secrets (and/or the relevant portions of PDO) or Versata’s confidential information 

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could be inadvertently disclosed outside of Ford. For these reasons, Versata has 

failed to persuade the Court that it faces a “lack of control” over its trade secrets and 

confidential information on a going-forward basis that rises to the level of irreparable 

harm. 

Versata’s claimed “loss of control” falls short of the loss of control that was 

deemed to constitute irreparable harm in UniRAM Tech. Inc. v. Taiwan 

Semiconductor Mfg. Co., 2008 WL 11515597 (N.D. Cal. Apr. 17, 2008), the primary 

case Versata cites in support of its loss-of-control argument. The plaintiff in 

UniRAM developed memory macros for computer chips and consulted with the 

defendant to manufacture some of its designs. At trial, the jury found that the 

defendant had misappropriated the plaintiff’s trade secrets and disclosed them to a 

third party (in which the defendant owned an interest). The third party then hired 

the defendant to manufacture products containing the plaintiff’s trade secrets so that 

the third party could sell those products in the marketplace. The evidence at trial 

further established that several of the defendant’s employees had “close ties” with 

the third party to whom the plaintiff’s trade secrets had been disclosed. Id. at *3. 

The court in UniRAM held that under those circumstances – where the defendant had 

actually disclosed the plaintiff’s trade secrets to a third-party competitor of the 

plaintiff, where the defendant’s employees were linked to the third-party competitor, 

and where the defendant had a continuing interest in being hired by third parties to 

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manufacture products containing plaintiff’s trade secrets – the claimed “loss of 

control” posed a risk of irreparable harm. None of these circumstances are present 

here. 

b 

Next, Versata says that without its requested injunctive relief, it will suffer 

irreparable harm from “lost goodwill.” (Mot., ECF No. 1056, PageID.67257-67258.) 

The Court disagrees for several reasons. 

First, there is a disconnect between Versata’s requested injunctive relief and 

the claimed harms to its goodwill. The “goodwill” that Versata claims to have lost 

includes (1) the “reputational advantage and business that might have flowed from 

its publicized relationship with a major automotive company”; (2) its business 

relationship with “another significant ACM customer, Jaguar Land Rover”; and (3) 

“the expectancy of continued patronage” with Ford. (Id., PageID.67257-67258.) But 

the injunction sought by Versata would not remedy these claimed harms to Versata’s 

goodwill. As described above, Versata primarily seeks an injunction barring Ford 

from using and/or disclosing its trade secrets and/or confidential information. Such 

an injunction would not restore a “publicized relationship” between Versata and 

Ford, nor would it reinstate Jaguar Land Rover as a Versata customer. Moreover, it 

is hard to see how an injunction prohibiting Ford from using or disclosing Versata’s 

trade secrets or confidential information would enhance and/or restore Versata’s 

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reputation any more than Versata’s resounding victory at trial has already 

accomplished.1

 

Second (and relatedly), Versata has failed to present persuasive evidence that 

it will suffer the type of harm to its goodwill that injunctive relief is intended to 

protect against in the trade secret misappropriation (and/or misuse of confidential 

information) context. For instance, as many courts have recognized, an injunction 

may appropriately issue to protect a company’s goodwill where that company has 

been the victim of trade secret misappropriation and where the misappropriator uses 

(or intends to use) the secrets to compete against the company in the marketplace 

and/or to use the secrets in a way that may undermine the company’s 

standing/reputation in the market and/or with its customer base. See, e.g., Lowry 

Computer Prods., Inc. v. Head, 984 F. Supp. 1111, 1116 (E.D. Mich. 1997) (“The 

1

 Indeed, there appears to be a strong argument that, as Versata stands before the 

Court today, its reputation (and the corresponding value of its goodwill) has been 

materially enhanced because of these proceedings. Versata persuaded a jury that its 

trade secrets were so revolutionary that a sophisticated company like Ford resorted 

to stealing them, and Versata’s attorneys then trumpeted Versata’s victory to the 

world. See, e.g., “Mitby Pacholder Johnson PLLC: $104 Million Trial Win for 

Versata Software, Inc.,” https://www.prnewswire.com/news-releases/mitbypacholder-johnson-pllc-104-million-trial-win-for-versata-software-inc301661651.html; “Winston Secures Tremendous Victory in Jury Trial of HighStakes Contract and Trade Secrets Dispute,” https://www.winston.com/en/insightsnews/client-success/winston-secures-tremendous-victory-in-jury-trial-of-highstakes-contract-and-trade-secrets-dispute. Versata’s well-publicized vindication in 

this forum has seemingly done more to restore its good name than an injunction 

against Ford would ever do. 

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loss of consumer goodwill and the weakened ability to fairly compete that would 

result from disclosure of trade secrets [...] does establish irreparable injury”). But 

Versata has not shown that that will happen here – or that there is even a meaningful 

risk of that happening – without its requested injunction. 

Finally, at least some of Versata’s claimed losses of goodwill are speculative. 

For instance, at the hearing before the Court, Versata conceded that it had no 

evidence (aside from timing) that Ford’s actions played any role in Jaguar Land 

Rover’s decision to stop doing business with Versata.2

 

For all of these reasons, Versata has failed to persuade the Court that its 

claimed injury to goodwill warrants the injunctive relief that it has requested. 

c 

Versata has not cited any decision in which a court has found that a victim of 

trade secret misappropriation suffered irreparable harm under circumstances like 

those present here. During the hearing before the Court, Versata identified the 

decisions in Cajun Services Unlimited, LLC v. Benton Energy Service Co., 2020 WL 

375594 (E.D. La. Jan. 23, 2020) and SiOnyx LLC v. Hamamatsu Photonics K.K., 

2

 The “timing” evidence cited by Versata was the fact that Jaguar Land Rover chose 

to stop doing business with Versata while this action was pending. The Court does 

not find that to be persuasive proof that any of Ford’s acts or omissions played any 

role in Jaguar Land Rover’s decision to terminate its relationship with Versata. 

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981 F.3d 1339 (Fed. Cir. 2020), as its strongest authority in support of its claimed 

irreparable harm, but both decisions are materially distinguishable. 

The dispute in Cajun Services was over “a technology used for drilling oil.” 

Cajun Services, 2020 WL 375594, at *1. The plaintiff in that case claimed that it 

developed and owned the technology; that it rented tools containing the technology 

to the defendant; and that during the rental period, the defendant reverse engineered, 

copied, and misappropriated the technology by developing its own tools containing 

the technology. See id. at *3. The plaintiff said that after the defendant developed 

its own competing tools with the stolen technology, the defendant began “rent[ing] 

the infringing tools to its customers while also failing to pay [plaintiff] the amounts 

due under the [parties’ rental agreement].” Id. A jury found in the plaintiff’s favor. 

See id. After trial, the plaintiff moved for permanent injunctive relief to stop the 

defendant from using its trade secrets. 

The court held that plaintiff was entitled to that relief because it had shown, 

among other things, that it would suffer irreparable harm without the protection of 

an injunction. See id. at *6. The irreparable harm flowed from the fact that the 

defendant had been competing against the plaintiff by “rent[ing] the infringing tools 

to its customers.” Id. at *3. As the court explained, the plaintiff faced irreparable 

harm because defendant’s use of the trade secrets had “forced [the plaintiff] to 

compete in a two, rather than one, source market against its former customer.” Id. 

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In sharp contrast here, Ford is not using Versata’s trade secrets to compete against 

Versata in the marketplace. Thus, the key circumstance that supported the finding 

of irreparable harm in Cajun Services is not present here. 

Versata counters that Ford did, in fact, become one of its (Versata’s) 

competitors when Ford misappropriated Versata’s trade secrets. In Versata’s words, 

“Ford went from being one of Versata’s major customers to being, in effect, 

Versata’s direct competitor in the automotive configuration business.” (Mot., ECF 

No. 1056, PageID.67255.) Versata’s theory is that Ford’s “IT unit became Versata’s 

competitor” because Ford’s IT department competed with Versata to be the supplier 

of configuration software for the rest of Ford. (Id.) But Versata has not cited any 

decision in which any court has recognized this novel theory of competition – one 

that treats an internal division of a trade secret misappropriator as a competitor for 

the misappropriator’s own business. The Court is not persuaded that Ford – through 

its IT department or otherwise – competed (or may compete) with Versata in the 

automotive configuration marketplace in a way that would constitute irreparable 

harm under the theory recognized in Cajun Services. 

Versata’s reliance on SiOnyx is likewise misplaced. In SiOnyx, the Federal 

Circuit affirmed a district court order permanently enjoining the defendant from 

using the plaintiff’s confidential information. But in SiOnyx, the parties sold 

competing products in the same marketplace. See SiOnyx, 981 F.3d at 1349-50. And 

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the Federal Circuit relied heavily upon the fact that the defendant’s “entry into the 

relevant markets was aided and accelerated by its improper use of [the plaintiff’s] 

confidential information.” Id. (emphasis added). Thus, “because [the plaintiff] 

would have otherwise had [the relevant] markets to itself for some period of time” 

if not for the defendant’s use of the plaintiff’s confidential information, the Federal 

Circuit “agree[d] with [plaintiff] that [...] it was difficult to quantify the harm [to 

plaintiff] due to [defendant’s] premature entry into those markets.” Id. at 1350. As 

explained above, these circumstances do not exist here. Versata’s harm here is thus 

not irreparable under SiOnyx. 

Aside from the fact that the cases cited by Versata do not support its claim of 

irreparable harm, other decisions confirm that it has not suffered such harm. The 

decision in Titan Manufacturing Solutions, Inc. v. National Cost, Inc., 2019 WL 

5265271 (D. Colo. Oct. 17, 2019), is analogous and instructive. The plaintiff in 

Titan was a developer of “proprietary tax solutions for,” among other things, a 

“particularly complex” Research and Development Tax Credit. See id. at *1. The 

plaintiff licensed its software platform related to the tax credit to the defendant for a 

monthly fee. See id. at *2. About a year later, the defendant decided to create its 

own software platform that had the same functionality as plaintiff’s software. See id. 

Plaintiff then accused the defendant of stealing its trade secrets when the defendant 

developed this replacement software. See id. Prior to trial, the plaintiff moved for 

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an injunction, but the district court concluded that the plaintiff had “fail[ed] to 

demonstrate irreparable harm.” Id. at *3. As the district court explained, one of the 

primary reasons the plaintiff could not show irreparable harm was because there was 

“no evidence” that the defendant planned to use the plaintiff’s trade secrets to 

compete in the marketplace: 

The problem for Plaintiff is that it has presented no 

evidence that Defendants are competing in the market for 

R&D Tax Credit software. Rather, on this record, the 

evidence shows only that Defendants created, or attempted 

to create, an in-house duplicate of Armor so that 

Defendants can continue to service their taxpayer clients 

without paying Plaintiff. There is no evidence that 

Defendants intend to license their database to others. 

Moreover, given that Defendants commissioned only an 

Access database (rather than a cloud-based system, for 

example), it seems unlikely that they have any intent to 

license it. There is also no evidence that Defendants intend 

to teach their clients to calculate the R&D Tax Credit on 

their own—or in other words, to undercut Defendants’ 

own business. 

Id. 

Here, too, there is no evidence that Ford intendeds to “undercut” Versata’s 

business or “compet[e] in the market for [automotive configuration] software.” Id. 

Instead, the evidence produced at trial was that Ford wanted to create “an in-house 

duplicate of [Versata’s software] so that [Ford could] continue to [use that software] 

without paying [Versata].” Id. The Court agrees with the court in Titan and 

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concludes that, under these circumstances, Versata will not suffer irreparable harm 

without an injunction. Versata is therefore not entitled to injunctive relief. 

3 

For all of the reasons explained above, Versata has failed to carry its burden 

of showing that it would suffer irreparable harm without a permanent injunction. 

That failure alone is fatal to Versata’s request for such an injunction. See eBay, 547 

U.S. at 391; Audi AG, 469 F.3d at 550. 

B 

The Court declines to enter a permanent injunction for a second and 

independent reason: any right Versata could potentially have had to such relief has 

now expired because the so-called “head start” period – the length of time it would 

have taken Ford to independently develop a non-infringing alternative without the 

benefit of Versata’s trade secrets – has ended. As the leading treatise on trade secret 

misappropriation explains, “[u]sually the duration of an injunction is designed to 

protect the plaintiff’s interests; the period of time that would be required for 

independent development [of a non-infringing alternative] is the most commonly 

employed standard.” 4 Milgrim on Trade Secrets § 15.02(1)(d) (2023) (emphasis 

added). In other words, a “trade secret injunction [should] last[] only so long as is 

necessary to negate the advantage the misappropriator would otherwise obtain by 

foregoing independent development” of a non-infringing alternative. Nite Glow 

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Industries, Inc. v. Central Garden & Pet Co., 2021 WL 2945556, at *7 (Fed. Cir. 

July 14, 2021) (quoting SI Handling Sys., Inc. v. Heisley, 753 F.2d 1244, 1266 (3d 

Cir. 1985)). See also Lamb-Weston, Inc. v. McCain Foods, Ltd., 941 F.2d 970, 974 

(9th Cir. 1991) (“An injunction in a trade secret case seeks to protect the secrecy of 

misappropriated information and to eliminate any unfair head start the defendant 

may have gained”); Synergetics, Inc. v. Hurst, 477 F.3d 949, 961 (8th Cir. 2007) 

(explaining that the head-start rule “provides that by misappropriating [] trade 

secrets, a defendant is able to cut short the time it would normally take to produce 

and market a competitive product,” noting that “[a] defendant should be enjoined 

only for the time it would take to produce and market the competitive product, absent 

the misappropriation,” and affirming injunction that “consisted of the period it would 

have taken appellants to independently develop both the scientific and sales data it 

misappropriated”). 

 Here, Versata presented evidence at trial that absent Ford’s misappropriation, 

it would have taken Ford 8.3 years from the date of Ford’s first misappropriation – 

October 10, 2011 – to independently develop a non-infringing alternative. (See 

10/17/2022 Trial Tr., ECF No. 979, PageID.64147-64149.) The 8.3 year head-start 

period identified by Versata expired on January 23, 2020. (See Versata Trial Ex., 

ECF No. 1070-1.) Accordingly, any injunction that the Court could potentially have 

entered would have terminated on January 23, 2020, and would not be in place today. 

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For this additional reason, the Court declines to enter Versata’s requested injunction 

now. 

 Versata counters that “independent development time may be viewed as 

wholly irrelevant if plaintiff’s article is not publicly available.” (Versata Reply, ECF 

No. 1074, PageID.67813, quoting 4 Milgrim on Trade Secrets § 15.02(1)(e) (2023).) 

But the full quote from Milgrim on which Versata relies provides that “independent 

development time may be viewed as wholly irrelevant if plaintiff’s article is not 

publicly available and the sole disclosures to defendant were tortious disclosures.” 

4 Milgrim on Trade Secrets § 15.02(1)(e) (2023) (emphasis added). And Versata 

does not argue in its request for a permanent injunction that the “sole disclosures” 

of its trade secrets to Ford were “tortious disclosures.” Thus, the provisions from 

Milgrim on which Versata relies do not apply here. 

 Because the “head start” period here expired nearly four years ago, Versata is 

not entitled to an injunction. 

IV 

Finally, as an alternative form of relief, Versata asks the Court to order Ford 

to pay an “ongoing royalty of at least $13,555,000 for every year that Ford continues 

to use Versata’s trade secrets and confidential information.” (Mot., ECF No. 1056, 

PageID.67246.) The Court declines to do so. 

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 Versata seeks such a royalty under both the DTSA and the MUTSA. But 

under both statutes, a court may not require the payment of a royalty for any longer 

“than the period of time the use could have been prohibited.” 18 U.S.C. § 

1836(b)(3)(A)(iii). See also Mich. Comp. Laws § 445.1903(3) (same). Simply put, 

an order compelling the payment of a royalty for use of a trade secret may last no 

longer than an injunction prohibiting the use of the secret could have remained in 

effect. See Comment to Section 2 of the Uniform Trade Secret Act3

 (explaining that 

an order compelling the payment of a royalty may be an acceptable alternative to an 

injunction and providing that a royalty order, like a prohibitive injunction, may 

remain in effect “only for the duration of [the] competitive advantage” obtained as 

a result of the misappropriation).4

3

 “Both the Federal Defend Trade Secrets Act [] and the Michigan Uniform Trade 

Secrets [] were modeled on the Uniform Trade Secrets Act [], which had been 

adopted in forty-seven states and the District of Columbia by 2016.” B&P Litterford, 

LLC v. Prescott Machinery, LLC, 417 F.Supp.3d 844, 851 (E.D. Mich. 2019) rev’d 

on other grounds, 2021 WL 3732313 (6th Cir. Aug. 24, 2021). See also Compuware 

Corp. v. Int’l Bus. Machines, 2003 WL 23212863, at *8 (E.D. Mich. Dec. 19, 2003) 

(“Michigan has adopted the Uniform Trade Secrets Act [], which provides a 

statutory action and remedies for misappropriation of trade secrets”); Deerpoint 

Group, Inc. v. Agrigenix, LLC, 345 F.Supp.3d 1207, (E.D. Cal. 2018) (“The DTSA 

is largely modelled after the Uniform Trade Secrets Act”). 

4

 In its reply brief, Versata purported to quote this same comment from the Uniform 

Trade Secrets Act in support of its argument that the Court could order Ford to pay 

an ongoing royalty. But Versata did not fully quote the comment, and its 

interpretation is not faithful to the comment. 

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Here, for all of the reasons explained above, the Court may no longer enjoin 

Ford from using Versata’s trade secrets because the head-start period has expired. 

Therefore, the Court may not now compel Ford to pay royalties on a going-forward 

basis.

V 

Finally, the Court takes this opportunity to respond to two last points made by 

Versata in its request for an injunction or royalty. First, Versata reminded the Court 

that during the course of these proceedings, the Court told Ford (on several 

occasions) that the Court could issue an injunction against Ford if the jury found in 

favor of Versata. (See Mot., ECF No. 1056, PageID.67246.) While Versata 

accurately recounts the Court’s statements, it makes too much of them. The Court’s 

repeated references to injunctive relief were not a promise or guarantee that the Court 

would issue an injunction against Ford if the jury found in favor of Versata. Instead, 

the Court’s statements are more accurately viewed as an admonition to Ford that if 

it lost at trial, the Court would not hesitate to issue an injunction if Versata 

demonstrated an entitlement to such relief. Since (for all of the reasons explained 

above), Versata has not shown that it would be proper to issue an injunction, the 

Court’s prior statements do not guide the way here. 

 Second, Versata insists that “[e]quity ... demands” that the Court enter an 

injunction and/or grant an ongoing royalty. (Versata Reply, ECF No. 1074, 

Case 2:15-cv-10628-MFL-EAS ECF No. 1079, PageID.67850 Filed 10/19/23 Page 21 of 23
22 

PageID.67810.) It would be grossly unfair to withhold that relief, Versata suggests, 

because the Court previously overturned the jury’s substantial damages award, and 

without an injunction or royalty, Versata would be left with essentially no relief even 

though it proved at trial that Ford both misappropriated its trade secrets and breached 

the parties’ contract. (See id.) The Court respectfully disagrees that this result is 

unfair to Versata. 

The lack of relief for Versata is not unfair because, as the Court has previously 

explained at length (see Op. and Order, ECF No. 1054), it stems from Versata’s 

failure to prove its claimed damages at trial. The Court gave Versata a full and fair 

opportunity to prove its damages case, and Versata came up short. Under these 

circumstances, equity does not “demand” that the Court issue an injunction or award 

a royalty in order to ensure that Versata walks away from these proceedings with 

something. 

VI 

For all of the reasons explained above, IT IS HEREBY ORDERED that 

Versata’s motion for a permanent injunction or an ongoing royalty (ECF No. 1056) 

is DENIED. 

IT IS FURTHER ORDERED that the parties shall meet and confer to 

discuss what steps, if any, are left to conclude this litigation. By no later than 

November 6, 2023, the parties shall submit a joint status report to the Court 

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reflecting each parties’ position on what actions, if any, need to be taken to conclude 

this case. 

IT IS SO ORDERED. 

 s/Matthew F. Leitman 

 MATTHEW F. LEITMAN 

Dated: October 19, 2023 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 October 19, 2023, by electronic means and/or 

ordinary mail. 

 s/Holly A. Ryan 

 Case Manager 

 (313) 234-5126 

Case 2:15-cv-10628-MFL-EAS ECF No. 1079, PageID.67852 Filed 10/19/23 Page 23 of 23