UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

Versata Software, Inc. f/k/a Trilogy 

Software, Inc., Versata Development 

Group, Inc., and Trilogy, Inc., 

Plaintiffs/

Counter-Defendants,

v.

Ford Motor Company, 

Defendants/

Counter-Plaintiffs.

Case No. 15-10628-MFL-EAS 

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

Hon. Matthew F. Leitman

JURY TRIAL DEMANDED

VERSATA’S TRIAL BRIEF REGARDING

TRADE SECRET DISCLOSURE 

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TABLE OF CONTENTS

Page

CONCISE STATEMENT OF ISSUES PRESENTED .............................................1

INTRODUCTION .....................................................................................................2

BACKGROUND .......................................................................................................4

ARGUMENT.............................................................................................................7

I. The DTSA and MUTSA require knowledge of a duty—not 

knowledge of the exact contours of the trade secret. ............................7

II. Ford’s cases are inapposite and unpersuasive, and more relevant 

case law refutes Ford’s argument........................................................10

a. Ford’s support starts and stops with outlier cases 

analyzing New York common law. ..........................................10

b. Other cases squarely refute Ford’s position..............................14

III. Ford’s argument defies common business practices and 

common sense. ....................................................................................16

IV. In the alternative, the Court should provide an appropriate jury 

instruction............................................................................................21

CONCLUSION........................................................................................................23

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TABLE OF AUTHORITIES

Page(s)

Cases

Arconic Inc. v. Novelis Inc.,

2020 WL 7247112 (W.D. Pa. Dec. 9, 2020) ................................................13, 14

B&P Littleford, LLC v. Prescott Mach., LLC,

2021 WL 3732313 (6th Cir. Aug. 24, 2021) ..................................................3, 10

Best Process Sols., Inc. v. Blue Phoenix Inashco USA, Inc.,

569 F. Supp. 3d 702 (N.D. Ohio 2021) ..............................................................20

Big Vision Private, Ltd. v. E.I. Dupont De Nemours & Co.,

1 F. Supp. 3d 224 (S.D.N.Y. 2014) ..................................................10, 11, 12, 13

Black & Decker (U.S.) Inc. v. Techtronic Indus. Co.,

2009 WL 3762947 (W.D. Tenn. May 14, 2009)..................................................6

Boon Ins. Agency, Inc. v. Lloyd,

2020 WL 5052956 (D.S.C. Aug. 27, 2020)........................................................20

Bytemark, Inc. v. Xerox Corp., 

2022 WL 120980 (S.D.N.Y. Jan. 11, 2022) ......................................................10

Control Module, Inc. v. Data Mgmt., Inc.,

2007 WL 4333814 (D. Conn. Dec. 10, 2007) ....................................................21

Corp. Ins. Advisors, LLC v. Addeo,

2022 WL 2718140 (S.D. Fla. June 27, 2022), report and 

recommendation adopted, 2022 WL 2713909 (S.D. Fla. July 13, 

2022.....................................................................................................................20

Dana Ltd. v. Am. Axle & Mfg. Holdings, Inc.,

2013 WL 603104 (W.D. Mich. Feb. 19, 2013) ....................................................6

Dura Global Techs, Inc. v. Magna Donnelly Corp.,

2008 WL 2064516 (E.D. Mich. May 14, 2008) ...............................................6, 9

Ford Motor Co. v. Lane,

67 F. Supp. 2d 745 (E.D. Mich. 1999) ...............................................................20

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Ford Motor Co. v. Launch Tech Co.,

2018 WL 1089276 (E.D. Mich. Feb. 26, 2018)..................................................19

Forge Precision Co. v. Dana Corp.,

2005 WL 8167124 (E.D. Mich. Feb. 18, 2005)..................................................20

Harsco Corp. v. Piontek,

2008 WL 686217 (M.D. Tenn. Mar. 5, 2008)....................................................20

InteliClear, LLC v. ETC Global Holdings, Inc.,

978 F.3d 653 (9th Cir. 2020) ..........................................................................9, 13

Interactive Sols. Grp., Inc. v. Autozone Parts, Inc.,

2012 WL 1288173 (E.D. Mich. Apr. 16, 2012) .........................................6, 9, 13

Medidata Sols. v. Veeva Sys., 

2022 WL 585734 (S.D.N.Y. Feb. 25, 2022) ................................................10, 13

Nesco Res. LLC v. Reid,

2021 WL 2043975 (W.D. Ky. May 21, 2021) ...................................................20

Next Commc'ns, Inc. v. Viber Media, Inc.,

2017 WL 4402540 (S.D.N.Y. Sept. 30, 2017), aff'd, 758 F. App'x 

46 (2d Cir. 2018).................................................................................................13

Prudential Def. Sols., Inc. v. Graham,

498 F. Supp. 3d 928 (E.D. Mich. 2020) .............................................................20

SCR-Tech LLC v. Evonik Energy Servs. LLC,

2011 WL 3209080 (N.C. Super. July 22, 2011).................................................16

Servo Corp. of America v. General Elec. Co.,

393 F.2d 551 (4th Cir. 1968) ........................................................................16, 22

sit-up Ltd. v. IAC/InterActiveCorp.,

2008 WL 463884 (S.D.N.Y. Feb. 20, 2008) ....................................10, 11, 12, 13

Town & Country Linen Corp. v. Ingenious Designs LLC,

556 F. Supp. 3d 222 (S.D.N.Y. 2021) ................................................................13

UniRAM Tech., Inc. v. Taiwan Semiconductor Mfg. Co.,

617 F. Supp. 2d 938 (N.D. Cal. 2007)..............................................14, 15, 16, 22

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Uni-Sys., LLC v. U.S. Tennis Ass’n, 

2018 WL 1335354 (E.D.N.Y. Mar. 15, 2018) ...................................................11

Statutes

18 U.S.C. § 1839..............................................................................................7, 8, 18

M.C.L. § 445.1902.................................................................................................7, 8

Other Authorities

162 Cong. Rec. H2028-01 .......................................................................................19

Fed. R. Evid. 401 .....................................................................................................21

Fed. R. Evid. 402 .............................................................................................4, 6, 21

Fed. R. Evid. 403 .......................................................................................4, 6, 21, 22

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CONCISE STATEMENT OF ISSUES PRESENTED

Should the Court prevent Ford from asking witnesses legally irrelevant and

highly prejudicial questions about whether Versata disclosed to Ford, by the time of 

the alleged misappropriation, the exact contours of its combination trade secrets and 

their respective features, and whether it did so in a single communication? 

Versata answers: Yes.

In the alternative, to remedy Ford’s legally irrelevant and highly prejudicial 

questions, should the Court instruct the jury that it is for the jury to decide whether

Versata’s disclosures to Ford were sufficient under the circumstances and that it was

not necessary for Versata to have disclosed an entire combination to Ford at one time 

or in one communication?

Versata answers: Yes.

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INTRODUCTION

Ford’s trial strategy is apparent. It intends to ask each witness whether Versata 

disclosed to Ford the precise contours of its trade secrets and whether it did so “in a 

single communication” (and, if the answer is yes, on “what pages”). See Dkt. 961, 

Trial Tr. Day 4 AM at 81:15–83:11. And that goes for lay witnesses, despite Ford’s

own motion in limine prohibiting lay witnesses from testifying about “trade 

secrets.”

1 Ford will likely move for a directed verdict on the basis that the evidence 

did not establish that Ford was “on notice” of the specific contours of the trade 

secrets when it used or disclosed them without authorization. And if that fails, Ford 

will take this argument to the jury.

But Ford is wrong on the law, and its trial strategy is thus unduly prejudicial 

to Versata. No reading of the Defend Trade Secrets Act or the Michigan Uniform 

Trade Secrets Act (and no reasonable interpretation of relevant cases) supports 

Ford’s position that, under the circumstances of this case, Versata must have told

Ford the exact parameters of its combination trade secrets before the alleged 

1 The Court granted that motion in limine because “lay witness use of the term ‘trade 

secret’ runs a serious risk of confusing the jury.” Dkt. 867 at 176:18–20. It is unclear 

why lay jurors are expected to be confused by the term “trade secret” while, at the

same time, lay witnesses are expected to answer questions about “trade secrets.” See 

Dkt. 960, Trial Tr. Day 3 PM at 76:7–8 (When lay witness Ratton said he was 

confused by Ford’s “trade secret” question, the Court stated: “It’s not confusing. It’s 

an important and specific question. Listen carefully and answer it.”). These lay 

witnesses are corporate executives, software developers, and business consultants—

not lawyers. 

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misappropriation (let alone “in a single communication”). Rather, the law requires

only a showing (1) that Ford knew or should have known, before it used or disclosed 

Versata’s trade secrets without authorization, that it had a duty to maintain the 

secrecy or limit the use of Versata’s confidential information, and (2) that the 

confidential information included legally protected trade secrets. 

The trial evidence presented to date satisfies the first prong. There is no 

dispute that Ford was on notice that it could not improperly use or disclose any of 

Versata’s confidential information. See Dkt. 956, Trial Tr. Day 3 AM at 106–08. As 

to the second prong, whether that confidential information included trade secrets “is 

a fact-specific inquiry” for discovery and argument in litigation—and in this case, 

for jury resolution. B&P Littleford, LLC v. Prescott Mach., LLC, 2021 WL 3732313, 

at *6 (6th Cir. Aug. 24, 2021). The law does not require Versata to have told Ford

in a single communication (or even in several), “By the way, the confidential 

information we are sharing with you includes four combination trade secrets with 

the following components—please don’t steal them.” Ford should not be permitted 

to suggest otherwise before the jury. 

Ford’s position on this issue also defies common sense. No software company 

provides to its licensees a detailed explanation of the trade secrets within its

software; this would present a roadmap for misappropriation. Instead, software 

companies provide their licensees with notice that the software itself, and 

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information about it, is confidential, and they place strict limits on its use and 

disclosure. That software and information often contain what are later determined—

in litigation—to be trade secrets. If Ford’s position were correct, there would be no 

effective trade secret protection for software. It cannot be the case that Congress 

passed a new federal law in 2016 to protect against trade secret theft in the digital 

age, and software companies cannot benefit from it without spilling their most 

valuable secrets. That defies common sense, legislative history, and Ford’s own 

position as a trade secret plaintiff in software cases, as explained below. 

The parties have briefed this disputed issue in connection with jury 

instructions, but the jury instruction conference has not yet taken place, and the Court 

has suggested the “importance” of Ford’s questions before the jury. Dkt. 960, Trial 

Tr. Day 3 PM at 76:7–8. Resolution of this issue is thus appropriate now, before 

Ford continues to ask witnesses legally irrelevant, prejudicial, and confusing 

questions that should be precluded under Rule 402 and 403 (and the Court’s prior 

motion in limine ruling). In the alternative to an order precluding such witness 

questioning and closing argument, Versata requests jury instructions as described at 

the end of this brief.

BACKGROUND

For several months, the parties have disputed whether Versata must have 

disclosed to Ford, before the alleged misappropriation, the specific contours of its 

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trade secrets and their components. Ford first asserted the existence of such a 

requirement in opposition to Versata’s motion in limine seeking to exclude evidence 

and argument about Versata’s “changing” trade secret theory. Dkt. 820 (Versata’s 

motion); Dkt. 835 (Ford’s response). Ford next made the argument in supplemental 

briefing meant to show how Versata’s “shifting” trade secret theory was relevant to 

witness credibility. Dkt. 880 at 10–14. The Court granted Versata’s motion in limine 

(with a narrow exception to permit challenging an expert witness’s credibility), but 

it did not make clear whether it agreed with Ford’s theory. Dkt. 919 at 19–20. 

Most recently, Ford asserted the existence of a specific-prior-disclosure rule 

in its objections and responses to the parties’ proposed jury instructions, and it 

proposed an instruction stating that Versata must “prove that it described the Alleged 

Combination Trade Secrets to Ford with specificity” and that “[s]pecificity is 

required at the moment of divulging a trade secret so the party receiving the secret 

understands the contours of the secret information and does not inadvertently or 

purposefully intrude upon its boundaries.” Dkt. 938 at 9, 12–16. Ford has even put 

the question in its proposed verdict form four times: “Did Versata disclose the 

_________ combination to Ford with sufficient particularity so that Ford understood 

its boundaries before the alleged misappropriation?” Dkt. 937.

All along, Versata has argued that Ford’s theory is based on a misreading of 

the DTSA and MUTSA and an unexplained overreliance on New York common 

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law. See Dkt. 842 at 2–5; Dkt. 902 at 10–17; Dkt. 924 at 6–7. Versata has also 

argued—and Ford has completely ignored—the ample authority from this district 

and elsewhere providing that a party can define its trade secrets with sufficient 

specificity in discovery, which contradicts Ford’s position on this issue. See, e.g., 

Dana Ltd. v. Am. Axle & Mfg. Holdings, Inc., 2013 WL 603104, at *1 (W.D. Mich. 

Feb. 19, 2013); Interactive Sols. Grp., Inc. v. Autozone Parts, Inc., 2012 WL 

1288173, at *3 (E.D. Mich. Apr. 16, 2012); Black & Decker (U.S.) Inc. v. Techtronic 

Indus. Co., 2009 WL 3762947, at *1 (W.D. Tenn. May 14, 2009); Dura Global 

Techs, Inc. v. Magna Donnelly Corp., 2008 WL 2064516, at *2 (E.D. Mich. May 

14, 2008).

The Court has not yet issued a formal ruling on this dispute, but it has become 

an issue at trial. Ford has already asked several witnesses whether Versata disclosed

the specific combinations of features to Ford and, sometimes, whether it did so “in 

a single communication.” See Dkt. 961, Trial Tr. Day 4 AM at 81:21–82:20; Dkt. 

962, Trial Tr. Day 4 PM at 62:2–4. And Ford will likely continue doing so because 

the Court has endorsed these questions before the jury. Dkt. 961, Trial Tr. Day 4 AM 

at 77:18–20 (The Court: “[T]hat’s a fair question. Did you ever disclose, in a single 

communication, whether buildability consisted of six elements?”). For the reasons 

explained below, such questioning is irrelevant and unduly prejudicial. It should be 

prohibited.

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ARGUMENT

There are three problems with Ford’s position on this issue. First, it ignores 

the language of the DTSA and MUTSA. Second, it depends on a misreading of a 

small group of outlier cases applying or relying on uniquely irrelevant New York 

common law. Third, it defies common practice and common sense. 

I. The DTSA and MUTSA require knowledge of a duty—not 

knowledge of the exact contours of the trade secret.

Ford has previously argued that “particularized disclosure of the trade secrets 

to the defendant” is a “prerequisite to misappropriation” under the DTSA and 

MUTSA because it puts the defendant on “notice” of what should not be 

misappropriated. Dkt. 835 at 10–12; Dkt. 938 at 14. But the statutes say no such 

thing. 

The DTSA defines “trade secret” as “all forms and types of financial, 

business, scientific, technical, economic, or engineering information” if “the owner 

thereof has taken reasonable measures to keep such information secret” and “the 

information derives independent economic value” from its secrecy. 18 U.S.C. 

§ 1839(3) (emphases added). The language of MUTSA is substantively identical. 

M.C.L. § 445.1902(b)(ii)(B).

The DTSA then defines “misappropriation” to mean the “disclosure or use of 

a trade secret of another without express or implied consent by a person who . . . at 

the time of disclosure or use, knew or had reason to know that the knowledge of the 

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trade secret was . . . acquired under circumstances giving rise to a duty to maintain 

the secrecy of the trade secret or limit the use of the trade secret.” 18 U.S.C. 

§ 1839(5) (emphases added). MUTSA is, again, substantially similar. M.C.L. 

§ 445.1902(d).

Ford’s argument that there can be no misappropriation absent specific, prior 

disclosure of a trade secret’s exact bounds rests entirely on five words taken out of 

context: “knowledge of the trade secret.” 18 U.S.C. § 1839(5). On Ford’s reading, 

that phrase means that a person given confidential information containing a trade 

secret must know the precise bounds of the trade secret before it can be held liable 

for its misappropriation. But that reading cannot be reconciled with the statutory 

text. The statutory test is whether the alleged misappropriator had actual or 

constructive notice that the knowledge embodied in the trade secret was acquired 

under circumstances giving rise to a duty of secrecy or limited use—not whether the 

alleged misappropriator had knowledge of the precise boundaries of the trade secret 

contained within the confidential information. Ford effectively rewrites the statute 

so that liability would depend on knowing the exact contours of the trade secret 

rather than—as Congress and the state legislature specified—knowing the 

“circumstances” under which the trade secret was acquired. The Court should reject 

Ford’s unsupported reading. Mills Music, Inc. v. Snyder, 469 U.S. 153, 164 (1985)

(“In construing a federal statute it is appropriate to assume that the ordinary meaning 

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of the language that Congress employed accurately expresses the legislative 

purpose.”).

By their plain terms, these statutes do not require that the defendant know, at 

the time of disclosure, the exact contours of the trade secrets it is later alleged to 

have misappropriated. Instead, it is sufficient that the defendant knew (or should 

have known), at the time of misappropriation, that it had a “duty” to maintain the 

secrecy or limit its use of the “information.” When a defendant breaches its duty 

with respect to this information, it can be liable for trade secret misappropriation if 

it is shown—in litigation—that the information qualifies as a trade secret because it 

(1) is subject to reasonable efforts to maintain its secrecy and (2) derives independent 

economic value by virtue of its secrecy. 

This makes sense. As Ford has previously argued, whether something is in 

fact a “trade secret” is a legal conclusion. See Dkt. 834 at 10 (citing, among other 

cases, Stonecoat of Tex. v. Procal Stone Design, 2019 WL 9899920, at *11 (E.D. 

Tex. Jun. 28, 2019)). And in this district (as elsewhere), a party can identify its trade 

secrets with reasonable specificity through discovery. Dura Global, 2008 WL 

2064516, at *2; Interactive Sols., 2012 WL 1288173, at *3; see also InteliClear, 

LLC v. ETC Global Holdings, Inc., 978 F.3d 653, 662 (9th Cir. 2020) (“Refining 

trade secret identifications through discovery makes good sense.”). Ford should not 

be permitted to elicit legally irrelevant testimony based on a misreading of the law. 

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II. Ford’s cases are inapposite and unpersuasive, and more relevant 

case law refutes Ford’s argument.

a. Ford’s support starts and stops with outlier cases analyzing 

New York common law. 

Unable to support its position under the DTSA and MUTSA, Ford has 

repeatedly cited a small handful of irrelevant cases. Versata has thoroughly 

distinguished them. See Dkt. 842 at 3–4; Dkt. 902 at 12–17; Dkt. 931 at 6–7

(discussing Big Vision Private, Ltd. v. E.I. Dupont De Nemours & Co., 1 F. Supp. 

3d 224 (S.D.N.Y. 2014), and Sit-Up Ltd. v. IAC/InterActiveCorp., 2008 WL 463884 

(S.D.N.Y. Feb. 20, 2008)). 

To start, both Big Vision and Sit-Up applied New York common law, not the 

Uniform Trade Secrets Act that Michigan and every other state in the country has 

adopted and on which the DTSA was based. See B&P Littleford, 2021 WL 3732313, 

at *5 (“Both MUTSA, passed in 1998, and the DTSA, passed in 2016, were modeled 

on the Uniform Trade Secrets Act.”). And even if New York law had any persuasive 

value, courts are divided on what New York law is. See, e.g., Medidata Sols. v. Veeva 

Sys., 2022 WL 585734, at *1 (S.D.N.Y. Feb. 25, 2022) (requiring a party only to 

“identify the alleged trade secrets with specificity during discovery” under New 

York law); Bytemark, Inc. v. Xerox Corp., 2022 WL 120980, at *5 (S.D.N.Y. Jan. 

11, 2022) (analyzing New York law and holding that “[p]laintiff is not required—as 

a prerequisite for obtaining relevant discovery from Defendants—to identify its trade 

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secrets with the specificity that Defendants demand.”); cf. Uni-Sys., LLC v. U.S. 

Tennis Ass’n, 2018 WL 1335354, at *2 (E.D.N.Y. Mar. 15, 2018) (noting that a 

DTSA plaintiff was expected “to identify its claimed trade secrets with increased 

specificity” “[a]s discovery in this case proceeds”). These other New York cases 

support Versata’s position, not Ford’s. 

Moreover, Big Vision and Sit-Up are distinguishable on the facts. The court in 

Big Vision held that the plaintiff’s disclosure of the alleged trade secret was too 

“vague and indefinite” because the relevant documents were not marked 

“confidential,” there was “no written confidentiality agreement,” and there were no 

“terms providing that all information disclosed . . . constituted confidential 

information.” 1 F. Supp. 3d at 261. The court determined that the plaintiff “need not 

have said the words ‘trade secret,’ or put forth the same degree of detail as would be 

appropriate in litigation, but it must have done something.” Id. (emphasis original). 

The facts here are completely different. Versata has done more than 

“something,” id.; the evidence has already established Versata’s extensive efforts to 

maintain the confidentiality of its information and its requirements that Ford do the 

same. Here, Versata’s documents were marked confidential, there were written 

confidentiality agreements in place, and there were contract terms providing for the 

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protection of confidential information.2 Versata even put Ford on express notice that 

the software and confidential information contain “trade secrets” by stating so twice 

in the parties’ governing contract. PX-100 (MSSA) §§ 7.4, 9.1. 

As for Sit-Up—an unpublished, out-of-circuit case with no persuasive value 

to this Court—the plaintiff there “contend[ed] that each of more than one hundred 

items is itself a trade secret,” and the court determined that “[i]n making such 

extensive claims, [the plaintiff] has a heavy burden to shoulder.” 2008 WL 463884, 

at *11. The “burden” the Sit-Up court was talking about, however, was not proving 

disclosure of the trade secrets with specificity before the alleged misappropriation 

but “describing the alleged trade secret with adequate specificity to inform the 

defendants what it is alleged to have misappropriated.” Id. (emphasis added). Thus, 

the Sit-Up court was focused on the plaintiff’s attempt “to advance a trade secret 

claim in vague and ambiguous terms” that did not give the defendant sufficient 

notice for purposes of litigation. Id. (emphasis added).

2 See, e.g., Dkt. 253, Trial Tr. Day 2 PM at 108 (Ratton testimony regarding

proprietary information agreements, confidentiality terms in the code of conduct and 

employee manual, and exit interviews); Dkt. 956, Trial Tr. Day 3 AM at 106–07, 

110–12 (Ratton testimony regarding confidentiality provisions and limits on use in 

MSSA); Dkt. 961, Trial Tr. Day 4 AM at 25 (Nichols testimony regarding

documents marked “Trilogy confidential”), 101–24 (Royston testimony regarding 

confidentiality policies and procedures).

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Here, there can be no dispute that Versata has in the course of litigation clearly 

defined, and thus given ample notice of, the trade secrets that it claims Ford 

misappropriated. See Dkt. 786. 

Thus, neither Big Vision nor Sit-Up supports Ford’s contention that Versata 

was, under the circumstances presented here, required to precisely identify the 

bounds of its trade secrets before commencing litigation. That is not surprising. In 

this district and elsewhere (including New York), courts do not require precise 

specification of the trade secret at issue prior before discovery but instead allow a 

plaintiff to “[r]efin[e] trade secret identifications through discovery.” InteliClear, 

978 F.3d at 662; Medidata Sols., 2022 WL 585734, at *1; Interactive Sols., 2012 

WL 1288173, at *3. 

Aside from Big Vision and Sit-Up, which are neither persuasive nor 

analogous, Ford has little else to support its specific-prior-disclosure standard. Every 

other case Ford cites—including the singular non-New York case Ford could 

locate—relies on these two inapposite cases. See Town & Country Linen Corp. v. 

Ingenious Designs LLC, 556 F. Supp. 3d 222, 270 (S.D.N.Y. 2021) (relying on SitUp, 2008 WL 463884, at *11, and Next Commc’ns, Inc. v. Viber Media, Inc., 2017 

WL 4402540, at *3 (S.D.N.Y. Sept. 30, 2017), aff’d, 758 F. App’x 46 (2d Cir. 2018) 

(applying “New York law”)); Arconic Inc. v. Novelis Inc., 2020 WL 7247112, at *11 

(W.D. Pa. Dec. 9, 2020) (citing Big Vision and Sit-Up without explanation). Ford’s 

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support is wholly lacking and does nothing to show that this Court should apply 

unique New York law that has so far clawed its way only as far as Pennsylvania. See

Arconic Inc., 2020 WL 7247112, at *11.

Moreover, although Ford’s proposed verdict form asks whether each trade 

secret was disclosed “to Ford with sufficient particularity so that Ford understood its 

boundaries before the alleged misappropriation,” we have scoured verdict forms 

from other DTSA cases and have found no such question asked of any jury 

anywhere. See Exs. 1–13 hereto.

Given the scant precedent for its position, Ford ultimately relies on a logical 

loop: the elements of trade secret misappropriation under New York law are similar 

to those under the DTSA, the DTSA is modeled off of the UTSA, Michigan adopted 

the UTSA, and therefore, New York law should apply. Dkt. 938 at 14. That logic is 

not only uncompelling but flatly contrary to Ford’s prior contention that “New York 

law is much broader” than the DTSA and MUTSA. Dkt. 902 at 13. Ford’s position 

holds no water. 

b. Other cases squarely refute Ford’s position. 

If the plain text of the statutes were not enough to show that Ford’s position 

is wrong, on-point cases confirm as much. 

In a “case of first impression” on this specific issue in California, a plaintiff

alleged that a defendant misappropriated its trade secrets “consist[ing] of particular 

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combinations of . . . features.” UniRAM Tech., Inc. v. Taiwan Semiconductor Mfg. 

Co., 617 F. Supp. 2d 938, 940, 942 (N.D. Cal. 2007).3 The defendant “dispute[d] 

that it ever acquired knowledge of [plaintiff’s] trade secrets” because the information 

it received “presented only hundreds of thousands of possible combinations of 

features, and [it] could not have known the specific combinations which [the 

plaintiff] claims are secret.” Id. at 940. The defendant further argued that “summary 

judgment [was] appropriate because not a single document [the plaintiff] relie[d] on 

to support disclosure of its alleged trade secrets recite[d] all of the features for a 

given combination secret.” Id. at 941 (internal quotation marks omitted). The 

defendant’s theory, like Ford’s, was “that [the plaintiff] must disclose its elements 

and secret combinations in a single form or on a single occasion.” Id. (internal 

quotation marks omitted).

The court squarely rejected that argument. The court held that “it is not true 

as a matter of law that [the plaintiff’s] claim will survive only if it disclosed to [the 

defendant] the exact combinations that make up its trade secrets.” Id. at 942. The 

court further explained that when, as here, “the elements have only been disclosed 

to another party in a confidential relationship, the defendant might be deemed to 

3 UniRAM concerned the California UTSA, which—like the DTSA and MUTSA—

requires that the defendant, “[a]t the time of disclosure or use, knew or had reason 

to know that his or her knowledge of the trade secret was . . . [a]cquired under 

circumstances giving rise to a duty to maintain its secrecy or limit its use.” Id. at 941

(emphasis added) (quoting Cal. Civ. Code § 3426.1(b)). 

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have constructive knowledge of a combination of elements even though only the 

separate elements have been disclosed.” Id. In other words, “knowledge of the 

combination may be imputed to those with knowledge of the components,” and 

“[i]nsisting on a unified description in a single integrated document,” as Ford is 

currently doing, “is unnecessary.” Id. at 9434; see also Servo Corp. of America v. 

General Elec. Co., 393 F.2d 551, 554 (4th Cir. 1968) (phrasing the issue as “whether, 

taking into account all of the . . . relevant disclosures, it is reasonable to conclude 

that a competitor could have ascertained the working combination from an 

examination of those disclosures”); SCR-Tech LLC v. Evonik Energy Servs. LLC, 

2011 WL 3209080, at *12 (N.C. Super. July 22, 2011) (same). These on-point cases 

directly refute Ford’s argument. 

III. Ford’s argument defies common business practices and common 

sense.

Finally, Ford’s argument makes no logical sense, especially given the facts of 

this case and the purpose of the DTSA. 

It is undisputed that Versata provided Ford with confidential information that 

Ford was obligated to keep confidential and use only within the scope of its license.

4 The court further suggested “that knowledge of the combination may be presumed 

as long as one skilled in the art could view the [individual] elements and replicate 

the combination without undue difficulty.” Id. at 942. 

Case 2:15-cv-10628-MFL-EAS ECF No. 963, PageID.62642 Filed 10/11/22 Page 21 of 30
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See PX-100 (MSSA).

5 The confidential information included, among other things, 

manuals, user guides, presentations, other technical documentation, and (according 

to the contract) “trade secrets.” See id. §§ 7.1.1, 7.1 (“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 . . . trade secret embodied 

therein.”); see also Dkt. 956, Trial Tr. Day 3 AM at 108 (Versata witness testimony 

that it “disclosed confidential information to Ford” in “PowerPoints [and] in the user 

documentation” because “you because you have to tell them how to use the 

software . . . .”). 

Furthermore, witness testimony has already established that every component 

of every trade secret was disclosed in these confidential materials. Dkt. 961, Trial 

Tr. Day 4 AM at 57 (Mr. Nichols: “Yesterday, in my direct testimony, I shared a 

functional walkthrough document which included elements of the trade secrets and,

specifically, elements of the subcomponents of the combination trade secrets, of 

things like the dynamic Grid, Workspaces and buildability.”); Dkt. 962, Trial Tr.

Day 4 PM at 62 (“Mr. Little: “[W]e shared all of those details [about MCA.]”).

Especially under these circumstances, there is no requirement that Versata 

have disclosed to Ford the exact contours of its trade secrets, let alone in a single 

5 Sections 1.5 (“Use”), 1.6 (“Authorized Users”), 1.7 (“Additional Restrictions”), 

3.3 (“Marking”), 7 (“Confidentiality”), 7.2 (“Marking”), 7.5 (“Non-Disclosure”).

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document. Ford knew it had a duty not to publish or misuse any of Versata’s 

confidential information. There is nothing unfair about holding a defendant liable 

for trade secret misappropriation where it breached a known duty to limit its use of, 

or protect the secrecy of, information given to it in confidence—even if that 

information is not called a “trade secret” when it is disclosed, and even if it includes 

other proprietary information. 

Ford’s assertion that the owner of a trade secret must disclose the secret in 

particularized detail to those with whom it is in a confidential relationship makes no 

sense. All agree that a trade secret owner must take reasonable measures to protect 

its trade secrets. See 18 U.S.C. § 1839(3)(A). Yet under Ford’s view of the law, for 

a trade secret to have any legal protection, the owner must compile the details of the 

trade secret and hand them over. The far more reasonable—and realistic—approach

is to withhold disclosure of, or even obscure, the exact boundaries of the trade secret, 

including from those with whom there is a confidential relationship; instead provide 

the components of the trade secret under the label “confidential information”; and 

limit the use or disclosure of all confidential information pursuant to clear

contractual terms. After all, the law is meant to protect trade secrets, not force their 

detailed disclosure to others. Yet Ford’s position would permit a defendant to say, 

“We knew we were provided confidential information; we knew we could not 

disclose the information; we knew we could not use the information in certain ways; 

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but we can’t be held liable for violating all of these duties because we didn’t know 

that a jury might one day conclude that there are trade secrets in there.” Ford’s 

position turns the law on its head.

For enterprise software companies like Versata, confidential, proprietary 

information is the key asset. And these companies simply do not explain the details 

of their trade secrets to their licensees because doing so would only increase the risk 

of their misappropriation. But that does not insulate defendants from liability—or 

spare them from the remedies provided by the DTSA that are unavailable in 

contract—when they improperly disclose or use valuable, confidential information 

in breach of a known duty. To hold otherwise would be to gut the purpose of the 

DSTA, which was passed in 2016 in part to protect against trade secret theft in the 

digital age. See 162 Cong. Rec. H2028-01, H2031 (“Trade secrets occupy a unique 

place in the IP portfolios of our most innovative companies . . . .”); id.

(“[Technology] companies are at the forefront of innovation and have some of the 

largest trade secret and patent portfolios in the world . . . . Our companies pour 

billions of dollars into research and development to create products and services that 

ultimately become the backbone of their businesses. . . . It is long overdue for our 

trade secrets law to be modernized to keep pace with the rapid developments of our 

companies . . . .”). Indeed, Ford itself has recognized these commercial realities

when the shoe was on the other foot. See Ford Motor Co. v. Launch Tech Co., 2018 

Case 2:15-cv-10628-MFL-EAS ECF No. 963, PageID.62645 Filed 10/11/22 Page 24 of 30
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WL 1089276, at *2, *17 (E.D. Mich. Feb. 26, 2018) (Ford surviving a motion to

dismiss as the plaintiff in a combination trade secret software case by pointing to the 

contractual protections governing the parties’ license relationship). Ford cannot have 

it both ways. 

This not a unique case. Even a quick review of other trade secret 

misappropriation cases shows that the typical case concerns a situation where a 

defendant is alleged to have breached a duty to maintain the secrecy or limit the use 

of confidential or proprietary information that the plaintiff later alleges—via 

litigation—contains trade secrets. Such cases make clear that statutesrequiring proof 

that the defendant “knew or had reason to know that the knowledge of the trade 

secret was . . . acquired under circumstances giving rise to a duty to maintain the 

secrecy of the trade secret or limit [its] use” does not mean the defendant must have 

“knowledge that the confidential information is a trade secret” or “knowledge of the 

contours of the trade secret found within the confidential information,” as Ford 

suggests. 

Rather, it is enough for the defendant to know that the information containing 

the trade secret was acquired under the statutorily specified circumstances. See, e.g., 

Forge Precision Co. v. Dana Corp., 2005 WL 8167124, at *3 (E.D. Mich. Feb. 18, 

2005) (denying motion to dismiss where plaintiff alleged defendant “acquired 

knowledge of [plaintiff’s] proprietary information ‘under circumstances giving rise 

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to a duty to maintain its secrecy or limit its use’ and notwithstanding that duty to 

maintain its secrecy, ‘disclosed’ the proprietary information to a third party”

(emphases added)); Prudential Def. Sols., Inc. v. Graham, 498 F. Supp. 3d 928, 938 

(E.D. Mich. 2020); Ford Motor Co. v. Lane, 67 F. Supp. 2d 745, 747–48 (E.D. Mich. 

1999).

6

The weight of this authority shows why Ford’s trial questioning is unfair and 

unduly prejudicial. The Court should enter an order prohibiting Ford from examining 

witnesses on Ford’s legally flawed, confusing, and misleading position. See Fed. R. 

Evid. 401, 402, 403.

IV. In the alternative, the Court should provide an appropriate jury 

instruction.

As explained above, Versata need not have disclosed its trade secrets with 

particularity to Ford prior to Ford’s misappropriation of those secrets because each 

was contained in “confidential information” with contractually specified limits 

placed on Ford’s right to use or disclose them. Accordingly, any jury instruction that 

6 See also Corp. Ins. Advisors, LLC v. Addeo, 2022 WL 2718140, at *5 (S.D. Fla. 

June 27, 2022), report and recommendation adopted, 2022 WL 2713909 (S.D. Fla. 

July 13, 2022); Nesco Res. LLC v. Reid, 2021 WL 2043975, at *1–2 (W.D. Ky. May 

21, 2021); Best Process Sols., Inc. v. Blue Phoenix Inashco USA, Inc., 569 F. Supp. 

3d 702, 704–05 (N.D. Ohio 2021); Boon Ins. Agency, Inc. v. Lloyd, 2020 WL 

5052956, at *5 (D.S.C. Aug. 27, 2020); Harsco Corp. v. Piontek, 2008 WL 686217, 

at *10–11 (M.D. Tenn. Mar. 5, 2008); Control Module, Inc. v. Data Mgmt., Inc., , 

2007 WL 4333814, at *2 (D. Conn. Dec. 10, 2007). 

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would impose a specific-prior-disclosure standard is wrong as matter of law and thus 

should not be given. 

But if the Court decides nonetheless to instruct the jury on this issue, it should 

reject Ford’s proposal outright (see Dkt. 938 at 9) and instead provide an instruction

that accurately captures the law and circumstances of this case, similar to the 

following:

It is for you to determine whether Versata sufficiently 

disclosed its combination trade secrets to Ford. As long as 

Versata has proved that it owns valid combination trade 

secrets and that it provided Ford with the contents of those 

trade secrets under terms of confidentiality or limited use, 

it is not necessary for Versata to have told Ford the exact 

boundaries or contents of those trade secrets. It is also not

necessary for Versata to have disclosed an entire 

combination to Ford at one time or in one communication. 

Rather, disclosure of individual trade secret components

across several communications or over a period of time 

may be sufficient. In making this determination, you may 

consider Ford’s skill in the relevant art or science and its 

ability to ascertain the combination from its constituent 

parts.7

At minimum, the Court should also give a curative, limiting instruction 

cautioning the jury not to consider the Court’s remarks about the “importance” of 

questions concerning the specificity of Versata’s disclosures to Ford.

7 See Servo Corp. of America v. General Elec. Co., 393 F.2d 551, 554 (4th Cir. 

1968); UniRAM Tech., Inc. v. Taiwan Semiconductor Mfg. Co., 617 F. Supp. 2d 938, 

940, 942 (N.D. Cal. 2007).

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CONCLUSION

The testimony elicited by Ford when asking witnesses whether Versata 

disclosed the exact combinations of features to Ford, whether Versata told Ford that

its confidential information included trade secrets, and whether those trade secrets 

were disclosed in a single communication, is “irrelevant” as a matter of law and thus 

“not admissible.” Fed. R. Evid. 402. And even if there were some marginal relevance 

to the testimony elicited through those questions, its “probative value is substantially 

outweighed by a danger of . . . unfair prejudice, confusing the issues, and misleading 

the jury.” Fed. R. Evid. 403. It would also be improper and unfairly prejudicial if 

Ford were allowed to argue at closing that Versata’s trade secret claims fail because 

Versata did not meet the legally incorrect and unsupported “specificity” requirement 

that Ford seeks to impose. 

For these reasons, the Court should prohibit Ford from continuing to ask such 

questions and from making such an argument at closing. In the alternative, the Court 

should provide the jury instruction proposed above and reject Ford’s competing (and 

again, unsupported) proposed instruction on the specificity standard. At minimum, 

a curative instruction addressing the Court’s comments is warranted.

Dated: October 11, 2022 Respectfully submitted,

/s/ Matthew R. Carter

Dan K. Webb 

DWebb@winston.com

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Matthew R. Carter 

MCarter@winston.com 

WINSTON & STRAWN LLP 

35 W. Wacker Drive 

Chicago, IL 60601 

Telephone: (312) 558-5600

Steven J. Mitby 

smitby@mitbylaw.com 

Timothy Johnson

tjohnson@mitbylaw.com

MITBY PACHOLDER JOHNSON PLLC 

Telephone: (713) 234-1446

Jaye Quadrozzi 

quadrozzi@youngpc.com

YOUNG, GARCIA & QUADROZZI, PC 

27725 Stansbury Blvd., Suite 125 

Farmington Hills, MI 48334 

Telephone: (248) 353-8620 

Sharoon Saleem 

Sharoon.saleem@jonesspross.com 

JONES & SPROSS, PLLC 

1605 Lakecliff Hills Ln., Suite 100 

Austin, TX 78732-2437 

ATTORNEYS FOR PLAINTIFFS 

VERSATA SOFTWARE, INC. f/k/a 

TRILOGY SOFTWARE, INC., 

VERSATA DEVELOPMENT GROUP, 

INC., AND TRILOGY, INC.

Case 2:15-cv-10628-MFL-EAS ECF No. 963, PageID.62650 Filed 10/11/22 Page 29 of 30
PROOF OF SERVICE

Matthew R. Carter certifies that on October 11, 2022, he served Versata’s Trial 

Brief Regarding Trade Secret Disclosure 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.

/s/Matthew R. Carter

MCarter@winston.com

WINSTON & STRAWN LLP

35 W. Wacker Drive 

Chicago, IL 60601 

Telephone: (312) 558-5600

Case 2:15-cv-10628-MFL-EAS ECF No. 963, PageID.62651 Filed 10/11/22 Page 30 of 30