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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`
`
`
`
`
`Case No. 15-10628-MFL-EAS
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`Ford Motor Company,
`
`
`
`Plaintiff,
`
`
`
`v.
`
`Versata Software, Inc., f/k/a Trilogy
`Software, Inc., Trilogy Development
`Group, Inc. and Trilogy, Inc.,
`
`
`
`Defendants.
`
`
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Pursuant to the Declaratory Judgment Act, 28 U.S.C. §2201, Plaintiff Ford
`
`Motor Company (“Ford”) requests a Declaratory Judgment that Ford has not
`
`infringed any intellectual property rights owned by defendants Versata Software,
`
`Inc. f/k/a Trilogy Software, Inc., Trilogy Development Group, Inc., and Trilogy,
`
`Inc. (individually and collectively “Defendants”).
`
`Ford’s Complaint for Declaratory Judgment is based on the following
`
`allegations:
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`
`
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`I.
`
`THE PARTIES
`
`
`
`1.
`
`Ford is a Delaware corporation with its principal place of business at
`
`One American Road, Dearborn, Michigan.
`
`2.
`
`On information and belief, Versata is a Delaware corporation having
`
`its principal place of business in Austin, TX.
`
`3. On information and belief, Trilogy Development is a California
`
`corporation having its principal place of business in Austin, TX.
`
`4. On
`
`information and belief, Versata became a wholly-owned
`
`subsidiary of Trilogy Development in 2006, and Trilogy Development is the parent
`
`company of Versata and its subsidiaries.
`
`5. On information and belief, Trilogy, Inc. is a Delaware corporation
`
`having its principal place of business in Austin, TX.
`
`
`
`II.
`
`JURISDICTION AND VENUE
`
`6.
`
`Ford incorporates the allegations of paragraphs 1-5.
`
`7.
`
`This Court has jurisdiction over these claims pursuant to 28 U.S.C.
`
`§§1331, 1338, and 2201.
`
`8. As detailed below, an actual case and controversy exists concerning
`
`the alleged infringement of one or more of Defendants’ patents, the alleged
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`
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`misappropriation of Defendants’ purported trade secrets, and Ford’s obligations
`
`pursuant to a 2004 agreement with Defendants.
`
`9. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b).
`
`
`
`
`
`III. BACKGROUND FACTS
`
`10. Ford incorporates the allegations of paragraphs 1-9.
`
`Ford’s Early Vehicle Configuration Software
`
`11. Ford
`
`is an Original Equipment Manufacturer
`
`(“OEM”) of
`
`automobiles.
`
`12. Ford sells a wide range of vehicle lines in different vehicle categories,
`
`such as compact cars, SUVs, sedans and pick-up trucks. Each vehicle line in each
`
`category has many different configurations and options. For example, most
`
`vehicles are offered with more than one engine choice, more than one transmission
`
`choice, more than one wheel choice and several other configurations and options.
`
`13. Not all vehicle components are compatible with one another. For
`
`example, a particular engine may not be compatible with a particular transmission.
`
`A particular transmission, however, may be compatible with several different (but
`
`not all) available engine selections.
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`
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`14. Given the complexity and options available on a particular vehicle,
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`millions of configurations are possible for each vehicle line.
`
`15. Beginning in the 1990s, Ford developed the Marketing Feature
`
`Availability List (“MFAL”) and the “Product Feature Database” (“PFDB”)
`
`software to help Ford define and manage valid vehicle configurations within Ford.
`
`
`
`Defendants’ Configuration Software
`
`16.
`
`In October 1998, Ford
`
`licensed “SC Config” software from
`
`Defendants. The SC Config software proved incapable of handling the complexity
`
`and volume of data required to support Ford’s needs.
`
`17. Thus, at the same time Ford licensed SC Config, Ford and Defendants
`
`entered
`
`into
`
`in a Contract Services Agreement (“CSA”) governing
`
`the
`
`development of customized software for Ford.
`
`18. The CSA states that Ford either owns, or has a royalty-free license to
`
`reproduce the software deliverables and customizations for the SC Config
`
`software.
`
`19. Between 1999 and 2004, Defendants and Ford jointly developed the
`
`“Automotive Configuration Manager” (“ACM”) pursuant to the CSA.
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`
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`20. The ACM was an adaptation of SC Config for use within Ford. This
`
`was required due to the high levels of data volumes and the complexity of Ford’s
`
`vehicle offerings.
`
`21. Ford paid Defendants tens of millions of dollars for the ACM
`
`development services pursuant to the CSA.
`
`22.
`
`In December 2004, Ford and Defendants entered into a Master
`
`Subscription and Services Agreement (“MSSA”), governing the licensing of, inter
`
`alia, the ACM software.
`
`23. Similar to the CSA, the MSSA included provisions establishing
`
`Ford’s ownership, or license to reproduce, deliverables created under the MSSA.
`
`
`
`Defendants Unilaterally Declares The ACM Software “Obsolete” And Terminate
`Ford’s Maintenance & Support For The ACM Software
`
`24.
`
`In November 2010, Defendants informed Ford that the ACM software
`
`was “obsolete,” and that Ford was required to license Defendants’ new “cloud-
`
`based” computing platform going forward. For security reasons, Ford was not
`
`willing to move its proprietary vehicle configuration data off-premises to the
`
`“cloud,” i.e., the Internet.
`
`25. Prior
`
`to
`
`these discussions, Defendants
`
`threatened Ford with
`
`termination of the license for the original ACM software if Ford refused to move to
`
`the “cloud-based” platform.
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`
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`26. During subsequent discussions with Ford, however, Defendants later
`
`permitted Ford to continue using the “obsolete” ACM software at an annual license
`
`fee of several million dollars, but without Defendants’ maintenance or support
`
`services.
`
`27. Because Ford needed maintenance and support for the ACM software,
`
`and because Defendants had previously threatened to terminate its license for the
`
`original ACM software, Ford entered into an addendum to the original ACM
`
`software licensee.
`
`28.
`
`In the addendum, Ford paid Defendants a substantial additional fee for
`
`an “Extended Support Term” for the original ACM software and for Defendants to
`
`waive their right to terminate the ACM license for convenience during the
`
`Extended Support Term.
`
`
`
`Defendants Terminated Ford’s ACM License, And Described Their Exorbitant
`Licensing Fees As “Extortion”
`
`
`29. Defendants notified Ford on October 7, 2014 that they were
`
`terminating Ford’s ACM license, effective January 1, 2015. Defendants’ letter
`
`stated that Ford was to cease using the ACM software by January 1, 2015.
`
`30. On November 13, 2014, Defendants extended the termination date to
`
`January 15, 2015 and again stated that Ford was to cease using the ACM software
`
`by the extended date.
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`
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`31. However, Versata’s demands were in direct violation to the terms of a
`
`2011addendum. In this addendum, Versata waived its right to terminate Ford’s
`
`right to sustained use through the end of 2015 in exchange for a fee.
`
`32.
`
`In parallel with these termination notices, Defendants presented Ford
`
`with unreasonable license terms for Defendants’ “obsolete” ACM software Ford
`
`had been using since 2005.
`
`33. Defendants’ new licensing proposal was 5 years at a dollar amount
`
`that is incrementally greater than the amount Ford would have paid for the exact
`
`same “obsolete” ACM software previously licensed to Ford on an annual basis.
`
`34. During a conference call regarding Defendants’ new licensing
`
`proposal, a Defendant representative stated to Ford representatives that “we could
`
`have extorted a lot more money out of you three years ago.”
`
`35. Ford did not accept Defendants’ unreasonable license proposal. On
`
`December 19, 2014, Ford notified Defendants that Ford would no longer be using
`
`the ACM software.
`
`
`
`Ford Research Engineers Invented, Developed And Patented Their Own
`Configuration Software; Defendants Forced Ford To Changeover
`
`
`36. Beginning in 2010, engineers from Ford’s Research and Advanced
`
`Engineering department were working to develop software that Ford might use in
`
`the future to determine which vehicle configurations sell the best.
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`37. The objective of the new software was to determine, of the millions of
`
`possible vehicle configurations, which configurations were likely to sell the
`
`quickest to minimize the amount of time the vehicles sit in dealer inventory,
`
`referred to as “days on lot.”
`
`38. To accomplish this objective, the engineers needed to swiftly define
`
`and analyze millions of possible vehicle configurations, all in an attempt to narrow
`
`the universe of possible configurations to those buildable configurations relevant to
`
`an individual dealer and further constrained to avoid combinations of options likely
`
`to lengthen the “days on lot.”
`
`39. These research engineers ultimately invented software that managed
`
`the millions of possible vehicle configurations very reliably, and in a very efficient
`
`manner. The engineers referred to their invention as the “super configurator.”
`
`40.
`
`In parallel with Ford’s efforts in research, Ford Product Definition
`
`engineers were trying to better understand vehicle complexity so that they could
`
`reduce number of manufactured configurations and ultimately reduce cost. These
`
`efforts utilized the output of the Feature Query Validation (FQV) Service and data
`
`from ACM rule reports. The efforts yielded some basic tools to assess complexity
`
`and some proofs-of-concept, but proved to be of limited broader use due to the
`
`computing power required. Analyzing moderately complex programs required a
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`
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`supercomputer to run for days and complex programs failed to complete
`
`processing.
`
`41.
`
`In 2011, Ford’s Product Definition engineers and Research engineers
`
`recognized that the super configurator technology developed in Ford’s research
`
`department was orders of magnitude more powerful than the approaches developed
`
`using FQV or ACM. The super configurator was able to work successfully with
`
`vehicle programs of great complexity. Also, with the greater processing power, the
`
`super configurator technology could enable many uses beyond the simple
`
`complexity assessments that were initially targeted by the Product Definition
`
`engineers. The new technology could be used as the basis for a replacement for
`
`the ACM software – software that Defendants had declared “obsolete” and
`
`threatened to terminate.
`
`42. The two teams joined forces and, under the heading of Total
`
`Configuration Management (TCM), continued to improve the performance and
`
`extend the capabilities of the super configuration technology.
`
`43. Ford filed a patent application on its super configurator software in
`
`October 2011, and received a patent covering its invention in August 2014, U.S.
`
`Patent No. 8,812,375 (the ‘375 patent).
`
`44. As explained in the ‘375 Patent, Ford’s invention approaches vehicle
`
`configuration very differently, and more efficiently, than Defendants do.
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`45. Ford disclosed Defendants’ configuration patents to the U.S. Patent &
`
`Trademark Office (“PTO”) during examination of the ‘375 Patent. The PTO
`
`allowed Ford’s ‘375 patent over Defendants’ patents because Ford’s software
`
`operates fundamentally differently.
`
`46. From 2011 to 2014, Ford developed the “PDO” vehicle configuration
`
`software to replace the obsolete ACM software. Ford’s PDO software was
`
`constructed using Ford’s patented super configurator invention, and provides
`
`several significant technical advantages over the ACM software.
`
`47. For example, the patented configuration engine used in Ford’s PDO
`
`software is more accurate than the ACM software, providing Ford with higher data
`
`integrity than the ACM software.
`
`48.
`
`In addition, Ford’s PDO software provides a foundation that is
`
`capable of managing in a coherent manner a broad range of related data including
`
`integrating data representing vehicle volumes, configuration mix and weight –
`
`something the ACM software cannot do. The PDO software also provides the
`
`potential for extended analytic capabilities over the ACM software.
`
`49. Another significant advantage of Ford’s PDO software over the ACM
`
`software is that PDO has been architected to support future extensions planned to
`
`enable Ford’s business people to easily define vehicle configurations themselves,
`
`without requiring the expert configuration codification analysts that the ACM
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`
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`software required. This will dramatically increase the efficiency and utility of the
`
`configuration software within Ford.
`
`50. Ford’s PDO software also allows Ford to develop and deploy reusable
`
`powerful global data services. ACM was geared to support a small group of core
`
`codification analysts and was not capable of handling high volumes of complex
`
`real-time data requests. PDO is architected to support hundreds of users
`
`interacting with PDO data services on a daily basis.
`
`51. From the hardware perspective, Ford’s PDO software runs on a
`
`modern computing platform, which is more closely aligned with Ford’s computing
`
`infrastructure strategy.
`
`52. Ford’s PDO software is also scalable to meet Ford’s global needs
`
`without a significant upgrade, unlike the ACM software.
`
`53. Driven by the technical drawbacks of the ACM software, Defendants’
`
`repeated termination notices, and their unreasonable unilateral escalation of license
`
`fees (which Defendants referred to as “extortion”), Ford was forced to incur costs
`
`to prepare and deploy the patented PDO software into production prior to January
`
`1, 2015.
`
`
`
`Infringement, Copyright
`Defendants Threatened Ford With Patent
`Infringement, And Misappropriation of Trade Secrets, and Demanded an Audit
`of Ford’s PDO Software and Ford’s PDO Developers
`
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`54.
`
`In its termination letter sent October 7, 2014, Defendants attached a
`
`list of 86 U.S. patents and stated that Ford “has no right nor license to use any such
`
`claimed inventions outside of its now expiring licensed use of [Defendants’]
`
`Software.”
`
`55. At a meeting in Dearborn, MI on December 19, 2014 between counsel
`
`and client representatives for Defendants and Ford, Ford notified Defendants of
`
`Ford’s intention to switch to Ford’s patented configuration software. A
`
`representative of Defendants
`
`responded stating
`
`that Ford’s
`
`replacement
`
`configuration software must infringe Defendants’ intellectual property, including
`
`its patents, copyrights and trade secrets.
`
`56. On December 23, 2014, Defendants notified Ford of their “inten[t] to
`
`exercise its on-premises audit rights pursuant to Section 3.5 of the [MSSA].” In
`
`particular, Defendants demanded an audit of “the development of an internal (or
`
`third party) Ford solution to replace [Defendants’] Software.”
`
`57. Defendants’ audit notice also requested interviews of “Ford personnel
`
`who at any time worked with any of [Defendants’] Software, Materials,
`
`Confidential Information and/or Intellectual Property and also who at any time
`
`worked on the development of a Ford internal (or third party) solution to replace
`
`[Defendants’] Software.”
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`
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`58. According to Defendants’ website, the following three patents cover
`
`their Automotive Configuration software: U.S. Patent No. 5,825,651 (the ‘561
`
`Patent, Exhibit A), U.S. Patent No. 6,405,308 (the ‘308 Patent, Exhibit B), and
`
`U.S. Patent No. 6,675,294 (the ‘294 Patent, Exhibit C).
`
`59. These patents were included in the list of 86 patents that Defendants
`
`sent to Ford in its October 7, 2014 termination letter. The ‘651 Patent was the first
`
`patent on the list.
`
`60. According to assignment records archived at the U.S. Patent &
`
`Trademark Office, these patents are currently assigned to Defendants.
`
`
`
`COUNT #1:
`DECLARATORY JUDGMENT THAT FORD
`DOES NOT INFRINGE THE ‘651 PATENT
`
`61. Ford incorporates the allegations of paragraphs 1-60.
`
`62. As a result of threats Defendants made to Ford concerning
`
`Defendants’ configuration patents, including the ‘651 Patent, and Defendants’
`
`demand to audit Ford’s PDO code and interview Ford’s PDO developers, an actual
`
`case or controversy exists with respect to the ‘651 Patent.
`
`63. Ford’s PDO software does not directly or indirectly infringe the ‘651
`
`patent.
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`64. Ford is entitled to a declaratory judgment that it has not infringed and
`
`
`
`is not infringing the ‘651 patent.
`
`
`
`COUNT #2:
`DECLARATORY JUDGMENT THAT FORD
`DOES NOT INFRINGE THE ‘308 PATENT
`
`65. Ford incorporates the allegations of paragraphs 1-64.
`
`66. As a result of threats Defendants made to Ford concerning
`
`Defendants’ configuration patents, including the ‘308 Patent, and Defendants’
`
`demand to audit Ford’s PDO code and interview Ford’s PDO developers, an actual
`
`case or controversy exists with respect to the ‘308 Patent.
`
`67. Ford’s PDO software does not directly or indirectly infringe the ‘308
`
`patent.
`
`68. Ford is entitled to a declaratory judgment that it has not infringed and
`
`is not infringing the ‘308 patent.
`
`
`
`COUNT #3:
`DECLARATORY JUDGMENT THAT FORD
`DOES NOT INFRINGE THE ‘294 PATENT
`
`69. Ford incorporates the allegations of paragraphs 1-68.
`
`70.
`
` As a result of threats Defendants made to Ford concerning
`
`Defendants’ configuration patents, including the ‘294 Patent, and Defendants’
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`
`
`demand to audit Ford’s PDO code and interview Ford’s PDO developers, an actual
`
`case or controversy exists with respect to the ‘294 Patent.
`
`71. Ford’s PDO software does not directly or indirectly infringe the ‘294
`
`patent.
`
`72. Ford is entitled to a declaratory judgment that it has not infringed and
`
`is not infringing the ‘294 patent.
`
`
`
`
`
`COUNT #4:
`DECLARATORY JUDGMENT THAT FORD OWNS,
`OR IS LICENSED TO REPRODUCE, SOFTWARE
`TRILOGY DEVELOPED PURSUANT TO THE 1998
`CONTRACT SERVICES AGREEMENT
`
`73. Ford incorporates the allegations of paragraphs 1-72.
`
`74. As a result of threats Defendants made to Ford concerning
`
`infringement or misappropriation of Defendants’ alleged intellectual property, and
`
`Defendants’ demand to audit Ford’s PDO code and interview Ford’s PDO
`
`developers, an actual case or controversy exists with respect to ownership of any
`
`intellectual property associated with the ACM software.
`
`75.
`
`In October 1998, Ford and Trilogy entered into the CSA governing,
`
`inter alia, title to Trilogy-developed software.
`
`76. Between 1999 and 2004, Ford paid Defendants tens of millions of
`
`dollars pursuant to the CSA to develop the ACM software.
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`77. Ford is entitled to a declaratory judgment that, pursuant to the CSA,
`
`Ford either owns, or has the right to reproduce without accounting to Trilogy, all
`
`software and intellectual property developed for the ACM.
`
`78. To the extent Defendants own patents, trade secrets or copyrights
`
`covering functionality developed for the ACM under the CSA, Ford is entitled to a
`
`declaratory judgment that the CSA provides Ford at least a royalty-free license to
`
`practice and reproduce that intellectual property.
`
`COUNT #5:
`DECLARATORY JUDGMENT THAT FORD OWNS,
`OR IS LICENSED TO REPRODUCE, SOFTWARE
`TRILOGY DEVELOPED PURSUANT TO THE 2004 MASTER
`SUBSCRIPTION AND SERVICES AGREEMENT
`
`
`
`79. Ford incorporates the allegations of paragraphs 1-78.
`
`80. As a result of threats Defendants made to Ford concerning
`
`infringement or misappropriation of Defendants’ alleged intellectual property, and
`
`Defendants’ demand to audit Ford’s PDO code and interview Ford’s PDO
`
`developers, an actual case or controversy exists with respect to ownership of any
`
`intellectual property associated with the ACM software.
`
`81.
`
`In December 2004, Ford and Trilogy entered into the MSSA
`
`governing,
`
`inter alia,
`
`licensing and
`
`title
`
`to Trilogy-developed software
`
`deliverables.
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`
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`82. The MSSA states that Ford is either the owner of the software
`
`deliverables, or is licensed to reproduce, use and exploit the deliverables on a
`
`“royalty free” basis.
`
`83. Ford is entitled to a declaratory judgment that, pursuant to the MSSA,
`
`Ford either owns, or has the right to reproduce without accounting to Trilogy,
`
`deliverables for the ACM.
`
`84. To the extent Defendants own patents, trade secrets or copyrights
`
`covering deliverables developed under the MSSA, Ford is entitled to a declaratory
`
`judgment that the MSSA provides Ford at least a royalty-free license to practice
`
`and reproduce that intellectual property.
`
`COUNT #6:
`DECLARATORY JUDGMENT THAT
`FORD DID NOT MISAPPROPRIATE
`DEFENDANTS’ TRADE SECRETS
`
`85. Ford incorporates it allegations in paragraphs 1-84.
`
`86. As a result of threats Defendants made to Ford concerning
`
`misappropriation of Defendants’ alleged trade secrets in connection with Ford’s
`
`development of the PDO software, and Defendants’ demand to audit Ford’s PDO
`
`code and interview Ford’s PDO developers, an actual case or controversy exists
`
`with respect to Defendants’ alleged trade secrets.
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`87. At no time did Defendants provide Ford with the source code for the
`
`SC Config or ACM software.
`
`88. The software customizations for the SC Config or ACM software
`
`were either Ford specified, or jointly developed by Ford and Defendants for
`
`configuring vehicles within Ford and consistent with Ford’s business practices.
`
`89. Pursuant to the CSA and MSSA, Ford either owns, or has a royalty-
`
`free license to reproduce the software deliverables and customizations for the SC
`
`Config and ACM software.
`
`90. Ford is entitled to a declaratory judgment that Ford did not
`
`misappropriate Defendants trade secrets to develop Ford’s PDO software.
`
`
`
`COUNT #7:
`DECLARATORY JUDGMENT THAT
`DEFENDANTS ARE NOT PERMITTED TO
`INSPECT FORD’S PDO SOFTWARE OR
`INTERVIEW FORD’S PDO DEVELOPERS
`PURSUANT TO THE AUDIT PROVISIONS OF
`THE 2004 MSSA
`
`91. Ford incorporates the allegations of paragraphs 1-90.
`
`92. On December 23, 2014, Defendants notified Ford of Defendants’
`
`“inten[t] to exercise its on-premises audit rights pursuant to Section 3.5 of the
`
`[MSSA].” In particular, Defendants demanded an audit of “the development of an
`
`internal (or third party) Ford solution to replace [Defendants’] Software.”
`
`18
`
`Page 18 of 23
`
`FORD 1228
`
`

`
`2:15-cv-10628-MFL-EAS Doc # 6 Filed 03/16/15 Pg 19 of 23 Pg ID 168
`
`
`
`93. Defendants’ audit notice also requested interviews of “Ford personnel
`
`who at any time worked with any of Defendants’ Software, Materials, Confidential
`
`Information and/or Intellectual Property and also who at any time worked on the
`
`development of a Ford internal (or third party) solution to replace Defendants’
`
`Software.”
`
`94. The MSSA does not permit Defendants to inspect Ford’s PDO
`
`software, or interview Ford’s PDO developers. The MSSA simply requires Ford to
`
`provide access to the licensed software and records.
`
`95. Ford’s PDO software was developed by Ford independent of
`
`Defendants’ ACM software. Thus, Ford has no obligation to permit Defendants to
`
`inspect Ford’s PDO software, or interview Ford’s PDO developers.
`
`96. To fulfill its obligations under the MSSA, Ford has agreed to provide
`
`Defendants with an inspection of Ford’s records pertaining to the licensed ACM
`
`software. Ford has informed Defendants, however, that it will not permit
`
`Defendants to audit Ford’s PDO software, or interview Ford’s PDO developers.
`
`97. Because Ford contends that the requested audit of Ford’s PDO
`
`software and developers is not permitted under the MSSA, and Defendants contend
`
`that such an audit is permitted, an actual case or controversy exists with respect to
`
`the MSSA, and Ford’s obligations thereunder.
`
`19
`
`Page 19 of 23
`
`FORD 1228
`
`

`
`2:15-cv-10628-MFL-EAS Doc # 6 Filed 03/16/15 Pg 20 of 23 Pg ID 169
`
`
`
`98. While the parties’ dispute arises from a contract provision concerning
`
`the scope of Defendants’ audit rights under the MSSA, the underlying case or
`
`controversy between the parties involves a substantive matter of patent law. As
`
`explained in detail above, Defendants’ October 7, 2014 termination letter attached
`
`a list of 86 U.S. patents which Defendants stated Ford “has no right nor license to
`
`use any such claimed inventions outside of its now expiring licensed use of
`
`[Defendants’] Software.”
`
`99. At a meeting in Dearborn, MI on December 19, 2014 between counsel
`
`and client representatives for Defendants and Ford, a Defendant representative
`
`stated that Ford’s replacement configuration software must infringe Defendants’
`
`intellectual property, including its patents.
`
`100. Four days later, on December 23, 2014, Defendants demanded an
`
`audit of “the development of an internal (or third party) Ford solution to replace
`
`Defendants’ Software” and interviews of “Ford personnel who at any time worked
`
`with any of Defendants’ Software, Materials, Confidential Information and/or
`
`Intellectual Property and also who at any time worked on the development of a
`
`Ford internal (or third party) solution to replace [Defendants’] Software.”
`
`101. Defendants’ allegations and demands to Ford reveal a present case or
`
`controversy between the parties concerning the extent to which Ford’s PDO
`
`20
`
`Page 20 of 23
`
`FORD 1228
`
`

`
`2:15-cv-10628-MFL-EAS Doc # 6 Filed 03/16/15 Pg 21 of 23 Pg ID 170
`
`
`
`software practices Defendants’ patents and other intellectual property. That is the
`
`reason Defendants expressed for requesting the audit in the first place.
`
`
`
`COUNT #8:
`BREACH OF CONTRACT
`
`102. Ford incorporates the allegations of paragraphs 1-101.
`
`103. Ford and Versata entered into an enforceable contract granting Ford
`
`the right to use Versata’s ACM software in exchange for a fee.
`
`104. Pursuant to a 2011 addendum to the MSSA, Versata waived its right
`
`to terminate the contract for convenience before January 15, 2015 in exchange for
`
`a fee.
`
`105. Ford paid the fee specified in the 2011 addendum and therefore
`
`satisfied all conditions precedent.
`
`106. Pursuant to a 2011 addendum to the MSSA, Versata waived its right
`
`to terminate our right to sustained use through the end of 2015 in exchange for a
`
`fee. Versata’s termination notices were in direct violation to the 2011 addendum,
`
`and prohibited Ford from exercising its option to continue use of the ACM
`
`software through December 31, 2015.
`
`107. Due to the termination notices, Ford was also forced to incur costs to
`
`complete and deploy the alternate PDO software prior to January 1, 2015.
`
`21
`
`Page 21 of 23
`
`FORD 1228
`
`

`
`2:15-cv-10628-MFL-EAS Doc # 6 Filed 03/16/15 Pg 22 of 23 Pg ID 171
`
`
`
`108. Versata’s conduct constituted a breach of the MSSA.
`
`109. As a direct and proximate cause of Versata’s breach of the MSSA,
`
`Ford has suffered damages including, but not limited to, the fees Ford paid to
`
`Versata for the waiver and the costs Ford wrongfully incurred to prepare and
`
`deploy the PDO software prior to January 1, 2015.
`
`
`
`
`
`IV. RELIEF REQUESTED
`
`Ford requests a trial by jury on any and all issues so triable, and an order
`
`declaring that:
`
`a. Ford does not infringe and has not infringed the ‘651 patent;
`
`b. Ford does not infringe and has not infringed the ‘308 patent;
`
`c. Ford does not infringe and has not infringed the ‘294 patent;
`
`d. Ford owns or has the royalty-free right to right to reproduce software that
`
`Trilogy developed pursuant to the 1998 Contract Services Agreement;
`
`e. Ford owns or has the royalty-free right to right to reproduce software that
`
`Defendants developed pursuant to the 2004 Master Subscription and
`
`Services Agreement;
`
`f. Ford has not misappropriated Defendants’ trade secrets; and
`
`22
`
`Page 22 of 23
`
`FORD 1228
`
`

`
`2:15-cv-10628-MFL-EAS Doc # 6 Filed 03/16/15 Pg 23 of 23 Pg ID 172
`
`g. Section 3.5 of the 2004 Master Subscription and Services Agreement
`
`does not authorize Defendants to inspect Ford’s PDO source code or
`
`interview Ford’s PDO developers.
`
`h. Versata has breached the MSSA contract and Ford is entitled to damages
`
`suffered as a result of this breach.
`
`
`
`
`
`
`
`JURY TRIAL DEMAND
`
`Pursuant to Fed. R. Civ. P. 38(b) and 5(d), Plaintiff demands a jury trial of
`
`all issues triable by jury.
`
`
`
`Dated: March 16, 2015
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ John S. LeRoy
`John S. LeRoy (P61964)
`Frank A. Angileri (P45611)
`Chanille Carswell (P53754)
`John P. Rondini (P72254)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: 248-358-4400 / Fax: 248-358-3351
`jleroy@brookskushman.com
`fangileri@brookskushman.com
`ccarswell@brookskushman.com
`jrondini@brookskushman.com
`
`Attorneys for Plaintiff, Ford Motor
`Company
`
`23
`
`Page 23 of 23
`
`FORD 1228

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