DCT
2:15-cv-10628
Versata Software Inc v. Ford Motor Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ford Motor Company (Delaware)
- Defendant: Versata Software, Inc., f/k/a Trilogy Software, Inc., Trilogy Development Group, Inc. and Trilogy, Inc. (Delaware/California)
- Plaintiff’s Counsel: Brooks Kushman P.C.
- Case Identification: 2:15-cv-10628, E.D. Mich., 03/16/2015
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Michigan, where Plaintiff Ford Motor Company maintains its principal place of business.
- Core Dispute: Plaintiff Ford seeks a declaratory judgment that its internally developed "PDO" vehicle configuration software does not infringe three U.S. patents owned by Defendant Versata related to product configuration technology.
- Technical Context: The technology at issue involves software systems for managing and validating complex product configurations, such as automobiles, which have numerous options and compatibility rules.
- Key Procedural History: The dispute arises from a long-standing commercial relationship where Ford licensed and jointly developed configuration software (ACM) with Versata. Following commercial disagreements, Ford developed its own replacement PDO software. The complaint states that Versata threatened Ford with patent infringement litigation over the PDO software, prompting Ford to file this declaratory judgment action. Ford notes that its own patent covering the PDO software was allowed by the U.S. Patent & Trademark Office over Versata's patents.
Case Timeline
| Date | Event |
|---|---|
| 1996-09-03 | Priority Date for ’651, ’308, and ’294 Patents |
| 1998-10-20 | U.S. Patent No. 5,825,651 Issued |
| 1998-10 | Ford licenses Versata's "SC Config" software |
| 1999–2004 | Ford and Versata jointly develop "Automotive Configuration Manager" (ACM) |
| 2002-06-11 | U.S. Patent No. 6,405,308 Issued |
| 2004-01-06 | U.S. Patent No. 6,675,294 Issued |
| 2010-11 | Versata informs Ford that ACM software is "obsolete" |
| 2011–2014 | Ford develops "PDO" vehicle configuration software |
| 2014-10-07 | Versata sends termination letter to Ford with a list of 86 U.S. patents |
| 2014-12-19 | Versata representative states Ford's replacement software "must infringe" |
| 2015-01-01 | Ford deploys its patented PDO software into production (prior to this date) |
| 2015-03-16 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,825,651 - “Method and Apparatus for Maintaining and Configuring Systems”
The Invention Explained
- Problem Addressed: The patent describes prior art computer-based configuration systems as difficult to use because they rely on a specialized "configuration language," which limits their use to sophisticated data maintainers and requires extensive training. These systems also often impose a rigid order for selecting or removing components, which can frustrate novice users. (’651 Patent, col. 1:26-50).
- The Patented Solution: The invention proposes a system that allows a user to define and configure a product using a graphical user interface (GUI) without needing to learn a configuration language. It provides a framework for defining a product line from a "parts catalog" and establishing relationships between parts (e.g., "included," "required choices," "optional"). This framework allows a user to select or unselect parts in any order, with the system ensuring the configuration remains valid at all times. (’651 Patent, col. 2:3-50; Fig. 2).
- Technical Importance: The technology represented a shift toward making the creation and management of complex product models accessible to less technical users by replacing code-based definition with an intuitive, GUI-driven approach. (’651 Patent, col. 2:38-49).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement for the patent as a whole, without identifying specific claims. Independent claim 1 is representative of the patent's core method.
- The essential elements of independent claim 1 include:
- generating a definition for said system, said definition containing one or more elements and being conveyed graphically using a set of product relationships;
- generating a set of part relationships between said one or more elements, said set of part relationships being conveyed graphically; and
- configuring said system using said definition and said set of product relationships and said part relationships.
U.S. Patent No. 6,405,308 - “Method and Apparatus for Maintaining and Configuring Systems”
The Invention Explained
- Problem Addressed: The patent addresses the same general problem as its parent '651 patent: the complexity and rigidity of traditional configuration systems. (’308 Patent, col. 1:16-52).
- The Patented Solution: This invention elaborates on the underlying system architecture, describing a translation mechanism that converts a user-friendly "external representation" (such as a GUI) into an efficient "internal representation" (such as bit vectors and runtime tables) for processing. This allows the system to maintain an intuitive user experience while achieving fast and efficient computation to validate user selections against complex relationship rules. (’308 Patent, col. 3:1-25; Fig. 7).
- Technical Importance: The invention's focus on translating a user-facing model into an optimized internal data structure aimed to improve the runtime performance and scalability of interactive configuration engines. (’308 Patent, col. 3:45-50).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement for the patent as a whole. Independent claim 1 is representative.
- The essential elements of independent claim 1 include:
- translating a system definition from an external representation comprising a set of intuitive relationships between components... into an internal representation comprising a set of internal relationships;
- validating configuration input using said internal representation; and
- modifying a configuration state based on said user input.
U.S. Patent No. 6,675,294 - “Method and Apparatus for Maintaining and Configuring Systems”
The Invention Explained
- As a continuation of the same patent family, the ’294 Patent claims a method for configuring a system by graphically defining product and part relationships. The claims focus on the interactive process of receiving user input, validating that input against the defined relationships and the current configuration state, and identifying a set of valid configuration options for the user. (’294 Patent, Abstract; col. 2:50-64).
Key Claims at a Glance
- Asserted Claims: The complaint seeks a declaratory judgment of non-infringement on the patent as a whole. Independent claims 1 and 9 are representative method claims.
- Accused Features: Ford’s PDO software, which is used to manage and validate vehicle configurations, is the subject of the non-infringement claim. (Compl. ¶¶69-71).
III. The Accused Instrumentality
Product Identification
- The subject of the declaratory judgment action is Ford’s internally developed “PDO” vehicle configuration software. (Compl. ¶46).
Functionality and Market Context
- Ford developed the PDO software between 2011 and 2014 to replace the "Automotive Configuration Manager" (ACM) software previously licensed from and co-developed with Versata. (Compl. ¶¶19, 46). The complaint alleges that the PDO software is based on Ford's own patented "super configurator" invention. (Compl. ¶46). Ford asserts that its PDO software provides significant technical advantages over the prior ACM software, including higher accuracy and data integrity, the ability to manage a broader range of related data such as vehicle volumes and weight, extended analytic capabilities, and improved scalability on a modern computing platform. (Compl. ¶¶47-52). The software is used internally by Ford to manage its complex vehicle configurations. (Compl. ¶49).
IV. Analysis of Infringement Allegations
The complaint, being a declaratory judgment action for non-infringement, does not provide a detailed element-by-element mapping of the accused PDO software to the patent claims. Instead, it makes a general assertion of non-infringement, stating that "Ford's software operates fundamentally differently" and was developed independently of Versata's technology. (Compl. ¶¶45, 63, 67, 71). The following table summarizes the elements of a representative claim and Ford's high-level non-infringement position as articulated in the complaint.
No probative visual evidence provided in complaint.
’651 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating a definition for said system... containing one or more elements and being conveyed graphically... | The complaint asserts that its PDO software does not infringe, contending that it was independently developed and "operates fundamentally differently." | ¶¶45, 63 | col. 21:32-38 |
| generating a set of part relationships between said one or more elements, said set of part relationships being conveyed graphically... | The complaint asserts that its PDO software does not infringe, contending that it was independently developed and "operates fundamentally differently." | ¶¶45, 63 | col. 21:39-42 |
| configuring said system using said definition and said set of product relationships and said part relationships. | The complaint asserts that its PDO software does not infringe, contending that it was independently developed and "operates fundamentally differently." | ¶¶45, 63 | col. 21:43-46 |
’308 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| translating a system definition from an external representation comprising a set of intuitive relationships... into an internal representation... | The complaint asserts that its PDO software does not infringe, contending that it was independently developed and "operates fundamentally differently." | ¶¶45, 67 | col. 25:10-17 |
| validating configuration input using said internal representation; and | The complaint asserts that its PDO software does not infringe, contending that it was independently developed and "operates fundamentally differently." | ¶¶45, 67 | col. 25:18-19 |
| modifying a configuration state based on said user input. | The complaint asserts that its PDO software does not infringe, contending that it was independently developed and "operates fundamentally differently." | ¶¶45, 67 | col. 25:20-21 |
Identified Points of Contention
- Scope Questions: A central dispute may revolve around the scope of the claims. The court will have to determine whether Ford’s PDO software, despite being described as architecturally different and more advanced, nonetheless performs the fundamental steps recited in Versata’s broader method claims.
- Technical Questions: The complaint provides minimal technical detail about the actual operation of the PDO software. A key factual question for the court will be how the PDO software actually generates definitions, represents and processes component relationships, and validates configurations. Evidence on these technical operations will be necessary to compare its functionality against the limitations of the asserted claims.
V. Key Claim Terms for Construction
The Term: "conveyed graphically" (’651 Patent, Claim 1)
- Context and Importance: This term appears central to the patent's distinction from prior art systems that used a textual "configuration language." Its construction is important because the dispute may turn on whether Ford's PDO software uses relationships that are "conveyed graphically" in the manner claimed, or if it uses a more advanced data-modeling approach that falls outside this scope. Practitioners may focus on this term to distinguish between a user simply interacting with a GUI versus the underlying system definition itself being created and structured through graphical actions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a "graphical user interface (GUI) is used to allow the user to interactively generate a definition" using operations like "drag and drop." (’651 Patent, col. 2:40-44). This could support a broad reading that covers any system where a GUI is used to define relationships.
- Evidence for a Narrower Interpretation: Figure 6 and its description detail a specific GUI with panes for "Included," "Requires Choice," and "Optional," where elements are dragged from a parts catalog to define their role in the product. (’651 Patent, col. 8:5-29). This could support a narrower construction limited to this type of direct graphical classification and relationship definition.
The Term: "external representation" and "internal representation" (’308 Patent, Claim 1)
- Context and Importance: These terms define the two-part architecture that is a key feature of the claimed invention: a user-friendly front end and an efficient back end. The infringement analysis will likely require determining if Ford's PDO software employs this distinct two-part structure or if its architecture is fundamentally different.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the external representation as a "conceptual level that is easy to understand," such as a GUI, and the internal representation as what is "used to control a configuration session." (’308 Patent, col. 9:1-3, 9:31-33). This could be interpreted broadly to cover many modern software architectures with a separation between the user interface and the back-end logic.
- Evidence for a Narrower Interpretation: The specification explicitly links the "internal representation" to specific data structures like "bit vectors" and "runtime tables" designed for efficient processing. (’308 Patent, col. 3:12-25, Abstract). This could support an argument that the term requires this specific type of optimized, translated data structure, as opposed to a more integrated software architecture that may be used in Ford's PDO system.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory denials of indirect infringement for each of the patents-in-suit. (Compl. ¶¶63, 67, 71). It does not provide specific facts for analysis of inducement or contributory infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can broad claim terms from the late 1990s, such as "conveyed graphically" and "external representation," be construed to cover a modern, internally-developed configuration software that the plaintiff alleges is based on a "fundamentally different" and separately patented technology?
- A key evidentiary question will be one of technical operation: what is the actual architecture and method of operation of Ford's PDO software? The case will likely depend on a factual comparison between how PDO works and the steps recited in Versata's claims, an area where the complaint provides high-level assertions of superiority but few concrete technical details for comparison.
- The analysis may also be influenced by the parties' procedural history: how will the facts surrounding the prior ACM software license, the joint development efforts, and the prosecution history of Ford's own patent (which cited Versata's patents) affect the court's interpretation of claim scope and the alleged technical distinctions between the systems?