United States District Court, E.D. Michigan, Southern Division
ORDER DENYING DEFENDANTS' MOTION FOR PRELIMINARY
INJUNCTION ENJOINING PLAINTIFF FROM SEEKING INTER PARTES
REVIEW (ECF #125)
MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE
action, Versata Software, Inc., Trilogy Development Group,
Inc., and Trilogy, Inc. (collectively “Versata”)
allege that Ford Motor Company (“Ford”) infringed
Versata's software patents (the “Patents”).
Ford denies Versata's allegations and has launched a
two-pronged attack on the validity of the Patents. First, in
this Court, Ford has asserted as an affirmative defense that
the Patents are invalid. Second, on May 9, 2016, Ford filed
petitions with the United States Patent and Trademark Office
(the “USPTO”) requesting Inter Partes
Review of the Patents (the “IPR Petitions”). In
the IPR Petitions, Ford asks the USPTO to invalidate the
has now moved for a preliminary injunction barring Ford from
proceeding with the IPR Petitions (the “Motion”).
(See ECF #125.) According to Versata, a 2002
agreement between the parties prohibits Ford from seeking to
invalidate the Patents through the IPR Petitions. For the
reasons explained below, the Court DENIES the Motion.
one of the world's largest automakers. In the late 1990s,
Ford licensed from Versata certain automobile configuration
software known as the “ACM” software.
(See Declaration of Kenneth Ratton at ¶3, ECF
#126 at 1, Pg. ID 5764.) In 2001, a dispute arose between
Versata and Ford over, among other things, ownership of the
ACM software. (See id.) Neither Ford nor Versata
filed a lawsuit related to that dispute. Instead, they
negotiated a business settlement and entered into a new
“Software Subscription Agreement” on January 1,
2002 (the “SSA”). (See Id. at ¶3,
ECF #126 at 1-2, Pg. ID 5764-65.) Under the SSA, Versata
continued to license the ACM software to Ford. (See
Id. at ¶¶ 3-4, ECF #126 at 1-2, Pg. ID
provision of the SSA, Ford agreed to “provide
reasonable assistance [to Versata] in perfecting and
protecting [the ACM] software intellectual property”
(the “Protection Provision”). (SSA at § 2F,
ECF #126-2 at 3, Pg. ID 5769.) Ford re-affirmed this promise
in several subsequent amendments to the SSA. (See
ECF ## 126-3 - 126-7.)
2004, Ford and Versata entered into another software-related
agreement, known as the “Master Subscription and
Services Agreement” (the “MSSA”).
(See ECF #132-3.) Like the SSA, the MSSA granted
Ford a license to use the ACM software. (See id.)
The MSSA provided that it “superseded”
“all” previous agreements between Ford and
Versata “regarding the subject matter hereof.”
(ECF #132-3 at ¶13.10, ECF #132-3 at 9, Pg. ID 5977.)
The MSSA did not include a provision like the Protection
Provision nor did it address that provision in any way.
2014, Ford and Versata were unable to reach an agreement on a
renewed license for the ACM software. At around this same
time, Ford developed its own automobile configuration
software to replace ACM. Versata accused Ford of infringing
the Patents in the development of this new software.
response, Ford filed this action in which it seeks a
declaratory judgment that it did not infringe the Patents.
(See Am. Compl. at ¶¶ 61-72, ECF #6 at
13-15, Pg. ID 162-64.) Versata has filed a counterclaim
alleging that Ford infringed the Patents, stole Versata's
trade secrets, and breached certain agreements, including the
MSSA and SSA. (See Am. Counterclaim, ECF
#163.) In one of its affirmative defenses to
Verasata's infringement counterclaim, Ford asserts that
the Patents “are invalid for failure to meet one or
more of the requisite requirements and/or conditions for
patentability under Title 35 of the United States Code,
including without limitation §§ 101, 102, 103, 112
and 116.” (See ECF #68 at 71, Pg. ID 2241; ECF
#166 at 82, Pg. ID 8866.)
9, 2016, Ford filed seven IPR Petitions with the PTAB.
(See ECF ## 108-3 - 108-9.) The IPR Petitions ask
the PTAB to review the Patents at issue in this case and to
declare them invalid. (See id.)
18, 2016, Versata filed the Motion. (See ECF #125.)
Versata argues that the SSA - and, more specifically, the
Protection Provision - prohibits Ford from moving forward
with the IPR Petitions. (See id.) The Court held a
hearing on the Motion on October 4, 2016.
Motion, Versata seeks a preliminary injunction. “A
preliminary injunction is an extraordinary remedy that may
only be awarded upon a clear showing that the plaintiff is
entitled to such relief.” LifeScan Scotland, Ltd.
v. Shasta Techs., 734 F.3d 1361, 1366 (Fed. Cir. 2013)
(internal quotation marks omitted); see also Leary v.
Daeschner, 228 F.3d 729, 739 (6th Cir. 2000) (same).
“A plaintiff seeking a preliminary injunction must
establish that he is likely to succeed on the merits, that he
is likely to suffer irreparable harm in the absence of
preliminary relief, that the balance of equities tips in his
favor, and that an injunction is in the public
interest.” Id.; see also Leary, 228
F.3d at 736 (same). “These factors, taken individually,
are not dispositive; rather, the district court must weigh
and measure each factor against the other factors and against
the form and magnitude of the relief requested.”
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
F.3d 1343, 1350 (Fed. Cir. 2001); see also Leary,
228 F.3d at 736 (same).
has failed to make a clear showing that it is entitled to
preliminary injunctive relief.
initial matter, Versata has failed to persuade that the Court
that it is likely to ...