Ford Motor Co. v. Versata Software, Inc.

          ORDER REFERRING CLAIM CONSTRUCTION DISPUTE TO SPECIAL MASTER LAWRENCE GRAHAM

          MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE

         In this action, Plaintiff Ford Motor Company and Defendants Versata Software, Inc., Versata Development Group, Inc., and Trilogy, Inc. (collectively, “Versata”) dispute whether Ford infringed Versata's software patents and misappropriated Versata's trade secrets. The intellectual property in question relates to computer software used in vehicle configuration.

         On March 31, 2016, the Court, with the consent of the parties, entered an order appointing attorney Larry Graham as a special master to oversee the patent claim construction portion of this action. (See ECF #101.) The parties jointly selected Mr. Graham for this role. (See Id. at Pg. ID 3093.) As the Court explained in its March 31 order, Mr. Graham has extensive experience in patent law. (See id.)

         In the order appointing Mr. Graham as Special Master, the Court authorized him “to hold a claim construction hearing, to receive evidence on claim construction issues consistent with the evidence the parties submitted […], and to file a Rule 53 report and recommendation with the Court on the correct construction and/or definiteness of the patent terms at issue in this case.” (Id. at Pg. ID 3093-94.) Mr. Graham thereafter issued a report and recommendation on claim construction (see ECF #181), and the parties stipulated to the entry of an order adopting Mr. Graham's proposed constructions. (See ECF #317.) The Court also referred the patent portions of the parties' summary judgment motions to Mr. Graham. (See ECF #509.) Mr. Graham then held an in-person hearing and issued a report and recommendation on those portions of the summary judgment motions. (See ECF #551.)

         The parties have now raised an issue with the Court that arises out of Mr. Graham's previous rulings on claim construction and summary judgment. More specifically, Ford asserts that during the summary judgment proceedings in front of Mr. Graham, a dispute arose regarding the construction of two claim limitations in United States Patent Number 7, 739, 080 (the “‘080 Patent”): the “extending” and “removing” limitations. Ford insists that the Court “must resolve” this claim construction dispute “in advance of trial.” (Ford 7/7/2019 Letter, ECF #677-3 at Pg. ID 52124.) Versata disagrees that there is a live claim-construction dispute with respect to the ‘080 Patent. Versata says that Mr. Graham resolved that dispute in his initial claim construction report and recommendation and that “[n]othing justifies new claim construction briefing at this late stage of the case.” (Versata 7/7/2019 Letter, ECF #677-2 at Pg. ID 52121.)

         The Court concludes that because this issue arises out of Mr. Graham's previous rulings and hearings in this action, he is in the best position to efficiently address both the procedural and substantive components of this dispute. Accordingly, the Court refers the following questions to Mr. Graham for a report and recommendation as set forth in this order:

(1) Is there a claim construction dispute between the parties that the Court should resolve at this point in the proceedings, or do Mr. Graham's previous claim construction and summary judgment recommendations, as adopted (or adopted in part) by the Court already resolve the allegedly-live claim construction dispute described above?; and

(2) What is the proper construction for the “extending” and “removing” limitations of the ‘080 Patent? The Court asks Mr. Graham to answer this second question no matter how he answers first question.

         Mr. Graham is best positioned to “effectively and timely address” the patent portions of the motions. See Fed.R.Civ.P. 53(a)(1)(C) (emphasis added) (authorizing district court to refer any pretrial matter to a special master where the matter “cannot be effectively and timely handled by an available district judge or magistrate judge of the district”). Mr. Graham's extensive familiarity with the claim construction and summary judgment arguments related to the ‘080 Patent, his technical background, and his patent law experience will enable him to analyze and recommend a disposition of current dispute on an efficient basis. Finally, the Court's staff has spoken with Mr. Graham and confirmed that he is available to resolve this dispute in a timely manner. For all of these reasons, the Court exercises its discretion to refer this claim construction dispute to Mr. Graham for a report and recommendation.^[1]

         Accordingly, IT IS HEREBY ORDERED that the parties' claim construction dispute as described above and as described in the parties' July 7, 2019, letters to the Court (see ECF ## 677-2 and 677-3) is REFERRED to Mr. Graham for a report and recommendation as set forth in this order.

         IT IS FURTHER ORDERED as follows:

1. The parties shall jointly contact Mr. Graham at their earliest convenience to make all necessary and appropriate arrangements for his immediate consideration of this dispute.

2. Mr. Graham shall confer with the parties to arrange a schedule for any briefing necessary to resolve this dispute.

3. Mr. Graham may, at his discretion, hold a hearing where he may hear oral argument with respect to the parties' current claim construction dispute. Mr. Graham shall determine the procedure (i.e., hearing format) employed at the hearing at his discretion. At any such hearing, a court reporter shall be engaged so that an adequate record can be generated. Mr. Graham shall conduct the hearing in Flint, Michigan, ...