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United States District Court for the Eastern District of Michigan, Southern Division
November 10, 2016, Decided; November 10, 2016, Filed
Case No. 15-cv-10628; (consolidated with Case No. 15-11624)
ORDER DENYING DEFENDANTS' MOTION FOR PRELIMINARY INJUNCTION ENJOINING PLAINTIFF FROM SEEKING INTER PARTES REVIEW (ECF #125)
In this action, Versata Software, Inc., Trilogy Development Group, Inc., and Trilogy, Inc. (collectively [*2] "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 Patents.
Versata 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.
Ford is 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, [*3] 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 5764-65.)
In one 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.)
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2016 U.S. Dist. LEXIS 156084 *
FORD MOTOR COMPANY, Plaintiff, v. VERSATA SOFTWARE, INC. et al., Defendants.
Prior History: Ford Motor Co. v. Versata Software, Inc., 2015 U.S. Dist. LEXIS 89107 ( E.D. Mich., July 2, 2015)
Patents, invalid, no-challenge, Petitions, settlement, public interest, software, infringed, parties, preliminary injunction, pre-litigation, challenging, licensee, factors, license, merits, settlement agreement, license agreement, circumstances, unambiguous, injunctive, terminated, courts, weigh