Engenium Solutions, Inc. v. Symphonic Techs., Inc.
Decision Date | 15 February 2013 |
Docket Number | Civil Action No. H–10–4412. |
Citation | 924 F.Supp.2d 757 |
Parties | ENGENIUM SOLUTIONS, INC., Plaintiff, v. SYMPHONIC TECHNOLOGIES, INC., et al., Defendants. |
Court | U.S. District Court — Southern District of Texas |
OPINION TEXT STARTS HERE
Charles M.R. Vethan, Attorney at Law, Houston, TX, for Plaintiff.
Mark C. Hill, Robert J. Myers & Associates, Fort Worth, TX, Lance H. Lubel, Lubel Voyles LLP, Houston, TX, for Defendants.
Pending before the Court are the following Motions:
1) Plaintiff Engenium Solutions, Inc.'s (“Plaintiff” or “Engenium”) Motion to Strike Defendants' Expert Andrew Wright (“Motion to Strike Wright”) (Doc. No. 147);
2) Plaintiff's Motion to Strike Expert Dave Faiola (“Motion to Strike Faiola”) (Doc. No. 148);
3) Defendants Symphonic Technologies, Inc.'s (“Symphonic”) and Steve Carr's (“Carr”) (collectively “Defendants”) Motion to Exclude Testimony and Expert Report of Krishna Muppavarapu (“Motion to Exclude Muppavarapu”) (Doc. No. 136);
4) Defendants' Motion to Exclude the Opinions and Conclusions of Chris W. Johnson (“Motion to Exclude Johnson”) (Doc. No. 137);
5) Plaintiff's Partial Motion for Summary Judgment on Copyright Liability and Request for Permanent Injunction (“Partial Motion for Summary Judgment”) (Doc. No. 134); and
6) Defendants' Motion for Summary Judgment. (Doc. No. 138.)
After considering the Motions, all responses thereto, and the applicable law, the Court finds that:
1) Plaintiff's Motion to Strike Wright (Doc. No. 147) must be GRANTED;
2) Plaintiff's Motion to Strike Faiola (Doc. No. 148) must be GRANTED;
3) Defendants' Motion to Exclude Muppavarapu (Doc. No. 136) must be DENIED;
4) Defendants' Motion to Exclude Johnson (Doc. No. 137) must be DENIED;
5) Plaintiff's Partial Motion for Summary Judgment (Doc. No. 134) must be GRANTED; and
6) Defendants' Motion for Summary Judgment (Doc. No. 138) must be GRANTED IN PART AND DENIED IN PART.
I. BACKGROUND
In 2006, Kartik Shetty (“Shetty”) and Carr partnered to develop scheduling software that would work in conjunction with SAP, a family of scheduling and maintenance software programs used worldwide by many businesses. (Doc. No. 138–5, Carr Decl. ¶¶ 4–5; Doc. No. 123, Expert Report of Krishna Muppavarapu, at 6.) They envisioned that Carr would be responsible for the business and design aspects, and Shetty would develop the actual code for the software. (Doc. No. 138–5, Carr Decl. ¶ 4; Doc. No. 134, Ex. I, Shetty Dep. 83:19–21, 89:3–8.) In October 2006, they formed Engenium. (Doc. No. 138–5, Carr Decl. ¶ 5.) During the time that Carr worked for Engenium, Engenium Scheduling Workbench ( “Scheduling Workbench” ) was developed and sold.
Scheduling Workbench is a customized scheduling and maintenance tool that is compatible with SAP but also provides additional features that SAP software does not offer. (Muppavarapu Report, at 6–9; Doc. No. 134, Ex. F, Expert Report of Gary Grant, 6–8.) Because SAP is utilized by a wide range of industries, SAP software may not meet some of the needs of a particular company. (Muppavarapu Report, at 7; Grant Report, 4.) Third-party developers like Engenium identify industry- or customer-specific needs that SAP's software does not address, and develop SAP-compatible software to meet those needs. (Muppavarapu Report, at 7.)
Scheduling Workbench enhances an organization's ability to perform maintenance efficiently. (Muppavarapu Report, at 8–9; Grant Report, 7–8.) SAP has its own software, SAP Plant Maintenance (“SAP PM”), that also schedules personnel to perform maintenance in a streamlined and coordinated fashion. (Muppavarapu Report, at 8; Grant Report, 7.) However, Engenium's software provides several features that SAP PM does not, including: (1) a single screen that presents all of the necessary data for planning and scheduling; (2) numerous Key Performance Indicator (“KPI”) reports, which allow for better measurement and management of plant processes; (3) importation of data out of Scheduling Workbench and into Microsoft Excel, which allows the schedule to be displayed in a Gantt chart, a useful visual tool for scheduling work; (4) importation of data out of Scheduling Workbench and into Microsoft Project, a more user-friendly program, where data can be manipulated and then imported back into Scheduling Workbench; and (5) a customized material availability check feature that includes additional options not present in SAP PM's material availability check. (Muppavarapu Report, at 19, 23, 26; Grant Report, 6–8.)
In order to be able to develop this customized, SAP-compatible software, Engenium executed a Development License Agreement (“DLA”) with SAP AG, the manufacturer of the SAP family of products. (Doc. No. 163–1, DLA; Muppavarapu Report, at 6.) The DLA grants Engenium a license to use SAP's software. (DLA, at 1.) The DLA recognizes that the licensee such as Engenium may develop several types of SAP-compatible programs, including add-ons, enhancements, and modifications. ( The DLA defines these licensee programs as follows:
1.1 ‘Add-on’ means any developments utilizing the SAP development environment, SAP published APIs and/or libraries to create a new object that adds new and independent functionality, and branches off from the published SAP APIs and/or user exits (e.g. new functional components for business processes not covered by the Software constitute Add-ons; however, standaloneinterface code from SAP software to non software is not considered an Add-on).
...
1.7 ‘Enhancement’ means a development utilizing the SAP development environment, SAP published APIs and/or libraries to create a new object supporting an existing business scenario that customizes, enhances or changes in any other way existing SAP functionality (e.g. the creation of new APIs, alternative user interfaces, additional business content within existing functionality, and/or the extension of data structures or metadata all constitute enhancements.) [ sic ]
...
1.12 ‘Modification’ means an alteration to the Software (e.g. a change made to the source code, metadata, etc) [ sic ] in which original SAP content is replaced with the modified content.). [ sic ]
( The DLA provides that, “ownership of Modifications and Enhancements, and any Intellectual Property Rights embodied therein, shall vest with SAP.” ( Id. ¶ 2.3.2.1.) It specifically states that Engenium “irrevocably assigns to SAP all Licensee's rights, title and interest (‘Assigned Intellectual Property Rights') in and to the Modifications and Enhancements, including the right to register or file proprietary rights based on the Modifications and Enhancements.” ( Id.) In contrast, the DLA provides that, “[t]he ownership of Add-ons shall vest in Licensee, or the end customer if so provided in the agreement between Licensee and end customer.” ( Id. ¶ 2.3.3.)
Defendants contend that numerous features of Scheduling Workbench are enhancements or modifications within the meaning of the DLA. Defs.' Mot. for Summ. J. () , at 3–5.) Plaintiff contends that Scheduling Workbench is actually an Add-on, and provides documentation from SAP showing that SAP certified Scheduling Workbench as a SAP Add-on.
Defendants also contend that several other aspects of Scheduling Workbench which may be Add-ons are actually owned by ConocoPhillips, a customer of Engenium's. (Doc. No. 138, Defs.' Mot. for Summ. J., at 8–10; Defs.' Reply, at 5–7.) In 2008, ConocoPhillips and Engenium executed a Master Software License, Maintenance and Service Agreement (“MLA”) granting ConocoPhillips a license to use Scheduling Workbench. (Doc. No. 158, MLA; Doc. No. 138–5, Carr Decl. ¶¶ 10–11.) The MLA provides as follows:
18.2 All copyrights, patents, trade secrets, or other intellectual property rights associated with any ideas, concepts, techniques, inventions, processes, or works of authorship developed or created by Licensor during the course of performing work for Licensee (collectively the ‘Work Product’) shall belong exclusively to Licensee and shall, to the extent possible, be considered a work made for hire for Licensee within the meaning of Title 17 of the United States Code. To the extent the Work Product may not be considered work made for hire for Licensee, Licensor agrees to assign, and hereby assigns at the time of creation of the Work Product, without any requirement of further consideration, any right, title, or interest Licensor may have in such Work Product.
(MLA ¶ 18.2.) Defendants present email communications and invoices indicating that at least some of the features of Scheduling Workbench were added per ConocoPhillips' request. (Doc. No. 163–2, August 4, 2009 Email from Carr to Conoco–Phillips; Doc. No. 163–3, March 23, 2012 ConocoPhillips Service Order.)
Engenium points out that the MLA specifically provides that ConocoPhillips will possess only a license to use Scheduling Workbench and any subsequent updates, versions or releases of Scheduling Workbench. .) They rely on a provision of Schedule A of the MLA, which provides as follows:
Licensed Programs licensed to Licensee shall be listed herein and defined as a machine executable version of such Licensed Programs and shall be deemed to include (i) the information and data contained in the relevant media, (ii) the reference manual, the programming tutorial and the installation guide (to be included where applicable) and any subsequent Updates, Versions or Releases of such...
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