The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
WESTERN DIVISION
NO. 5:10-CV-25-FL
SAS INSTITUTE, INC., )
)
Plaintiff/Judgment Creditor, )
)
v. ) MEMORANDUM OPINION AND ORDER
)
WORLD PROGRAMMING LIMITED, )
)
Defendant/Judgment Debtor )
This matter came before the court for hearing March 3, 2022, on the judgment creditor’s
motion to show cause (DE 976) and second post-judgment motion to compel (DE 982). The
judgment creditor was represented by Pressly M. Millen, Raymond M. Bennet, and Samuel B.
Hartzell. Patricia Brown, chief legal officer for SAS Institute, Inc. was in attendance. The
judgment debtor was represented by Christopher R. Dillon, with local counsel Mark R. Sigmon.
Raoul Maitra, chief legal officer of Altair Engineering, Inc. (“Altair US”), also was in attendance.
The court memorializes herein determinations made at hearing. And where the judgment was
determined satisfied, it follows that the motions remaining before the court should be denied as
moot.
STATEMENT OF THE CASE
Reference is made to the court’s prior memorandum opinion and order, entered March 18,
2019, and the opinion of the United States Court of Appeals for the Fourth Circuit, entered March
12, 2020, which detail the background and procedural history of this long-running case, up to this
court’s judgment entered July 15, 2016 (the “judgment”), and through the court’s third amended
judgment, entered March 18, 2019 (the “third amended judgment”), and appeals thereof.
Issues presented stem from the judgment creditor’s receipt, on January 3, 2022, of payment
in the amount of $65,915,088.89, which, as confirmed through counsel at hearing, represents the
total monetary amount due under the judgment. (See Notice of Partial Satisfaction of Judgment
(DE 1007)). The judgment creditor, however, complains that the judgment, while paid, remains
unsatisfied because the judgment debtor has not disclaimed a December 2018 judgment entered in
the High Court of Justice in the United Kingdom (“UK Judgment”), allowing it to claw back two-
thirds (2/3) of amounts paid by it to the judgment creditor on the basis of the United Kingdom
Protection of Trading Interests Act of 1980. (See DE 816-1). Reference is made to this court’s
February 19, 2019, order entered following the UK judgment, which order provides, in pertinent
part:
[N]o sum previously collected or to be collected by the judgment creditor in the
United States is subject to payment to the judgment debtor on the basis of the United
Kingdom Protection of Trading Interests Act 1980.
(DE 848 at 2) (hereinafter, the “clawback injunction”).
The judgment creditor seeks to continue this court’s prohibition on licensing activity by
the judgment debtor in this country until it disclaims the UK Judgment in a manner that gives the
judgment creditor confidence, now lacking, that no recourse ever will be taken against it on the
UK Judgment, on which interest, counsel provided, continues to accrue at the rate of eight percent
per annum (8 %). Ancillary concern was expressed related to application of generally accepted
accounting principles understood by the judgment creditor to require it to record two-thirds (2/3)
of amounts paid on the judgment in its favor as a contingent liability.
The enjoined licensing activity is the subject of the court’s third amended judgment, which
provides that when the judgment is satisfied, that injunction expires. That portion of the third
amended judgment is copied below:
IT IS ORDERED, ADJUDGED AND DECREED, that the court’s judgment entered July 15,
2016, the court’s amended judgment entered December 8, 2017, and the court’s second amended
judgment entered May 3. 2018 is hereby ALTERED AND AMENDED as follows: “WPL” is
HEREBY ENJOINED from licensing “WPS” to any “new customer” for use within the United
States. For the purposes of this injunction, “WPL” means defendant/judgment debtor and its officers,
agents, servants, employees, and all other persons who are in active concert or participation with
defendant/judgment debtor: “WPS” means World Programing System and any software developed
in whole or in part through the use of SAS Learning Edition: and a “new customer” is any person
or entity that held no active license to WPS on January 11, 2019. This injunction expires
automatically once defendant/judgment debtor has satisfied the judgment in this case. All other
terms of the court’s July 15, 2016, judgment, as amended December 8, 2017 and May 3, 2018, not
altered herein shall remain in full force and effect.
(DE 882 at 1).
COURT’S DISCUSSION
Through counsel, the judgment debtor explained in response to the court’s questions at
hearing that World Programming Limited (“WPL”) continues to exist, now under ownership of
Altair Engineering Limited (“Altair UK’’), a wholly owned subsidiary of Altair US. That purchase
apparently was finalized in late December 2021. Shortly thereafter Altair US made full payment
to the judgment debtor.
In response to the court’s inquiry, the judgment debtor, through counsel, offered its
recognition that “the injunction applies to Altair as the owner of World Programming Limited,”
comprising both Altair UK and Altair US. (Tr. (DE 1021) at 5). As the hearing proceeded, and
the judgment creditor developed its concerns on the record, the judgment debtor offered many
assurances to mitigate those concerns, a sample of which the court reproduces below:
1. [Counsel for judgment debtor:] “Your Honor, I want to be very clear. Altair is not going to
claw back this money. Altair views your injunction from 2019 as being crystal clear that
we are not permitted to take any steps to claw that money back.” (Tr. 15).
2. “In our view Altair is bound by your order which precludes us from taking any steps to
enforce the U.K. Judgment.” (Tr. 15-16).
3. “Altair is a U.S. company that is bound by your orders. We’re not clawing this money
back.” (Tr. 16).
4. “[P]art of the reason why Mr. Maitra, the chief legal officer is here, he will say the same
thing to you on the company’s behalf. . . . There is no situation in which Altair is going to
claw back this money.” (Tr. 16).
5. “I’ve been asked by the CEO: Please let the judge know we’re not going to enforce this
[UK Judgment].” (Tr. 17-18).
6. “I reside . . . in the U.S.; Mr. Maitra resides and is a lawyer in the U.S.; the CEO of the
company, we are under your jurisdiction. If we did any of those things, I don’t doubt for
a minute we would be here answering to you.” (Tr. 22).
7. “Your Honor, I will represent to you that all of the U.K. lawyers report directly to Mr.
Maitra, and to some extent as outside counsel to me as well. . . . [W]e will take no steps in
the U.K. before reporting back to you with . . . a final agreement or however it is we do
this. . . . We will work in good faith to get this done in 30 days.” (Tr. 26).
The judgment debtor advocated that the judgment has been satisfied in full, and, therefore,
the court’s injunction against licensing activities in this country should not be extended, rather it
should be deemed to have expired.
A brief break in the hearing was called by the court in part to allow the parties opportunity
to continue their communications privately.1 Upon its return to the bench, and after hearing further
from the parties, where no agreement was able to be reached on treatment of the injunction at issue
in this case, the court turned its attention squarely to the terms of its third amended judgment,
entered March 18, 2019. The court emphasized in pertinent part its language: “This injunction
expires automatically once defendant/judgment debtor has satisfied the judgment in this case.”
(DE 882 at 1). Where the judgment creditor essentially is asking the court to interpret satisfaction
1 There appeared some interest in mediation of other disputed issues in furtherance of a global resolution of
the parties’ conflicts. While this litigation has been laid now to rest, given the interrelatedness of issues remaining in
dispute elsewhere, the court noted that, if requested, it will consider making an experienced magistrate judge available
for court-hosted conference between the parties geared towards reaching settlement of all their disputed issues.
of the judgment also to require affirmative steps by the judgment debtor to void the UK Judgment,
it was not inclined to adopt that interpretation or to amend its judgment to such effect.
The United States Court of Appeals for the Fourth Circuit makes clear in several instances
that satisfaction of the judgment here is tied to its payment. There is no cord also requiring that
the judgment debtor somehow render null and void the UK Judgment. For example:
While WPL can continue licensing its software to existing customers for U.S. use,
its U.S.-related operations cannot grow until the judgment is satisfied. . . . . The
U.S. expansion injunction is narrow and carefully tailored. It is not intended to put
WPL out of business. . . . It expires automatically once the U.S. judgment is
satisfied. It does not foreclose the possibility of modification earlier if WPL makes
good-faith payment efforts.
Id. at 526 (emphasis added). No meaningful authority is cited in support of the judgment
creditor’s argument that payment in full does not amount here to satisfaction of the judgment.
Where the court finds the judgment satisfied, the separate motions before the court must be and
are denied as moot.
The court reiterates its ability persists to enforce its orders, including the clawback
injunction: “no sum previously collected or to be collected by the judgment creditor in the United
States is subject to payment to the judgment debtor on the basis of the United Kingdom Protection
of Trading Interests Act of 1980.” (DE 848 at 2). And as the judgment debtor plainly recognizes,
the jurisprudence of the case affords no opportunity for the judgment debtor to do with impunity
what the judgment creditor fears.
The judgment debtor argued before the Fourth Circuit on appeal that it did not relitigate,
attack, or alter the district court’s judgment by seeking clawbacks in the United Kingdom, but,
rather, took independent action under a United Kingdom statute. The appeals court held “[t]his
argument quickly falters. As an initial matter, it strains logic to characterize a proceeding as
separate and independent of a previous proceeding when its sole purpose is to vitiate the previous
judgment.” SAS Inst., Inc. v. World Prog. Ltd., 952 F.3d 513, 524 (4th Cir. 2020). The fact that
the judgment now has been paid does not alter this reasoning.
CONCLUSION
The court amplifies in this writing upon its determination made at hearing March 3, 2022,
that the judgment is satisfied. Accordingly, the judgment creditor’s motions are denied as moot.
SO ORDERED, this the 4th day of March, 2022.
□□□ W. FLANACHN
United States District Judge