U.S. ITC Initially Determines Hytera Violated Motorola’s Patents
Thursday, July 05, 2018 | Comments
The U.S. International Trade Commission (ITC) released an initial determination finding that Hytera Communications infringed four Motorola Solutions patents.

Administrative Law Judge MaryJoan McNamara said in a notice that Motorola had proven that Hytera had infringed on multiple claims of four different Motorola patents. McNamara recommended that a cease and desist order and a limited exclusion order be entered against Hytera. She did not specify details of such orders, but given Motorola’s requests in the case, they would likely prevent Hytera from importing and selling the infringing products in the U.S.

The involved patents are U.S. Patent No. 8,116,284 “Method, Device and System for Temporarily Selecting a Timeslot;” U.S. Patent No. 8,279,991 “Method of Efficiently Synchronizing to a Desired Timeslot in a Time Division Multiple Access Communication System;” U.S. Patent No. 7,369,869 “Method and System of Scanning a TDMA Channel;” and U.S. Patent No. 7,729,701 “Method and System of Accessing a De-keyed Base Station.”

The U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) is reviewing the validity of the ‘991 and ‘284 patents following a request from Hytera. The PTAB also denied a request from Hytera to review the ‘869 patent.

McNamara’s initial determination will become the final determination of the ITC 60 days after the initial determination has been served to the parties unless the commission decides to review the action. The ITC can initiate the review itself or Hytera can file a request for review of the initial determination.

“Hytera is disappointed with this initial determination,” a Hytera statement said. “We believe our products do not infringe our competitor’s asserted patents and will seek to demonstrate this to the commission.”

The commission is not bound by McNamara’s conclusions during the review and could enter a decision different from hers if it finds the facts support such a conclusion.

“We greatly appreciate the diligent work undertaken by Judge McNamara and the ITC staff during this investigation, and we are confident that the full ITC will uphold this decision and enter a final determination consistent with today’s findings,” said Mark Hacker, general counsel and chief administrative officer of Motorola Solutions.

Once the ITC releases a final determination on the case, it will be sent to the U.S. president, who has 60 days to disapprove determination for policy reasons. Such disapprovals are rare, a frequently asked questions (FAQs) document on the ITC’s website said.

During a presidential review period, Hytera could still import and sell its infringing products in the U.S. but would likely be required to post a bond determined by the ITC. McNamara recommended in her initial determination that Hytera be required to post a bond if a presidential review occurred. If the president does not stop the determination, Motorola could seek to have the bond money forfeited to it, according to the FAQ document.

Because no cease-and-desist or exclusion order has been approved yet, Hytera can still sell and import the alleged infringing products in the U.S.

“Importantly, since the commission has not issued its final decision, there is no ban on the importation or sale of any Hytera products,” the Hytera statement said. “Furthermore, Hytera has developed new products, which Hytera also believes do not infringe any of the asserted patents and which we previously presented to the ITC for its consideration. We are confident our new products do not infringe any of our competitor’s asserted patents.”

Hytera announced a new series of features for its Digital Mobile Radio portfolio June 29. The new features include full duplex in repeater mode operation, over-the-air programming for conventional repeater systems, offline GPS data storage, enhanced quick GPS and optimized push to talk among other features.

A final determination of the ITC can also be appealed to the U.S. Court of Appeals.

According to a scheduling order released early on in the case, the commission’s final determination should be released by Nov. 6.

McNamara’s full conclusions in ruling against Hytera are not yet publicly available because the full initial determination is sealed to protect sensitive information. Under commission rules, a redacted version is required to be released within 30 days of its issuance unless there is a compelling reason to keep it sealed.

“Judge McNamara’s ruling validates our allegations, upholds the integrity of our intellectual property and rebukes Hytera for its unscrupulous and unlawful behavior in willfully infringing Motorola Solutions’ patents,” Hacker said. “While we consider the initial determination an important step, it is only one component of our global efforts to address Hytera’s systematic, brazen and egregious theft and infringement of our intellectual property.”

Motorola’s legal battle against Hytera began in March 2017 when it filed patent infringement case and a theft of trade secrets case in the U.S. District Court for the Northern District of Illinois. A week later, Motorola filed its patent infringement suit against Hytera with the ITC.

In those cases, Motorola alleged that a variety of Hytera DMR products infringed Motorola patents and that three former Motorola employees had stolen trade secrets from Motorola and then left to go work for Hytera, bringing those secrets with them.

The Illinois patent infringement case was stayed pending the outcome of the ITC case. No new documents have been filed in that case since the release of the initial determination, and it is likely that case will not move forward until a final determination has been made.

In the theft of trade secrets case, a judge is determining whether Motorola filed the lawsuit within the proper timeframe for the statute of limitations. Motorola has also filed patent infringement suits against Hytera in Germany and Australia, and Hytera has responded with a patent infringement suit against Motorola in Ohio and an anticompetitive practices lawsuit in New Jersey. Those cases are all at various points of the legal process.

The ITC is an independent, quasijudicial federal agency that investigates a variety of international trade-related issues. The board is comprised of six members: three Democrats and three Republicans.

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Comments
On 7/11/18, Norman W. Hill Jr. said:
Motorola tries to dominate and control the radio market in many nations including Australia and control the pricing. I believe they even bought controlling interest in Yaesu-Vertex, Icom's competitor in Japan. IMHO they may have even tried to keep DMR out of the United States until they could do DMR themselves and even developed new Yaesu-Vertex digital radio modes to confuse the market even more. That's a part of the American free market system.

On 7/9/18, Alex said:
Motorola has a long and distinguished history of filing lawsuits against companies that compete in the same business space. In my opinion these are nuisance lawsuits filed to stifle competition. I don't care for the Chinese or Motorola — both are predatory and arrogant in their business dealings and maybe they simply deserve each other in these cases. If and only if Hytera is found to have stolen patents can I side with a ruling as distasteful as that would be.

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