U.S. ITC Affirms Hytera Infringed Motorola Patents, Redesigned Products Do Not Infringe
Friday, November 16, 2018 | Comments
The U.S. International Trade Commission (ITC) affirmed an administrative law judge’s finding that Hytera Communications of China infringed several Motorola Solutions patents.

However, the ITC also reversed Administrative Law Judge Mary Joan McNamara’s finding that redesigned products Hytera submitted for the ITC’s consideration infringed a Motorola patent. Additionally, the ITC’s final determination found that Hytera’s redesigned products do not infringe the three other Motorola patents involved in the case — an issue that McNamara did not address in her finding.

Because it found patent infringement violations, the commission will issue a limited exclusion order (LEO) that will prohibit the importation of Hytera products or components that infringe on certain claims of Motorola’s 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.”

Additionally, the ITC will issue a cease-and-desist order that will prevent Hytera America and Hytera Communications America, Hytera’s American subsidaries, from importing, selling, marketing, advertising or distributing products that infringe on those patents.

The orders will affect a variety of Hytera Digital Mobile Radio (DMR) radios and repeaters. Impacted products include the MD652, MD782, BD302, BD362, BD502, PD412, PD502, PD562, PD602, PD662, PD682, PD702, PD752, PD782, PD792, PD982, X1e and XLp radios, as well as the RD622 and RD982 repeaters.

"The commission's validation of Judge McNamara's findings is a significant victory for Motorola Solutions and another important step in holding Hytera accountable for its serial infringement of our patents," said Mark Hacker, general counsel and chief administrative officer, Motorola solutions. "Motorola Solutions has invested significant resources researching, developing and delivering new and innovative products for our customers around the world. In contrast, Hytera has brazenly and repeatedly copied our proprietary intellectual property."

A fourth patent — U.S. Patent No. 8,116,284 “Method, Device and System for Temporarily Selecting a Timeslot” — was also involved in the case. McNamara found that Hytera products did infringe that patent but also found that it did not count as a violation because the Motorola products involved in the case do not include a “default timeslot” — a key aspect of the patent. Therefore, Motorola did not meet the ITC’s domestic industry requirement, which requires that a patent holder be “practicing or exploiting the patents at issue.”

The ITC’s notice of final determination reversed McNamara’s finding that Hytera's redesigned products infringed certain claims of the '284 patent.

Because the ITC found that none of Hytera’s redesigned products infringe the four patents involved in the case, they were not included in the sanctions. Hytera and its subsidiaries can continue to sell and import those products in the U.S.

"Hytera is committed to broadening choice within the U.S. market and for our dealers," Tom Wineland, vice president of sales, Hytera Communications America (West) said in a statement. "Hytera will continue to deliver a full range of innovative, high-quality and cost-effective DMR products and land mobile radio communications solutions to our dealers and customers here in the U.S., as we do around the world."

In its statement, Hytera also characterized Motorola's lawsuits against it as anticompetitive practices meant to bolster its position in the market. Hytera filed an anticompetitive practices lawsuit against Motorola in the District Court of New Jersey last year.

The ITC’s notice also did not address whether Hytera and its network of dealers could continue to repair or provide replacement parts for existing Hytera systems that infringe the Motorola patents. Several dealers and Hytera customers asked the ITC to add a repair exception to any sanctions against Hytera. Otherwise, it could cause a financial hardship to agencies and organizations with existing systems if they had to fully replace them, they said.

"Hytera is firmly committed to supporting its dealers and end users and will be providing instructions regarding how to upgrade legacy products to new generation i-Series so that Hytera can continue to provide service and support for the existing radios in the U.S.," Wineland said.

With the ITC’s final determination in place, President Donald Trump, or a representative, has up to 60 days to review and potentially disapprove the ITC’s final determination.

Hytera may continue to sell and import the affected products during that presidential review period. However, to do so, Hytera must post a bond that would cover any harm caused to Motorola profits by Hytera continuing to sell the infringing products during the period.

If the president doesn’t overturn the ITC’s decision, Motorola would then receive that bond. The bond is 44 percent of the value of products Hytera would be expected to sell during that period. According to McNamara’s initial determination, that would result in a bond of around $1.18 million.

Once the presidential review period is completed, either party can appeal the final determination to U.S. Court of Appeals for the Federal Circuit.

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On 11/28/18, Bruce Marcus said:
Hytera has already delivered new firmware to upgrade ALL the listed products above to the new noninfringing products. The article missleads users into believing that all the products cannot be used anymore.

However, all the models above are noninfringing, and in fact, now offer new features not available from competitors, like store and forward audio, instant push to talk (PTT) on trunking without waiting for a handshake, instant change from trunking to conventional with turn of the knob, full duplex on repeaters from portables and over the air programing (OTAP) on conventional repeaters.

Editor's Note: The article does not say the products can't be used; the court documents say the products can't be marketed or sold in the U.S. We were not aware of the firmware upgrade and will check on that. Hytera has released new noninfringing products.

On 11/16/18, Tim Kenelly said:
So by my understanding the redesign is software based and already underway. Plus Pseudo Trunk will still remain thanks to the reversal of the 284 ruling, so this appears to be about as good as realistically possible for Hytera.


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