U.S. Patent Office Rules on 3 Motorola Patents
Tuesday, May 14, 2019 | Comments
The U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) determined that three Motorola Solutions patents are valid. The PTAB, however, determined that four claims in one of those patents are unpatentable.

In late 2017, Hytera Communications petitioned the PTAB to perform an inter partes review of four Motorola patents, arguing that the claims described in the patents would be obvious to a person of ordinary skill in the art under the prior art, or previous patents. In May 2018, the USPTO instituted proceedings for three of the four patents Hytera requested that it review.

The three patents the PTAB validated were U.S. Patent No. 8,116,284, “Method, device and system for temporarily selecting a timeslot;” U.S. Patent No. 6,591,111 B1, “Group radio communication system and method using interconnected radio sub-networks;” and U.S. Patent No. 8,279,991, “Method of efficiently synchronizing to a desired timeslot in a time division multiple access communication system.”

Those patents are involved in a patent infringement suit Motorola filed against Hytera with the U.S. District Court for the Northern District of Illinois in March 2017, and some are involved in a theft of trade secrets case in the same district.

A trial in the theft of trade secrets case is scheduled to start Nov. 1, and a trial for the patent infringement case is expected to occur in March 2020. The ‘284 and '991 patents were also two of four Motorola patents that the U.S. International Trade Commission (ITC) determined Hytera infringed. However, the infringement on the '284 patent did not count as a violation because the ITC determined that Motorola products involved in the case did not include a key aspect of the patent and therefore, did not meet the domestic industry requirements of patent law.

The PTAB’s decisions will have implications for the two Illinois cases because of a section concerning estoppel in the Leahy-Smith America Invents Act. The act prohibits a petitioner in an inter partes review case that results in a final written decision from asserting in a civil action brought under patent law that a claim found valid in the review is invalid “on any ground that the petitioner raised or reasonably could have raised during the inter partes review.”

Hytera challenged eight claims of the ‘111 patent, two claims of the ‘991 patent and 13 claims of the ‘284 patent. The PTAB validated all of the challenged claims for both the ‘991 and ‘284 patent.

However, for the ‘111 patent, the PTAB determined that four claims were unpatentable as they would be obvious to a person of reasonable skill in the art based on the prior art. The four claims found unpatentable were 1, 6, 7, 12.

Because they were found unpatentable, those particular claims can no longer be enforced for infringement. However, all claims in the ‘111 patent that the PTAB determined were valid can still be enforced.

The ’111 patent is set to expire in December — 20 years since its issuance. Under an expired patent, a patent owner can seek past damages in court but is unable to get an injunction from a court to prevent use of that technology by another party.

“These decisions by the USPTO’s Patent and Trial Appeal Board underscore the strength of our intellectual property and further validate the merits of Motorola Solutions’ global litigation against Hytera to stop its improper and illegal behavior,” said Mark Hacker, Motorola Solutions general counsel and chief administrative officer. “We remain committed to vigorously pursuing our patent infringement, copyright infringement and trade secret theft lawsuits against Hytera as we continue developing unique, innovative products for our customers around the world.”

A Hytera official reiterated that the ITC had affirmed that the company’s new i-Series products were not found to infringe Motorola patents and accused Motorola of abusing the legal system.

“Despite Motorola’s press statements, not only do these patent decisions have zero effect on Hytera’s current products, customers or dealers, the PTAB invalidated key claims on a patent MSI knew all along is about to expire anyway,” said Hytera Vice President of Sales Tom Wineland. “It makes an educated industry observer seriously question the goals of MSI’s litigation.”

Motorola and Hytera have been fighting a wide-ranging legal battle during the past two years. An anticompetitive practices lawsuit Hytera filed against Motorola is pending in the Northern District of Illinois after being transferred from the District Court for New Jersey. A patent infringement lawsuit filed against Hytera by Motorola in the Federal Court of Australia is expected to go to trial in 2020. And two German courts have found that Hytera infringed Motorola Solutions patents and implemented injunctions.

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Comments
On 5/15/19, Manuel A Alvarez Sr said:
Unfortunately the only one that will come out winning are the lawyers.


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