Motorola Asks for Review of Hytera Patent’s Validity
Thursday, August 02, 2018 | Comments

Motorola Solutions asked the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeals Board (PTAB) to review the validity of a Hytera Communications patent. Motorola argued that the patent is invalid because the claimed innovation would have been obvious to a person of ordinary skill in the art (POSITA) at the time the patent was issued.

The patent at issue is U.S. Patent No. 9,183,846, which describes “a method for adaptively adjusting an acoustic effect and an apparatus thereof.” Last year, Hytera sued Motorola in the U.S. District Court for Ohio, alleging that Motorola had infringed that patent. According to the patent, it describes a method to adjust sound emitted by a two-way radio in response to ambient noise around the device. It does this with two possible adjustments to the device’s output. In response to ambient noise, the device can adjust audio output by changing the volume and changing the frequency response of the device by boosting either the treble or bass frequencies.

One key of the patent is that it boosts treble in a noisy environment and bass in a quiet environment as a way of solving several problems with automatic adjustment of audio output under conventional methods.

In its request, Motorola argued that the claims of the patent “do nothing more than recite well-known solutions to well-known problems.”

Motorola pointed to two patents issued before the ‘846 patent that it said show that the methods contained in the ‘846 patent would be obvious to a POSITA.

In its filing, Motorola identified a POSITA as someone “with at least a bachelor’s degree in electrical engineering, computer engineering or computer science with at least two to three years of experience in audio or speech signal processing and communications, or an equivalent degree and/or experience.”

The two prior patents Motorola cited were U.S. Patent No. 2006/0188104, also referred to as the Poortere patent in the filing, and U.S. Patent No. 6,011,853, also referred to as the Koski patent in the filing.

The Poortere patent describes a “method and apparatus for conditioning audio in response” to environmental noise, while the Koski patent describes “a method and device for the equalization of an audio signal in a mobile phone to improve the intelligibility of transmitted speech.”

Hytera applied for the ‘846 patent in May 2014 and was issued the patent in July 2015. Both the Koski and Poortere patents were issued prior.

Motorola argued that the technology described in both the Poortere and Koski patents would make the claims of the ‘846 patent obvious to a POSITA. Additionally, a POSITA would likely know to combine the claims of the Poortere and Koski patents because they address the same issue and address conditioning of an audio signal by multiplying it by factors based on ambient noise, Motorola said.

Thus, the claims of the ‘846 patent were obvious in the prior art, making Hytera’s patent invalid, Motorola argued.

“We find it interesting that MSI (Motorola Solutions Inc.) has needed very nearly a full year to respond,” said Tom Wineland, vice president of Hytera Communications America (West). “Our filing in the district court in Ohio was in August of last year. It’s hard not to interpret this move as yet another legal maneuver by MSI. Hytera believes our patent is valid and infringed by MSI.”

Motorola declined to comment beyond its filing.

The USPTO PTAB has not yet released a decision on whether or not to institute a review of the patent.

Motorola’s request is another chapter in a wide-ranging legal battle between Hytera and Motorola that began in March 2017. Motorola filed patent infringement and theft of trade secrets cases in the U.S. District Court for the Northern District of Illinois and followed that up with a patent infringement case with the U.S. International Trade Commission (ITC).

Motorola also filed patent infringement suits in the German Regional Courts of Dusseldorf and Mannheim and the Federal Court of Australia. Hytera responded by filing the Ohio patent infringement suit and an anticompetitive practices lawsuit in the U.S. District Court of New Jersey.

Earlier this year, Hytera asked the USPTO PTAB to review the validity of four Motorola patents involved in the Illinois cases. The PTAB instituted a review of three of those patents.

In July, the U.S. ITC initially determined that Hytera infringed on claims of some Motorola patents, and the Regional Court of Mannheim found that Hytera infringed on a Motorola patent.

Hytera has requested review of the ITC case and plans to appeal the Mannheim decision.

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