ITC Announces Review of Parts of Hytera-Motorola Initial Determination, Judge’s Orders
Wednesday, September 05, 2018 | Comments

The U.S. International Trade Commission (ITC) announced a review of parts of an administrative law judge’s (ALJ) initial determination, which found Hytera Communications infringed claims of four Motorola Solutions patents. The commission will also review a pair of orders ALJ Mary Joan McNamara released during the investigation.

Additionally, the ITC moved its target completion date for the investigation back 10 days to November 16.

Motorola filed suit with the ITC in March 2017, alleging that Hytera had infringed multiple patents. In July, McNamara initially determined that Hytera had infringed four Motorola patents and recommended that the ITC place exclusion and cease-and-desist orders against Hytera that would prevent it from importing, selling and distributing the infringing products in the United States.

As part of her determination, McNamara determined that while Hytera products infringed one of the Motorola patents, U.S. Patent No. 8,116,284, it did not constitute a violation under Section 337 of the Tariff Act of 1930 because Motorola did not meet the technical prong of the law’s domestic industry requirement. Section 337 governs investigations into unfair practices in importation.

Hytera requested that the ITC review the initial determination, arguing that McNamara improperly excluded evidence and arguments that Hytera provided on several issues. The two orders under review by the ITC covered the exclusion of that evidence and those arguments.

As part of the investigation, Hytera also submitted designs for redesigned products and asked the ITC to review whether those new products infringed on the Motorola patents.

Specifically, the ITC’s review will look at five issues:
• McNamara’s Jan. 26 order that granted a Motorola motion to preclude Hytera’s defense that it had licensed some of the technology involved in the suit under “fair, reasonable and nondiscriminatory” terms
• The judge’s May 18 order that struck portions of testimony from Hytera’s expert witness
• The finding in the initial determination that Hytera’s redesigned products infringe claims of the ‘284 patent
• The determination’s finding that there is not enough evidence to conclusively determine that the redesigned products infringe Motorola’s U.S. Patent 7,729,701, and that the initial determination did not address whether the redesigned products infringe Motorola’s U.S. patents No. 7,369,869 and No. 8,279,991
• The determination’s finding that three Hytera employees accused of stealing trade secrets from Motorola repeatedly using their Fifth Amendment right against self-incrimination during depositions reflected negatively on Hytera

In reviewing the initial determination, the ITC is not beholden to McNamara’s decision and can enter a different determination if it finds the facts support such a conclusion.

“Hytera believes that its products marketed and sold to our many customers in the U.S. do not infringe the patents asserted by MSI (Motorola Solutions Inc.),” said Tom Wineland, vice president of Hytera Communications America (West). “We are particularly pleased at the forecast scope of the review, which includes the commission’s reviewing why MSI would have asserted patents that Hytera had previously licensed from MSI on fair, reasonable and nondiscriminatory terms.”

Because no sanctions have been placed on Hytera, it can continue to import and sell the products at issue in the case in the U.S. during the review process. Affected products include a variety of Hytera Digital Mobile Radio (DMR) radios and a pair of DMR repeaters. A 60-day period in which U.S President Donald Trump or a representative can review the decision and disapprove the ITC’s determination may follow the release of the final determination.

"Consistent with the findings of Administrative Law Judge Mary Joan McNamara, we are pleased that the ITC has indicated that it will not review numerous aspects of the ALJ’s determinations, including that Hytera infringes all four of Motorola’s asserted patents and that each of those patents is valid, further supporting our allegations and rebuking Hytera for its unscrupulous and unlawful behavior in willfully infringing Motorola Solutions’ patents," a Motorola spokesman said. "We respect the Commission’s decision to review certain other aspects of the ALJ’s determinations and look forward to providing the ITC with the information necessary for its review. We are confident that the full ITC will uphold the exclusion and cease-and-desist orders recommended in the initial determination, including the two orders under review, in its final determination in November.

As part of its review, the ITC is seeking public interest statements from Hytera and Motorola, interested government agencies and other interested parties. The statements should focus on potential sanctions or remedies, the case’s impact on the public interest and bonding.

Submissions must be filed by Sept. 18, and reply submission must be filed by Sept. 25. Information on filing can be found here.

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