Judge Denies Hytera Motion to Dismiss Motorola Patent Infringement Case
Wednesday, August 21, 2019 | Comments

An Illinois district judge denied a motion from Hytera Communications to dismiss a patent infringement suit brought against it by Motorola Solutions in the U.S. District Court for the Northern District of Illinois.

Hytera had asked District Judge John Robert Blakey to dismiss the case, arguing that the venue was not appropriate and Motorola failed to state a claim. Blakey rejected both of those arguments in denying the motion.

Motorola’s complaint argued that Hytera had lured away three former Motorola employees who had downloaded proprietary Motorola documents and brought them to Hytera where they were implemented in Hytera Digital Mobile Radio (DMR) products. Motorola’s complaint alleges that Hytera products infringe seven Motorola patents.

Hytera argued that the venue — the Northern District of Illinois — was inappropriate for the case because Hytera did not have a regular and established place of business in the district.

Under patent law, to bring a suit in a particular venue, the defendant must either reside in that judicial district or the defendant must have committed acts of infringement in and have a regular and established place of business in that district.

Hytera West, the U.S. subsidiary of Hytera, is headquartered in California so Motorola acknowledged that the first criteria did not fit. However, Motorola argued that Hytera West has a warehouse and repair facility in Schaumburg, Illinois, that meets the second criteria.

However, Hytera argued that Hytera West signed the lease for the facility on March 5, 2017, or nine days before Motorola filed its lawsuit, and did not begin occupying that facility until April 1, 2017. Therefore, Hytera West did not have an established place of business in the district when the lawsuit was filed, Hytera argued.

Blakey rejected that argument, noting that patent infringement is a continuing tort and that “each act of infringement gives rise to a separate cause of action.” Therefore, while Hytera West did not occupy the facility when the suit began, infringing actions could have occurred at the facility following the filing of the suit, meaning the venue is appropriate, Blakey ruled.

Motorola’s original complaint alleged two forms of infringement: direct infringement and induced infringement. In the complaint, Motorola argued that the direct infringement claim arose from Hytera implementing Motorola’s proprietary information into its products. Meanwhile, the induced infringement claim comes from Hytera “actively inducing third-party purchasers, distributors and consumers to directly infringe the patents in the U.S.,” the complaint said.

In its motion to dismiss, Hytera argued that a direct infringement claim relies on allegations that Hytera imported the infringing products since Hytera operates outside of the U.S., and Motorola had failed to allege importation of the products. Hytera said that it serves as a shipper and not an importer, with its subsidiaries and dealers as the likely importers.

Blakey also rejected this argument, ruling that at this stage in the proceedings, Motorola does not have to prove its case but instead must prove the plausibility that Hytera may have imported the infringing products into the U.S., which Blakey determined Motorola had done.

“… this court cannot, at the pleadings stage, determine whether Hytera Corporation serves as a ‘shipper’ rather than an ‘importer,’ as a matter of law,” Blakey wrote. Blakey ruled similarly on the induced infringement claim.

“We believe Hytera continues to infringe Motorola Solutions’ patents, including with its new i-Series products, in an attempt to illegally profit from our intellectual property,” Motorola General Counsel Mark Hacker said in a statement. “Due to our successful litigation to date, Hytera removed three critical features covered by our patents. With these proprietary technologies removed, we believe the i-Series is already a vastly inferior product that is unable to meet customers’ business and mission-critical needs. We look forward to building on our success in holding Hytera accountable for its additional infringement with this case.”

The case is one of two lawsuits that Motorola brought against Hytera in March 2017. The other case, focused on theft of trade secrets and copyright infringement, is scheduled for trial in early November.

The patent infringement case was stayed pending the outcome of a similar patent infringement case Motorola also filed with the U.S. International Trade Commission (ITC) in 2017. Last year, the ITC determined that Hytera had infringed three Motorola patents. Those three patents are among the seven patents involved in the Illinois case.

Following the ITC’s decision in November, Hytera said that it was ceasing sales of its existing products and introduced the i-Series products, which the ITC determined do not infringe the three Motorola patents involved in that case. Motorola contends that the i-Series products infringe four patents involved in the Illinois patent infringement case.

"Hytera denies the claims asserted by Motorola Solutions and is vigorously defending the case," a Hytera spokesperson said. "The court completely rejected Motorola Solutions’ request for a schedule that would allow only minimal discovery. Contrary to MSI’s continued misinformation campaign, Hytera’s i-Series products do not infringe Motorola Solutions’ patents.

Contrary to MSI’s continued misinformation campaign, Hytera’s i-Series products do not infringe Motorola Solutions’ patents," the spokesperson added. "The i-Series incorporates many new features that Motorola does not have available for its products, such as full duplex calling, single frequency repeater and optimized PTT. Motorola’s misinformation campaign seeks to try and maintain its monopoly in the marketplace by litigious means. Hytera will vigorously defend itself from this anti-competitive behavior and take appropriate legal action when necessary, including pursuing a patent infringement claim against Motorola regarding adaptive audio."

While a trial has not been scheduled in the Illinois patent infringement case yet, discovery in the case is set to conclude May 18, 2020.

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