Hytera, Motorola Disagree on Royalty Plan, Process
Wednesday, January 20, 2021 | Comments

In courts document, attorneys for Hytera Communications and Motorola Solutions told a district judge that they have not reached agreement on issues surrounding a royalty for Hytera’s continued use of Motorola trade secrets.

In February, a jury for the U.S. District for the Northern District of Illinois determined that Hytera had stolen and integrated Motorola trade secrets in its Digital Mobile Radio (DMR) products and awarded Motorola $764.6 million in damages, which Norgle has since reduced to $543.7 million.

Following that decision, Motorola asked the court to implement a permanent injunction that would prevent Hytera from importing, selling or distributing products that include Motorola’s trade secrets. Norgle denied that motion but instead awarded Motorola a “reasonable royalty” for Hytera’s continued use of the trade secrets.

Norgle gave Hytera and Motorola until January 14 to meet and reach an agreement on issues related to the royalty. According to a January 14 filing by Motorola, the two parties met on January 7 but did not reach any agreements on the royalty and did not meet again after that.

“Motorola outlined the terms it proposes to resolve the royalty, including compromise proposals on the proposed royalty amounts,” Motorola said in its filing. “Hytera did not provide its position on the substance of Motorola’s proposals, instead declining Motorola’s offer to meet and confer again before the court’s ongoing-royalty-plan deadline and indicating that Hytera is not available to continue discussions on the substance of the royalty issue until January 19. As a result, Motorola is unable to inform the court of any agreements reached between the parties on the merits of the royalty issue at this time.”

In a January 14 filing of its own, Hytera acknowledged that the parties had been unable to reach an agreement but were scheduled to meet again January 19. At press time, it was unclear what the outcome of that January 19 meeting was or if it occurred.

“Pending those further discussions, the parties have agreed that further briefing is appropriate but have not been able to reach an agreement as to the sequencing of the parties’ briefing,” Hytera’s filing said.

Hytera proposed that each company submit an opening brief on the royalty issue by January 29 and then each company file a response brief on February 17. Motorola proposed a briefing schedule that would include opening briefs but would give only Motorola and not Hytera a response brief.

“Hytera’s proposal ensures that both sides will have a fair and equal opportunity to present their respective positions to the court and to respond to the other side’s positions,” Hytera’s filing said. “Unlike in standard motion practice, where one party seeks affirmative relief, and the other party opposes that request, here, both sides intend to present comprehensive affirmative positions supported both by the existing record and by expert declarations.”

Hytera argued that its proposal would allow each side to present its argument and then critique each other’s arguments before the court makes a decision on the issue.

“Motorola’s proposal would give Motorola two briefs, while Hytera only gets one,” Hytera said in its filing. “It would give Motorola the chance to unilaterally reframe the existing record to support its position, while leaving Hytera, in just 15 pages, to rebut that framing, critique Motorola’s approach, present its own approach and explain the relative merits of Hytera’s approach. And still under Motorola’s proposal, Motorola would get the final word on the issue.”

Hytera also noted that prior to this, Motorola had already submitted two briefings on the royalty issue.

“It would be manifestly unfair to allow Motorola another two briefs on the issue, while Hytera gets just one,” Hytera’s filing said.

Motorola proposed that Hytera would not get an opening brief, and an opening brief from Hytera would be due on January 26. Hytera would then file a response brief to that by February 10, and Motorola would respond to that brief in February 17.

“Further, the only supporting declarations would be from the parties’ respective damages experts, and no hearing is requested; based on the meet and confer, we understand that Hytera agrees with these aspects of Motorola’s proposal (i.e., the damages expert declarations and not requesting a hearing),” Motorola’s filing said.

Motorola argued that its proposed briefing schedule fits in with how it was previously done in the case.

“Motorola’s proposal for a traditional staggered briefing schedule is consistent with nearly other briefing in this case and will crystallize the disputed issues in the most efficient and effective manner,” Motorola’s filing said. “As the party seeking relief, Motorola should go first to explain the relief it is seeking, Hytera can then provide its response to that request and Motorola can then address Hytera’s response. This efficient process will help crystallize the issues before the court.

“Although Hytera claimed during the meet and confer process that a staggered briefing schedule would be unfair, Hytera itself acknowledged the benefits of the approach proposed by Motorola and requested a staggered briefing schedule for the findings of fact and conclusions of law in response to the court’s JMOL order for these vary reasons,” the filing said.

Motorola described Hytera briefing as inefficient because of the large number of briefs and would result in multiple proposals.

“Hytera’s proposal is inefficient, as it will result in the submission of entirely separate royalty proposals from Motorola and Hytera, making it more cumbersome to identify some the issues in the dispute, and likely multiply the disputed issues,” Motorola’s filing said. “… Hytera has thus far refused to crystallize the issues in dispute despite Motorola’s efforts to do so. In short, a staggered briefing schedule will ‘lead to more responsive briefing than a blind, simultaneous system of cross-motions on the same issues.’”

At the press time, Norgle had not ruled either briefing schedule. Because the companies could not come to an agreement on issues relating specifically to the royalty, Norgle will likely determine the amount and conditions of the royalty.

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On 2/9/21, Manuel A Alvarez Casado said:
It will be nice if these two companies agree to something for Hytera side I will say that Motorola has more lawyers than Engineers. The Lawyer s fees are exorbitant so......

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