Hytera Files Motion to Dismiss Theft of Trade Secrets Case
Thursday, June 01, 2017 | Comments

Hytera Communications filed a motion May 31 to dismiss a theft of trade secrets case brought against it by Motorola Solutions in the U.S. District Court for the Northern District of Illinois. The motion cites the timeline before Motorola Solutions filed its case and says the information from the U.S.-based manufacturer is vague and ambiguous.

A few days earlier, Hytera denied the allegations levied against it in its first response to a patent infringement complaint Motorola Solutions filed against it with the U.S. International Trade Commission (ITC).

All told, Motorola has filed four legal cases against Hytera this year. In addition to the ITC and trade theft secrets cases, the company filed a patent infringement case in the U.S. District Court for the Northern District of Illinois and a patent infringement complaint in the Regional Court of Dusseldorf in Germany.

A stay was placed on the patent infringement case in Illinois pending the outcome of the ITC investigation.

In the motion to dismiss the theft of trade secrets case, Hytera’s attorneys argued that the case should be dismissed for several reasons including:
• The theft of trade secrets that Motorola alleged in its complaint occurred more than five years ago, meaning that under the Federal Defense of Trade Secrets Act and the Illinois Trade Secret Act, the statute of limitations has passed on those actions. The motion argued that there was enough publicly available information for Motorola to notice the alleged acts and bring legal action several years ago and argued that Motorola did not explain why it decided to file the lawsuit now.
• Motorola’s complaint is vague and ambiguous, making it difficult for Hytera to prepare a proper response. Specifically, the motion argues that the Motorola complaint does not adequately, by legal standards, identify the trade secrets at issue in the case and that the few features highlighted as potential trade secrets in the complaint were described in publicly available documents.

In a follow-up filing to the motion, Hytera’s attorneys said they planned to appear before Judge Samuel Der-Yeghiayan June 7 to present the motion to dismiss.

In its response to the ITC case, Hytera also cited vague and ambiguous information that made it difficult to respond to the complaint.

“The complaint and supporting documentation lack clarity and are insufficient to demonstrate that any of Hytera’s products infringe any claim of the asserted patents,” the company’s filing said. “Because discovery has only recently started, Hytera provides this response without the benefit of complete discovery, including contention discovery, necessary to fully understand the nature and scope of Motorola’s allegations.”

In its original complaint, Motorola asked the ITC to investigate its infringement claims, release an exclusion order to halt the importation of the infringing products, and release a cease-and-desist order to stop Hytera from marketing and selling the infringing products in the U.S.

In its response, Hytera denied Motorola’s specific patent infringement allegations and offered several defenses against the claims. Hytera said the patents cited in the case are invalid because they do not meet the “conditions of patentability” established in Title 35 of the United States Code, but the filing did not expand on how those patents do not meet those standards.

The company also argued that the relief Motorola requested from the court is not in the public interest because it “would adversely affect the public welfare, competitive conditions and the United States consumer.”

Hytera’s final arguments in the response focused on consent and licenses around the Digital Mobile Radio (DMR) standard.

“Complainants’ claims for relief are barred in whole or in part pursuant to actual licenses or under the doctrine of implied license,” the response said. “For example, to the extent any of the asserted patents is essential to practice ETSI Digital Mobile Radio (DMR) standards, including ETSI TS 102 361-1 and ETSI TS 102 361-2, Hytera has a license, express or implied, from Motorola for such patent.”

Additionally, Hytera argued that Motorola participated in the development of the DMR standard but did not disclose any of its patents as essential intellectual property rights (IPRs) during the development of the standard.

The European Telecommunications Standards Institute’s (ETSI) IPR policy describes an essential IPR as “an IPR, which has been included within a standard and where it would be impossible to implement the standard without making use of this IPR.” In these instances, the only way to avoid violating the IPR is to request a license from the owner, according to the ETSI policy.

Hytera asked the ITC to deny Motorola’s requests, find that Hytera did not infringe any of the patents and terminate the investigation, among other requests.

The ITC began its investigation at the end of April. In mid-May, Administrative Law Judge Mary Joan McNamara set an 18-month target of Nov. 6, 2018, for concluding Motorola’s complaint.

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