Judge Denies Motorola Motion to See Hytera’s TETRA Source Code
Friday, April 19, 2019 | Comments

An Illinois judge denied a Motorola Solutions motion to compel Hytera Communications to provide a copy of Hytera’s source code for its TETRA products.

The motion was filed in the theft of trade secrets case that Motorola filed against Hytera in the U.S. District Court for the Northern District of Illinois in March 2017. Motorola has alleged that three of its former employees accessed and downloaded Motorola trade secrets and then went to work for Hytera, which used those trade secrets in its Digital Mobile Radio (DMR) products.

In its motion, Motorola said that it learned in February from documents provided by Hytera during discovery that Hytera’s TETRA products likely include the same Motorola source code that it alleges was used in Hytera’s DMR products. Motorola also asked the court to compel Hytera to provide sales and cost data for its TETRA product so that potential damages could be determined.

“Given these strong indicators that Hytera’s TETRA products, just like its DMR products, include the same stolen Motorola code, the actual TETRA source code will be highly relevant to confirm that fact, as well as the magnitude of Hytera’s use of Motorola’s code in its TETRA products,” Motorola’s motion said.

Magistrate Judge Jeffrey Cole disagreed with Motorola, ruling that TETRA was outside the scope of the case and Motorola’s motion was untimely. Cole handles procedural matters in the case on behalf of U.S. District Judge Charles Norgle, who is the presiding judge.

“Although Motorola has had TETRA-related information for some time, TETRA was never in the case, and indeed, Motorola has opposed any attempt by Hytera to even explore the subject on the ground that TETRA was not in the case,” Cole wrote in the conclusion to his order.

Cole pointed specifically to a January deposition when Motorola’s attorneys objected to Hytera’s attorneys attempting to ask a witness about TETRA products. At that time, Motorola’s attorneys argued that TETRA was outside the scope of the lawsuit, Cole wrote.

In its motion, Motorola argued that a sentence in a Hytera motion to extend the deadline for completion of discovery acknowledged that TETRA was part of the case.

“Motorola’s February 15, 2019, supplements to Hytera’s interrogatory Nos. 6(k) and 8(n) identify for the first time an entirely new category of products now accused of misappropriation or infringement, namely, TETRA products,” that sentence in Hytera’s motion read.

However, Cole determined that Motorola’s argument ignored the larger context around that one line of text and the true intent of Hytera’s motion.

“Carefully read, the brief’s focus was not so much on TETRA, as it was on what Hytera contended was Motorola’s misconduct in discovery,” Cole wrote. “… When the brief is read in its entirety, it makes clear that Hytera vigorously disagreed that the TETRA line of products was in the case.”

Additionally, Cole said the extended timeline for discovery that Motorola and Hytera eventually agreed to in the case did not include adequate time for discovery related to TETRA. Hytera initially requested in its motion that discovery be extended for several months, but the two parties instead agreed to extend it for just five weeks.

Motorola argued that it had agreed to the extended discovery period because it thought Hytera would be using that additional time to address the TETRA inquiries, as well as other existing discovery issues. The fact that Hytera agreed to the extension showed it acknowledged TETRA was part of the case, Motorola’s motion argued.

Cole, however, determined that the agreed upon extension time was too short to address both new TETRA issues and existing discovery issues. “Thus, in this case, agreeing to a brief, rather than an extended, extension of discovery supports that conclusion that the parties had agreed that TETRA wasn’t in the case, which is essentially what Kassandra Officer, counsel for Hytera stated at the hearing on the motion for TETRA discovery,” Cole wrote. “She recounted that a five-week extension — rather than a four month extension sought by Hytera — was negotiated based on the case as it was. That necessarily meant that TETRA discovery would not be part of the case.”

Motorola also argued that its motion was timely because as soon as it became aware that Hytera’s TETRA source code might contain Motorola’s source code, it included questions about it in its interrogatories — legal queries to another party in a case that must be answered under oath — to Hytera and even asked for the source code.

Motorola said the document that made it aware of its source code potentially being used in Hytera’s TETRA products came in a batch of documents provided by Hytera in December. Because of the large number of pages and documents, Motorola did not find that document until February, the motion said.

In the weeks that followed its questions about the TETRA products and request for Hytera’s TETRA source code, Motorola said it thought Hytera was collecting the requested information, but then Hytera argued that the TETRA products were outside of the lawsuit’s scope, Motorola’s motion said. It was at that time that Motorola filed its motion.

“Hytera’s failure, months ago, to identify its use of stolen Motorola source code in TETRA products in response to Motorola’s interrogatories explains the timing of Motorola’s response and further justifies the narrow TETRA discovery Motorola seeks,” Motorola’s motion said.

Cole determined that Hytera was not trying to hide anything from Motorola. Instead, he said, the fact that Motorola included 142 trade secret claims in the case has created a large number of documents — the December batch of documents provided by Hytera included 300,000 documents and more than 3 million pages — that take a while to go through and created some confusion for Hytera.

“In any event, it turns out that TETRA documents were produced as early as January 5, 2018, a year before Motorola acknowledges they were,” Cole wrote. “They were contained in a production on which Motorola now relies. At that time, Hytera had produced at least one TETRA document along the same lines as the one Motorola claims triggered its epiphany in February 2019. … Thus, Motorola had access to at least similar and sufficient information regarding TETRA a year earlier than it now claims.”

Motorola and Hytera have been engaged in a wide-ranging legal battle that has spanned more than two years and numerous courts across multiple countries. In November, the U.S. International Trade Commission (ITC) released a final determination finding that Hytera had infringed several Motorola patents, but Hytera’s redesigned products do not infringe the patents. Two German courts also ruled that Hytera had infringed Motorola patents. A patent infringement case in Australia is expected to go to trial in 2020.

The trial in the Illinois theft of trade secrets case is scheduled to begin Nov. 1.

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