US International Trade Commission to Review Determination Favoring Motorola Solutions in Infringement Dispute

Global land mobile radio communications provider Hytera Communications Corporation Limited and its US subsidiaries Hytera America, Inc. and Hytera Communications America (West), Inc. said that they have learned that the US International Trade Commission (ITC or the Commission) will review-in-part the Final Initial Determination (ID) issued on 3 July 2018 by an ITC Administrative Law Judge (ALJ) that certain features in Hytera's digital mobile radio (DMR) products sold in the US infringe some claims in patents of Motorola Solutions, Inc. (MSI).

Hytera had petitioned for the Commission's review on 17 July 2018, citing errors in the ID and arguing that the Commission had reasonable grounds to review substantial elements of it. The ITC issued its Notice of Review on 4 September 2018 and will postpone its final determination to 16 November 2018. While the ITC conducts its review, there continues to be no ban on the importation into or sale in the U.S. of any Hytera products.

"We are pleased that the Commission accepted our petition and we look forward to its final determination with respect to the earlier Initial Determination," said Tom Wineland, Vice President of Hytera Communications America (West), Inc., on announcing the ITC's decision.

The ITC will review-in-part the final ID, including Order No. 38 precluding Hytera from presenting its licensing defense and Order 47 striking certain expert testimony from Hytera at the evidentiary hearing. The Commission will also review the ID's finding that Hytera’s redesigned products infringe claims in MSI's U.S. Patent No. 8,116,284 ("the ’284 patent"), its application of an adverse inference with respect to Hytera's employees having individually chosen to exercise their Fifth Amendment rights, and its finding that insufficient record evidence exists to conclusively determine whether any of Hytera's redesigned products infringe claims in U.S. Patent No. 7,729,701 ("the ’701 patent") and the lack of an express finding on this issue with respect to MSI's U.S. Patent No. 7,369,869 ("the ’869 patent") or 8,279,991 ("the ‘991 patent").

During the ITC investigation, Hytera produced documents and source code related to its new designs to obtain a determination from the ALJ. In asking the ITC to review and reverse the ALJ's initial determination, Hytera petitioned the Commission to review and determine whether these latest redesigned products are not infringing. The Commission will revisit the ALJ's decision with respect to these redesigned products.

"Hytera believes that its products marketed and sold to our many customers in the US do not infringe the patents asserted by MSI. We are particularly pleased at the forecast scope of the review, which includes the Commission's reviewing why MSI would have asserted patents as infringed that Hytera had previously licensed from MSI on fair, reasonable, and non-discriminatory terms," says Hytera's Wineland.

It is common for companies competing in the high-technology sectors to agree to shared standards and for companies to license to and from one another certain so-called "standard-essential" patents on terms described as "fair, reasonable, and non-discriminatory" (FRAND). Two of the patents asserted by MSI against Hytera were for technology that Hytera previously had licensed from MSI on such FRAND terms.

"Hytera is focused on innovation for our many customers, in the US and worldwide. We look to compete fairly in the marketplace and to provide high-quality products with a compelling value proposition," adds Wineland. "We look forward to the disposition of this case at the ITC and to resolving the nuisance litigations our competitor has filed against us."

The case at the ITC is In the Matter of Certain Two-Way Radio Equipment and Systems, Related Software and Components Thereof (Inv. No. 337-TA-1053), based on a complaint filed by Motorola Solutions on 29 March 2017. The ITC announced its vote to institute a Section 337 investigation on 28 April 2017. Shenzhen, P.R.C.-based Hytera Communications Corp. Ltd., Miramar, Fla.-based Hytera America, Inc., and Irvine, Calif.-based Hytera Communications America (West), Inc. are respondents.