USITC sides with Motorola in Hytera patent dispute

The US International Trade Commission (ITC) has upheld allegations of patent infringement against Hytera Communications, in the latest development in the company’s ongoing patent war with Motorola Solutions.

The ITC issued its initial determination (pdf) on Tuesday, July 3.

Communications company Motorola filed the patent infringement complaint against China-based Hytera at the ITC in March 2017.

Motorola initially accused the radio manufacturer of infringing seven US patents which cover two-way radio equipment systems and related software. It later withdrew three of the patents asserted against Hytera.

Motorola’s complaint said Hytera infringed the patents through products such as Hytera BD302, BD502, PD362 and PD412. It asked the ITC for a permanent exclusion order against Hytera, a permanent cease-and-desist order, and any other relief that the ITC deemed just and proper.

Earlier this week, Administrative Law Judge Mary Joan McNamara determined that a number of claims in the four patents asserted by Motorola are valid and have been infringed by Hytera.

However, she determined that none of Motorola’s products use one of the four patents asserted, meaning that Motorola failed to meet the legal requirement of showing a “technical domestic industry” on that patent.

McNamara recommended that an exclusion order be made to prevent the importation of products infringing the three remaining patents.

A final determination is scheduled to be issued by November 6 this year.

Mark Hacker, general counsel and chief administrative officer at Motorola, said the decision “upholds the integrity of our IP and rebukes Hytera for its unscrupulous and unlawful behaviour in wilfully infringing Motorola’s patents”.

Hytera said it is “disappointed” with McNamara’s initial determination, and will ask the ITC “to review and reverse this decision as “we believe our products do not infringe our competitor’s asserted patents”.

As the ITC has not issued a final decision, Hytera added that there is not currently a ban on the importation or sale of any Hytera products.

Hacker noted that the ITC complaint “is only one component of our global efforts to address Hytera’s systematic, brazen, and egregious theft and infringement of our IP”.

In addition to the ITC complaint, Motorola filed a patent infringement and trade secret suit against Hytera at the US District Court for the Northern District of Illinois last March, arguing that Hytera had wilfully infringed the same seven patents.

Motorola then filed patent infringement suits against Hytera at the Regional Court of Düsseldorf and the Regional Court of Mannheim in Germany, in April and July respectively, alleging that Hytera misappropriated Motorola’s trade secrets.

In response, Hytera filed its own infringement suit against Motorola at the US District Court for the District of Ohio in August. The Chinese company claimed that Motorola’s Mototrbo xpr 7550e device contains technology which infringes three US patents related to sound-adjusting technology.

Hytera then accused Motorola of engaging in anti-competitive practices in a complaint filed at the US District Court for the District of New Jersey in December.