Radio manufacturer Hytera has filed a petition at the US International Trade Commission (ITC) requesting review of a ruling issued by the body on 3 July which upheld rival Motorola Solution’s complaint of patent infringement against the company.
In the complaint, Motorola alleged that Hytera is unlawfully importing and selling two-way radio equipment and systems, and related software and components that infringe four of Motorola Solutions’ patents.
As part of the initial determination, Judge Mary Joan McNamara found that all four of the remaining Motorola Solutions’ patents under consideration are valid, Hytera has infringed them, and Motorola Solutions met the legal requirement of showing a “technical domestic industry” on three of the four patents.
Speaking in response to the ruling, a spokesperson for Hytera said: “Hytera's position remains that its products sold in the US do not infringe MSI's (Motorola Solutions Inc.) patents, and that the initial determination is incorrect.
“MSI originally asserted seven patents in its complaint but later withdrew three. (Judge) McNamara ruled that a limited number of claims in the four remaining patents at issue are infringed, but also determined that MSI did not satisfy the technical industry prong of the domestic industry requirement as to another of its patents and did not find Hytera to have violated the statute with respect to that patent.”
The spokesperson continued: “During proceedings in this case, before the period for factual discovery ended, Hytera had produced for (McNamara’s) consideration, documents and source code related to several new designs. In addition to asking the ITC to reverse the initial determination, Hytera has also petitioned the Commission to affirm that these latest products are not infringing.
“Hytera also learned in May of 2018 that the US Patent and Trademark Office's Patent Trial and Appeal Board has accepted three Hytera petitions to invalidate MSI's patents based on prior art.”
Vice president of Hytera Communications America (West) said Tom Wineland: "Hytera is confident that our designs for our next-generation DMR product portfolio do not infringe any of the asserted patents of MSI. MSI did not oppose our new designs based on six of the asserted patents.
"Hytera looks forward to resolving the series of nuisance litigations our competitor has filed against us. Hytera is focused on innovation and prefers to compete fairly in the marketplace rather than in the courtroom. Hytera is confident that our products do not infringe."
Speaking at the time of the original ruling, Mark Hacker, general counsel and chief administrative officer of Motorola Solutions, said: “Judge McNamara’s ruling validates our allegations, upholds the integrity of our intellectual property and rebukes Hytera for its unscrupulous and unlawful behaviour in wilfully infringing Motorola Solutions’ patents.
“While we consider the initial determination an important step, it is only one component of our global efforts to address Hytera’s systematic, brazen and egregious theft and infringement of our intellectual property.”
In a further communication from Hytera, the company states that: "...,Whatever the final decision of the ITC in this case, no customers who have purchased DMR products from Hytera need to stop using them or return them. Any ruling this November would not affect Hytera products or systems already sold to customers, including to independent dealers. The ruling would also not affect service for any Hytera products and solutions, including servicing equipment in the field."
Hytera's current petition before the ITC remains confidential by terms established by the Commission, which typically completes reviews within 120 days. Since the Commission has not issued its final decision, there is presently no constraint on the import or sale of any of Hytera’s products.
The news of Hytera’s appeal comes less than a day after the Regional Court of Mannheim ruled in favour of Motorola Solutions, in relation to a patent infringement complaint made against Hytera Mobilfunk in Germany.
Author: Philip Mason