Administrative law judge Mary Joan McNamara of the US International Trade Commission (ITC) has issued a notice of initial determination, in its investigation of the patent infringement complaint filed by Motorola Solutions on March 29, 2017 against Hytera, which is favourable towards Motorola Solutions.

“I have found that complainant Motorola Solutions has proven by a preponderance of evidence that respondents Hytera Communications, Hytera America and Hytera Communications America

have violated subsection (b) of Section 337 of the Tariff Act of 1930,” said judge McNamara in her initial determination.

“I have found that Hytera has not proven by clear and convincing evidence that any of the asserted claims of any of the identified patents are invalid…

She also “recommended that a cease and desist order and a limited exclusion order with a

certification provision be issued against each of the Hytera respondents…”

A final determination by the ITC is scheduled to be issued by 6 November, 2018, which will then be followed by a 60-day presidential review period. Should President Trump not specifically disapprove the ITC's determination within that period, it then becomes final.

In the complaint, Motorola Solutions 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 – though a Hytera spokesperson notes that Motorola Solutions had “originally asserted seven patents in its complaint but later withdrew three of them.”

As part of the initial determination, judge 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.

A release issued by Motorola Solutions states that the four remaining patents covered by the complaint “…pertain to technologies central to the operation of Hytera’s professional and commercial radio products available today.”

However the Hytera spokesperson said that: “… Hytera has developed new products, which Hytera also believes do not infringe any of the asserted patents and which we previously presented to the ITC for its consideration. We are confident our new products do not infringe our competitor’s asserted patents.”

“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,” said Mark Hacker, general counsel and chief administrative officer of Motorola Solutions.

“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.”

Hacker continued, “Motorola Solutions has a long and distinguished track record of innovation with an extensive portfolio of approximately 5,000 patents. We are committed to vigorously defending our valuable intellectual property as we continue to drive innovation for our customers. We greatly appreciate the diligent work undertaken by judge McNamara and the ITC staff during this investigation, and we are confident that the full ITC will uphold this decision and enter a final determination consistent with today’s findings.”

The Hytera spokesperson said: “…Hytera is disappointed with this initial determination. We will ask the [International Trade] Commission to review and reverse this decision. We believe our products do not infringe our competitor's asserted patents and will seek to demonstrate this to the Commission.

“Importantly, since the Commission has not issued its final decision, there is no ban on the importation or sale of any Hytera products…”

“Innovation is the core value of Hytera. We will continue to focus on providing innovative, high-quality, cost-effective, and reliable products and solutions for our dealers and customers here in the US, as we do around the world.”

Author: Sam Fenwick