U.S. International Trade Commission (ITC) members will review several key aspects of an administrative law judge’s initial determination that Hytera Communications infringed on patents held by Motorola Solutions and that certain Hytera products should not be imported into the United States, according to an ITC filing released yesterday.

Most observers of the case expected an ITC review of the July 3 initial determination from ITC Administrative Law Judge MaryJoan McNamara, but yesterday’s filing outlined the extent of the review and extended the target date for completion of the investigation to Nov. 16—ten days later than the original target date of Nov. 6.

ITC members will not review McNamara’s findings that Hytera products technically infringe four Motorola patents, three of which would be subject to remedial action. However, the ITC will review whether McNamara correctly decided that Hytera abandoned a potential licensing defense that at least two of the patents are “essential patents” to the DMR standard, so their use should not be considered infringements.

McNamara ruled that any licensing defense from Hytera was moot, because the company did not assert the matter initially in the case. In addition, McNamara struck from the record certain testimony during an evidentiary hearing from Hytera witness Robert Akl, who addressed the licensing issue. Both matters will be reviewed by the ITC.

“Hytera believes that its products marketed and sold to our many customers in the US do not infringe the patents asserted by MSI [Motorola Solutions],” Tom Wineland, vice president of Hytera Communications America (West), said in a prepared statement. “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.”

Motorola Solutions provided the following statement about the ITC review:

“Consistent with the findings of Administrative Law Judge MaryJoan McNamara, we are pleased that the ITC has indicated that it will not review numerous aspects of the ALJ’s determinations, including that Hytera infringes all four of Motorola’s asserted patents and that each of those patents is valid, further supporting our allegations and rebuking Hytera for its unscrupulous and unlawful behavior in willfully infringing Motorola Solutions’ patents," according to the Motorola Solutions statement. 

"We respect the Commission’s decision to review certain other aspects of the ALJ’s determinations and look forward to providing the ITC with the information necessary for its review. We are confident that the full ITC will uphold the exclusion and cease-and-desist orders recommended in the Initial Determination, including the two orders under review, in its Final Determination in November.”

ITC members also will review whether Hytera’s new redesigned products infringe any of the Motorola patents in question. McNamara found that one of the redesigned products still infringe on one Motorola patent—the patent that would not be subject to remedial action, according to the recommendation—but did not make a conclusive recommendation for any of the other three patents, according to the ITC filing.

If the Hytera redesigned products are deemed to be non-infringing, then Hytera could sell the new products in the United States, even if the ITC rules that legacy Hytera offerings could not be sold in the U.S. Meanwhile, all Hytera products are available to be sold in the U.S. at this time.

In addition, the ITC will review whether McNamara’s “adverse inference against Hytera” in finding that the China-based company indirectly infringed on Motorola patents was appropriate. McNamara determined that the Hytera “unquestionably copied” Motorola technology, reaching this conclusion based, in part, on three Hytera employees—all former Motorola employees who allegedly copied thousands of Motorola documents that were taken to Hytera—asserting the Fifth Amendment to avoid self-incrimination.

McNamara did not reach a conclusion whether Hytera dealers should be allowed to service and maintain customers’ product that infringe upon Motorola patents, and the ITC has asked for input on this issue.

Both Hytera and Motorola Solutions are required to submit briefs on these matters, as well as recommended remedies, by Sept. 18, with reply submissions due on Sept. 25.

Typically, the ITC commission makes its rulings within four months of an administrative law judge’s determination, with the ruling often becoming effective within a few days after the ruling is announced. However, the U.S. president—currently Donald Trump or a representative—has up to 60 days to review the ITC commission’s ruling and potentially overturn it, if the president deems it to be in the public interest.