Hytera Communications files objection to proposed ITC relief sought by Motorola Solutions

Hytera Communications has asked the U.S. International Trade Commission (ITC) to refrain from ordering remedies sought by Motorola Solutions in its patent-infringement case, maintaining the company has not violated patents and that prohibiting Hytera from selling and servicing certain two-way radio equipment in the U.S. would not be in the public interest.

“The Commission should find no violation of Section 337 [regarding patent infringement] occurred,” according to Hytera Communications’ filing on Monday. “If the Commission finds otherwise, remedial orders excluding Hytera’s products would adversely affect the public interest and therefore should not issue. At most, the Commission should consider a narrowly tailored remedy, including a possible delay in any remedial orders to allow Hytera a transition period to mitigate the harm on the public.”

Last month, Administrative Law Judge MaryJoan McNamara issued a “final initial determination” in the case, recommending recommended that the ITC prohibit patent-infringing Hytera products from being imported into the U.S. and issue a “cease and desist” order that would prohibit infringing Hytera products from being sold or marketed in the U.S. However, none of those remedies could become effective until the ITC makes its ruling, so Hytera can import and sell its products in the U.S. in the meantime.

ITC commissioners are expected to issue its determination on the matter by Nov. 6. If the ITC rules against Hytera, any remedy likely would become effective by early next year.

If that scenario becomes reality, Hytera filing claims that an abrupt halt to the company’s ability to sell and service patent-infringing equipment in the U.S. would “harm public health, safety or welfare,” according to the filing.

“Hytera’s products are used in safety-related venues, such as schools, hospitals, public events, construction sites, and emergency situations,” the Hytera filing states. “Individuals in those venues and settings must coordinate and communicate quickly and securely to provide essential measures. Hytera’s customers have a continuing need to use their existing infrastructure, one they have already developed, know, and understand. Motorola’s products are different from Hytera’s products, which makes it difficult to seamlessly interchange products within the different systems.

“Any order that prevents Hytera’s customers from buying additional (new or replacement) devices or continuing to use and repair their existing communications devices may prevent those customers from providing crucial safety services. Such an order could require purchase of new systems using funds they may not have. If Hytera cannot service or troubleshoot problems that develop, critical safety measures may lapse. In short, excluding Hytera’s products would harm public safety.”

Hytera asserts that an ITC order mirroring Motorola Solutions’ requested relief to have remedies become effective soon after the order is issued would harm competition in the marketplace and would create issues for Hytera customers’ ability to service and repair their LMR systems.

“Preventing consumers from having their current Hytera products serviced and repaired indisputably harms them,” the filing states. “Only Hytera is able to repair them. The costs of implementing products would harm consumers.” Any order excluding Hytera devices is likely to maintain Motorola’s monopoly without any alternative vying for a measurable portion of the market.”

​Hytera Communications has announced new products that the company claims do not infringe upon Motorola Solutions’ patents, although Hytera officials have declined to state that the new products would execute all of the functions performed by the disputed patented technology. Hytera said that the ITC should delay the effective date of any remedy until Hytera’s new products can be provided to customers as an alternative.

“Any remedial orders should allow Hytera to introduce its new designs to the marketplace to ensure consumers can benefit. Assuming Hytera is free to import its new designs—an issue Hytera has raised for review by the Commission—Hytera could supply its new designs immediately,” the Hytera filing states.

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—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.

If ITC commissioners decide not to review the determination, McNamara’s recommendation that Hytera be prohibited from importing and selling the identified DMR product would become the rule of law, subject to a potential presidential review by Trump. If the ITC commissioners do not review the case, the ruling could become effective much earlier than Nov. 6.

If ITC commissioners choose to review the case, they would consider McNamara’s recommendation and the evidence from the proceedings in the matter, but the commissioners are not bound by McNamara’s determination that Hytera should be prohibited from importing and/or selling products associated with the alleged patent infringement. ITC commissioners can reach a different finding than the administrative law judge, suggest a different remedy or return the case back to McNamara, according to multiple sources.

An ITC ruling that reverses McNamara’s findings would let Hytera Communications continue to sell its current product portfolio in the United States.

An ITC commission ruling against Hytera Communications that calls for the company to stop importing patent-infringing goods into the U.S. or being sold in the country typically would become effective with a few days of the ruling being announced.

Despite this effective date, the Hytera products theoretically could continue to be imported and sold in the U.S. during the 60-day presidential review. However, during this time, any sales could be subject to a bond—sometimes as much as 100% of the product’s value—that would be paid to the complainant, which is Motorola Solutions in this case. As a practical matter, such a bond often discourages the company that is being penalized from trying to sell infringing products in the U.S. during this time, according to a source familiar with ITC proceedings.

McNamara’s determination recommends the inclusion of such a bond, if the matter reaches the presidential-review stage.

Sources familiar with the Hytera-Motorola Solutions dispute indicate that customers with Hytera equipment and systems that utilize any of the infringing patented technologies would be able to continue using their existing systems, even if the ITC and President Trump uphold McNamara’s findings and recommendations.