Split decision? Hytera, Motorola Solutions both declare victory in wake of ITC patent ruling

Officials for both Hytera Communications and Motorola Solutions declared victory after the U.S. International Trade Commission (ITC) yesterday issued its final determination regarding a lengthy patent dispute between the two companies, with Hytera officials indicating how the company plans to deal with the ruling.

In the order, the ITC upheld ITC Administrative Law Judge MaryJoan McNamara’s July 3 initial-determination finding that Hytera infringed on three patents held by Motorola Solutions—U.S. Patent No. 7,369,869 (“the ‘869 patent”), U.S. Patent No. 7,729,701 (“the ‘701 patent”); and U.S. Patent No. 8,279,991 (“the ‘991 patent”). The ITC ordered that Hytera “cease and desist” importing, selling, marketing, advertising, distributing products that infringe on these three patents. These patents impact the bulk of Hytera’s DMR product portfolio, according to sources.

However, the ITC also ruled that none of Hytera’s redesigned products—the i-Series announced in June—infringe on the three Motorola Solutions patent. This provides Hytera a clear path to providing an alternative to infringing products, according to company officials.

Hytera America Vice President Steve Cragg said that existing customers would be able to migrate from legacy Hytera DMR products to the new i-Series platform without altering their hardware.

“It’s a software upgrade only,” Cragg said during an interview with IWCE’s Urgent Communications, noting that Hytera software upgrades are free to customers. “There is no requirement in this ITC ruling for them to upgrade; but, if they wish to upgrade, we will support them.”

Cragg said that he believes customers will welcome the i-Series upgrade.

“It’s significantly enhanced over our legacy product,” he said. “While we have removed three very minor features [the Motorola Solutions patents]—which we estimate would impact less than 0.1% of our customers—we are introducing substantial enhancements to our product, so we will give our customers major benefits.”

Sources representing both companies indicated that the ITC ruling would be followed with a more detailed ITC opinion soon—possibly as early as Monday—that could provide greater public clarity in key areas.

The ITC’s final determination will become effective in 60 days, subject to the review of a U.S. trade representative delegated by President Donald Trump. During this 60-day period, Hytera could continue to sell the prohibited products and services in the U.S., but such sales would be subject to a bond worth 44% of the product’s value, according to the order.

Hytera is able to continue selling products and services in the U.S. that do not infringe on the three Motorola Solutions patents cited in the order.

Officials for both Hytera and Motorola Solutions agreed that the ITC ruled that Hytera products infringed on the three patents, but they offered widely divergent opinions whether the ITC order would allow Hytera to continue maintaining and repairing equipment that infringes on the three Motorola Solutions patents.

“ITC Commission did not say anything about the product maintenance,” Tom Wineland, vice president of sales for Hytera America West, stated in an e-mail response provided to IWCE’s Urgent Communications.

In contrast, Motorola Solutions’ press release about the ruling states that the ITC “rejected Hytera’s request to allow it to import infringing products or components into the U.S. to repair or replace those in the field”—a position reiterated by Mark Hacker, Motorola Solutions’ general counsel and chief administrative officer, during an interview with IWCE’s Urgent Communications.

Attorneys representing Motorola Solutions acknowledged that the language in the ITC final determination does not mention the maintenance issue, but past ITC rulings have specifically cited the ability to maintain infringing products when such an exception is granted.

Hytera’s Cragg said that he disagrees with the Motorola Solutions assessment but noted that it may not matter, because all existing Hytera equipment will be considered non-infringing after the i-Series software upgrades are completed.

Overall, both companies said they were pleased with the ITC final determination when it was released.

“The Commission’s validation of Judge McNamara’s findings is a significant victory for Motorola Solutions and another important step in holding Hytera accountable for its serial infringement of our patents,” Motorola Solutions’ Hacker said in a prepared statement.

“Motorola Solutions has invested significant resources researching, developing and delivering new and innovative products for our customers around the world. In contrast, Hytera has brazenly and repeatedly copied our proprietary intellectual property. The ITC’s Final Determination further validates our global efforts to halt Hytera’s egregious and unlawful behavior and safeguard Motorola Solutions’ technology portfolio.”

During an interview with IWCE’s Urgent Communications, Hacker noted that the ITC ruling is part of a global effort—in countries like Germany and Australia, as well as the U.S.—against Hytera, which Motorola Solutions claims stole patented technologies and other intellectual property.

“This is a significant win for Motorola Solutions,” Hacker said. “This has been a global litigation against Hytera, a company that has been brazenly copying, stealing and claiming as their own our innovation. We looked at the International Trade Commission as an important venue for this fight, and we’re incredibly pleased with today’s outcome.

“While we are always going to embrace competition, we are not going to let Hytera continue with type of unlawful behavior, and we will continue our fight around the globe to stop exactly what they’ve been doing, which is repeatedly copying our proprietary technology.

Hytera offered a very different perspective about the ITC’s final determination.

“The U.S. International Trade Commission (ITC) has ruled in Hytera’s favor in its final decision regarding new designs recently developed by Hytera,” according to a Hytera press release. “Today’s ITC commission’s final order makes clear that Hytera’s new-generation i-Series products do not infringe Motorola Solutions’ patents and can continue to be imported and sold in the United States.”

Hytera’s Cragg echoed this sentiment.

“We see today’s announcement from the ITC as a significantly positive result for both Hytera and our customers, as well as for the market, in general,” Cragg said. “We believe that Motorola is attacking us in the courts, because they have no ability to attack us in the marketplace. We don’t think that’s in anybody’s interest. It’s certainly not in the customers’ interest.

“Once we get this behind us, we will be very positively approaching our customers to make sure that the are continuing to be supported and that more people come toward the Hytera brand.”