Motorola Solutions, Hytera exchange opposing views about potential impact of ITC ruling on customers

Motorola Solutions and Hytera Communications today offered very different interpretations of a recent U.S. International Trade Commission (ITC) ruling, with Motorola claiming it would have a “significant” impact on Hytera customers and a Hytera official claiming the prohibited patented technologies are “not seen as material.”

On Nov. 16, the ITC issued its final determination 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.

However, the ITC also ruled that none of Hytera’s redesigned products—announced in July and dubbed by the company as the i-Series—infringe on the three Motorola Solutions patent. Last week, Hytera formally announced the i-Series product portfolio, noting that i-Series software would be provided at no cost to existing Hytera customers.

In a Motorola Solutions press release issued today to “set the record straight” about recent global rulings in the dispute with Hytera, Mark Hacker—Motorola Solutions’ general counsel and chief administrative officer—stated that Hytera has not been forthcoming about the impact that the ITC ruling will have on customers and dealers. Without using the technology in the three patents, Hytera’s DMR offerings “will be severely limited in functionality,” according to the Motorola Solutions press release.

“The numerous court rulings across the globe have confirmed that Hytera is a serial infringer of Motorola Solutions’ intellectual property,” Hacker said in a prepared statement. “Moreover, it has been reported in a recent interview that Hytera admitted that its new i-Series will lack important features available on Motorola Solutions’ devices.

“While Hytera has stated that the features are ‘minor,’ we believe Hytera is deliberately misleading its own customers and distributors as our patented technologies provide important benefits that vastly improve performance. Any products without those features, including Hytera’s supposed new ‘i-Series,’ will be severely limited in functionality.”

Hytera America Vice President Steve Cragg dismissed the Motorola Solutions’ assertions.

“Our view is that Motorola’s press release today might well be its least-accurate description of the scenario,” Cragg said today during an interview with IWCE’s Urgent Communications. “It’s a rather unveiled attempt to interfere with our business by spreading misinformation.

“We are very clear that the features affected by the ITC ruling are not seen as material—not by our dealers and not by our users. We’ve been talking to [Hytera dealers in the U.S.] consistently since the decision.”

According to the Motorola Solutions press release, the infringed patents include Motorola Solutions’ Fast Scan technology, which the company claims is “used by nearly every Hytera subscriber” and lets a subscriber radio scan through frequency channels more quickly while in repeater mode.

“Without this technology, critical messages may be partially or completely missed,” according to the Motorola Solutions press release.

Another patented feature cited in the press release is Motorola Solutions’ Rapid Re-key technology (‘701 patent)—“used by every Hytera repeater and every subscriber that operates in repeater mode,” according to the Motorola Solutions press release—that lets messages “be repeated after a repeater goes to sleep to preserve spectrum.”

Motorola Solutions also cited the company’s TDMA Direct Mode Pseudo Trunking technology (‘991 patent) as an infringed patent in its press release.

Cragg reiterated his contention last week that the patented technologies cited in the ITC cease-and-desist order are of “minor” importance to customers, particularly with Hytera’s new alternatives.

“We’ve got mechanisms in place to achieve a similar outcome, using a different range of features,” Cragg said.

But Motorola Solutions’ press release contends that “Hytera’s statements to the public are very different than those made by Hytera and its dealers to the ITC, where it confirmed the importance of the technologies Hytera says it will remove from its products. Hytera’s dealers urged the International Trade Commission not to issue the order it did, stating that ‘[i]f the recommended order is entered, our customers’ effectiveness in providing services essential to public health, safety, and welfare will be put at great risk.’”

Cragg acknowledged that Hytera dealers did make such statements in filings with the ITC, but he noted that those statements were based on the July 3 initial determination from ITC Administrative Law Judge MaryJoan McNamara. McNamara’s findings included a recommendation that the ITC issue the cease-and-desist order on Hytera products infringing the three patents, but it did not address whether Hytera’s proposed i-Series alternative infringed on Motorola patents.

Cragg said the dealers’ filings were based on the possibility at the time of McNamara’s order—that the ITC could issue a cease-and-desist order without approving the i-Series as an alternative path for Hytera dealers to provide to their customers. With the ITC finding that Hytera’s redesigned products do not infringe on Motorola Solutions’ patents, Hytera dealers today have a much more optimistic outlook, he said.

“I think the reaction has been overwhelmingly positive by the dealers,” Cragg said. “Obviously, this has been a major distraction for them, … [but] they see this as an opportunity to put this behind them and move on with the i-Series. They’re really excited about the new feature, new capabilities and new products.”

“I think the market has been waiting for what really is going to happen, and now we can put this behind us. I think Motorola is clinging on, trying to get the most mileage out that they can. But fundamentally, we see this as a victory for Hytera and our business in the U.S.”

A Motorola Solutions spokesperson characterized the Hytera Communications stance about its dealers’ concerns in ITC filings as “revisionist history,” noting that none of the filings suggested that the reason the ITC’s orders would be bad for Hytera was related to a redesign.

Hytera officials have based their optimism about the i-Series compliance with the ITC order on a public ITC document that states the commission “found that Hytera’s redesigned products do not infringe the ‘701, ‘869 or ‘991 patents.” However, Hacker is quoted in the Motorola Solutions press release that the ITC’s public materials have not “broadly cleared” that Hytera’s i-Series portfolio does not infringe Motorola Solutions’ patents.

When asked about the press-release position, a Motorola Solutions spokesperson said that the ITC’s public orders do not support Hytera’s position, and that Motorola awaits the public release of the complete orders for confirmation.