Hytera, Motorola Solutions propose finishing injunction briefs next month

Final written arguments from Motorola Solutions in support of a permanent injunction against Hytera Communications selling certain DMR products would be due on June 23, according to briefing schedule proposed by both parties in the companies’ lengthy federal-court case.

Initiated in November 2019, the trade-secrets and software-copyright suit resulted in a unanimous jury verdict in February that called for Hytera to pay Motorola Solutions $345.8 million in compensatory damages and $418.8 million in punitive damages. U.S. District Court Judge Charles Norgle of the Northern District of Illinois affirmed the ruling in March.

China-based Hytera has indicated its intention to appeal the case, if the current remains in place.

In a joint status report filed yesterday, attorneys for Hytera Communications and Motorola Solutions outlined agreement outlined the pending post-trial motions in the case—most notably, Motorola Solutions’ permanent-injunction request and Hytera Communications request for a new trial—and proposed a briefing schedule.

Before any new filings must be made to the court, attorneys for the two LMR companies will meet in a mediation session scheduled for May 28, according to a section in the status report labeled “Settlement Efforts.” Sources familiar with the case have noted that the sides have participated in mediation sessions previously during the litigation without resulting in any broad settlements on the most important disputes in the case.

If there is no settlement agreement, Hytera would be required to file briefs opposing the permanent-injunction request by Motorola Solutions. Motorola Solutions’ deadline for filing a reply on the matter would be June 23.

Motorola Solutions is seeking a permanent injunction that would prohibit Hytera, its distributor and dealers from selling, marketing or distributing the DMR portable and mobile radios that utilize Motorola Solutions’ trade secrets and copyrighted software worldwide. Issuing a worldwide injunction—as opposed to one that only applies to the U.S.—is an appropriate finding under the Defend Trade Secrets Act (DTSA) of 2016.

Hytera opposes the injunction request, noting that such sanctions are not necessary when such a large financial award already has been entered into judgment. In addition, Hytera attorneys have expressed the belief that a U.S ruling should only be effective within the United States, not in other countries throughout the world.

During the trial, Hytera attorneys acknowledged that three former Motorola [the company had not yet changed its name to Motorola Solutions at the time] employees—Samuel Chia, Y.T. Kok and G.S. Kok—accessed more than 7,000 Motorola documents prior to each of them leaving and joining Hytera shortly in 2008. However, Hytera attorneys described the three engineers as “bad apples” who did not share with anyone else at Hytera that the DMR trade secrets and software were taken from Motorola.

If a new trial is not permitted, Hytera attorneys argue that the award to Motorola—reportedly described by a Hytera attorney as a “bankrupting amount”—should be reduced significantly.

In contrast, Motorola Solutions asks that the financial award that China-based Hytera should pay should be increased by including the profits that Hytera has realized during the time since the trial started, interest and attorney fees.