Hytera opposes blocking DMR sales under Motorola Solutions’ injunction request

Hytera Communications should not be prohibited from selling much of its DMR products under a proposed permanent injunction being sought by Motorola Solutions, attorneys for China-based Hytera argue in the company’s final briefing opposing the injunction request before a federal court.

“Motorola’s motion for a permanent injunction should be denied,” according to the Hytera briefing filed yesterday. “If an injunction is issued, Hytera respectfully requests a stay of the worldwide scope of the injunction pending the resolution of appellate proceedings.

“At a minimum, the Court should permit Hytera and its distributors and resellers to continue servicing existing customer devices and networks—including by issuing additional radios and other Hytera products—pending resolution of the appeal.”

This final sentence of the last brief marked one of the few times during this lengthy legal proceeding—the trial about Hytera’s improper use of Motorola Solutions’ trade secrets and copyrighted software code began in November—that the question whether Hytera legally could service existing customers has been mentioned.

Hytera did not offer further insight into the service issue, but the brief outlined the company’s belief that a permanent injunction would harm the public’s interest.

“Such an injunction would have a devastating impact on innocent third parties including a number of foreign governmental agencies, public-safety entities, and public utilities around the world,” the Hytera brief states. “These third parties have not only purchased individual Hytera radios but have also invested in entire infrastructure systems.

“These systems have Hytera-proprietary features and Hytera-customized functions that are not interoperable with Motorola DMR radios. Motorola’s shutdown injunction would force existing Hytera DMR users to replace their entire infrastructure systems—an expensive and lengthy process.”

Hytera attorneys submitted the legal brief—redacted in several areas—in response to Motorola Solutions’ request for a permanent injunction that would prohibit Hytera Communications, its distributors or dealers from selling much of the company’s popular DMR portfolio anywhere in the world.

Attorneys for Motorola Solutions are scheduled to submit a reply to Hytera’s opposition on June 23, which would appear to clear the path for U.S. District Court Judge Charles Norgle of the Northern District of Illinois to make a decision on the permanent-injunction matter.

Motorola Solutions opted to seek a permanent injunction after Norgle entered a judgment in March requiring China-based Hytera Communications to pay Motorola Solutions $345.8 million in compensatory damages and $418.8 million in punitive damages. Throughout the brief, Hytera reiterates its opposition to the ruling and the company’s plans to appeal the decision.

In the brief, Hytera Communications argues that Motorola Solutions failed to meet the standards necessary for a permanent injunction, noting that the unanimous jury verdict did not specify which of the 21 trade-secret and 4 copyright claims made by Motorola Solutions were problematic.

“Because a permanent injunction must track adjudicated wrongdoing only, and the jury did not identify which alleged secrets or copyright claims formed the basis for their adjudication, no injunction is proper here,” according to the Hytera brief.

Motorola Solutions’ injunction request is also overly broad, according to the Hytera filing.

“Motorola’s proposed language is an invitation to endless litigation,” the brief states.

If Norgle grants the permanent injunction sought by Motorola Solutions, the impacts on Hytera Communications would be significant, the company’s attorneys acknowledge.

“This provision would, on its face, prohibit Hytera even from making radios that make no use of any of Motorola’s information, so long as they were ‘based,’ even ‘in part’ on ‘any of the Accused Products,’” according to the Hytera brief. “The provision would thus sweep far beyond anything that Motorola could conceivably lay claim to, to preclude Hytera from designing new products based on indisputably non-infringing and non-misappropriating aspects of the accused Hytera products.

“It would thus run afoul of [a legal precedent] that trade secret injunctions must respect the ‘very narrow limits’ imposed on an asserted trade secret by ‘public information’ and the defendant’s ‘own knowledge and experience,’ neither of which can be claimed as the plaintiff’s trade secret.”

Hytera also claims that Motorola Solutions is making contradictory arguments about the impact of Hytera’s presence in the market.

“Anecdotes offered by Motorola do not demonstrate price erosion due to Hytera’s accused products as opposed to other market forces, because Motorola fails to disclose or acknowledge other relevant factors—i.e., who else is competing, what the competitive products are, whether the customer had a pre-existing relationship with the competing dealer,” the Hytera brief states.

“Motorola wants to have it both ways: assert price erosion, if Hytera stays in the market, but denied any claim that Motorola will increase prices if Hytera’s products are forced out of the market by an injunction.”

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.