Hytera calls for ITC review, affirmation that new DMR products do not infringe Motorola Solutions patents

Hytera Communications announced that it asked the U.S. International Trade Commission (ITC) to reverse a ruling that the company infringed multiple Motorola Solutions patents and to affirm that Hytera’s new digital mobile radio (DMR) products do not infringe patents.

Hytera’s petition seeking ITC review of ITC Administrative Law Judge MaryJoan McNamara’s “final initial determination” was expected by all observers of matter. ITC commissioners are expected to review McNamara’s findings and make ruling on the matter by Nov. 6.

McNamara recommended that the ITC prohibit 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.

“Hytera’s position remains that its products sold in the U.S. do not infringe MSI’s [Motorola Solutions’] patents and that the initial determination is incorrect,” Hytera stated in a press release.

Motorola Solutions offered a different assessment of the situation.

“Judge McNamara’s ruling follows a lengthy investigation that culminated in a week-long hearing with testimony from both Motorola Solutions and Hytera witnesses, hundreds of pages of briefing materials and thousands of exhibits,” according to a Motorola Solutions statement provided to IWCE’s Urgent Communications. “As such, the Judge’s ruling validates our allegations, upholds the integrity of our intellectual property and rebukes Hytera for its unscrupulous and unlawful behavior in willfully infringing Motorola Solutions’ patents. We are confident that the full ITC will uphold this decision in its Final Determination.”

Hytera presented documents and source code related to new designs to McNamara, according to a Hytera press release. Hytera has asked the ITC “to affirm that these latest products are not infringing,” according to the press release.

“Hytera is confident that our designs for our next-generation DMR product portfolio do not infringe any of the asserted patents of MSI,” Tom Wineland, vice president of Hytera Communications America (West), said in a prepared statement. “MSI did not oppose our new designs based on six of the asserted patents.”

Hytera presented seven new designs to the ITC that the company is “confident do not infringe its competitor’s patents,” according a spokesperson for Hytera.

“These seven new designs were shared by the ITC with our competitor, which did not respond with any allegations of infringement for six of them,” according to a Hytera statement provided to IWCE’s Urgent Communications. “MSI did allege one violation based on its '284 Patent, but Hytera does not believe this contention of MSI has merit, and further believes that MSI's '284 patent is invalid.”

Indeed, Hytera petitioned the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (USPTO) to review the validity of the ‘284 patent, which relates to methods for selecting an alternate channel when a preset first-choice channel is unavailable on a TDMA system, according to Hytera. The Patent Trial and Appeal Board has agreed to review the patent and is expected to rule on the matter by the end of May 2019.

McNamara’s determination found that Hytera infringed the ‘284 patent, but the recommended remedies did not apply to the ‘284 patent, because McNamara ruled that Motorola Solutions does not have a product that uses the technology in the United States.