ITC judge releases full determination, says Hytera employees ‘unquestionably copied’ Motorola tech

Hytera Communications “unquestionably copied” Motorola Solutions technologies and infringed on four Motorola Solutions patents, three of which should be the subject of U.S. International Trade Commission (ITC) remedies, according to an ITC administrative law judge’s detailed determination that was released last week.

ITC Administrative Law Judge MaryJoan McNamara released a summary of her findings on July 3, recommending that ITC members should rule that Hytera Communications infringed on three Motorola Solutions patents, prohibit the import and sale of products using those three patents, and calling for a bond to be placed on infringing Hytera products, if the matter is subject to a 60-day presidential review period.

McNamara’s full 260-page initial determination—subject to limited redactions from Hytera and Motorola Solutions to protect confidential business information from public view—that was released last week provides significantly more detail about her determination. Most of the initial determination outlines the evidence and thought processes that contributed to McNamara’s recommendation to the full ITC board, which is expected to rule on the matter by Nov. 6.

If the ITC ruling supports McNamara’s findings, 18 Hytera subscriber products and two repeaters would be excluded from the U.S. market, according to a press release from Motorola Solutions.

One key area in which McNamara did not provide a clear recommendation is whether Hytera should be allowed to continue servicing existing products that already are in the market.

“Given Motorola’s market dominance of approximately of the DMR market, it would seem logical that Motorola would be able to service Hytera’s customers in the United States,” according to McNamara’s initial determination. “However, Motorola did not offer any testimony on this issue during the evidentiary hearing, and did not provide any information on this point in any of its pre-hearing or post-hearing briefs.

“It appears that this may be an issue on which the Commission may wish to seek additional information from the parties. However, given the state of the evidence, a decision could go either way whether Hytera should be able to continue to provide services to its own customers in the United States, so long as there is a finely crafted certification provision. The Commission may need to gather facts from the parties that they did not provide during the evidentiary hearing or in other unequivocal evidence.”

McNamara’s initial determination also reveals for the first time that Hytera “unquestionably copied certain of Motorola [Solutions’] patented technologies.” This effort was made easier, because three former Motorola 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 after, according to McNamara’s determination.

“That figure bears repeating simply to let sink in the sheer magnitude of the number of confidential Motorola documents that the Hytera Employees accessed, just before they left Motorola: more than 7,000 documents,” McNamara’s determination states.

“This could not have been coincidental. For example, Mr. Chia left Motorola on June 7, 2008, to work for Hytera. Mr. Chia’s access log reflects that in some 4.5 years—i.e., from August 2003 to February 2008—Mr. Chia accessed fewer than 300 Motorola documents. By contrast, from March 2008 to end of May 2008—that is within three (3) months before he left Motorola to join Hytera—Mr. Chia’s access log reflects that he accessed more than 10,000 Motorola documents.

“At the time he accessed more than 10,000 Motorola documents from Motorola’s COMPASS document management system unto his personal computer, Mr. Chia was no longer working on DMR-related projects. It is inferentially sound that Mr. Chia did not access the DMR documents as part of his ordinary work responsibilities.”

Hytera lawyers did not question the data from the Motorola access logs or whether these eventual Hytera employees access the documents, but they noted that there is no proof that these three men “copied or printed the documents or gave them to Hytera” and that Motorola was “relying on innuendo rather than facts,” according to McNamara’s determination.

Despite this, there is “persuasive circumstantial and direct evidence” that the three eventual Hytera employees “wrongfully copied” patented technologies belonging to Motorola Solutions, according to McNamara’s determination.