German court sides with Motorola Solutions, says Hytera must recall and destroy infringing radios

Motorola Solutions today announced that a German court has ruled that a subsidiary of Hytera Communications will have to recall and destroy all Hytera radios in Germany that infringed upon a Motorola Solutions patent that is designed to improve audio performance in portable and mobile radios.

The ruling was made by the Regional Court of Mannheim in Germany, which determined that Hytera GmbH—the Hytera Communications subsidiary in Germany—is infringing of Motorola Solutions’ patent EP 1 139 562 B1, which is “provides for an improved listening experience and enhanced audio safety by reducing the radio speaker's transmission of undesirable noise,” according to a Motorola Solutions press release.

An injunction against Hytera GmbH prohibits the Hytera subsidiary from “using, selling, importing or distributing infringing products in Germany,” according to the Motorola Solutions press release. In addition, the Mannheim Court ordered the recall and destruction of infringing products sold by Hytera GmbH in Germany and held the Hytera company liable for damages, according to the Motorola Solutions press release.

Hytera GmbH has the option to appeal the judgment, but the ruling is immediately enforceable after Motorola Solutions posts a security bond, which “will be completed very shortly,” according to the Motorola Solutions press release.

“Today’s victory marks another milestone in our global efforts to hold Hytera accountable for its infringement of our patents and to preserve the integrity of our intellectual property,” Mark Hacker, Motorola Solutions’ general counsel and chief administrative officer, said in a prepared statement. “Importantly, not only has the Mannheim Court ordered Hytera GmbH to cease the sale of infringing products in Germany, but also to recall and destroy those it has already sold in Germany.
“Motorola Solutions is the world’s leading provider of two-way radio equipment and systems, and innovation has been integral to our long history of success in a continuously evolving industry. We are proud of our growing and industry-leading portfolio of approximately 5,000 patents. The infringement demonstrated by Hytera creates an unfair playing field and threatens the industry’s ability to innovate. We will continue to take all necessary actions to stop Hytera’s illegal conduct and protect our intellectual property.”
Hytera did not indicate immediately whether it would appeal the Mannheim Court ruling.

“Hytera disagrees with the finding of the Regional Court of Mannheim, We are reviewing the ruling and considering an appeal,” according to a prepared statement from a Hytera Communications spokesperson. “We continue to believe that our products do not infringe and that the patent asserted is invalid. In the meantime, however, we have suspended the sale of products that might be affected by the ruling in Germany.

“Hytera's dealers and customers benefit from a full range of high-quality, high-performance devices with functionality for a wide range of applications. Hytera will continue to develop and deliver innovative, high-quality professional mobile radio solutions to our dealers and customers in Germany and around the world.”

Neither Motorola Solutions nor Hytera Communications identified what radio equipment would be subject to the recall and destruction order, but an industry source indicated that Hytera’s PD985 portable DMR radios in Germany are expected to be impacted.

Motorola Solutions stated that the Mannheim Court ruling is the first time that Motorola Solutions has asserted that Hytera Communications has infringed on the EP 1 139 562 B1 patent “up until this point.”

Representatives for both Motorola Solutions and Hytera Communications noted that the Mannheim Court decision does not directly impact other disputes involving the companies. There is another case in Germany—filed in Dusseldorf—in which Motorola Solutions is contesting Hytera GmbH’s Psuedo Trunk functionality as used with TDMA direct-mode communications.