Injunction blocking Hytera two-way-radio sales globally upheld on Monday, but matter being reviewed

A U.S. federal district-court judge on Monday decided to maintain an injunction against Hytera Communications that halts global sales of the company’s two-way-radio technology. However, the contempt sanctions could be lifted soon, if a Chinese court provides a written ruling that Hytera has dropped a key lawsuit in the country.

U.S. District Court Judge Martha Pacold made the decision at the conclusion of a two-hour status hearing on Monday with attorneys representing Hytera Communications and Motorola Solutions—two land-mobile-radio (LMR)  manufacturers that have been entangled in litigation about DMR products for more than seven years.

Under the sanctions, Hytera Communications is prohibited from “offering to sell, selling, importing, exporting or otherwise distributing anywhere in the world any two-way radio products,” according to the injunction issued by Pacold on April 2. In addition, the contempt sanctions require Hytera to post the following statement on the home page of its website: “Notice To Public: By Order Of United States Court, Until Further Notice, Hytera Is Prohibited From Selling Any Products Containing Two-Way Radio Technology Anywhere In The World.”

Attorneys representing Motorola Solutions previously have requested that such an injunction blocking global sales of Hytera DMR products be issued to coerce China-based Hytera Communications to make payment—or secure a bond ensuring payment—toward the $543 million judgment that Motorola Solutions won in a 2020 civil lawsuit heard by Pacold’s predecessor in the case, now-retired Judge Charles Norgle.

Both Norgle and Pacold previously declined to issue such an injunction based solely on U.S. legal actions. However, Hytera in June 2022 filed a lawsuit in the Shenzhen Intermediate People’s Court in China that sought a declaratory judgment that Hytera’s H-Series DMR products do not infringe Motorola Solutions trade secrets and copyrights, according to Pacold’s injunction.

On March 25, Pacold directed Hytera Communications to “refrain from further pursuing or enforcing” this lawsuit in the Chinese court. On March 29, Pacold ordered Hytera Communications to “withdraw from the action … including withdrawing any productions in that case.” In her April 2 injunction, Pacold found that Hytera Communications violated these orders and placed sanctions on the LMR manufacturer that blocked global sales of the company’s two-way-radio products.

According to a footnote in the injunction, two-way-radio products are defined as those “containing two-way radio technology, including portables, mobiles, base stations, and repeaters, and includes but is not limited to DMR products (including I-Series, H-Series and any other DMR products), TETRA products, cellular products (e.g., LTE or other push-to-talk-over-cellular products) and analog products.”

During the status hearing conducted by phone on Monday, an attorney for Hytera Communications said that the company had withdrawn its lawsuit in the Shenzhen court regarding the H-Series DMR products and that a three-judge panel in the China court had made an oral ruling accepting the company’s decision. This was confirmed by an instant message from the China court claiming that the oral ruling is legally effective, according to the attorney representing Hytera Communications.

However, an attorney representing Motorola Solutions noted that instant message was from a clerk or assistant judge, not any of the three judges on the Shenzhen court’s panel. In addition, it was unclear whether the Chinese court would issue a formal written opinion on the matter in the future.

Judge Pacold expressed concern that a written opinion could include findings that might conflict with findings in the U.S. case. Given the uncertainty on Monday, Pacold decided to maintain the sanctions against Hytera Communications for at least the rest of the day and called for the parties to meet again on Tuesday morning to review the situation.

In a press release issued today on the matter, Hytera Communications states that “Hytera respects the U.S. Court’s decision and is working to achieve full compliance with the U.S. Court’s anti-suit injunction orders.”

Motorola Solutions declined a request for comment from IWCE’s Urgent Communications.

Most issues in this civil litigation between Motorola Solutions and Hytera Communications have been appealed to Seventh Circuit Court of Appeals, which heard oral arguments for the case in December. The case was brought to the attention of Pacold’s district court because the matter was deemed an enforcement of the court’s previous decision.

This civil lawsuit should not be confused with the criminal-conspiracy case against Hytera Communications and seven individuals filed by the U.S. Department of Justice, although it shares many of the relevant facts. The trial in the criminal case is scheduled to begin on Oct. 1.