Hytera and Motorola are the two largest global manufacturers of digital mobile radios, used every day across the first responder, hospitality, transport and construction sectors. The Federal Court proceeding is part of a global dispute between the parties, where there have been multiple cases litigated in China, the US, Germany, and the UK. MinterEllison acted for Hytera in relation to the patent issues in the Australian litigation (another firm acts for Hytera on the copyright issues). This article deals only with the patent part of the dispute.
The Court made the following findings on validity and infringement of Motorola's patents:
- For the first patent, the Court agreed with Hytera that the claimed method of de-keying a base station device was obvious, so all of the asserted claims were invalid and therefore not infringed.
- For the second patent, the Court agreed with Hytera that its direct mode pseudo trunking technology did not infringe. The Court went further, agreeing with Hytera that if Motorola's claim construction had been accepted (which it was not), all of the asserted claims would then have been invalid for lack of fair basis.
- For the third patent, although the Court held that Hytera infringed the patent, infringement ceased in November 2019 (three years before the judgment), because by that time Hytera had taken a number of steps to prevent infringement, including reprogramming its devices to remove the scan functionality in dispute.
- The Court also agreed with Hytera that Motorola was not entitled to additional damages for patent infringement.
The judgment covers both patent and copyright issues in a mammoth 2315 paragraphs over 589 pages. At the time of this article, the Court has published only the first eight paragraphs while the parties negotiate confidentiality issues. Once the Court makes formal orders giving effect to the judgment, it will be open to either party to appeal to the Full Court. The judgment is available in Motorola Solutions v Hytera Communications (Liability) [2022] FCA 1585.
The patent issues in the case were highly complex, and heard in a five week liability trial in 2019, with a second phase heard remotely in 2020 (which primarily concerned copyright). The patent issues involved multiple technical experts from the US, UK, and Australia, numerous 'hot tubs' (concurrent oral expert evidence sessions), and fact evidence from Hytera engineers based in China and in Australia. An intriguing outcome of the Australian judgment was that many opinions of Motorola's US expert witnesses, whose opinions had been generally accepted in the US, were not accepted by the Australian Court.
One of the many innovative positions taken by Hytera was that Motorola was seeking to enforce its patent rights in a manner that would prevent Hytera from supplying devices capable of 'standards essential' functionality; that is, devices that operate in a manner required by the global ETSI Standards for digital mobile radios. While the Court did not agree that the defence to infringement applied in this case, this is the first time an Australian Court has decided such an argument.