The latest news comes from Germany, where the Regional Court of Düsseldorf has issued a first-instance ruling that a limited number of Hytera's legacy DMR products did infringe a German part of a European Patent of Motorola Solutions.
The Court subsequently held the Chinese company liable for damages. It also granted two injunctions against Hytera, in the first instance preventing it from offering the patented method in Germany, and in the second – according to Motorola –, from “offering and delivering products capable of performing the patented method in Germany.”
The technology in question pertains to Hytera’s two-way DMR subscriber radios, which use “pseudo-trunking” functionality in TDMA direct mode. Motorola Solutions claim these infringe patent EP 2 342 851 B1. The decisions of the Düsseldorf Court are not final and can be appealed, something which is currently being considered by Hytera.
Speaking of the ruling, Mark Hacker, general counsel and chief administrative officer of Motorola Solutions, said: “The Regional Court has ordered remedies that punish Hytera for its illegal conduct and infringement of our intellectual property. Significantly, today’s ruling covers additional Hytera DMR subscribers beyond those that were previously found to infringe our patented squelch technology in an earlier judgment.”
A spokesperson for Hytera meanwhile, said: “[We] believe our products do not infringe any of our competitor's valid patents. We further believe MSI's European Patent 2342851 B1 is invalid over prior art. Hytera’s German subsidiary [Hytera Mobilfunk] has sought to invalidate this patent in the court, and a decision is pending.
“Earlier this year, Hytera issued its Release 9.0 firmware for DMR products, a release that has been well received globally. This firmware introduced a substantial number of innovative features for our DMR products. It does not include the functionality at issue in the case in the Düsseldorf Court.
“Any suggestion that Hytera may not sell any DMR products in Europe as a result of this decision or other legal proceedings in Germany is misleading and incorrect.”
The ruling also applies to Hytera’s Chinese parent company, Hytera Communications Corporation Limited. This is the second time this year that a German court has ruled in favour over Hytera. Motorola Solutions is pursuing a similar case against Hytera in the Federal Court of Australia.
Meanwhile in the US, the International Trade Commission (ITC) issued a notice on 16 November that partially modifies the final initial determination (FID) in the case between Motorola Solutions (plaintiff) and Hytera Communications (defendant), causing both parties to claim victory.
The revisions include a reversal of the FID’s finding that redesigned products submitted by Hytera infringed a Motorola Solutions patent, and a new finding that they do not infringe three other patents held by Motorola Solutions.
However, because the revised determination still states that Hytera has committed patent infringement violations, the ITC has found that the appropriate form of relief is a limited exclusion order (LEO) that bans the importation, selling, marketing, advertising or distribution of products that infringe on these patents by Hytera America or Hytera Communications America.
As previously reported, there is now a 60 day period during which President Trump may modify the ITC’s determination. Motorola Solutions therefore expects the LEO to come into force around 15 January 2019. Before then, Hytera can still import the effected products, but it must post a bond equal to 44 per cent of their value to do so.
According to a Motorola Solutions press release, this will affect the MD652, MD782, BD302, BD362, BD502, PD412, PD502, PD562, PD602, PD662, PD682, PD702, PD752, PD782, PD792, PD982, X1e and X1p handsets, along with the RD622 and RD982 repeaters.
“The Commission’s validation of Judge McNamara’s findings is a significant victory for Motorola Solutions and another important step in holding Hytera accountable for its serial infringement of our patents,” said Mark Hacker, general counsel and chief administrative officer of Motorola Solutions. “Motorola Solutions has invested significant resources researching, developing and delivering new and innovative products for our customers around the world.
“In contrast, Hytera has brazenly and repeatedly copied our proprietary intellectual property. The ITC’s Final Determination further validates our global efforts to halt Hytera’s egregious and unlawful behaviour and safeguard Motorola Solutions’ technology portfolio.”
Conversely, Hytera highlighted the ITC’s ruling that the company’s i-Series products do not infringe Motorola Solutions’ patents and can continue to be imported and sold in the United States.
“Hytera is committed to broadening choice within the US market and for our dealers,” said Tom Wineland, VP Sales, Hytera Communications America (West), Inc. “Hytera will continue to deliver a full range of innovative, high-quality, and cost-effective DMR products and land-mobile-radio communications solutions to our dealers and customers here in the US, as we do around the world."
Shortly after the ITC’s latest statement, Hytera issued a press release announcing the launch of its i-Series 2018-2019 US product range. The series includes ‘premium features’ such as full duplex calling, over the air programming (OTAP) and optimized push to talk (PTT), along with features that Hytera claims will enhance coverage and channel efficiency without adding hardware costs. According to Steve Cragg, sales director at Hytera America, the i-Series is compatible with Hytera’s legacy radios.
“Even before progressing to broadband, today’s customers want innovations like quick-updating GPS with offline history storage or specialised hardware like intrinsically safe (explosion-resistant) portable radios,” said Rachel M. Romero, president of Service Communications, which equips many oil and gas industry customers near Lafayette, Louisiana. “Hytera is making sure that the features that its competitors reserve for only their priciest products are being included among many more affordable options from Hytera, delivering much more value to our customers, and ultimately making people safer.”
