Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Discovery) [2019] FCA 1887

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Discovery) [2019] FCA 1887

The disputed discovery was refused because the proposed inquiries into the historical origins of Motorola's source code, employment contracts, contractor agreements, and confidential document circumstances were unlikely to yield useful material, would be onerous, expensive, disproportionate, and liable to threaten the trial date; in particular, tracing earlier code would likely only identify earlier copyright works also owned by Motorola and would not facilitate the just, quick, inexpensive and efficient resolution of the proceeding under r 20.11.

Jurisdiction
Australia
Judgment Date
07 November 2019
Procedural Posture
Intellectual Property Proceeding; Patents and Associated Statutes; Application for Discovery / Interlocutory Application for Discovery Dated 25 October 2019 Heard and Dismissed on 7 November 2019
Outcome
The Respondents' interlocutory application for discovery dated 25 October 2019 was dismissed with costs, with consent orders made for an agreed discovery category.
Legal Topics
['discovery' 'copyright Subsistence and Ownership' 'originality of Source Code' 'substantial Part of Copyright Work' 'employment and Contractor Ownership of Copyright' 'aggravated Damages Discovery']
['practice and Procedure' 'intellectual Property' 'copyright'] ['discovery' 'copyright Subsistence and Ownership' 'originality of Source Code' 'substantial Part of Copyright Work' 'employment and Contractor Ownership of Copyright' 'aggravated Damages Discovery']

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Procedural Posture

Intellectual Property Proceeding; Patents and Associated Statutes; Application for Discovery / Interlocutory Application for Discovery Dated 25 October 2019 Heard and Dismissed on 7 November 2019

Legal Issues

  1. 1 ['Whether discovery should be ordered for documents concerning the coding history of Motorola source code said to be relevant to originality and substantiality.' 'Whether discovery should be ordered of Motorola employment contracts to investigate whether employees retained copyright in code they produced.' 'Whether discovery should be ordered of independent contractor agreements to investigate ownership of copyright in contractor-created code.' 'Whether discovery should be ordered concerning circumstances in which confidentially marked Motorola documents contained open source code, entered the public domain, or were given to third parties including Hytera.']

Ratio Decidendi

The disputed discovery was refused because the proposed inquiries into the historical origins of Motorola's source code, employment contracts, contractor agreements, and confidential document circumstances were unlikely to yield useful material, would be onerous, expensive, disproportionate, and liable to threaten the trial date; in particular, tracing earlier code would likely only identify earlier copyright works also owned by Motorola and would not facilitate the just, quick, inexpensive and efficient resolution of the proceeding under r 20.11.

Court Disposition

The Respondents' interlocutory application for discovery dated 25 October 2019 was dismissed with costs, with consent orders made for an agreed discovery category.

Orders

  • ["The Respondents' interlocutory application for discovery dated 25 October 2019 ('Discovery Application') be dismissed." "The Respondents pay the Applicant's costs of the Discovery Application." 'The matter be listed for a case management hearing at 9:30am on 18 November 2019.' 'By 29 November 2019, the Applicant...