Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585

Hytera infringed claims 1-6 and 10 of the 355 Patent by supplying and enabling use of DMR devices employing Motorola's patented scanning method; Hytera is liable under secondary liability provisions for supply and authorisation (Patents Act s 117 etc), but not for certain reprogrammed devices after reasonable steps taken. The 764 Patent was not infringed as correctly construed; alternatively, if so construed as Motorola contended, claims 2 and 3 were invalid for lack of fair basis. The 960 Patent was found invalid for lack of inventive step. On copyright, Hytera’s firmware compiled from source code that had (inter alia through deliberate concealment) incorporated substantial and material...

Jurisdiction
Australia
Judgment Date
23 December 2022
Procedural Posture
Federal Court Proceeding (intellectual Property) / Judgment After Trial on Liability (with Further Hearing on Quantum to Follow)
Outcome
Partially in favour of Applicant: Patents—355 Patent claims 1-6, 10 infringed; 764 Patent not infringed, and would be invalid if so construed. 960 Patent invalid. Copyright—Infringement established for substantial and material parts of five works (Xlate, Darwin Ergonomics Platform, Mobile and Portable Firmware, HAL...
Legal Topics
['patents' 'copyright' 'infringement' 'adaptation' 'injunctive Relief' 'additional Damages' 'importation' 'software Copyright' 'statutory Construction' 'inventive Step' 'manner of Manufacture' 'secondary Liability']
['intellectual Property'] ['patents' 'copyright' 'infringement' 'adaptation' 'injunctive Relief' 'additional Damages' 'importation' 'software Copyright' 'statutory Construction' 'inventive Step' 'manner of Manufacture' 'secondary Liability']

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Procedural Posture

Federal Court Proceeding (intellectual Property) / Judgment After Trial on Liability (with Further Hearing on Quantum to Follow)

Legal Issues

  1. 1 ["Whether Hytera infringed Motorola's patents in relation to DMR devices (claims for 355, 764, 960 patents)" 'Whether Hytera infringed Motorola’s copyright in source code for various computer programs via importation of devices (including assessment of adaptation and substantial part)' 'Whether acts were sufficiently flagrant to warrant additional damages under Copyright Act 1968 (Cth) s 115(4)' 'Whether patents are invalid for want of inventive step and/or manner of manufacture' 'Construction of relevant patent claims, including adaptation to standards (ETSI)' 'Liability for authorisation and joint tortfeasorship under relevant patent and copyright statutes']

Ratio Decidendi

Hytera infringed claims 1-6 and 10 of the 355 Patent by supplying and enabling use of DMR devices employing Motorola's patented scanning method; Hytera is liable under secondary liability provisions for supply and authorisation (Patents Act s 117 etc), but not for certain reprogrammed devices after reasonable steps taken. The 764 Patent was not infringed as correctly construed; alternatively, if so construed as Motorola contended, claims 2 and 3 were invalid for lack of fair basis. The 960 Patent was found invalid for lack of inventive step. On copyright, Hytera’s firmware compiled from source code that had (inter alia through deliberate concealment) incorporated substantial and material...

Court Disposition

Partially in favour of Applicant: Patents—355 Patent claims 1-6, 10 infringed; 764 Patent not infringed, and would be invalid if so construed. 960 Patent invalid. Copyright—Infringement established for substantial and material parts of five works (Xlate, Darwin Ergonomics Platform, Mobile and Portable Firmware, HAL...

Orders

  • ['Parties to bring in draft orders giving effect to judgment or, if not agreed, provide competing minutes by date specified (13 Feb 2023).' 'Previous Order 1 of 25 Nov 2022 set aside from date of these orders.' 'Order 8 from 22 July 2020 remains to 1 March 2023.' 'Matter stood over for further directions on 15 Feb...