Hytera Communications can continue to sell and maintain DMR radio in the United States, including the company's "i-Series" software upgrade, which does not include features included in Hytera's "intentional copying" of 3 Motorola Solutions patents, according to the US International Trade Commission(ITC) .
In a 47-page commentary, providing a detailed explanation of the ITC summary decision announced on November 16, ITC reiterated that Hytera infringed three patents on Motorola's solution and issued a stop and terminate order - subject to the president's review plan Completed in mid-January - Hytera is prohibited from importing, marketing, marketing and servicing most of its DMR systems and subscribers.
However, the ITC opinion also notes that Hytera’s “redesigned products”—clearly identified for the first time as the “i-Series” portfolio in the ITC opinion—do not infringe on any of the three patents in question.
“Given our non-infringement findings regarding the redesigned products, Hytera … can continue to supply the market,” according to the opinion.
Hytera officials have touted new capabilities of the “i-Series” software upgrade, but the new software also removes functionality, according to the ITC opinion.
“Motorola states that it did not pursue infringement allegations with respect to the ‘991, ‘701 and ‘869 patents, because it believed—based on the record evidence—that the redesigned products did not infringe those patents because of the removal of the relevant infringing features,” the opinion states. “We view this statement as an admission that these products do not infringe the ‘991, ‘701 and ‘869 patents.”
Representatives for both Motorola Solutions and Hytera have noted that existing Hytera customers would not sought out individually to ensure removal of infringing software from DMR products. However, without the i-Series software upgrade to the system, Hytera would not be able to provide maintenance services, according to the ITC opinion.
“We do not find a service/repair exception appropriate here,” the ITC opinion states, referencing the cease-and-desist order.
Hytera America Vice President Steve Cragg said the finding means that Hytera will be able to continue servicing customers as normal.
“We will support all of the products by upgrading them,” Cragg said “If somebody asks us for a repair, it has always been our policy to upgrade first to the latest version of software and then repair the product. We’re doing nothing more than we’ve always done.”
On Nov. 16, the ITC issued a summary of its final determination that Hytera infringed on three patents held by Motorola Solutions—U.S. Patent No. 7,369,869, U.S. Patent No. 7,729,701; and U.S. Patent No. 8,279,991. The ITC ordered that Hytera “cease and desist” importing, selling, marketing, advertising, distributing products that infringe on these three patents.
The ITC ruling is subject to a 60-day presidential review that is scheduled to be concluded by Jan. 15. Until then, Hytera theoretically could continue selling and servicing products that infringe on the three Motorola Solutions patents in question, but any revenues realized from such actions would be subject to a 44% bond that would be paid to Motorola Solutions, according to the ITC opinion.
Hytera Communications gained access to the Motorola Solutions patents about a decade ago, when three former Motorola employees allegedly downloaded more than 7,000 Motorola files about DMR technology—even though none of the engineers were working on DMR projects at the time—just prior to b