29 January 2019
Since our previous publication, there have been further developments in the patent infringement proceedings between Motorola and Hytera before the Federal Court of Australia. They concern Hytera’s discovery, and additional allegations by Motorola of copyright infringement.
Between March and September 2018 the Court made orders for Hytera to provide discovery by categories, including documents relating to Hytera radio devices, technical specifications and confidential Motorola documentation. Hytera alleged, however, that Chinese cybersecurity and state security laws prevented their discovery, and sought to be relieved of its discovery obligations.
Motorola submitted that the Chinese laws were not applicable, that Hytera’s claimed difficulties were overstated, and that Hytera’s difficulties could have been avoided if it had commenced discovery review earlier.
In a judgment delivered on 1 November 2018, Justice Perram considered the relevant cybersecurity and state security laws, and expert evidence on Chinese law adduced by the parties. His Honour concluded that Hytera was not subject to the Chinese cybersecurity law, but it might have documents subject to state secrets law. Hytera should therefore be entitled to review its documents for that purpose.
Accordingly, a variation to the timetable was made which extended Hytera’s deadline for discovery, and his Honour declined to relieve Hytera of its discovery obligations.
In light of documents discovered by Hytera, including source code, Motorola sought to amend its pleadings to include for the first time allegations of copyright infringement. Hytera did not consent to the proposed amendments and submitted that, if allowed, the additional allegations would require that the trial be extended by two weeks.
While the prospect of a split trial was generally unattractive, the Court considered that it would be possible for the patent trial to proceed on the scheduled dates with the copyright infringement case to follow at a later time.
Further, it might be the case that the copyright trial will turn out to be a smaller 'enterprise' than originally envisaged. If so, the copyright infringement case might later be able to be joined with the patent trial.
In those circumstances, Motorola’s additional allegations were allowed and the copyright infringement trial was listed for two weeks commencing from 4 May 2020, which was the soonest available date.
The patent infringement trial remains listed for five weeks commencing on 22 July 2019.
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