Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Final Orders)

[2023] FCA 546

FEDERAL COURT OF AUSTRALIA

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Final Orders) [2023] FCA 546

File number:

NSD 1283 of 2017

Judgment of:

PERRAM J

Date of judgment:

26 May 2023

Catchwords:

PRACTICE AND PROCEDURE – formulation of orders to give effect to the reasons for judgment in Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585

Legislation:

Copyright Act 1968 (Cth) ss 115(4)(a), 115(4)(b)

Patents Act 1990 (Cth) s 19(1)

Federal Court Rules 2011 (Cth) r 1.35

Cases cited:

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 1189

Division:

General Division

Registry:

New South Wales

National Practice Area:

Intellectual Property

Sub-area:

Patents and associated Statutes

Number of paragraphs:

15

Date of last submissions:

2 May 2023 (Applicant)
18 May 2023 (Respondents)

Date of hearing:

25 May 2023

Counsel for the Applicant:

Mr C Moore, Ms P L Arcus and Ms N L Gollan

Solicitor for the Applicant:

Herbert Smith Freehills

Counsel for the Respondents:

Mr C Dimitriadis, Mr J S Cooke, Ms J P S Ambikapathy

Solicitor for the Respondents:

Spruson & Ferguson Lawyers

ORDERS

NSD 1283 of 2017

BETWEEN:

MOTOROLA SOLUTIONS, INC.

Applicant

AND:

HYTERA COMMUNICATIONS CORPORATION LTD

First Respondent

HYTERA COMMUNICATIONS (AUSTRALIA) PTY LTD ACN 165 879 701

Second Respondent

AND BETWEEN:

HYTERA COMMUNICATIONS CORPORATION LTD

First Cross-Claimant

HYTERA COMMUNICATIONS (AUSTRALIA) PTY LTD ACN 165 879 701

Second Cross-Claimant

AND: 

MOTOROLA SOLUTIONS, INC. 
Cross-Respondent

ORDER MADE BY:	PERRAM J
DATE OF ORDER:	26 MAY 2023

THE COURT ORDERS THAT:

1.The parties provide a form of order by the close of business on 31 May 2023, if they are in agreement.

2.If the parties are not in agreement, the Respondents are to file a minute of order marked up with the Applicant’s changes by the close of business on 1 June 2023. 

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

PERRAM J:

1. The parties are in dispute as to the orders which should be made to give effect to the reasons for judgment. The orders should be as follows:

   The 355 Patent

2. An injunction in general form should issue in relation to the 355 Patent. A second injunction should be issued restraining Hytera from doing the particular infringements identified in the judgment by reference to acts, devices and date ranges. There should be no defined terms. There should be no declarations of infringement or non-infringement. There should be a certificate under s 19(1) of the Patents Act 1990 (Cth) (‘Patents Act’).

   The 960 Patent

3. The claims of the 960 Patent should be declared invalid and there should be orders for revocation.

   The 764 Patent

4. There should be a certificate under s 19(1) of the Patents Act.

   Copyright

5. There should a declaration of infringement of the copyright which identifies the works, acts, devices and date ranges. It should not use defined terms. There should be a declaration that in relation to the infringements the Court is satisfied that ss 115(4)(a) and (b) of the Copyright Act 1968 (Cth) have been satisfied. There should be an injunction in general form.

   Injunctions – General

6. There should be an injunction preventing the reversal of steps.  There should be no injunction of the kind granted in Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 3) [2022] FCA 1189. In that case the V6 Tool was another iteration following four earlier iterations each of which had been found to infringe. I do not think that Hytera’s conduct gives rise to the concern which was present in that case.

   Delivery up

7. There should be no orders for delivery up.  I do not think that it is plausible that Hytera will be tempted into infringing by having in its possession the promotional or advertising material Motorola identifies.

   Evidence relating to the choice between damages or an account of profits

8. There should be no orders for the taking of any step relating to these matters.

   Originating Processes

9. Appropriate orders should be made disposing of the parties’ originating processes.

   Appeals

10. The parties should be granted leave to appeal and cross-appeal to the extent necessary.

    Stays

11. Any order requiring Hytera to do something should be stayed for 28 days.  If any appeal is filed by Hytera within 28 days of these orders and within that period Hytera files an application for a stay, the stay will be extended for a further 56 days.

    Notations and penal notices

12. The notations should note each Respondent’s undertaking, when it was made and set out its content. The notation should include the undertakings of the two non-parties. There should be an order pursuant to r 1.35 of the Federal Court Rules 2011 (Cth) that the rules pertaining to penal notices apply to the undertakings given by the non-parties. A penal notice should be affixed to the orders.

    Costs

13. Costs of the trial proceedings should be reserved.

    Case management hearing

14. The parties have liberty to relist the matter if no appeal is filed within 28 days or, alternatively, if an appeal is filed within 28 days, after the final determination of that appeal (including any appeal to the High Court).

    Further conduct

15. The parties should settle on a form of order by the close of business on Wednesday 31 May 2023.  In the event that the parties are not in agreement, Hytera is to file a minute of its order marked up with Motorola’s changes by the close of business on Thursday 1 June 2023.

I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Perram.

Associate:

Dated:       26 May 2023