Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability)
[2022] FCA 1585
•23 December 2022
FEDERAL COURT OF AUSTRALIA
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585
File number: NSD 1283 of 2017 Judgment of: PERRAM J Date of judgment: 23 December 2022 Catchwords: PATENTS – Applicant patentee of three method patents relating to digital mobile radios (‘DMR’) using Time Division Multiple Access (‘TDMA’) to divide frequency channel – disputed constructions – fair basing – inventive step – identification of inventive step in claims – manner of manufacture – stare decisis – whether Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 has a ratio decidendi – whether Full Court decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 binding for single judge – whether Respondents’ non-reprogrammed and reprogrammed DMR devices use methods of patents – secondary liability for importation of DMR devices – authorisation and joint tortfeasorship – whether Respondents took reasonable steps to prevent infringement – injunctive relief – relevance of ETSI Standard – additional damages
COPYRIGHT – Applicant owner of Australian copyright in 11 computer programs in source code – importation by First Respondent of DMR devices into Australia containing firmware in object code – firmware compiled from intermediate source code in China and installed into DMR devices in China – First Respondent’s intermediate source code developed using Applicant’s source code – First Respondent’s intermediate source code mostly lost although some available – header and source files – disassembly of object code back into assembly language – whether available intermediate source code copied from Applicant’s source code – whether missing intermediate source code copied from Applicant’s source code – substantial part – whether the fact that Applicant’s programs derived from earlier versions renders them not original for the purposes of infringement – whether First Respondent’s object code deemed to be a reproduction of Applicant’s source code by s 21(5) of the Copyright Act 1968 (Cth) – whether compiled object code is an adaptation of Applicant’s source code – secondary infringement of Applicant’s Australian copyright by importation of DMRs into Australia – whether making firmware available for download in Australia infringement of Applicant’s Australian copyright – where copies of firmware made in Australia by Second Respondent and authorised dealers – liability for authorisation and joint tortfeasorship – injunctive relief – additional damages – whether flagrancy to be measured against acts of copying in China or subsequent acts constituting infringement of Australian copyright – whether copying deliberate large scale industrial theft – extent of knowledge of theft within First Respondent – extent of knowledge at time of infringement – whether knowledge to be attributed to First Respondent
Legislation: Copyright Act 1968 (Cth) ss 4, 10, 14(1), 21(5), 31(1), 36(1), 37(1), 115(4)
Copyright Amendment (Digital Agenda) Act 2000 (Cth)
Evidence Act 1995 (Cth) s 136
Federal Court of Australia Act 1976 (Cth) ss 37AE, 37AF, 37AG, 37AI, 37AJ
Income Tax Assessment Act 1936 (Cth) s 109
Judiciary Act 1903 (Cth) s 23(2)(a)
Patents Act 1990 (Cth) ss 7(2), 7(3), 18(1), 117, 122(1A)
Patents Act 1990 (Cth) s 40(3), later amended by Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Statute of Monopolies 1623, 21 Jac 1 c 3 s 6
Trade Practices Act 1974 (Cth) ss 45(2), 45A(1), now the Competition and Consumer Act 2010 (Cth)
Federal Court Rules 2011 (Cth)
Cases cited: Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411
American Cyanamid Company v Berk Pharmaceuticals Limited [1976] RPC 231
Apotex Pty Ltd v Warner-Lambert Co LLC (No 2) [2016] FCA 1238; 122 IPR 17
Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; 96 ALJR 837
AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 257 CLR 356
Australian Broadcasting Commission v Parish (1980) 29 ALR 228
Australian Competition and Consumer Commission v Air New Zealand Ltd (No 3) [2012] FCA 1430
Australian Competition and Consumer Commission v Air New Zealand Ltd (No 12) [2013] FCA 533
Australian Competition and Consumer Commission v Cement Australia Pty Ltd (No 2) [2010] FCA 1082
Australian Competition and Consumer Commission v PT Garuda Indonesia Ltd (Remedies) [2019] FCA 786; 370 ALR 637
Australian Competition and Consumer Commission v Valve Corporation (No 5) [2016] FCA 741
Australian Mud Company Pty Ltd v Coretell Pty Ltd [2011] FCAFC 121; 93 IPR 188
Baigent v Random House Group Ltd [2007] EWCA Civ 247; 72 IPR 195
Brambles Holdings Ltd v Carey (1976) 15 SASR 270
Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386
Cambridge University Press v University Tutorial Press (1928) 45 RPC 335
Catnic Components Limited v Hill & Smith Limited [1982] RPC 183
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202; 163 IPR 231
Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232
Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; 238 FCR 27
Commissioner of Taxation v Comber (1986) 10 FCR 88
Computer Edge Pty Ltd v Apple Computer (1986) 161 CLR 171
Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187; 156 FCR 380
D’Arcy v Myriad Genetics Inc [2015] HCA 35; 258 CLR 334
Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49; 202 CLR 1
Davies v Lazer Safe Pty Ltd [2019] FCAFC 65
Dyson Appliances Ltd v Hoover Ltd [2001] RPC 26
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491
Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421; 130 IPR 387
Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited [2005] FCAFC 220; 67 IPR 230
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90; 120 IPR 406
Grimaldi v Chameleon Mining NL (No 2) [2012] FCAFC 6; 200 FCR 296
Hogan v Australian Crime Commission [2010] HCA 21; 240 CLR 651
Howard v Commissioner of Taxation [2012] FCAFC 149; 206 FCR 329
IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14; 239 CLR 458
International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218
Jones v Dunkel (1959) 101 CLR 298
JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 116 IPR 440
Krakowski v Eurolynx Properties Ltd (1995) 183 CLR 563
LHRC v Deputy Commissioner of Taxation (No 4) [2015] FCA 70; 326 ALR 150
Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; 217 CLR 274
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173
Motorola Solutions Inc v Hytera Communications Corporation Ltd (No 2) [2018] FCA 17
Muller v Dalgety & Co Ltd (1909) 9 CLR 693
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252
Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2
NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655
Oliver Hume South East Queensland Pty Ltd v Investa Residential Group Pty Ltd [2017] FCAFC 141; 259 FCR 43
Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240; 154 IPR 215
R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898; 44 IPR 48
Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC [2008] FCAFC 82; 77 IPR 449
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79
Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223; 164 IPR 1
Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378
Seven Network v Cricket Australia (No 2) [2021] FCA 1032
Steelforce Trading Pty Ltd v Parliamentary Secretary to the Minister for Industry, Innovation and Science (No 2) [2018] FCAFC 47
Sunchen Pty Ltd v Federal Commissioner of Taxation [2010] FCAFC 138; 190 FCR 38
Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149; 194 FCR 142
Vickers, Sons & Co Ltd v Siddell (1890) 15 AC 496
Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 2315 Date of last submission: 1 October 2020 Date of hearing: 22-23, 25, 29-30 July 2019, 1-2, 6-7, 12, 14-16 August 2019, 27-28, 30-31 July 2020, 3-7, 10-14, 17, 19-21 August 2020, 14-16 September 2020, 1, 7 October 2020 Counsel for the Applicant: Mr C A Moore SC, Mr A R Lang and Ms P L Arcus Solicitor for the Applicant: Herbert Smith Freehills Counsel for the Respondents: Mr C Dimitriadis SC, Mr J S Cooke and Mr C Burgess Solicitor for the Respondents (Patent Trial): MinterEllison Solicitor for the Respondents (Copyright Trial): 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-ClaimantAND: MOTOROLA SOLUTIONS, INC.
Cross-Respondent
ORDER MADE BY:
PERRAM J
DATE OF ORDER:
23 DECEMBER 2022
THE COURT ORDERS THAT:
1.The parties confer and, if possible, bring in a minute of order giving effect to these reasons by close of business on 13 February 2023 or, if no agreement be possible, provide a minute of the orders for which each contends by the same date.
2.Order 1 made by the Court on 25 November 2022 be set aside but only prospectively from the time of the making of these orders.
3.Order 8 of the orders made on 22 July 2020 remain in force until 1 March 2023.
4.The matter be stood over for further directions at 9.30 am on 15 February 2023.
5.Pursuant to ss 37AF(1)(b) and 37AG(1)(a) of the Federal Court of Australia Act 1976 (Cth), until further order of the Court, and subject to any restrictions imposed by the confidentiality regime agreed between the parties dated 10 April 2018 (‘Confidentiality Regime’) and/or the confidentiality regime agreed between the parties dated 24 May 2019 (‘MSI Code Confidentiality Regime’), access to and disclosure (by publication or otherwise) of the unredacted text of the reasons for judgment delivered today be restricted to the parties and their legal representatives, and those persons to whom access is allowed under the terms of the Confidentiality Regime or the MSI Code Confidentiality Regime.
6.Nothing in Order 5 or any other earlier order of the Court prevents any party from publishing the covering pages of these reasons for judgment up to and including these orders or paragraphs [1]-[8] of the reasons or the Associate’s Certificate appearing at the end of the reasons after paragraph [2315].
7.By 27 January 2023, the legal representatives for the Applicant and the legal representatives for the Respondents exchange highlighted versions of the reasons for judgment identifying the parts of the reasons that are claimed to contain information confidential to their respective clients for redaction.
8.By 10 February 2023, the legal representatives for the parties confer on the proposed redactions and, if the parties are able to agree on the proposed redactions, provide to chambers an agreed form of the reasons for judgment with the proposed redactions highlighted, together with an agreed redacted form of the reasons for judgment that is suitable for publication.
9.In the event the parties are unable to agree on the proposed redactions, by 14 February 2023, the legal representatives for the parties provide chambers with:
(a)a version of the reasons for judgment which identifies the redactions which have been agreed and those which are in dispute; and
(b)a short written submission addressing the areas of disagreement.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
CHAPTER I: INTRODUCTION [1] CHAPTER II: BACKGROUND TO TWO-WAY RADIO COMMUNICATIONS [9] What are Radio Communications and How Do They Work? [11] Well-Known Digital Radio Systems before July 2004 [93] Well-Known Digital Radio Systems before 28 July 2005 [115] Well-Known Digital Radio Systems before 3 October 2008 [120] International Field [121] CHAPTER III: THE PATENT TRIAL [123] CHAPTER IV: THE 355 PATENT [125] Introduction [125] Construction [185] Inventive Step [231] Manner of Manufacture [354] Infringement [360] CHAPTER V: THE 764 PATENT [422] Introduction [422] Construction [436] Fair Basis [467] Inventive Step [470] Manner of Manufacture [551] Infringement [552] CHAPTER VI: THE 960 PATENT [553] Introduction [553] Construction [584] Validity [639] Infringement [732] CHAPTER VII: INTRODUCTION TO THE COPYRIGHT TRIAL [737] CHAPTER VIII: STATE OF HYTERA’S TECHNOLOGY [749] Introduction [749] Strand Three: How Long Would It Have Taken Hytera to Bring the Prototype to Market? [766] Strand Two: The Failure to Carry Out Simulations [892] Strand One: The Failure to Consider Cost and Battery Life at the Development Stage [921] Overall Conclusions [931] CHAPTER IX: THE EVENTS AT SHENZHEN [932] Introduction [932] Problems Confronting Hytera’s DMR Project at the end of 2007 [936] The Engagement of the Ex-Motorolans by Hytera [943] What the Ex-Motorolans Brought with Them [964] Roles within the Hytera DMR Team [988] Extent of Knowledge within the Hytera DMR Team that Motorola’s Obviously Confidential Information Was Being Used [1015] Extent of Knowledge within the Hytera DMR Team that Motorola’s Source Code Was Being Used to Develop Hytera’s DMR Firmware [1027] The Removal of the FPGA and the Reasons for that Removal [1107] CHAPTER X: COPYRIGHT INFRINGEMENT [1144] Introduction [1144] Legal Mechanics of Motorola’s Importation and Downloading Cases [1174] Substantial Part [1228] Objective Similarity and Substantial Part (General Observations) [1256] CHAPTER XI: WERE THE 11 WORKS INFRINGED? [1301] The EMT Component [1310] The Xlate Component [1603] The UIT Component [1685] The Darwin Ergonomics Platform [1717] Mobile and Portable Firmware [1731] The L1 Timer [1799] Framer [1851] FramerLib Library [1892] The HAL Serial Buffer [1897] DSP Firmware [1935] CHAPTER XII: LIABILITY OF HYTERA FOR IMPORTATION [1986] Introduction [1986] Relevant Facts [1990] Should Mr GS Kok’s Knowledge at September 2013 Be Attributed to Hytera? [1996] Conclusion on Liability of Hytera for Importation [2002] CHAPTER XIII: LIABILITY OF HYTERA FOR COPYING AND COMMUNICATING [2003] Copying and Communicating the Firmware [2004] Authorisation [2010] CHAPTER XIV: LIABILITY OF HYTERA AUSTRALIA FOR COPYING AND COMMUNICATING [2013] CHAPTER XV: INJUNCTIVE RELIEF FOR COPYRIGHT INFRINGEMENT [2015] Introduction [2015] Injunctions against Particular Conduct [2016] General Injunction against Infringement of Copyright [2019] CHAPTER XVI: DAMAGES AND ACCOUNT OF PROFITS [2029] CHAPTER XVII: ADDITIONAL DAMAGES FOR COPYRIGHT INFRINGEMENT [2030] Introduction [2030] Flagrancy: Section 115(4)(b)(i) [2033] The Need to Deter Similar Infringements of Copyright: Section 115(4)(b)(ia) [2052] The Conduct of the Defendant after the Act Constituting the Infringement: Section 115(4)(b)(ib) [2053] Whether the Infringement Involved a Conversion from Hardcopy to Digital: Section 115(4)(b)(ii) [2060] Any Benefit Shown to have Accrued to the Defendant by Reason of the Infringement: Section 115(4)(b)(iii) [2061] All Other Relevant Matters: Section 115(4)(b)(iv) [2064] Conclusions [2086] CHAPTER XVIII: ADDITIONAL DAMAGES FOR PATENT INFRINGEMENT [2087] Introduction [2087] Hytera’s Scan Function Was Developed Using Knowledge of How Motorola’s Scan Function Operated [2089] Whether Hytera’s Scan Function Software Was Copied from Motorola’s Source Code [2107] Hytera’s Knowledge of the 355 Patent [2113] Conclusions [2114] CHAPTER XIX: SUPPRESSION AND NON-PUBLICATION ORDERS [2122] Introduction [2122] Relevant Principles [2124] Motorola Application [2129] Hytera Application [2198] Joint Application: EP Licence Agreement between Motorola and Hytera [2273] ‘Overlap’ Documents [2301] Conclusion and Disposition on Suppression Order Applications [2305] CHAPTER XX: FINAL MATTERS [2308] Outline [2308] Declaratory Relief [2309] Tender of Translations [2310] Costs [2311] Confidentiality Orders [2312] Non-Publication of Reasons [2313] Further Hearing on Quantum and Leave to Appeal [2314] Orders [2315] PERRAM J:
I INTRODUCTION
Motorola Solutions Inc (‘Motorola’) sues Hytera Communications Corporation Ltd (‘Hytera’) and its Australian subsidiary, Hytera Communications (Australia) Pty Ltd (‘Hytera Australia’) for patent and copyright infringement. The alleged infringements relate to digital mobile radios (‘DMR’). DMRs can be mobile (e.g. affixed to a vehicle which moves) or portable (e.g. carried around by a person). An individual DMR can communicate directly with another DMR without an intermediary, and when it does so, the two devices are said to be communicating in ‘direct mode’. However, they also are frequently deployed with fixed base stations, or ‘repeaters’, through which they communicate with each other and by which means their range is extended.
Motorola alleges that Hytera’s DMRs infringe three of its patents. These patents relate to a pre-existing technology which permits a frequency band within the radio spectrum (a channel) to be divided into timeslots so that more than one person may use the same channel at the same time. This technology is known as Time Division Multiple Access or, more commonly, ‘TDMA’. The three patents are methods which refine the efficiency of TDMA. The first patent, No. 2005275355 (‘355 Patent’), is a method and system which improves the time taken to scan a channel to determine whether there is activity on that channel. The second patent, No. 2009298764 (‘764 Patent’), is a method for efficiently synchronising to a desired timeslot. The third patent, No. 2006276960 (‘960 Patent’), is a method and system for accessing a base station which has been de-keyed. I will refer to the 355 Patent, the 764 Patent and the 960 Patent collectively where necessary as ‘the Patents’.
Motorola alleges that Hytera imported into Australia DMRs which infringed the methods of the three patents and sues for secondary infringement. Hytera disputes Motorola’s construction of each of the Patents and contends in each case that if construed as Motorola suggests, each patent is invalid for various reasons. I have concluded that Motorola’s construction of the 355 Patent is correct and that the challenges to its validity fail. I have concluded therefore that Motorola’s infringement case in relation to the 355 Patent largely succeeds although I have accepted that Hytera did not infringe the patent after November 2019 when it took steps to ensure that existing mobile stations were upgraded before reprogrammed base stations were supplied to end users (the upgrade removing the infringement). In the course of reaching this conclusion, I have rejected Hytera’s submission that any infringement was required by the relevant European Telecommunications Standards Institute (‘ETSI’) standard. I have rejected Motorola’s infringement case on the 764 Patent. Motorola’s construction of that patent is not correct. If it had been correct, I would have concluded that the patent was invalid as it would not have been fairly based. I have also rejected Motorola’s infringement case on the 960 Patent. Although Motorola’s construction of the patent is correct, the patent is invalid for want of an inventive step. In the case of all three patents, I have rejected Hytera’s contention that no manner of manufacture is involved. I have rejected Motorola’s claim for additional damages for patent infringement.
The copyright suit relates to the firmware which was installed on Hytera devices imported into Australia. Motorola alleges that this firmware (which is in binary code) was derived from object code which had been compiled from Hytera’s source code. That source code was written in the computer languages C and C++. Much of Hytera’s source code has been lost. Motorola alleges that Hytera developed its source code by copying Motorola’s source code. This was said to have been done in 2008 when several former employees of Motorola went across to Hytera to help it develop its DMR products. Motorola says that 11 of its computer programs have been copied by Hytera. Motorola’s proof of this was hindered by the fact that much of the Hytera source code has vanished. In relation to some of the vanished source code, the object code compiled from it was available. Motorola sought to disassemble this object code back into assembly language and to prove by these indirect means that the missing Hytera source code had been copied from the Motorola source code. The proof of these matters was protracted.
I have concluded that Motorola has succeeded in proving that Hytera copied a substantial part of 6 of the 11 computer programs and is liable for copyright infringement. Motorola also alleged that Hytera’s actions constituted a substantial industrial theft. I have accepted this submission and the allied contention that Motorola is entitled to additional damages on account of the flagrancy of the infringements.
The programs which Motorola alleges were copied by Hytera consisted of source code which was compiled into firmware to be installed on its DMR devices. The development of this firmware was a lengthy and complicated process of software engineering involving a large number of engineers. The entire undertaking was known as ‘Project Matrix’. Taking its cue from the movie The Matrix, the individual projects within Project Matrix were known as Project Neo, Project Morpheus and Project Cypher. As the Oracle observed to Neo in the third film, The Matrix Revolutions, ‘everything that has a beginning has an end’. Despite some misgivings along the way, these reasons will eventually affirm the truth of this observation, although not until paragraph [2315].
The trial was conducted in two phases with the patent allegations being heard before the copyright allegations. In consequence, there are two sets of transcripts and two separate court books. The reasons for judgment dealing with the patent allegations (apart from additional damages) refer only to the transcript and court book used in the patent phase. The reasons for judgment dealing with the copyright allegations refer principally to the copyright transcript and court book but there are occasional references to the patent materials. Where this occurs, I note it. These reasons were published on 23 December 2022 in an unredacted form subject to certain non-publication orders and confidentiality arrangements which restrict its publication due to the potential presence of trade secrets in the reasons for judgment. As at 23 December 2022, only the first eight paragraphs will be publicly available. The full reasons for judgment, if necessary subject to some redaction, will be published in the New Year once the parties have had an opportunity to consider whether any redaction is necessary.
I deal first with the patent allegations and then the copyright allegations. In order to understand the patent allegations, it is necessary to understand two-way radio communications and, more particularly, TDMA. To these dry matters I now turn.
II BACKGROUND TO TWO-WAY RADIO COMMUNICATIONS
To understand the issues which arise in the patents suit, it is necessary to have a grasp of the electronic engineering underpinning two-way radio communications. The purpose of this section is to equip the reader with sufficient technical understanding to grapple with the issues which divide the parties and to understand the technical context in which the inventions which are the subject of the Patents are immersed. Where necessary, I will also discuss some of the industry standards which operated, as a prelude to the subsequent discussion of the common general knowledge (‘CGK’). Some aspects of this discussion are also relevant to Motorola’s copyright infringement allegations in relation to its source code.
Mr Kuhrt provided a high-level overview of two-way radio communications technology in his first affidavit at §§70-196 which I have found useful. Mr Kuhrt’s evidence was directed at information which he believed would have been well-known and generally accepted by engineers working in the field of two-way radio communications in Australia as at 26 July 2004, the priority date of the earliest patent in suit, the 355 Patent. The following discussion is largely taken from his evidence and is supplemented where necessary with the evidence of Professor Rangan. It has a particular emphasis on the three matters which are the subject of the Patents: radio scanning, repeater de-keying and re-keying, and synchronisation methods.
WHAT ARE RADIO COMMUNICATIONS AND HOW DO THEY WORK?
Radio is a method of transmitting electromagnetic energy across distance without using a direct, wired connection. The electromagnetic energy takes the form of radio waves which have a certain frequency. Radio waves are generated and sent out through a transmitter and are then received by a radio receiver using antennas. Depending upon their length, radio waves may travel in three ways: (i) by line of sight; (ii) by being reflected off of buildings or other objects, in which case the communications will not travel beyond the horizon; and (iii) by being reflected off of the ionosphere, in which case they can return to earth beyond the horizon. Different radio frequencies (‘RF’) are used for these different reflective requirements.
Radio communications can be transmissions of audio (i.e. analogue transmissions) or of data (i.e. digital transmissions). Where a transmission is an analogue transmission, the whole of the voice transmission can be sent and decoded without any additional information being transmitted. In practical terms, this means that the radio signal carries nothing but the voice transmission. By contrast, where a digital communication is involved, the decoding of the message requires the use of what are called ‘overheads’. Overheads are the bits of digital information that are not associated with the substantive transmission, or what is usually referred to as the ‘payload’. Digital transmissions are thus made up of two kinds of information: information which comprises the overhead, and information which comprises the payload.
Two of the Patents in this case are directly concerned with overheads and a desire to reduce them and thereby make more of the signal available for the payload. One of the overheads in a digital communication arises from the need to achieve what is called ‘synchronisation’ between the devices which is achieved using a synchronisation pattern (I explain this more fully below). Another relates to the scanning of channels which involves the use of information to identify the devices to which a payload is to be delivered. This kind of information is referred to as ‘control information’. The more of the radio transmission that is consumed by transmitting control information, the less of it is available to transmit payload.
The Radio Spectrum
The radio portion of the electromagnetic spectrum (which radio communications are transmitted on) is divided into three sub-categories known as ‘frequency bands’. These bands are the: (i) high frequency band (‘HF’) (3,000 kHz to 30 MHz); (ii) very high frequency band (‘VHF’) (30 MHz to 300 MHz); and (iii) ultra-high frequency band (‘UHF’) (300 MHz to 3 GHz). Each of these bands is further separated into bandwidth channels which radio users use to transmit communications. These channels reflect the frequency range occupied by a carrier signal and are separated by a space known as ‘channel spacing’. The size of the bandwidth channel and the size of the channel spacing between each channel is determined by a regulatory authority which in Australia is the Australian Communications and Media Authority (‘ACMA’). In 1999, ACMA determined that two-way radios would use channel bandwidths of 12.5 kHz. What this means is that each channel may occupy a range of frequencies in the radio spectrum which are no wider than 12.5 kHz. The size of this bandwidth limits the number of frequencies that can be defined inside a relevant band.
Generally, the wider the channel bandwidth, the better the audio fidelity or the higher the data rate will be. In other words, the larger the channel bandwidth is, the better quality the radio communication will be. For example, whilst the bandwidth for two-way radio communications is 12 kHz, the bandwidth for commercial frequency modulation (‘FM’) broadcasting stations is set at 100 kHz. In general, therefore, this creates a problem whereby the interests of the regulator (here, ACMA) and radio users are opposed. Whereas ACMA wishes to reduce the bandwidth of a channel, thereby increasing the number of operators that might transmit, radio users desire a greater bandwidth (for greater audio quality) which reduces the number of possible users.
The Components of Radio Devices
A two-way radio is a device that can both receive and transmit signals from other radios operating on the same RF. There are two kinds of two-way radio devices: half-duplex devices and full-duplex devices. A half-duplex radio is one which permits the user to talk or to listen but not to do both at the same time. A full-duplex radio, by contrast, has the ability to send and receive transmissions at the same time. It does so by sending transmissions on one frequency and receiving them on another.
In the case of a half-duplex two-way radio, the user presses a ‘Push-To-Talk’ (‘PTT’) button which activates the transmitter. When the PTT button is not pressed, the device’s radio receiver is activated. Half-duplex radios may also function by using what is referred to as ‘simplex communication’. Where this occurs, the transmission and reception occurs on a single RF. In other words, the radio switches between the ‘transmit’ and ‘receive’ functions, transmitting on one frequency and then switching to receive any incoming transmissions using the same frequency.
To be able to transmit and receive at the same time, full-duplex radios may use two different frequencies. Typically, this means that one frequency is assigned for the radio to transmit and another is assigned to receive communications. Together, the two frequencies are known as a ‘frequency pair’ or a ‘physical channel’. Alternatively, a full-duplex radio may use what are called frequency sharing methods. I discuss these further below, but in a digital system this involves breaking the communications up into digital packages and transmitting the packages sufficiently frequently such that the underlying process is not audible.
Terminal Equipment
Mobile stations are typically vehicle based installations that allow for communication to other local terminal equipment (e.g. between police cars). These are also referred to as ‘radios’ or ‘subscriber units’. They may communicate in either of two modes: (i) direct mode; or (ii) ‘repeater mode’. A direct mode transmission occurs between two mobile stations (without the use of a repeater, which I discuss below) and usually takes place on the same transmit and receive frequencies (i.e. with each radio switching between transmitting and receiving communications in the fashion described above at [17]). A direct mode communication is possible so long as both mobile station users are not too far apart and there is no obstruction between the sender of the communication and the receiver.
Portable terminals are relatively low power but more readily moveable versions of mobile stations often worn on the body, i.e. walkie-talkies.
Repeater Equipment
Repeaters, which are also referred to as ‘base stations’, are devices which relay transmissions from terminal equipment, thus extending the coverage of those terminals. They are typically located above terminals (such as on top of a mountain or building) and utilise a hard-wired power source. Thus, where a repeater is used, the sender of the communication will transmit the message from their terminal and once the transmission reaches the base station, the base station will then repeat the message to the intended receiver. In a trunked system, a repeater also repeats the transmissions which it receives from a control station. I return to the topic of trunking below.
Relatively simple two-way radio systems only include a single repeater. Multiple repeaters, however, may be interconnected to increase the coverage area (known as a ‘cell’) and to enable direct links to control stations. Repeaters typically receive and transmit on two different RFs, known as the ‘uplink’ and the ‘downlink’. Terminals transmit information (such as voice calls) through the uplink towards the repeater. The repeater then retransmits or repeats the information through the downlink towards another repeater or terminal. In its most simple form, a repeater is therefore two terminal devices connected together, with one operating as the uplink and one operating as the downlink. This is a schematic of a single repeater two-way radio system:
The downlink is essential to the processes of ‘de-keying’ and ‘re-keying’ which are central to the 960 Patent. In many two-way radio systems, the repeater is designed to ‘de-key’ after a transmission. When a repeater de-keys, it turns off the downlink. This means that the repeater cannot transmit information using the downlink unless it ‘re-keys’. Further, terminals listening to the repeater’s downlink frequency will not receive transmissions from that repeater. A common reason why a repeater will de-key is because there is no active terminal using the repeater’s cell. Since the radio spectrum is a limited and shared resource, repeaters are often programmed to de-key in order to ensure that they are not powered on when they are not in use and to allow other repeaters to use the frequency.
Repeaters often have a fixed timer (e.g. 10 sec) which starts when the repeater detects that there is no activity on the repeater’s uplink frequency. This will occur when there is no transmission being sent from any of the terminal devices. This timer is often referred to as the ‘hangtimer’. One of the purposes of the hangtimer is to ensure that the recipient has sufficient time to respond to a communication before the repeater de-keys. When the hangtimer expires, the repeater de-keys.
If a mobile station wants to utilise a de-keyed repeater for transmissions, it must first wait for the repeater to ‘re-key’. When the repeater re-keys, it reactivates the downlink and can send outgoing transmissions again. Although a de-keyed repeater’s downlink is deactivated, its uplink is still monitored and is able to receive transmissions. This allows a de-keyed repeater to receive messages from terminals, enabling it to re-key. The process of re-keying, however, can take time and delay transmissions. This can be a problem for users (such as a member of the emergency services) who need to relay a communication quickly.
Control Stations and Control Channels
Control stations facilitate communication and signalling to remote terminal equipment. They may be positioned in a control centre or a depot. A simple control station may consist of a speaker, a microphone and a PTT switch. A more complex control station may include several networked computers and remotely accessible data bases. Control stations are a common feature of trunked systems which are discussed below at [88].
A control channel is a channel in a trunking system where network access is requested and assigned. They are used by radio users to be assigned to a traffic channel to begin a voice transmission.
Modems
Modems facilitate the transfer of data using RFs. Prior to July 2004, some analogue two-way radio systems included modems as an optional component. This is because their presence allowed analogue systems to transmit data (as opposed to just voice) over the analogue signal. By allowing data to be transmitted in this way, control information could therefore be transmitted even though the system was not digital. Examples of the kind of control information that could be transmitted included: information identifying a particular terminal (terminal identification information), information identifying groups of terminals to be included in a communication (talkgroup identification information), and information as to which channels were to be used for what (channel allocation information). The word ‘terminal’ is used interchangeably with ‘subscriber unit’ or ‘mobile station’.
In analogue systems, modems were a physical component of the radio device (i.e. hardware in the terminals and the repeaters) which turned converted data into an analogue (that is, audio) signal. In digital systems, however, modem functionality was incorporated into the software of the devices and no physical modem was needed.
An early example of an analogue two-way radio system which used modems to transmit data was the system used by taxi providers. The address information for jobs was transmitted to taxi drivers from a control centre as data over the analogue network which, I infer, was otherwise used to carry voice signals.
Two-Way Radio Functionality
Cellular communication systems such as mobile phones are designed for one-to-one communications and so are usually used by individual consumers. By contrast, two-way radios are designed to be used by professionals in sectors such as government, industrial, and emergency services and so are focussed on group call communications which are also known as one-to-many communications. As a result, two-way radios utilise a feature known as ‘talkgroups’ (discussed in more detail below at [33]). Mobile phones are typically smaller, have lower power levels and are full-duplex devices (i.e. they can communicate and receive at the same time). Two-way radios are larger devices with a relatively higher power level and may be full-duplex or half-duplex (in which case, as explained above, they cannot transmit and receive at the same time).
As already noted, two-way radios can engage in direct mode between themselves, or in repeater mode via a repeater. Mobile phones do not have a direct mode and only communicate through network infrastructure.
Talkgroups
A talkgroup is a way of organising multiple individual radio devices into groups of users who can all communicate with each other. Each talkgroup has its own ‘group identity’ which is programmed into the memory of each individual radio device. When a radio device that is a member of a specific talkgroup transmits, all the other members of the talkgroup are able to hear and respond to that transmission. The use of talkgroups allows for private communications between members of a particular talkgroup by excluding radio users that are not part of that group. It also facilitates effective communication, in that one user can communicate to a group with a single transmission.
For example, an individual firefighter who is based in Richmond in Victoria may want to communicate with a number of different groups of people depending on the situation:
To do so, the radio device that the firefighter uses might be assigned to different talkgroups. One talkgroup to which the firefighter is assigned may include all emergency services within 15 km of where the firefighter is based in Richmond (i.e. Melbourne CBD Emergency Services in the above diagram). This talkgroup would allow the firefighter to broadcast communications to ambulances and police officers in the nearby region. The firefighter could also be assigned to a talkgroup which is limited to firefighters from Richmond Fire Station (i.e. Station 10). This could allow the firefighter to talk and receive information from his station in private. More narrowly, the firefighter could be assigned to a talkgroup which is only his or her unit (i.e. Company 6) from the Richmond Fire Station. This would allow the firefighter to communicate with his or her team while out in the field without needing to broadcast to the entire station or to all emergency services.
Scanning
Mobile and portable radio users tune into specific channels in order to transmit or receive communications. Users can select a channel either:
(a)manually (usually through a dial or buttons) by selecting an appropriate channel; or
(b)by using the radio automatically to scan channels.
The process of scanning involves the receiver radio searching multiple channels (known as a ‘scan group’) to find a ‘valid’ transmission. A scan group consists of a group of frequencies that may be of interest and is stored in the memory of the radio. When the radio determines that it has found a valid transmission, it will stop and lock onto that channel and then send the communication to the radio’s speaker. A valid transmission is a communication which meets specific conditions, such as having certain talkgroup or address information. The conditions which will make a transmission valid are programmed into the radio device. If the receiver radio decodes the message and identifies that all of the relevant conditions are present, the transmission will be deemed valid and will be broadcast through the speaker. If the transmission does not meet all of the programmed conditions, however, it will be ignored. In the example of the firefighter above, for instance, the radio device could be programmed such that a transmission addressed to one or more of the three talkgroups would be a valid transmission.
There are various ways to program a radio’s scanning capabilities. One way in which a radio’s scanning capabilities might be programmed is called ‘priority scanning’, which enables the radio to scan important channels more frequently. Automatic scanning, such as priority scanning, can be advantageous because it can take time for a user manually to select channels and users may miss transmissions if they are on the wrong channel. Various systems existed for automatic scanning prior to the priority date for the 355 Patent which is concerned with scanning.
Different Types of Two-Way Radios
Two-way radio systems are generally split into analogue and digital systems. The main difference between them is the way that signals are transmitted and received. Analogue radio systems use electrical signals which, at least conceptually, resemble sound waves to deliver voice audio over an RF. Digital radio systems, by contrast, process sounds into patterns of numbers which are then transmitted over an RF. Digital two-way radios can allow users to transmit data as well as audio. They are also more secure.
Analogue Two-Way Radios
Early two-way radio systems transmitted voice messages using analogue methods over RFs. Communication was either direct from one terminal to another on a simplex channel (that is, on a single frequency) or it was transmitted between terminals via a repeater on different transmit and receive frequencies.
Without the inclusion of the repeater, the coverage of a radio system is dependent on the power of the terminal. Since terminals are often portable and therefore powered by a battery, the power of early terminals was relatively low. However, since early analogue two-way radio systems could be used in both direct mode and repeater mode (that is, with or without a repeater), simple analogue two-way radio systems often included a single repeater to relay communications between connected terminals. The coverage of such a system is restricted by the power of the single repeater. This type of system was very common in Australia before the 1980s.
Larger two-way radio systems include multiple repeaters that enable the system to cover a larger area. While this type of system allowed for extended coverage, a problem was that all of the connected repeaters were required for a single transmission. This meant that only one transmission could take place using connected repeaters in the system at a time. This problem is illustrated in the following diagram:
Scanning in Analogue Two-Way Radio Systems before 26 July 2004
Early two-way radio systems required radio users (such as the user of a mobile station in a vehicle) manually to change the channel to scan the system for relevant transmissions. This meant that when a user was moving around they would need to know the channel which was associated with the closest repeater and then select that channel on the mobile station in order to receive the transmission.
Automatic scanning and voting functionality was then developed in around the 1980s to allow for users moving between different repeaters automatically to receive communications from different repeaters. In early analogue systems, this was achieved by a list of frequencies (each of which was associated with a different repeater) being saved in the memory of the terminal devices. When set to scan automatically, the terminal device would then step through the list of frequencies and lock onto each to determine if a transmission was taking place.
A problem with this automatic scanning methodology, however, was that there was no assessment of signal strength when the terminal device stepped through the list of frequencies. As a result, terminals often locked onto a repeater that was not the closest repeater to them, with the consequence that they had low signal strength.
Automatic voting was thus developed to ensure that signal strength was taken into account when a terminal automatically scanned RFs. Automatic voting was similar to automatic scanning in that the terminal would automatically scan through a list of frequencies saved to memory in the terminal. However, automatic voting required the terminal device to assess the signal strength of each frequency stored in memory in the terminal before deciding which frequency (i.e. which repeater) to lock onto. This type of system often included a control station that was independent of the repeaters. That control station would re-key the repeaters every minute or so to produce a burst of energy for a length of time that was sufficient for each terminal to complete the automatic voting function and record their local site (i.e. the local repeater with the strongest signal strength).
Techniques were also developed before 26 July 2004 that enabled analogue terminals automatically to scan frequencies for specific types of communications (e.g. communications to a specific talkgroup). One example of this kind of technique was what was known as the ‘Code Tone-Coded Squelch System’ (‘CTCSS’). The CTCSS adds a low frequency tone to a voice communication. Terminals included in their memory a list of CTCSS tones that were associated with, for example, a talkgroup. This enabled the terminals to listen for a specific CTCSS tone. If the tone for a talkgroup which was saved to the terminal’s memory was heard on a channel while it was automatically scanning, then the terminal would stay on the channel. Otherwise, the terminal would continue scanning the other channels saved in its scan list. As will become clear, the concepts of scanning and staying on a channel are important to the 355 Patent.
A well-known problem with both automatic scanning and automatic voting in early analogue two-way radio systems was the length of time that it took for a terminal to complete the process. This limitation was a physical limitation which was inherent in analogue two-way radio systems. It was caused by the fixed amount of time that it took the terminal to perform the automatic scanning and automatic voting processes because it involved a number of steps. First, the radio would find an RF carrier. Secondly, using the example of CTCSS tones (although other methods might be used), it would decode the CTCSS in a hardware chip or in software. Thirdly, it would ‘qualify’ the channel and then, if all the relevant criteria were met, it would remain on the channel to start receiving communications. By ‘qualify’, I understood Mr Kuhrt to mean that, having detected the relevant CTCSS tone, the device had to be sure that it had done so and that what had occurred was not a random appearance of a tone frequency. This is consistent with his explanation that automatic scanning and voting in analogue two-way radios required the device to receive a certain number of radio wave cycles before the device could qualify the radio signal. As a result of the CTCSS tone being of such a low frequency, the time spent scanning and voting was determined by the period of the waveforms. For example, a two-way radio might have to wait for five cycles of the CTCSS waveform before it could complete the process and start receiving transmissions. Mr Kuhrt thought that this problem was a well-known problem prior to the late 1980s which I accept. One solution to the problem was to limit the number of frequencies to be scanned.
De-keying and Re-keying in Analogue Two-Way Radios Prior to 26 July 2004
Prior to 26 July 2004, analogue repeaters included a hangtimer which prevented a repeater from de-keying immediately after a transmission. This hangtimer ensured that the recipient had sufficient time to respond before the repeater de-keyed (as above, where a repeater de-keyed it would result in the repeater releasing the downlink frequency to allow for other system users to begin a transmission).
Mr Kuhrt then gave this evidence in Kuhrt-1 at §117:
Analogue terminals often included a light that displayed to the user whether the repeater was keyed. If a transmission was sent to a de-keyed analogue repeater, the repeater searched for a CTCSS tone. The CTCSS tone was provided to safeguard the systems against inadvertently keying the repeater on any unintended transmissions. If the repeater detected a valid CTCSS tone, it re-keyed, such that the repeater is able to then repeat received transmissions.
The meaning of this is not entirely clear to me. In particular, I am not clear on who provided the CTCSS tone in the third sentence. Overall, the most likely reading of this paragraph is that when it re-keyed the repeater would, before selecting a frequency upon which to broadcast, check to see that that frequency did not already have a CTCSS tone on it. If it did have such a tone, the repeater would re-key to a different frequency.
Digital Two-Way Radios
Digital two-way radios were introduced in around the 1990s. In digital two-way radios, voice (and data) is transmitted using binary digits (i.e. 1’s and 0’s) (‘bits’) over RFs. The use of the binary system allows for ‘error correction embedded signalling’ and ‘control information’ to be included in each transmitted packet. I explain these concepts below at [57]. Each packet contains an assembly of bits. For present purposes, digital radios also introduced two other relevant innovations. First, the software in a digital radio contains an algorithm which understands the difference between voice audio and background noise. As a result, unwanted background noise is not transmitted to the radio’s speaker and digital radios provide users with enhanced voice capacity and higher-quality coverage.
Secondly, digital two-way radio technologies introduced the ability to divide single-call RF channels. By ‘single-call RF channels’ I mean that the frequency is devoted to the carrying of a single communication. In a digital radio communication, the fact that the transmission is made up of packets of data means that with appropriate timing protocols in place, more than one communication can be carried at one time on the same frequency. This means that multiple users could access a single channel at one time (discussed below at [75]). The first digital two-way radio systems were the:
(a)MPT1327 (analogue voice with digital control messaging, discussed below at [93]);
(b)APCO P25 (digital voice and data, discussed below at [100]); and
(c)Terrestrial Trunked Radio (‘TETRA’) (digital voice and data, described below at [107]).
A transmission from a radio user in a digital system comprises two key elements:
(a)the payload; and
(b)embedded signalling information (also known as ‘control information’).
Mr Kuhrt described transmissions in digital radio systems as having three elements and in a summary section distinguished embedded signalling information from control information. However, his subsequent discussion treated control information as embedded signalling information: see Kuhrt-1 at §§120, 122-123. For present purposes, I will assume that his substantive discussion reflects the correct view.
Payload
As I have explained above, payload is the term used to describe the part of a transmission that contains the substantive communication (as opposed to, for example, the control information). It is a type of data that is transmitted in large blocks made up of many bits and usually relates to voice based or data based transmissions. When voice is being transmitted it is typically referred to as ‘voice payload’. Similarly, when data is being transmitted it is referred to as ‘data payload’.
Embedded Signalling (Control Information)
After a process referred to as synchronisation (described below at [59]), the receiving station needs to determine what sort of transmission is in progress. This is performed using ‘embedded signalling’ which is also known as control information. Control information is decoded messages which consist of bits or words (which are groups of bits). These messages give information about certain parts of the transmission. For example, the control message could give information about the payload type by differentiating between voice or data, the source of the transmission (i.e. which radio device the message has come from), or the recipient of the message which could be a single radio, a talkgroup or a ‘colour code’. I return to colour codes later in these reasons but, for present purposes, colour codes may be understood as referring to the geographical area covered by a particular base station.
Data Frames
Control information is contained within what are called ‘data frames’. A data frame is the frame in a digital communication system which the bits that are used to carry voice and data are packaged into. A frame is a unit of repeating structure and typically includes a specific number of bits. Bits relating to specific functions (e.g. the payload, frame synchronisation, and control messages) are assigned a specific location within a frame. A set frame structure is important as the receiving device needs to be able to decode the bits within a frame. For example, the receiving device needs to know which series of bits provide the payload portion of the received frame.
Frame Synchronisation
In order for these data frames to be transmitted, the sending and receiving stations must be in synchronisation. Synchronisation is important for what are referred to as ‘multiple access communications systems’. The current litigation is concerned with such systems. These are discussed below in more detail at [75]. Synchronisation is important in multiple access communications systems because the receiving device needs to determine which portion of the data on an RF is intended for that receiving device. When in use, a receiving device receives a constant stream of bits during the digital transmission. Frame synchronisation enables a receiving device to differentiate between the different portions of the constant stream of data so that it can determine the portion of the data that corresponds to the payload. As I understood this evidence, it means that in a data frame, if different groups of bits are assigned for different purposes, the receiving device must be able to know which part of the stream it is looking at. If a data frame is 216 bits in length, for example, and the first bit of the frame signals some particular meaning (such as whether the channel is active), then this meaning will be lost if the receiving device does not know where the frame starts.
To enable frame synchronisation, digital terminal and repeater devices include a crystal. The crystal is an electronic element made from quartz crystal which is used to generate an internal timing reference (like an internal clock). The purpose of frame synchronisation is to synchronise the internal clock of the receiving device (such as a terminal) with the internal clock of the transmitting device (such as a repeater). The purpose of this clock synchronisation is so that the receiving device is then able to recognise the start and end of the data frames. Once the receiving device knows this, it can locate specific portions of the incoming data within each frame.
To synchronise with a transmitting device, a receiving device locates what is known as a ‘synchronisation pattern’ or ‘synchronisation word’. A synchronisation pattern or synchronisation word is a known data sequence that is transmitted at certain times or ‘intervals’ during a transmission. This synchronisation pattern is a series of bits that form a word and is a specific sequence of 1’s and 0’s that the receiving device will recognise. I would say by way of further explanation that the two devices do not need to be have been synchronised in order for the synchronisation pattern to be recognised. That is, the synchronisation pattern can be transmitted asynchronously. A useful non-technical analogy might be to think of a train made up of carriages (data frames). The synchronisation pattern corresponds to a fixed symbol in the middle of each carriage (such as a corporate logo). Since it is known how far apart the logos on each carriage are from each other, it is easy to set one’s clock to the same speed as the train just by timing how long passes between each logo. Once that is known, one can access the carriages of the train in sync with its speed and access defined portions of the carriages using one’s own clock. For example, the first 1 m of each carriage might contain information about where the carriage is going.
More technically, recognition of the synchronisation pattern allows for frame synchronisation between a receiving and transmitting device. Typically, the synchronisation pattern is located at the start or the middle of the data frame. Once a device locates the recurring synchronisation pattern (recurring because it is located in each repeating frame), the receiving device is able to determine where the pattern is in the data stream and is then able to decode the incoming frames to obtain relevant information.
Frame Synchronisation in Repeater Mode
Terminals operating in repeater mode (i.e. where they are communicating through a repeater) synchronise to the reference timing set by the repeater. The repeater sets the reference timing (meaning the timing of the repeating frames) and, as such, the timing of the synchronisation patterns. This ensures that all of the terminals that are connected to the repeater are working to the timing reference and are synchronised to the repeater without conflicting with one another. This is important where multiple channels are included on the one frequency (a topic discussed below). Communications which are received out of synchronisation are ignored by a repeater unless the signal is a ‘wake-up’ message (which I discuss below at [72]).
Terminals can lose synchronisation for a variety of reasons. A loss of signal is generally referred to as a signal drop-out or a loss of carrier. Drop-outs can be short (such as a few milliseconds) or long (such as several seconds). Longer drop-outs may occur when the terminal moves too far away from the repeater or during periods of interference (such as when a terminal moves underground or under a bridge and is unable to maintain a signal with the repeater).
A phenomenon referred to as ‘Rayleigh fading’ causes short term drop outs in two-way radio systems. Fading may occur due to radio waves reflecting off buildings or other objects which cause an interference to radio signals. In this circumstance, the RF carrier (i.e. signal strength) may drop down to zero and then return very quickly (e.g. within milliseconds).
In digital two-way radio systems, terminals communicating in repeater mode may temporarily maintain data synchronisation (or reference timing) during short periods of interference. This is typically a short period of time, however, as the reference timing being maintained by the terminal will begin to drift from the timing which was being provided by the repeater before the interference occurred. The period of time that a terminal is able to maintain frame synchronisation for when there is an interference is dependent on a range of factors including the quality of the terminal’s hardware such as the crystal. For example, the period of time for which a terminal is able to maintain adequate frame synchronisation may be less than one second. When the period of interference ends and the terminal again receives data from the repeater’s downlink (including the synchronisation pattern), it will adjust its timing, if required, to ensure that synchronisation with the repeater remains in place.
The eventual drift between a terminal’s reference timing and the repeater’s timing means that after a period of time without receiving transmissions from the repeater, the terminal may then need to resynchronise with the repeater once again to receive and transmit data.
Examples of Systems Using Frame Synchronisation
An example of a two-way radio system that includes frame synchronisation is a system called APCO P25 (discussed below). In P25 systems, a special sequence of 48 bits (a synchronisation pattern) is located at the beginning of a frame. In a P25 system, frame synchronisation occurs at the beginning of every message and is inserted every 180 msec throughout the voice message. MPT1327 devices (discussed below) also rely on frame synchronisation in order to decode messages. In TETRA systems (discussed below), the repeater sends out frames in a repeating structure at constant intervals. The receiving device recognises the synchronisation pattern is being received at every interval and will set its own clock to match the intervals of the synchronisation pattern. The terminal can then decode the incoming data frames to obtain relevant information such as the control information or payload. Also inbuilt into the system is a feature that is called ‘forward error correction’ which is designed to compensate for a small percentage of lost data stream (which can occur if the user goes out of range).
Scanning in Digital Two-Way Radio Systems
P25 terminals (discussed below) are able automatically to scan frequencies in a conventional two-way radio system. Transmissions between repeaters and terminals include embedded control messaging that allows for the late entry into conversations (such as talkgroup conversations) by scanning terminals.
TETRA terminals also automatically scan. However, TETRA terminals scan control channels rather than traffic channels. This occurs periodically to determine if a control channel with an improved signal strength can be identified. Prior to 26 July 2004 (one of the priority dates), the length of time it took automatically to scan frequencies in analogue systems was a well-known problem. Prior to that date, the known digital two-way radio systems provided little improvement on the length of time it took automatically to scan frequencies.
De-keying and Re-keying in Digital Two-Way Radios
Similar to analogue repeaters, digital receivers have a hangtimer which prevents the repeater from de-keying immediately after a transmission. This ensures that the receiving user has sufficient time to respond to a communication before the repeater de-keys.
In conventional digital two-way radio systems, repeaters require a ‘wake-up’ message in order to re-key. The repeater’s uplink continues to monitor the frequency so the repeater is able to receive transmissions from terminals. This allows terminals to transmit a wake-up message to the repeater, enabling it to re-key. Although the specific type of wake-up message differs between two-way radio systems, every digital system will look for a valid transmission in order successfully to re-key.
As previously discussed, terminals are able temporarily to maintain data synchronisation or reference timing during short periods of interference. A short period of interference has the same effect as a condition where a repeater initially de-keys. In both circumstances, the terminal will no longer receive any data from the repeater’s downlink. As such, in both circumstances, the terminal will temporarily maintain data synchronisation without requiring data (such as the repeating synchronisation pattern) to be received from the repeater’s downlink.
An issue which exists in conventional digital two-way radio systems is that communications could be lost when a repeater’s downlink is initially deactivated. This can occur because of the inability of a receiving terminal to maintain reference timing in a temporary data synchronisation state. When this occurs, it is possible that the terminal transmitting a communication may not recognise that the repeater has de-keyed. This presents an issue because the terminal may continue to transmit communications which are then not repeated to the intended receiver.
Multiple Access Methods
There are three well-known and generally accepted methods implemented to utilise the limited RF spectrum more efficiently in two-way radio wireless communications. These methods aim to increase the number of users communicating within a specific portion of the radio spectrum. They are:
(a)frequency division multiple access (‘FDMA’);
(b)time division multiple access (‘TDMA’); and
(c)code division multiple access (‘CDMA’).
CDMA was not used for two-way radio systems before 2004 and was instead used in cellular telecommunications systems.
1. Frequency Division Multiple Access (FDMA)
FDMA separates RF channels by frequency. For instance, for two-way radio communications, FDMA may split a 12.5 kHz channel into two, smaller, 6.25 kHz channels which communications can each be transmitted on. FDMA was introduced into digital two-way radio systems in the 1990s. It has been implemented into both digital and analogue two-way radio systems such as the P25 digital radio system. An illustration of FDMA channel splitting is this:
Using FDMA, a conversation occupies a whole channel exclusively, meaning there is one user and one conversation at a time per channel. To increase the number of channels it is necessary to increase the number of frequencies. However, it can be difficult and costly to obtain channel assignments from the regulator. For example, using FDMA, four users (each of whom wishes to communicate at the same time) would need access to four 6.25 kHz channels (which would be split from the two 12.5 kHz channels).
2. Time Division Multiple Access (TDMA)
TDMA was introduced in or around 1979 as a common multiple access technique for wired networks. It was first introduced to digital two-way radio systems in the 1990s and is still currently implemented into digital two-way systems. TETRA was the first system to implement TDMA in two-way radios.
TDMA separates RF channels into different timeslots while preserving the width of the 12.5 kHz channel. Timeslots are a defined period of time (usually a very short period of time) during which the sender’s communication is transmitted. TDMA allows several users to share the same channel. As a user transmits, their communication will be inserted into a timeslot of a very short, fixed period (such as 50 msec or one twentieth of a second). Usually, a mobile station operating in repeater mode will be allocated to a timeslot by a repeater whereas a mobile station operating in direct mode is able to transmit in a free timeslot which is available on the frequency.
Users transmit in rapid succession which gives each user the impression that they have exclusive use of the channel and that their communication is being broadcast in real time. For example, in a two-timeslot TDMA system, two users can share one frequency at the same time. The distinction between FDMA and TDMA systems can thus be illustrated in the following way:
In a TDMA system, User 1 utilises the frequency for the first timeslot (slot 1 in the above diagram) then User 2 transmits for the next fixed period of time (slot 2). The channel then reverts back to User 1 who transmits for the next fixed period of time. The channel then reverts back to User 2 who transmits for the next time period and so on. The process occurs so quickly that neither user is aware that they are sharing a channel and neither experiences a delay in transmission. However, if more than two users wish to transmit, additional radio channels are needed. For example, in a two-timeslot TDMA system, four users who wished to communicate at the same time would require two 12.5 kHz frequencies.
TDMA introduced the ability to divide the physical channels (e.g. the 12 kHz channel) into logical channels. A logical channel is a channel which has the appearance and functionality of a channel but which is, at a technical level, actually made up of quite different constituent elements. So for example, a user could select a logical channel designated as channel 1. This logical channel consists of one slot on the transmit frequency and a corresponding slot on the receiving frequency. Although the communication is happening over two frequencies, those two frequencies constitute, so far as the user is concerned, a channel called ‘1’.
A half-duplex radio device cannot transmit and receive at the same time. However, using TDMA, such a device can constantly tune between the transmit and receive frequencies which has the effect of simultaneous transmitting and receiving for the user. This is possible for mobile stations operating in either repeater mode or direct mode.
Conventional Two-Way Radio Systems
At a high level, there are two categories of two-way radio systems: conventional and trunked systems. A ‘conventional system’ uses a dedicated repeater and a fixed number of RF channels. The user may manually select which channel they want to listen to. If a channel is in use, a user must wait for the channel to be free before being able to utilise that channel. Such a system may be illustrated this way:
In this set up, users select a channel on which to transmit. However, only one user can transmit on each channel at one time. So, the second and third users on Channel 1 (represented pictorially above in the second and third rectangles) as well as the second user on Channel 3 (the second circle) would be required to wait for the first user to finish transmitting on the frequency before they could use the channel for communications. In contrast, the police user (the sole user of Channel 2) can transmit immediately. Importantly, in a conventional two-way radio system, users cannot make use of the other channels which may be available unless they manually tune to them. In the above example, for instance, the second or third user waiting to transmit on Channel 1 (the ambulance users) could not utilise Channel 2 to transmit once the police user has finished transmitting unless they re-tuned their device to Channel 2.
The number of users who can successfully access a conventional system therefore directly corresponds to the number of channels that are available. As a result, conventional radios often have dedicated channels for specific users or groups of users. If an agency such as a police station wishes to add an extra channel or talk path they are required to seek a channel assignment from the regulator.
Trunked Systems
Trunking is not directly relevant to this case. However, one of the patents involves a concept known as ‘pseudo-trunking’. In order to understand what pseudo-trunking is, it is necessary to understand trunking.
A different category of two-way radio system is known as a trunked system, which was developed in around the 1980s. Unlike conventional two-way systems, trunked systems do not require users manually to select the channel upon which they wish to transmit. Instead, trunked systems automatically allocate users to an available channel (that is, one which is not in use) and release the channel once the user has finished transmitting (thus allowing other users to be automatically allocated to it). As a result, trunked systems increase the number of users who can use the system by more efficiently allocating the frequency resources which are available.
In the above example involving Channels 1-3, for instance, in a trunked system the second or third user waiting to transmit on Channel 1 would be able to utilise Channel 2 to transmit once the police user had finished transmitting without needing manually to change channels. This decreases the likelihood of the user having to wait for an available channel, increasing the number of users that can transmit using the radio system in a period of time.
To do this, trunked systems work by having users transmit to what is called a ‘control channel’. The control channel then allocates users to what are called ‘traffic channels’ on which they can communicate. Traffic channels can be shared between groups of radio users (or ‘talkgroups’ as explained above). An illustration of a trunked system is thus:
In Figure 8, the ambulance user could be allocated to Channel 1, both fire users could be allocated to Channel 2 and the police user to Channel 3. This means that members of the same talkgroup can share a traffic channel (and so share a frequency). Often, if one member of the talkgroup is transmitting a message (e.g. the first fire user), the other users (the second fire user) will be listening. This means the other users in the same talkgroup will not be using the channel to transmit at the same time.
WELL-KNOWN DIGITAL RADIO SYSTEMS BEFORE JULY 2004
The MPT1327 Standard
One of the first trunked two-way radio systems was the MPT1327 Standard. This is a standard which was developed by the United Kingdom Ministry of Posts and Telecommunications in the mid-1980s. It is a hybrid digital/analogue radio communication system in that it transmits both data (to set up a call) and analogue voice communications. It includes a trunked system controller that retains information including a list of terminal devices that are subscribed to the network, a record of the location of the terminals subscribed to the network, and the configuration of repeaters connected to the network. Each repeater in the network is connected to the traffic system controller with several cables, including a data cable for the dedicated control channel and physical cables for each of the repeaters that have traffic channels. MPT1327 systems include ‘sites’ that each typically include several connected repeaters. One of the repeaters in each site operates as the dedicated control channel and the remaining repeaters are associated with the traffic channels.
Terminals connected to an MPT1327 network communicate with the dedicated control channel in order to set up and receive calls. Unless the system includes a time shared control channel, system users are typically allocated a traffic channel on the site that they are connected to in order to communicate with another system user. In a time shared MPT1327 system, the control channel can also be allocated as a traffic channel.
Scanning in MPT1327
Terminals in an MPT1327 system automatically scan the control channels associated with repeaters in the network on a regular basis to determine if a site with increased signal strength is able to be located. To enable the automated scanning process, the terminals include a list of frequencies associated with control channels as well as associated repeater identifications in the network that are saved to memory in the terminal.
MPT1327 terminals typically included more frequencies saved to the memory to which the terminal is subscribed. For example, in the 2000s, Victoria was split into geographical regions such as city and country regions. In order to use multiple regions, the terminal needed to be a subscriber to repeaters associated with sites located in the multiple regions. If the terminal was not a subscriber to a repeater in a particular region, the trunked system controller would not allow the terminal to lock onto a control channel, even if the control channel was stored to memory within the scanning terminal.
The repeater associated with the control channel for each site transmits control messages on the control channel to perform an action, such as setting up calls. The control messages included information such as the identification of a source terminal, the identification of a talkgroup, the identification of a site and the identification of a repeater (i.e. the traffic channel). Examples of control messages which are used by MPT1327 systems include:
(1)A Go To Channel Message (‘GTCM’): The GTCM is transmitted by a repeater on the control channel to connected terminals to set up calls. It can be used to allocate a terminal to a particular talk channel, which can also be the control channel for systems that utilise a time shared channel (e.g. a channel that, at different times, is used as a control channel and a talk channel). The GTCM is referred to in Section 5.4 of the MPT1327 Standard. The GTCM includes the following information:
(a)Destination identification or group identification;
(b)Source identification; and
(c)Channel information.
(2)A Vote Now Message (‘VNM’): On occasion, a repeater uses a version of the broadcast message to transmit a control message on the associated control channel to the terminals connected to the site associated with that repeater to instruct the connected terminals to scan for a frequency with a higher signal strength; and
(3)A Short Data Message (‘SDM’): SDMs have a specified size but could be used by service providers to transmit any form of data. For example, the SDM was used to send GPS location reporting messages as this information could be transmitted using the specified data size. SDMs were transmitted on the control channel. In order to allocate specific data to an SDM, users needed to make a request to the trunked system controller.
MPT1327 used fast frequency shift keying (‘FFSK’) to transmit data over the control channel. FFSK implements a technique that allows for digital data to be transmitted using an analogue signal. An electromagnetic carrier wave is used to carry the digital data over a distance and connect repeaters with terminals in remote locations. In FFSK, the repeaters transmit data on the control channel by modulating the carrier frequency between two discrete values. Each of the discrete values correspond to a zero and a one (the components of digital data). The terminals are able to receive and decode the digital data corresponding to control messages then perform the desired functions.
De-keying in MPT1327
MPT1327 terminals are not able to communicate with each other in direct mode but use repeaters to transmit. Similar to conventional analogue two-way radio systems, the repeaters in trunking two-way radio systems (such as MPT1327) de-key when the downlink associated with the repeater is not in use (e.g. when the traffic channel is released). At the end of a transmission, terminals leave the traffic channel that was being used for a communication. A message is then sent to the traffic system controller, indicating that the conversation is complete. After certain conditions are met, such as after the expiration of a timer, the traffic system controller sends a message to the repeater associated with the traffic channel that is no longer in use and instructs the repeater to de-key. It is not clear to me how an MPT1327 repeater in such a configuration re-keys.
APCO P25
Given the use in currently-offered Hytera devices of componentry which makes use of these circuit layouts, and the prospect that future products might also rely on them, the commercial sensitivity of these documents will endure for a number of years: §§44-45.
Consideration
Virtually all of the content in CB 9.08 and CB 9.17 is circuit layouts. I accept that if this information were publicly disclosed, commercial prejudice would accrue to Hytera including because of its potential value in the hands of competitors. I am satisfied, therefore, that the orders should be made.
In the case of CB 14.01, which is confidential annexure EV-10 to the affidavit of Professor Viterbo affirmed 31 January 2019, I am satisfied that the proposed redactions are appropriate.
As with the foregoing Parts of Annexure MAV-145, the proposed duration of the order is appropriate for the purposes of s 37AJ.
Document Disclosing the Values of Certain Operation Codes (Part E of Annexure MAV-145)
Proposed Order
The proposed order set out under Part A covers Part E also.
Evidence
There is only one document in Part E, C14.011, which Hytera asserts is confidential in part.
What that document contains is the values of the opcodes assigned to various operations capable of being performed by Hytera DMR devices: Vincent-38 at §47.
The sensitivity of this information inheres not in its potential value to trade rivals but rather to its potential range of misuses were it to fall into the hands of hackers: §48.
The opcodes are in use in existing Hytera DMR devices and depending on the nature and timing of updates made to the source code underpinning those devices, this security risk may endure for a number of years: §49.
Consideration
I am satisfied that this document should be partially suppressed in the manner suggested by Hytera for the duration that it seeks.
Price Information in Picking Slips (Part G of Annexure MAV-145)
Proposed Order
Hytera seeks the following orders in respect of the document listed in Part G:
3.Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and subject to any restrictions imposed by the Confidentiality Regime and/or the MSI Code Confidentiality Regime (as applicable), access to and disclosure (by publication or otherwise) of the unredacted versions of the documents identified as “confidential in part” in Part G of Annexure MAV-145 to Vincent #38 be restricted to the Respondents (and their experts) and the legal representatives of the Respondents, and those persons to whom access is allowed under the terms of the Confidentiality Regime.
4.Order 3 shall operate until 4 pm on the date that is three years after the final day of the trial on liability in this proceeding, or further order.
Evidence
There is only one document listed in Part G, C9.16, which Hytera asserts is confidential in part.
The document is described as a ‘picking slip’ but in reality is a bundle of invoices. The invoices record information relating to sales of Hytera DMR products to Hytera’s Australian distributor and dealers: Vincent-38 at §58.
The information is confidential in part – Hytera proposes that the prices on the invoices be suppressed and that a copy with the prices redacted be filed.
Hytera points to the value of pricing information to its competitors as the source of the commercial prejudice which it says it would suffer if the information were publicly disclosed: §60.
Consideration
I accept that pricing information is sensitive, especially at the distribution/dealership level because it can readily be used by competitors to determine advantageous discounts on their own products in order to entice distributors and dealers to purchase from them rather than Hytera.
In general, I am reluctant to order suppression of information relating only to historical transactions. However, I accept that this pricing information will remain sensitive at least in the medium term and therefore that an order for the duration proposed by Hytera (three years post trial) is appropriate.
Other Confidential Hytera Business Information (Part H of Annexure MAV-145)
Proposed Order
The proposed order set out under Part A covers Part E also.
Evidence
There are four documents in Part H, all of which Hytera asserts are confidential in full: CB 7.10A(a), CB 9.16, CB 9.18 and CB 9.19.
This information is not said to be confidential because of its technical nature or its relevance to the digital security of Hytera’s products. Rather, it is said to be confidential information pertaining to Hytera’s business practices more broadly, including competitor analysis, business performance data, sales forecasts, product strategy and so forth. The information is said to be treated as confidential by Hytera and the prospect of its being disclosed is said to represent a risk to Hytera’s competitive advantages: Vincent-38 at §64.
Consideration
The information contained in the Part H documents is akin to that contained in Motorola’s Part D documents and it is appropriate that it be treated consistently.
Having reviewed each of the four documents, notwithstanding that there are some portions which are not in English, it is clear that substantially all of the information they contain is commercially sensitive in the manner claimed. I therefore think it appropriate that the orders proposed by Hytera be made.
Personal Information (Part I of Annexure MAV-145)
Proposed Order
Hytera seeks the following orders in respect of the documents listed in Part I:
5.Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and subject to any restrictions imposed by the Confidentiality Regime and/or the MSI Code Confidentiality Regime (as applicable), access to and disclosure (by publication or otherwise) of the unredacted versions of the documents identified in Part I of Annexure MAV-145 to Vincent #38 be restricted to the Respondents (and their experts) and the legal representatives of the Respondents, and those persons to whom access is allowed under the terms of the Confidentiality Regime.
6.Order 5 shall operate until further order.
Evidence
The documents listed in Part I of Annexure MAV-145 are:
Part I.1 – Human resources records and communications of a personal nature
#
Court Book Reference
Confidentiality Claim (Full/Part)
114.
CB C9.08
In part
115.
CB C14.034
In part
116.
CB C14.081
In part
117.
CB C14.522
In part
118.
CB C14.523
In part
119.
CB C14.524
In part
120.
CB C14.525
In part
121.
CB C14.527
In part
Part I.2 – Email addresses and telephone numbers of Hytera employees and third parties
(All documents in Part I.2 are designated “confidential in part”. Hytera seeks suppression orders restricting access to, and disclosure of, the email addresses and telephone numbers of current and former Hytera personnel and third parties contained in these documents).
#
Court Book Reference
#
Court Book Reference
#
Court Book Reference
122.
CB C8.08
123.
CB C8.09
124.
CB C8.10
125.
CB C8.12
126.
CB C8.14
127.
CB C8.20
128.
CB C8.24
129.
CB C8.25
130.
CB C8.26
131.
CB C8.27
132.
CB C8.29
133.
CB C13.02
134.
CB C13.03
135.
CB C13.04
136.
CB C13.06
137.
CB C13.09
138.
CB C13.18
139.
CB C13.19
140.
CB C13.26
141.
CB C13.28
142.
CB C13.30
143.
CB C13.31
144.
CB C13.32
145.
CB C13.33
146.
CB C14.003
147.
CB C14.004
148.
CB C14.005
149.
CB C14.007
150.
CB C14.009
151.
CB C14.011
152.
CB C14.017
153.
CB C14.019
154.
CB C14.021
155.
CB C14.023
156.
CB C14.032
157.
CB C14.037
158.
CB C14.048
159.
CB C14.049
160.
CB C14.050
161.
CB C14.051
162.
CB C14.052
163.
CB C14.053
164.
CB C14.055
165.
CB C14.057
166.
CB C14.058
167.
CB C14.059
168.
CB C14.060
169.
CB C14.061
170.
CB C14.062
171.
CB C14.063
172.
CB C14.065
173.
CB C14.067
174.
CB C14.068
175.
CB C14.069
176.
CB C14.070
177.
CB C14.071
178.
CB C14.072
179.
CB C14.073
180.
CB C14.074
181.
CB C14.075
182.
CB C14.076
183.
CB C14.077
184.
CB C14.078
185.
CB C14.082
186.
CB C14.084
187.
CB C14.087
188.
CB C14.095
189.
CB C14.128
190.
CB C14.131
191.
CB C14.133
192.
CB C14.163
193.
CB C14.164
194.
CB C14.165
195.
CB C14.166
196.
CB C14.167
197.
CB C14.168
198.
CB C14.169
199.
CB C14.170
200.
CB C14.172
201.
CB C14.173
202.
CB C14.175
203.
CB C14.176
204.
CB C14.178
205.
CB C14.179
206.
CB C14.181
207.
CB C14.182
208.
CB C14.183
209.
CB C14.184
210.
CB C14.187
211.
CB C14.196
212.
CB C14.197
213.
CB C14.201
214.
CB C14.469
215.
CB C14.539
216.
CB C14.541
217.
CB C14.542
218.
CB C14.544
219.
CB C14.545
220.
CB C14.546
221.
CB C14.547
222.
CB C14.548
223.
CB C14.550
224.
CB C14.552
Documents listed in Part I.1 contain personal information concerning current and former Hytera employees as well as some third parties: Vincent-38 at §66. Mr Vincent gave evidence on information and belief from Mr Zeping Duan, Hytera’s in-house counsel, that Hytera is subject to various obligations in overseas jurisdictions, including China and the United Kingdom, concerning the maintenance of the privacy of this information: §§67-69.
Documents in Part I.2 are said to be confidential in part. Hytera seeks orders suppressing certain information within them, principally in the nature of email addresses and phone numbers of current and former Hytera employees: §72.
Hytera proposes that redacted copies of these documents be filed.
Consideration
As with the personal employee information the subject of the Motorola Application, I am satisfied that the orders sought by Hytera should be made.
Having reviewed the proposed redactions for the documents in Part I.1, I consider that they are appropriate.
The Court was not provided with proposed redactions for the (more numerous) set of documents listed in Part I.2. However, on the basis of Mr Vincent’s evidence that what is proposed to be redacted is telephone numbers and email addresses, I am content with that course.
Proposed order 6 provides for no self-executing expiry of proposed order 5. However, as with the equivalent documents in Part D of the Motorola Application, given the nature of the information (bolstered in this case by the fact that the orders apply to parts of the documents rather than the documents as a whole) I am satisfied that the orders are consistent with s 37AJ.
Other Confidential Documents Filed with the Court (Part J of Annexure MAV-145)
Proposed Order
Hytera seeks the following orders over the documents listed in Part J:
7.Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and subject to any restrictions imposed by the Confidentiality Regime and/or the MSI Code Confidentiality Regime (as applicable), access to and disclosure (by publication or otherwise) of the following documents is restricted to the Respondents (and their experts) and the legal representatives of the Respondents, and those persons to whom access is allowed under the terms of the Confidentiality Regime:
(a).the documents identified as “confidential in full” in Part J of Annexure MAV-145 to Vincent #38); and
(b).the unredacted versions of the documents identified as “confidential in part” in Part J of Annexure MAV-145 to Vincent #38.
8.Order 7 shall operate until further order.
Documents
There are two documents in Part J:
·Confidential Annexure CM-5 to the third affidavit of Chen Ma dated 21 January 2019, filed with the Court on the same date (in full); and
·Bundle of correspondence on issues before Justice Perram on 6 September 2018, being Sch 1, Pt 2 to the letter from MinterEllison to Herbert Smith Freehills dated 22 August 2018 (in part, page 30 only).
Consideration
The first document relates to order 2 of the orders I made on 28 November 2018. That order was in these terms:
2.If the Respondents intend to withhold or redact any documents on the basis of the Chinese State Secrets Law, by 25 January 2019, the Respondents are to file an affidavit given by Mr Chen Ma, or such other independent expert as is engaged by Hytera for the purpose of reviewing documents for State Secrets information, which:
(a)verifies that, in the expert’s opinion, one or more discoverable documents are subject to the Chinese State Secrets Law;
(b)identifies the number (to the extent permissible under the Chinese State Secrets Law) of such documents;
(c)explains (to the extent permissible under the Chinese State Secrets Law) the basis for that opinion; and
(d)contains a log of each of those documents which includes date, author, and recipient information, as well as information sufficiently describing the contents of any material alleged to be subject to the Chinese State Secrets Law to allow it to be identified as such (to the extent permissible under the Chinese State Secrets Law). To the extent the expert considers that it is not permissible, under the Chinese State Secrets Law, to comply with any aspect of the requirements for this log in relation to any particular document(s), the expert must use best endeavours to explain the reason it is not permissible.
CM-5 is a document withheld by Hytera for the reason mentioned in the order: Vincent-38 at §73. It was an exhibit to the third affidavit of Chen Ma. The document is titled ‘State Secrets Document Log’. Hytera asserts that it is confidential because it identifies documents subject to the Chinese State Secrets Law and also because it contains the email addresses of Hytera employees: Vincent-38 at §73(a).
I accept that a s 37AF order should be made in respect of this document.
The second document contains a page, page 30, which Hytera says should be suppressed because it identifies and discloses metadata details of documents subject to a claim for legal professional privilege and also because it discloses the email addresses of Hytera employees: §73(b). I also accept that the order sought should be made in respect of this document.
In each case, although the order is not expressed to be time-limited, I am satisfied that the duration is appropriate for the purposes of s 37AJ having regard to the nature of the information and the reasons for which it is suppressed, in particular the legal obligations necessitating the maintenance of its confidentiality.
JOINT APPLICATION: EP LICENCE AGREEMENT BETWEEN MOTOROLA AND HYTERA
Proposed Order
The parties jointly seek the following orders:
1.Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), access to and disclosure (by publication or otherwise) of the following documents is restricted to the parties (and their experts) and the legal representatives of the parties, and those persons to whom access is allowed by the agreement of the parties:
(a)the documents listed in Part 1 of Annexure A to these orders; and
(b)the unredacted versions of the documents listed in Part 2 of Annexure A to these orders.
2.Order 1 shall operate until the earlier of the date on which the terms of the EP Licence (as that term is defined in the thirty eighth affidavit of Mark Andrew Vincent dated 30 June 2021) are publicly disclosed, or the date that is 3 years after the date on which the EP Licence ceases to be in force, or further order.
3.The parties have liberty to apply to the Court to extend the date referred to in Order 2 provided any such application is filed with the Court at least one month prior to its expiry.
4.Order 1 is made on the ground that it is necessary to prevent prejudice to the proper administration of justice.
Documents
Part 1 of Annexure A to the proposed orders lists these documents:
Pleadings
1.Confidential Annexure A to Hytera’s Seventh Further Amended Defence (CB C1.05(a))
2.Confidential Annexure 1 to Motorola’s Third Further Amended Reply (CB C1.06(a))
3.Confidential Annexure A to Hytera’s Second Further Amended Defence (CB 2.03(a))
4.Confidential Annexure 1 to Motorola’s Second Further Amended Reply (CB 2.04(a))
5.Confidential Annexure 1 to Motorola's Reply dated 7 November 2017
6.Confidential Annexure 1 to Motorola's Amended Reply dated 11 December 2017
7.Confidential Annexure 1 to Motorola's Further Amended Reply dated 11 April 2019
8.Confidential Annexure A to Hytera’s Defence dated 12 October 2017
9.Confidential Annexure A to Hytera’s Amended Defence dated 20 October 2017
10.Confidential Annexure A to Hytera’s Further Amended Defence dated 19 February 2019
11.Confidential Annexure A to Hytera’s Third Further Amended Defence dated 18 December 2019
12.Confidential Annexure A to Hytera’s Fourth Further Amended Defence dated 22 January 2020
13.Confidential Annexure A to Hytera’s Fifth Further Amended Defence dated 5 June 2020
14.Confidential Annexure A to Hytera’s Sixth Further Amended Defence dated 25 June 2020
Annexures to affidavit evidence
15.Confidential Annexures RKC-10 and RKC-11 to third affidavit of Robert Cooper dated 22 December 2017 and filed with the court on 28 December 2017
Exhibits and tenders
16.Tabs H.1 and H.2 of Hytera’s Tender List (CB C14.463 and C14.464)
Part 2 of Annexure A to the proposed orders lists these documents:
Submissions
17.Hytera’s Outline of Opening Submissions on Patent Issues (CB C2.04)
18.Motorola’s Outline of Closing Submissions – Module I: Remaining Patent Issues (CB C02A.1)
19.Hytera’s Outline of Closing Submissions – Module I: Patents (CB C02B.1).
Evidence
The information contained in these documents discloses, either directly or in summary form, the contents of the EP Licence Agreement between Motorola (initially its predecessor entity Motorola, Inc.) and Hytera.
Both Ms Gilchrist on behalf of Motorola and Mr Vincent on behalf of Hytera gave evidence in support of the orders sought.
Ms Gilchrist’s evidence was to the following effect.
First, Ms Gilchrist noted that the Court has previously considered the confidentiality of the terms of the EP Licence Agreement in the 2018 Suppression Order Reasons: Gilchrist-30 at §32. On that occasion, Hytera sought orders under s 37AF which would have applied to various documents disclosing the terms of the EP Licence Agreement, for a duration of 10 years. Motorola did not make a cognate application but supported the application by Hytera. I did not accede to Hytera’s application but did make orders under s 37AF which applied for three years. I return to the significance of this below.
Secondly, Ms Gilchrist gave evidence on information and belief from Mr Bartusiak that (§33):
·[Redacted];
·[Redacted];
·Motorola has other licence agreements with third parties each of which has different features and some of which include obligations to license essential IP rights on fair, reasonable and non-discriminatory (‘FRAND’) terms; and
·consequently, disclosure of the terms of the EP Licence Agreement while it remains in force will prejudice Motorola by impacting adversely its future licensing negotiations with third parties and, potentially, by creating disputes under existing licence agreements because of the FRAND obligations which those other agreements contain.
Motorola estimates that the EP Licence Agreement is likely to remain in force for at least another 20 years, and likely much longer than that: Gilchrist-30 at §33(d).
Mr Vincent’s evidence on information and belief from Mr Duan was to the following effect.
First, neither the EP Licence Agreement nor its terms have been publicly disclosed: §56(a).
Secondly, disclosure would cause Hytera prejudice in future licensing negotiations with third parties because (§56(b)):
·third parties would know licence terms to which Hytera was prepared to agree including royalty rates that Hytera was prepared to pay;
·Hytera would not know corresponding information about those with whom it is negotiating; and
·this information asymmetry would put Hytera in a position of distinct competitive disadvantage in such negotiations.
Thirdly, in Mr Duan’s view, prejudice would be likely to accrue if the terms of the EP Licence Agreement were disclosed at any time while it remained in force: §57. This view was based on:
·the nature and lifespan of the DMR technology that is the subject of the agreement;
·the fact that the life cycle for a professional telecommunications standard can be more than 30 years; and
·the additional circumstances identified in Confidential Annexure RKC-11. This is an annexure to the third affidavit of Robert Cooper sworn 22 December 2017 in support of the application the subject of the 2018 Suppression Order Reasons. Seeing as it is one of the documents now sought to be suppressed, I will not set out its contents, but will observe that it is consistent with and offers further support for the matters in Mr Vincent’s affidavit which I have just summarised.
Consideration
In the 2018 Suppression Order Reasons, I accepted Hytera’s explanation of the confidentiality and commercial sensitivity of the terms of the EP Licence Agreement and the prejudice which would flow if orders under s 37AF were not made: [15]. I adhere to the views I expressed there.
Owing to the progress of the litigation since the 2018 Suppression Order Reasons, a number of other documents have come into existence which reveal the terms of the EP Licence Agreement. This explains why the list of documents presently at issue is considerably longer than the list I set out at [4] of the 2018 Suppression Order Reasons.
With respect to those documents that were not covered in the 2018 Suppression Order Reasons, I make three comments.
First, items 1-14 are different versions of Confidential Annexure 1 to Motorola’s reply and Confidential Annexure A to Hytera’s defence. The confidential annexures contain a recitation, in direct or summary form, of the terms of the EP Licence Agreement. Items 5-14 are not in the court book and not otherwise before me, however, because these relate to earlier versions of the pleadings I infer that it was not thought necessary to include them in the court book (which was sensible given the number of amended versions of the pleadings). From a review of items 1-4, it appears that the only amendments made to Confidential Annexure 1 and Confidential Annexure A were to update the numerical references to the pleadings. For example, where Confidential Annexure A once referred to Hytera’s ‘fifth further amended defence’, this was updated to refer to Hytera’s ‘sixth further amended defence’. On that basis, I am content to treat items 5-14 the same way as items 1-4 even though only the latter were before me on the present application.
Secondly, the entire content of the two documents at item 16 (C14.463 and C14.464) comprises the terms of the EP Licence Agreement including amendments.
Thirdly, in the case of the submissions at items 17-19, the parties seek orders that small portions of these which quote or paraphrase the terms of the EP Licence Agreement be suppressed. Having reviewed the proposed redactions in Annexure MAV-146 to Mr Vincent’s affidavit, I consider that the proposed redactions are appropriate.
I am therefore satisfied, as I was in 2018, that this information should be subject to orders under s 37AF.
The more difficult question, again as it was in 2018, is the proposed duration of the order and the requirements of s 37AJ.
At [16]-[18] of the 2018 Suppression Order Reasons I said that the evidence which Hytera put on in support of its then-application was insufficient to persuade me that a 10-year duration was appropriate. I instead made an order which ran for three years and indicated that it was open to the parties to seek a longer term at a future time. The Joint Application is the means by which the parties have now taken up that invitation.
On that occasion, I identified two main problems with Hytera’s evidence. First, there was no direct evidence of the nature and lifespan of the DMR technology covered by the EP Licence Agreement. Secondly, that there was no evidence in support of the proposition that the life cycle of a professional telecommunication standard, central to the agreement, is generally longer lasting than 30 years. I made these observations while noting that the fact that a proposed order is agreed is a relevant consideration on applications of this kind: citing Australian Broadcasting Commission v Parish (1980) 29 ALR 228 at 254 per Deane J; LHRC v Deputy Commissioner of Taxation (No 4) [2015] FCA 70; 326 ALR 150 at [25] per Perry J.
In one respect, the evidence on the Joint Application is not improved: both Motorola and Hytera have chosen to lead evidence on information and belief rather than direct evidence. However, in important other respects, the evidence is more detailed and more persuasive than it was in 2018. In particular:
·both parties have cogently explained why the relevant risk of prejudice will continue to exist while the EP Licence Agreement remains in force, given the licence negotiation dynamics which obtain in the market and which involve third parties; and
·the duration of the licence is itself explained by the parties’ shared expectation that the DMR technology to which it relates will continue to be commercially exploited for many years, indeed decades, and the licence is designed to operate for the life of extant patents (which confer up to 20-year monopolies) and to be capable of amendment to accommodate new patent rights which may be granted in future.
Despite some renewed assurance on information and belief that professional telecommunications standards – like the one upon which the EP Licence Agreement is based – typically run for around 30 years, this evidence was again quite vague and I am not any more certain of the accuracy of that proposition than I was in 2018. However, given the matters just articulated, I am less troubled by this point.
In the circumstances, I accept that it is reasonably necessary given the purpose for which the order is to be made that it apply for the life of the EP Licence Agreement plus a short additional period after it ceases to operate (unless its terms are earlier disclosed publicly in which case the order will expire at that time). However, I do not accept that a period of three years after the EP Licence Agreement ceases to operate is reasonably necessary. I consider that a one-year period is more appropriate as this is a reasonable time post-expiry for the parties to consider the position and come back before the Court with a renewed application if they wish for the suppression period to be extended.
Accordingly, proposed order 2 of the Joint Application should be amended to read:
Order 1 shall operate until the earlier of the date on which the terms of the EP Licence (as that term is defined in the thirty eighth affidavit of Mark Andrew Vincent dated 30 June 2021) are publicly disclosed, or the date that is 1 year after the date on which the EP Licence ceases to be in force, or further order.
There is a final matter to note. In Part E of Annexure SMG-151 to Ms Gilchrist’s affidavit, i.e. the Part that now relates to the Joint Application, there is a document listed which is not covered in the annexure to the proposed orders the subject of the Joint Application. This is the Consolidated Particulars to Paragraph 36 and Confidential Annexure A to Hytera’s Seventh Further Amended Defence (CB C1.05(b)). Having reviewed that document, I cannot fathom why it was omitted from the jointly proposed orders. If this was a mistake, the parties may include it in the revised short minutes which I will require them to submit.
‘OVERLAP’ DOCUMENTS
At the time of submitting the orders sought in each of the three applications, the parties drew to the Court’s attention an issue concerning what they described as the ‘overlap documents’.
The overlap documents are so named because they are dealt with in both the Hytera Application and the Motorola Application. The parties are concerned to ensure that, if orders made pursuant to either of the applications are subsequently vacated, this will not affect the orders made pursuant to the other application which bear upon the same documents.
The parties floated the idea of formulating a notation in each set of orders. Although I do not think a notation is strictly necessary – each set of orders will take effect according to its terms unless and until set aside, varied or vacated – I do consider that a notation will assist court staff, practitioners and the public to understand the relationship between the three applications and the effect of the orders the Court will make.
As such, I will direct that the parties confer and formulate an agreed notation to be included in revised short minutes of order for each of the Hytera Application and Motorola Application.
CONCLUSION AND DISPOSITION ON SUPPRESSION ORDER APPLICATIONS
With respect to the Hytera Application, Hytera should submit a revised short minute of order which includes the agreed notation for the overlap documents. I will then make the orders sought.
With respect to the Joint Application, the parties should confer and submit an agreed revised short minute of order giving effect to the above reasons.
With respect to the Motorola Application, Motorola should submit a revised short minute of order giving effect to the above reasons which includes the agreed notation for the overlap documents and is accompanied by proposed redacted copies of the written submissions.
XX FINAL MATTERS
OUTLINE
In this Chapter I deal with:
(a)declaratory relief;
(b)the tender of certain translations;
(c)costs;
(d)confidentiality orders;
(e)the non-publication of the judgment and the preparation of a set of redacted reasons;
(f)a further hearing on quantum and leave to appeal; and
(g)the orders to be made.
DECLARATORY RELIEF
Neither party made submissions about declaratory relief. In principle, I accept that the declarations should be made in relation to the invalid patents. Apart from that I see little utility in any other declarations. The Court’s conclusion will be apparent from the other forms of relief granted.
TENDER OF TRANSLATIONS
Motorola sought to tender translations of PTX-0422, PTX-0620 and PTX-2203. Hytera did not object to the tender: HCS(C) Mod III(Supp) at [90]. The translations will be admitted into evidence.
COSTS
In my view, given that an appeal is likely to be pursued, it would wasteful to enter upon the question of costs until the final outcome of the proceeding is known. However, if either party wishes to be heard on whether costs should be determined at this stage, this may discussed at the next case management hearing. I will fix a case management hearing for 9.30 am on 15 February 2023.
CONFIDENTIALITY ORDERS
I have dealt with these in the previous Chapter. Directions as there indicated should be included in the short minutes of orders.
NON-PUBLICATION OF REASONS
Prior to delivery of these reasons, I asked the parties to confer on appropriate orders limiting the publication of these reasons for judgment. They formulated a set of orders which I will include in the orders I will now make.
FURTHER HEARING ON QUANTUM AND LEAVE TO APPEAL
Both parties should have leave to appeal and, if necessary, leave to cross-appeal. If either or both exercise that entitlement, it would seem pointless to embark on the next question which is Motorola’s election between remedies. However, if necessary I will hear the parties on the future course of the remedies proceedings.
ORDERS
Prior to the delivery of these reasons for judgment, I requested the parties to submit draft orders which would prevent their publication until such time as the parties had had an opportunity to consider whether parts of the reasons might need to be redacted. A set of orders were agreed between the parties which achieve that outcome. I have varied those orders to permit the first eight paragraphs (which do not contain any confidential information) to be made publicly available immediately. I will also order the parties to confer with a view to drafting a minute of order giving effect to the conclusions I have reached including in relation to confidentiality. Pending the outcome of that process, I have extended the interim confidentiality arrangements to 1 March 2023. I therefore make the orders which appear at the beginning of these reasons.
I certify that the preceding two thousand three hundred and fifteen (2315) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Perram. Associate:
Dated: 23 December 2022
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