Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Defence Amendment)

• Jurisdiction: Australia Federal only
• Judge: PERRAM J
• Judgment Date: 06 March 2020
• Neutral Citation: [2020] FCA 280
• Date: 06 March 2020
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Defence Amendment) [2020] FCA 280

File number:	NSD 1283 of 2017
Judge:	PERRAM J
Date of judgment:	6 March 2020
Catchwords:	PRACTICE AND PROCEDURE – application for leave to file Fifth Further Amended Defence – where proposed amendments concern portions of Respondents’ computer code having been rewritten following allegations of copyright infringement – where Applicant prepared to concede at trial for purposes of claim for aggravated damages and Respondents’ delay defence that rewritten code does not infringe Applicant’s copyright – where Respondents claim rewritten code relevant to scope of general injunction sought by Applicant – consideration of objective to facilitate resolution of dispute as quickly, inexpensively and efficiently as possible
Legislation:	Copyright Act 1968 (Cth) ss 31, 36, 37, 38, 115 Federal Court of Australia Act 1976 (Cth) s 37M Federal Court Rules 2011 (Cth) rr 16.02, 16.53, 30.01
Cases cited:	CA Inc v ISI Pty Ltd [2012] FCA 35; 201 FCR 23 Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386 Cement Australia Pty Ltd v Australian Competition and Consumer Commission [2010] FCAFC 101; 187 FCR 261 Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 All ER 700 Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197; 172 FCR 580 John Richardson Computers Ltd v Flanders (1993) 26 IPR 367 Macquarie Bank Ltd v National Mutual Life Association of Australia Ltd (1996) 40 NSWLR 543 Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 6) [2018] FCA 2017 Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45; 147 CLR 589 Seafolly Pty Limited v Fewstone Pty Ltd [2014] FCA 321; 313 ALR 41 SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; 159 CLR 466 Tamaya Resources Limited (in liq) v Deloitte Touche Tohmatsu (A Firm) [2016] FCAFC 2 ; Ricketson S, The Law of Intellectual Property: Copyright, Design and Confidential Information (Thomson Reuters, subscription service)
Date of hearing:	12 February 2020
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Category:	Catchwords
Number of paragraphs:	66
Counsel for the Applicant:	Mr C A Moore SC with Mr A R Lang
Solicitor for the Applicant:	Herbert Smith Freehills
Counsel for the Respondents:	Mr C Dimitriadis SC with Mr C Burgess
Solicitor for the Respondents:	Shelston IP 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

JUDGE:	PERRAM J
DATE OF ORDER:	6 march 2020

THE COURT ORDERS THAT:

1. The parties bring in a minute of order to give effect to these reasons within 14 days.

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

REASONS FOR JUDGMENT

PERRAM J:

introduction A potted summary of the present dispute

1. This case concerns allegations by the Applicant (‘Motorola’) that the Respondents (‘Hytera’) have infringed three of its patents by, inter alia, selling and distributing in Australia two way radio handsets and base stations containing particular firmware and by infringing its copyright in certain computer code (‘the Motorola Works’) in most, but not all, of those devices. There are 59 individual product lines involved in the patent infringement allegations, most of which are handsets with a smaller number of base stations and repeaters also included. A subset of 50 of those devices is involved in the copyright allegations.

2. Hytera now applies for leave under r 16.53 of the Federal Court Rules 2011 (Cth) (‘FCR’) to file and serve a Fifth Further Amended Defence (‘5FAD’). The application is supported by two affidavits of Ms Katrina May Crooks affirmed on 22 January 2020 and 6 February 2020. The application is opposed by Motorola which relies upon an affidavit of its solicitor, Ms Sue Maree Gilchrist, affirmed on 29 January 2020 (incidentally, the twenty-first of hers filed in this proceeding). The proposed 5FAD was attached to Hytera’s interlocutory application for leave to amend filed on 23 January 2020, but an updated version was annexed to Ms Crooks’ affidavit of 6 February 2020.

3. The trial of this action is presently part heard. On 16 August 2019, the parties concluded their submissions on most of Motorola’s patent infringement allegations following a trial of 13 days’ duration which had commenced on 22 July 2019. Some months before that trial was to commence, on 29 November 2018, however, Motorola applied to amend its case to include the copyright allegations. I acceded to that application on 13 December 2018 and made orders granting leave on 18 December 2018: Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 6) [2018] FCA 2017 (‘Motorola (No 6)’). Pursuant to that leave Motorola filed its amended pleading on 19 December 2018.

4. The 50 Hytera devices the subject of the copyright suit listed at §31D of the Second Further Amended Statement of Claim (‘2FASOC’) are, as I have said, a subset of the 59 devices the subject of the patent suit listed at 2FASOC §§7(a)-(ggg). In each case, it is alleged that the relevant Hytera device embodies either a reproduction in material form of the whole or a substantial part of one or more of the Motorola Works or an adaptation of the same. Both of those alleged sets of acts are acts which are comprised in the copyright in the Motorola Works under s 31(1) of the Copyright Act 1968 (Cth) (‘the Act’) and the doing of such an act without the licence of the owner is an infringement of that copyright: s 36. Motorola also alleges that Hytera has infringed the same copyrights by selling, distributing and publicly exhibiting the Hytera devices. These acts too, if established, will be infringements: ss 37 and 38.

5. The infringement allegations will require for their resolution the positing of two questions: (a) whether the Hytera devices do embody software which is objectively similar to the whole or a substantial part of one of more of the Motorola Works; and, (b) whether there is a causal connection between the Hytera firmware and the Motorola Works: SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; 159 CLR 466 at 462; CA Inc v ISI Pty Ltd [2012] FCA 35; 201 FCR 23 at 54 [175]. There are several ways a causal connection may be established but at the forefront of Motorola’s allegations is...