Motorola Solutions, Inc. v Hytera Communications Corporation Ltd [2018] FCA 446

FEDERAL COURT OF AUSTRALIA

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd [2018] FCA 446 File number: NSD 1283 of 2017

Judge: PERRAM J

Date of judgment: 29 March 2018

Date of publication of reasons: 3 April 2018

Catchwords: PRACTICE AND PROCEDURE – application for discovery – whether discovery should be granted over documents already discovered in related foreign proceedings

Date of hearing: 28 March 2018

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Category: Catchwords

Number of paragraphs: 9

Counsel for the Applicant: Mr C Moore SC with Mr A Lang

Solicitor for the Applicant: Herbert Smith Freehills

Counsel for the Respondents: Mr C Dimitriadis SC with Mr C Burgess

Solicitor for the Respondents: Minter Ellison

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: 29 March 2018

THE COURT ORDERS THAT:

1. The Respondents provide verified discovery, by means of partial verified lists, of the categories in Annexure A as follows: (a) The Respondents give discovery of the most recent versions of "manuals" and "technical specifications" for each Hytera Device within category 3 of Annexure A by 30 April 2018. (b) The Respondents give discovery of the representative sample that is referred to in category 4 of Annexure A by 30 April 2018. (c) The Respondents give discovery of the documents within categories 3, 7 and 8 which have been discovered in the US ITC Proceeding (Inv. No. 337-TA1035) or US District Court Trade Secret Proceeding (Case No. 1:17-cv-1973) by 9 May 2018. 2. Production of documents pursuant to order 1 is to be given in electronic format in accordance with the electronic discovery protocol agreed between the parties. 3. By 8 June 2018, the Respondents file and serve an affidavit explaining in detail the steps which have been taken by that time by the Respondents to give discovery within the categories in Annexure A of documents held by Hytera in China, which affidavit should include: (a) an estimate of when the process will be complete; (b) a precise description of the review processes required by Chinese law and their duration. (This description should not be on information and belief and should be detailed); (c) the date by which the Respondents anticipate the discovery process being complete. 4. The matter be listed for a case management hearing at 9:30am on 15 June 2018, at which the time for the Respondents to provide their complete verified list will be settled. 5. By 20 April 2018, the Respondents file and serve affidavit evidence from deponent(s) with direct and specialised knowledge verifying the following matters: (a) the dates of commencement of the development of each of the Features; (b) the date of cessation of the development of each of the Features; (c) the date that each of the Features was first released; (d) that a central archive of emails was not used, stored or maintained by the Respondents at any time prior to 14 March 2017; (e) whether it is possible, including by means of a third party provider, to conduct keyword searches on the SVN Hytera server containing the R&D Department document database; (f) the date each of the following individuals commenced and (if applicable) ceased employment with Hytera: (i) Mr. Kok Gee Siong (also referred to as G.S Kok); (ii) Mr. Kok Yih Tzye (also referred to as Y.T. Kok); and (iii) Mr. Samuel Chia Han Siong (also referred to as Samuel Chia); (g) All positions, roles and titles currently or previously held by each of the following individuals at Hytera, including the relevant dates for each position, role or title and department within Hytera: (i) Mr. Kok Gee Siong (also referred to as G.S Kok); (ii) Mr. Kok Yih Tzye (also referred to as Y.T. Kok); (iii) Mr. Samuel Chia Han Siong (also referred to as Samuel Chia); (iv) Mr. Jue Liang; and (v) Ms. Xiaohua Zheng; (h) The organisational structure of Hytera, including the position of the R&D Department, the Product Strategic Planning & Solution Management Department, and any other departments referred to in providing the information in (f) above, for each relevant time period. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.