Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 5) [2018] FCA 1653

FEDERAL COURT OF AUSTRALIA

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 5) [2018] FCA 1653 File number: NSD 1283 of 2017

Judge: PERRAM J

Date of judgment: 1 November 2018

Catchwords: PRACTICE AND PROCEDURE – application for additional discovery order – where respondents seek to adduce further evidence

Legislation: Federal Court of Australia Act 1976 (Cth) s 37M

Date of hearing: 1 November 2018

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Category: Catchwords

Number of paragraphs: 4

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

REASONS FOR JUDGMENT 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

PERRAM J: 1 The Applicant seeks an order that by 5 November 2018 the Respondents give discovery of the RF HAL object code files referred to in paragraph 8(c) of the affidavit of Ni Huang, dated 13 September 2018. The Applicant seeks this order because the Respondents have lost the source code which was previously ordered to be discovered. This application is opposed by the Respondents on a number of bases and they seek the opportunity to put on evidence relating to those issues. 2 Only one of the issues raised by Mr Dimitriadis SC on behalf of the Respondents appeared to me to raise a serious concern. This was the suggestion that in the process of decompiling the object code matters not relating to RF HAL would be revealed. It seems to me that is a serious matter. The other matters raised by Mr Dimitriadis, which went to the utility of the process, do not appear to be of any moment. 3 I am not going to permit discovery in this case now to bog down the case in its entirety. Having regard to case management principles embodied in provisions such as s 37M of the Federal Court of Australia Act 1976 (Cth), I am not going to give the Respondents an opportunity to put on evidence on a topic which it seems to me would just result in another hearing and probably result in nothing. In that circumstance, I am prepared to make an order in the form proposed by the Applicant but there will need to be some additional orders made which will provide that, in the circumstance that the decompilation process results in source code unrelated to RF HAL, that additional code will need to be destroyed or returned to the Respondents. 4 Further, if a decompilation process fails or simply produces garbage, everything which has been done on the Applicant's side will need to be destroyed or returned to the Respondents. I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.