FEDERAL COURT OF AUSTRALIA Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 6) [2018] FCA 2017 File number: NSD 1283 of 2017 Judge: PERRAM J Date of judgment: 13 December 2018 Catchwords: PRACTICE AND PROCEDURE – application to amend pleadings to include copyright infringement case – where respondents claim amendments would postpone hearing dates Date of hearing: 13 December 2018 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 10 Counsel for the Applicant: C A Moore SC with A R Lang Solicitor for the Applicant: Herbert Smith Freehills Counsel for the Respondents: C Dimitriadis SC with 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: 13 DECEMBER 2018 THE COURT ORDERS THAT: 1. The matter be stood over for a further case management hearing on 18 December 2018 at 9.30am. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT PERRAM J: 1 By an interlocutory application filed on 30 November 2018, the Applicant seeks, inter alia, orders granting it leave to file a proposed amended originating application, a proposed further amended statement of claim and a proposed particulars of copyright claim. The amendments relate to two topics. The first is the addition of what might be conveniently referred to as additional devices. Those amendments are not opposed. The second raises, for the first time, a substantive case that the Respondents have infringed the Applicant's copyright in various aspects of its source code. 2 The source code in question was first made available to the Applicant in around March this year, and since that time the Applicant's advisers have been endeavouring to ascertain whether the Applicant has a case for infringement of copyright or not. That process has taken some time but has ultimately resulted in the present interlocutory application filed on 30 November 2018. The period of time involved is, therefore, around eight months. 3 I do not think the Applicant or its advisers are to be criticised in relation to the time that has taken, and I did not, for completeness, apprehend that the Respondents submitted that they should be. On the other hand, I do accept the evidence given on behalf of the Respondents that, as things currently stand, they do not think that they can accommodate a hearing on the copyright issue by July 2019 when this matter is scheduled for a five-week trial. Whilst I do accept that there is some force in the submission made on behalf of the Applicant that, as time passes, the apparent complexity of the copyright infringement claim may become reduced and that the issues presented by it may ultimately turn out to be rather narrow, I apprehend that is probably not how it appears to the Respondents. 4 As things presently stand, it seems to me that if the amendments were allowed and the copyright infringement case proceed at the trial scheduled for July and August next year, then there is a risk that the amendments would add somewhere between one to two weeks to the trial period. There is also quite a high probability that they may not do so, but as things presently stand, I cannot exclude the possibility that the hearing may be extended by a period of that magnitude. As events transpire, the state of my diary is such that I cannot accommodate a seven-week trial in the period which is currently scheduled for the five-week trial. Consequently, there are, as the Respondents submitted, some difficulties with the proposed amendment. 5 Nevertheless, there is really no reason why the patent trial could not proceed on the July and August dates and the copyright infringement case perhaps to follow at a later time. The earliest that later time could actually be is for a two-week trial commencing on 4 May 2020. 6 That is perhaps not an attractive proposition, but it may not be quite as unattractive as it appears at first blush. The patent trial would finish in August 2019 and I think it is probably fair to say that it will take some time to write the judgment, the hearing having taken five weeks. It is likely, therefore, that I will just be drawing to the conclusion of writing the patent judgment by the time that the copyright infringement case comes on. In principle, therefore, I think the proper course to take in this case is to permit the copyright amendments to be made but to fix them for hearing for two weeks commencing on 4 May 2020. 7 There is a complexity to that. The copyright infringement case has a relationship with an aspect of the additional damages case in the patent infringement trial. That relates to whether the source code has been copied. The Applicant says that if it has been copied and it relates to, in broad terms, the substance of the patent infringement case, then that is a reason for awarding additional damages. I think the safe thing to do would be to postpone to the copyright infringement trial the issue of whether the source code has been copied in that way. Every other aspect of the additional damages case could be dealt with at the first trial in July 2019, but that single issue could be hived off to be dealt with at the same time as the copyright trial in May 2020. 8 One thing which is possible, if one goes down this course, is that the Respondents' fears and concerns may ultimately not materialise, and it may be that the Applicant is right and that as time passes, it will become clear that, in fact, the copyright trial is a smaller enterprise that may be able to be prepared in a faster time than it currently appears. It may be, as events transpire, that perhaps the caboose of the copyright infringement case can be rejoined to the train of the patent trial. I would not forestall that at this stage. 9 What I would propose therefore, subject to the parties perhaps working out some of the detail of this, is that the copyright infringement case will be launched on a case management timetable working towards a May 2020 hearing, allowing a good piece of buffer at the end to deal with slippage, but that the Respondents' advisor Mr Vincent file, fairly early in the new year, probably on 7 February 2019, an affidavit explaining what his views about the problems are at that point, and that he do that on a monthly basis thereafter, so that the Court and the Applicant can monitor what is happening in the copyright trial, and if it can be brought forward to the July/August 2019 dates, it be brought forward. If it cannot be brought forward, then it will proceed in May 2020. 10 In those circumstances, I propose to allow the amendments. I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate: Dated: 14 January 2019