Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585

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