Motorola Solutions, Inc. v Hytera Communications Corporation Ltd

Federal Court of Australia|2019-08-09|Before: Mr J, Perram J

The parties bring in a minute of order to give effect to these reasons within 21 days. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Introduction 1 There are two applications before the Court. The first, brought by the Respondents ('Hytera'), is an application pursuant to r 16.53 of the Federal Court Rules 2011 (Cth) ('FCR') for leave to amend their defence by filing a Third Further Amended Defence. The second, brought by the Applicant ('Motorola'), is for leave to issue to Hytera a series of interrogatories pursuant to FCR 21.01. The trial of the present action commenced on Monday, 22 July 2019. The procedural steps to which the present applications relate, however, are connected to a tranche of the trial (concerned with separate allegations of copyright infringement) which is not scheduled to start until 4 May 2020. As such they do not relate to the matters currently being tried. The applications are unrelated and may be conveniently dealt with separately.

Motorola's application for interrogatories 13 Motorola has sought leave under FCR 21.01 to issue eight interrogatories concerning the recent discovery by Hytera of a volume of Motorola documents in its possession (the 'Category 12 Documents'). Those documents were discovered as falling within category 12 of the orders made on 18 December 2018. The interrogatories Motorola now seeks to administer fall into three classes. The first concerns the source of the Category 12 Documents (Questions 1-3), the second the use of the Category 12 Documents by Hytera (Questions 4-7), and the third the identification of the authors of the source code (Question 8). 14 The power of the Court to permit a party to interrogate another party was not in doubt. Nor was there any substantive debate about the relevant principles (save as to one matter I deal with below concerning interrogating about the contents of a document).

The source of the Category 12 Documents 15 Category 12 as ordered on 18 December 2018 was as follows: All Source Code in Hytera's custody, control or possession in respect of functions relevant to the Hytera Copyright Devices and which Source Code was written or created at Motorola Solutions, or belongs to Motorola Solutions (to the extent not already discovered). 16 Around 1,550 documents have been discovered by Hytera in this category. At this stage, little is known about the documents since Hytera has claimed confidentiality over them which has, pursuant to a pre-existing confidentiality protocol, restricted who presently has access to them. Those who have seen them suggest that the documents are Motorola's. The question arises: why does Hytera have any documents in this category? One answer may be that it obtained the material from publicly available sources. That question does not need to be addressed now. It suffices for present purposes that there is sufficient material to justify a contention that Hytera has copied Motorola's source code as alleged. 17 Motorola wishes to know more about the source of the Category 12 Documents which is understandable. Proposed Question 1 is as follows: In respect of each Category 12 Document, identify: (a) the custodian or custodians of the document; (b) the department within Hytera where the document was stored; (c) the unit, division, or other sub-set of the department within Hytera where the document was stored. 18 In principle, these questions seem to be reasonable in the circumstances. It is relevant to know where within Hytera's organisation these documents came to be. Was it in the Open Source Department or the Industrial Espionage Department? Although Hytera does not consent to Question 1 by and large it does not oppose it either subject to some drafting alterations that it suggested by letter on 22 July 2019. The first of these sought to limit the documents caught by the question to those which relate to the copyright works infringement which is alleged in the proceeding. Motorola resists this, submitting that material that shows that Hytera copied other materials will support its case that the infringements were not accidental but deliberate. I consider that a marginal matter and not one justifying the burden of discovery. Consequently, I accept Hytera's submission about this. This submission was advanced in relation to all eight of the proposed interrogatories and I accept it. The questions are to be limited to source code involved in this case. 19 The second amendment proposed by Hytera was that the material not be freely licenced to third parties. Evidence was led that at least 143 of the Category 12 Documents related to source code that was on its face freely licenced. I follow the point with this and it may ultimately give rise to a defence. However, I do not think the interrogatory should be so limited. Too little is known about what this means at this stage to be confident that it could not be relevant. The third proposed amendment sought to limit the question as to origins so that it was to be asked at the time the document was collected for discovery. This seems to me to be inappropriate. The real issue lies at an earlier time. I will issue a form of Question 1 subject to Hytera's first proposed alteration but not the others. 20 Question 2 is as follows: In respect of the "further source documents" referred to in the letter from MinterEllison to Herbert Smith Freehills dated 26 May 2019, identify: (a) the "further source documents", including any custodian; (b) each Category 12 Document obtained from the "further source"; (c) the individual(s) from Hytera that identified the "further source documents"; (d) when Hytera first identified the "further source of documents". 21 Hytera suggested alterations to Question 2 which did not appear to be materially different to that which Motorola proposed. The only exception was Question 2(d) where Hytera proposed this (presented in mark-up): when When did Hytera first identifyied that the "further source of documents" may hold documents relevant to category 12? 22 I accept Motorola's submission that worded in this way it would limit the question potentially only to an operation arising after category 12 was ordered. I permit the question without Hytera's amendments. 23 Question 3 is as follows: For each custodian identified in response to question 1 and 2(a) above, identify: (a) whether the custodian is a current employee of Hytera; (b) the date the custodian commenced employment with Hytera; (c) each role or position held by the custodian during their employment with Hytera, including identification of the department and a description of the custodian's responsibilities in the identified role(s) or position(s); (d) the name(s), position(s) or title(s) of the individual(s) to which each custodian reported; (e) whether, and if so when and how, each custodian was involved in the development, design, creation or modification of any part of any of Hytera's digital mobile radio products, including the source code or firmware; (f) if the custodian is no longer a current employee of Hytera: (i) the date the custodian ceased employment with Hytera; and (ii) if the custodian's employment was terminated, the reason(s) for the termination. 24 Hytera made a number of drafting suggestions which were not material. However, it did also suggest that the question should be limited to custodians who are only presently employed by Hytera. I do not see why that should be so. It may be that in relation to former employees it will not ultimately be able to answer but that is no reason not to ask the question. I permit the question.

The use of the Category 12 Documents 25 Questions 4 to 7 are as follows: (4) In respect of each source code file contained in the Category 12 Documents, identify whether the source code file (in whole or part) has been incorporated into any version of the firmware for any Copyright Hytera Devices. (5) For any source code file contained in the Category 12 documents that is identified as having been incorporated (in whole or in part) into firmware for any Copyright Hytera Device in response to question 4, identify: (a) each version of firmware that each source code file has been incorporated into; and (b) where in each version of firmware the source code file has been incorporated. (6) To the extent not covered by questions 4 and 5, identify any use that was made by Hytera of any of the Category 12 Documents, including: (a) the nature of the use; (b) when the use occurred; (c) the individual(s) involved in the use. (7) For each individual identified in response to paragraph 6(c) above and to the extent not already provided in response to question 3, identify: (a) whether the individual is a current employee of Hytera; (b) the date the individual commenced employment with Hytera; (c) each role or position held by the individual during their employment with Hytera, including identification of the department and a description of the individual's responsibilities in the identified role(s) or position(s); (d) the name(s), position(s) or title(s) of the person(s) to whom each individual reported; (e) when and how each individual was involved in the development, design, creation or modification of Hytera's digital mobile radio products, source code or firmware; (f) if the individual is no longer a current employee of Hytera: (i) the date the individual ceased employment with Hytera; and (ii) if the individual's employment was terminated, the reason(s) for the termination. 26 Hytera opposed these questions being asked at all on a number of bases. First, it submitted that it would be difficult for Hytera to determine the answer to Question 4 and that it would need to ask an expert. I see no such difficulty. It is not obliged to obtain an expert. It is required to determine whether it knows whether the source code was used in the devices. To be clear, the task which Hytera confronts is not to assess from a forensic perspective whether it now believes that the code was incorporated. It is to ask those who would know whether it was so incorporated. Hytera recognised this in its written submissions in citing Adams v Dickeson [1974] VR 77 as authority for the proposition that a party interrogated is only required to answer to the best of its own knowledge, information and belief at the time that it is interrogated. 27 Secondly, Hytera submitted that Questions 4 and 5 were tantamount to interrogating about the contents of documents (which is not permitted: see, eg, Lynch v Cash Converters Personal Finance Pty Ltd (No 4) [2018] FCA 988 at [26]-[31] per Gleeson J). Whilst I accept that, in general, it is wasteful to allow a party to interrogate about the contents of a document (for example, 'does the letter contain the following paragraph…') when looking at the document is almost always much more useful, I do not accept that that principle applies in this case. The source code here has been compiled into object code. Looking at the object code will tell one very little about the role of the source code (at least not without a lot of effort). On the other hand, asking Hytera's own employees whether the source code was used in the relevant object code would be easy to do. 28 I accept that some of the employees involved may have left Hytera. But this makes no difference to the inquiry. Those persons can be traced, and if contacted, asked. If they cannot be contacted, then so be it. However, it is unpersuasive to point to all the problems which might arise as a reason not to issue the interrogatories when there is no certainty any of the problems will arise or, if they do, how serious they will be. 29 Questions 4-7 are permitted.

Identification of authors 30 Question 8 is as follows: In relation to each of the "authors of the portions of each (Hytera) source code file identified in Confidential Annexure 2 to Motorola's Particulars of Copyright Infringement as filed on 19 December 2018" referred to in paragraph 17 of the Crooks Affidavit, identify: (a) the name of each author; (b) whether the author is a current employee of Hytera; (c) the date the author commenced employment with Hytera; (d) each role or position (including department) held by the author during their employment with Hytera; (e) where the author is no longer a current employee of Hytera: (i) the date the author ceased employment with Hytera; and (ii) if the author's employment was terminated, the reason(s) for the termination. 31 Hytera made some drafting suggestions but these appeared to be immaterial to the substance of the matter. It then suggested a date limitation based on the earliest time a former Motorola employee joined Hytera. I do not think it should be so limited. It is not self-evident that the information came over only after that person's employment commenced. 32 I will allow the question.

Conclusions 33 I have not disregarded Hytera's submission that since Motorola has now delivered its evidence in chief it could not be in need of interrogatories. That submission does not fit at all well with ordinary trial process. Nor have I disregarded Hytera's submission that it would be oppressive to require it to answer. I accept that there may be a degree of difficulty in doing so but having regard to what seems to me their obvious relevance, I do not think it unwarranted. 34 The parties are to bring in a minute of order to give effect to these reasons. On the issue of the interrogatories, costs are to be costs in the cause. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Federal Court Rules 2011(Cth)rr 16.53, 21.01

At a glance

Court

Decision date

Before

Source

Judgment (8 paragraphs)

Parties

Legislation Cited (1)

Cases Cited (1)

Cited By (2)