The chronology leading to Mr Grimmett's evidence
14 It is useful first to note that Mr Grimmett's evidence is really just an interpretation for lay people of the meaning of six documents dealing with Motorola's desire to advance its DMR standard technology. It follows that if the use of the six documents was itself something which ought to be permitted, Mr Grimmett's evidence would stand in the same position.
15 The evidence about Mr Grimmett's affidavit and how the six documents came to be discovered was set out in the affidavit of Ms Sue Gilchrist of 15 June 2020 (her 27th affidavit in this proceeding) and of Mr Mark Vincent of 17 June 2020 (his 34th affidavit in this proceeding). Ms Gilchrist is Motorola's solicitor and Mr Vincent is Hytera's solicitor. Both were cross-examined on the present application. I accept the evidence of both.
16 Hytera first sought by interlocutory application to raise the delay defence in its current form (which did not include any reference to the DMR issue) in July 2019. I refused leave to Hytera to raise that defence on 9 August 2019: Motorola Solutions Inc v Hytera Communications Corporation (Amendment and Interrogatories) [2019] FCA 1237.
17 On 11 October 2019 the Court made the following order:
7. To the extent that a party fails to file evidence in compliance with the dates set out in orders 5 and 6 above, that party cannot rely on that evidence in these proceedings.
18 This was a guillotine order which has the effect that any of Hytera's evidence in answer to Motorola's copyright case had to be filed by 6 December 2019 otherwise it could not be relied upon at trial. The effect of that order is that Hytera presently needs to be dispensed from the operation of order 7 if it is to rely upon Mr Grimmet's affidavit.
19 Relevant also for present purposes is the fact that by November 2019 there had begun in the US District Court for the Northern District of Illinois, a trial of parallel allegations in related proceedings. That case is known as Motorola Solutions Inc & anor v Hytera Communications Corporation Ltd & anor (No.17 CV 1973). On 7 November 2019, Hytera's counsel in that trial was in the course of opening before the jury. During that opening at p.76 its counsel said this:
Mr. Alper didn't let you know that there was a competitor to the DMR technology, something called dPMR. We'll talk about this in more detail, but they were basically two competitor, two competitor standards. Nobody in the industry knew which standard would prevail or whether they would both prevail.
20 At pp.82-83 this was then said:
We will present to you the evidence showing that they could have absolutely and should have brought this case a long, long time ago, but they didn't do that, and they didn't do it on purpose. They turned a blind eye to what was going on because they needed Hytera to help them get the standard they were pushing. And had they brought this case then, there's no damages, no damages at all.
21 This makes clear that the DMR issue was advanced by Hytera in the US proceeding. This transcript was not subject to the protective order which has prevented many of the discovered documents in the US proceeding from being discussed with the Australian lawyers.
22 Meanwhile, Hytera sought leave to appeal from my decision not grant it leave to raise the delay defence. The Full Court heard that application on 25 November 2019. At that time, Hytera told the Full Court:
In short, your Honours, the proposed amendments involved the proposition that Motorola delayed in bringing forward its allegations regarding the conduct of its former employees. And that had Motorola brought forward those allegations at an earlier stage, Hytera would have been in a better position to respond, including by, without admission, taking steps to remove or rewrite the impugned functionality or source code, and otherwise in its ability to conduct its defence of those allegations.
Your Honours, the significance of the proposed amendments for Hytera is illustrated by the fact that when Motorola did bring forward its allegations of knowing and flagrant conduct in these proceedings, Hytera did, in fact, take steps to, without admission, remove the impugned functionality from its devices and rewrite parts of its source code alleged to have been copied. We respectfully submit, your Honours, that if liability for patent or copyright infringement is established, contrary to Hytera's case, the matters sought to be raised by the proposed amendments will be relevant to the exercise of the court's discretion in relation to additional damages, but also in relation to the grant and quantification of other relief for copyright infringement. And we submit that there is sufficient time for the matters to be dealt with at the hearing before the primary judge which commences on these issues - or some of them, at least - in May 2020. And that there has been no material delay for Hytera, and there would be no relevant prejudice to Motorola by reason of these matters being raised.
23 At the same time Hytera informed the Full Court that Hytera's evidence on the delay defence would be filed in accordance with the current timetable, that is to say, in accordance with the guillotine order made on 11 October 2019 which, it will be recalled, required Hytera to file its lay evidence on the copyright issues by 6 December 2019. Senior Counsel told the Full Court:
[T40.13-23] Hytera's evidence in the proceedings, your Honours, in answer, is due to be completed by early next month. It's not on. Some is on, but not all of it. And that evidence, Hytera intends, will deal with the matters sought to be raised by the proposed amended defence, and that is the first time that the matters in question would be required to be raised in the proceedings because they are matters of defence that go to Hytera's response to Motorola's allegations. There was no form of prejudice asserted by Motorola arising out of the allowance of these amendments other than issues related to discovery. It wasn't suggested, and it still isn't suggested before your Honours, that the matters sought to be raised by the proposed amended defence would be incapable of being dealt with by the primary judge as part of the May 2020 hearing.
…
[T43.24-27] The evidence wasn't on and wasn't complete in-chief at the time of the amendment application. And Hytera's evidence in answer, which is the evidence that would deal with the proposed amended defence, is not due to be filed now until early next month.
24 The Full Court delivered its reasons on 29 November 2019: Hytera Communications Corporation Ltd v Motorola Solutions Inc [2019] FCAFC 210. It granted leave to Hytera to include the delay defence. At [35] it noted what Senior Counsel for Hytera had told it:
We also wish to record that, under current case management orders, Hytera is required to file its evidence in answer to the copyright claim and on the question of additional damages in the coming month. Hytera informed the Court that it anticipates that this evidence will address the steps that Hytera would have taken had Motorola not (allegedly) delayed in notifying Hytera of its allegations of knowing and intentional copying and misuse of information and documentation relating to Motorola's digital mobile radio devices. Motorola's responsive evidence is to be filed in March 2020.
25 It is apparent that the Full Court was to an extent persuaded that granting Hytera leave to raise this defence would not disturb the trial dates (which were then scheduled for May 2020).
26 On 18 December 2019, pursuant to the grant of leave by the Full Court, Hytera filed its third further amended defence which contained the delay defence ss35B and 36. These paragraphs are quite long and it is not useful to set them out. However, at no point in the defence is there any allegation that Motorola delayed in suing Hytera because it wished to persuade Hytera to use its DMR standard rather than the competitor standards.
27 On 13 December 2019 the parties began to communicate about the scope of discovery that would be required from each in relation to the delay defence.
28 Mr Vincent says that it was between December 2019 and February 2020 that he received tranches of the transcript of the US proceeding. However, as I explain below it was not until late February or March that Mr Vincent says in his affidavit that he became aware of the fact that Hytera was asserting before the US District Court that Motorola had delayed in commencing its proceeding so as to obtain the support of Hytera for the DMR standard. Despite that, Mr Vincent also said under cross-examination that he was aware in late 2019 that Hytera had a suspicion or perspective (his words) that Motorola had delayed in bringing its case so as to obtain Hytera's co-operation in relation to the DMR standard. He also understood that if that defence was to be pursued he would need to obtain documents from Motorola on discovery.
29 As will be seen Mr Vincent's knowledge in late 2019 about Hytera's suspicion or perspectives raises questions which Hytera's evidence on the present application does not resolve. From whom, for example, did Mr Vincent obtain his knowledge of Hytera's suspicions? Mr Vincent was very clear that Hytera's US attorneys did not communicate to any great extent with its Australian attorneys because of the protective order. As I shortly explain, it is clear that Mr Vincent himself only read the relevant portions of the US transcript in late February or March 2020. The inference I draw is that someone within Hytera told Mr Vincent at some point after 7 November 2019 that Hytera believed that Motorola had delayed its commencement of the proceeding to garner Hytera's support for the DMR standard. This inference is unsurprising. Hytera was Mr Vincent's client. Although its attorneys in the US appear to have been tied up by the protective order, I find it impossible to accept that Hytera itself was unaware that its defence in the US trial included the proposition that Motorola's delay had been brought about by a desire to keep Hytera on the DMR standard.
30 Pointedly, there was no evidence on the present application from any of Hytera's employees with responsibility for the litigation in the US or Australia.
31 On 12 February 2020 this Court made orders providing for discovery in relation to the delay defence. The Court was informed at that time that the parties had agreed that discovery by Motorola would be limited to the trial exhibits in the US proceeding. Hytera proposed that discovery should be ordered by categories and such an order was made. The categories ordered were defined by reference to a letter from Hytera's former solicitors dated 29 March 2019. On the topic of the delay defence those categories were as follows:
Description
1 All Documents that record or evidence when Motorola first learnt that each of the Former Motorola Employees had taken up employment with Hytera.
2 All Documents that record or evidence Motorola's suspicion, belief or knowledge that the Former Motorola Employees may have been involved in improper copying or misuse of Motorola's information.
3 All Documents dated or created between 2008 and 2017 that record or evidence Motorola's assessment or review of the information access logs of the Former Motorola Employees and each occasion that a report on these access logs has been created, including any logs or reports generated.
4 Motorola's employment files, any employment or termination agreements, and copies of any exit interviews for the Former Motorola Employees.
5 All Documents recording or evidencing Motorola's investigations in relation to misuse of information by The Former Motorola Employees.
6 All Documents recording or evidencing Motorola's policies or procedures from 2007 to 2012 relating to the departure of employees from Motorola and the protection of Motorola's confidential information in that circumstance.