FEDERAL COURT OF AUSTRALIA

Motorola Solutions, Inc. v Hytera Communications Corporation Ltd [2018] FCA 446

ORDERS

THE COURT ORDERS THAT:

1.    The Respondents provide verified discovery, by means of partial verified lists, of the categories in Annexure A as follows:

(a)    The Respondents give discovery of the most recent versions of “manuals” and “technical specifications” for each Hytera Device within category 3 of Annexure A by 30 April 2018.

(b)    The Respondents give discovery of the representative sample that is referred to in category 4 of Annexure A by 30 April 2018.

(c)    The Respondents give discovery of the documents within categories 3, 7 and 8 which have been discovered in the US ITC Proceeding (Inv. No. 337-TA1035) or US District Court Trade Secret Proceeding (Case No. 1:17-cv-1973) by 9 May 2018.

2.    Production of documents pursuant to order 1 is to be given in electronic format in accordance with the electronic discovery protocol agreed between the parties.

3.    By 8 June 2018, the Respondents file and serve an affidavit explaining in detail the steps which have been taken by that time by the Respondents to give discovery within the categories in Annexure A of documents held by Hytera in China, which affidavit should include:

(a)    an estimate of when the process will be complete;

(b)    a precise description of the review processes required by Chinese law and their duration. (This description should not be on information and belief and should be detailed);

(c)    the date by which the Respondents anticipate the discovery process being complete.

4.    The matter be listed for a case management hearing at 9:30am on 15 June 2018, at which the time for the Respondents to provide their complete verified list will be settled.

5.    By 20 April 2018, the Respondents file and serve affidavit evidence from deponent(s) with direct and specialised knowledge verifying the following matters:

(a)    the dates of commencement of the development of each of the Features;

(b)    the date of cessation of the development of each of the Features;

(c)    the date that each of the Features was first released;

(d)    that a central archive of emails was not used, stored or maintained by the Respondents at any time prior to 14 March 2017;

(e)    whether it is possible, including by means of a third party provider, to conduct keyword searches on the SVN Hytera server containing the R&D Department document database;

(f)    the date each of the following individuals commenced and (if applicable) ceased employment with Hytera:

(i)    Mr. Kok Gee Siong (also referred to as G.S Kok);

(ii)    Mr. Kok Yih Tzye (also referred to as Y.T. Kok); and

(iii)    Mr. Samuel Chia Han Siong (also referred to as Samuel Chia);

(g)    All positions, roles and titles currently or previously held by each of the following individuals at Hytera, including the relevant dates for each position, role or title and department within Hytera:

(i)    Mr. Kok Gee Siong (also referred to as G.S Kok);

(ii)    Mr. Kok Yih Tzye (also referred to as Y.T. Kok);

(iii)    Mr. Samuel Chia Han Siong (also referred to as Samuel Chia);

(iv)    Mr. Jue Liang; and

(v)    Ms. Xiaohua Zheng;

(h)    The organisational structure of Hytera, including the position of the R&D Department, the Product Strategic Planning & Solution Management Department, and any other departments referred to in providing the information in (f) above, for each relevant time period.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

PERRAM J:

1    On 29 March 2018 I made orders resolving a number of issues relating to discovery. These are my reasons for those orders.

2    The process of discovery in this proceeding has been complex and difficult. Extensive hearings have taken place before the Registrars of this Court to resolve, by various means, a large number of disputes relating to categories and timings. There remain, despite that process, some significant issues of principle requiring resolution.

3    One of these is whether the Respondents should now proceed to give discovery from the documents they have already discovered in related proceedings pending in the United States before giving discovery from the documents which are held in China. I concluded that the discovery process should proceed from the documents discovered in the United States before discovery is given from China. I did so because I am concerned about the volume of documentation involved and the need to get as much of the discovery process underway as soon as possible. It is true that the trial is not listed for hearing until the middle of 2019 but the proceedings are complex and firmly contested. There is, in my opinion, no time to lose.

4    It is also true that there may be a degree of duplication in requiring discovery from the United States before China (in the sense that presumably much of the material discovered in the United States proceedings will have come from China and is likely therefore to be discovered a second time). I am also aware that the categories in the United States proceedings are not identical with the Australian categories and that neither is there a complete correspondence between the issues. That did not dissuade me from the view that the United States documents should now be discovered.

5    I did consider whether I should order the Applicant to put up security for the costs of the United States leg of the bifurcated discovery process but I did not think it appropriate. Too little is known at this stage about the relationship between the two legs to be able to assess justly whether that would be appropriate.

6    Another reason for adopting the bifurcated process is because I also accept that the Chinese discovery process is likely to be retarded by the requirements of domestic Chinese law. What those difficulties are at the moment is not altogether clear but I accept that the Respondents do not yet have a full grasp on what the impact of Chinese law on the Chinese discovery process is going to be. I consider that they should have the opportunity to give a full explanation of the problems thrown up by Chinese law as well as an informed estimate of when the Chinese discovery process will be complete. The explanation that will be required, however, should be substantial, not lacking in detail and not on information and belief.

7    I will delay the time for the Respondents to file verified lists until that process is complete although it should be clear that the process of giving discovery must be commenced now and pursued vigorously, whatever the difficulties presented by Chinese law ultimately turn out to be. The desirability of giving the Respondents an adequate opportunity to address these issues provides a further reason for not delaying the giving of discovery from the documents held in the United States.

8    In the course of the proceedings before the Registrars it was suggested that various matters asserted by the Respondents about their difficulties in giving discovery needed to be verified. Plainly this is so. I accept that the matters which I have ordered to be verified go beyond what was strictly in issue before the Registrars. However, I do not regard that as a reason not to make them. The Applicant is entitled to have these matters verified.

9    It was for these reasons that I made the orders I did on 29 March 2018.

Associate:

Dated:    3 April 2018