Motorola Solutions, Inc. v. Hytera Commc'ns Corp.

• Decision Date: 15 March 2019
• Docket Number: No. 17 C 1973,17 C 1973
• Citation: 365 F.Supp.3d 916
• Parties: MOTOROLA SOLUTIONS, INC., Plaintiff, v. HYTERA COMMUNICATIONS CORP., et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

365 F.Supp.3d 916

MOTOROLA SOLUTIONS, INC., Plaintiff,

v.HYTERA COMMUNICATIONS CORP., et al., Defendants.

No. 17 C 1973

United States District Court, N.D. Illinois, Eastern Division.

Signed March 15, 2019

Adam R. Alper, Pro Hac Vice, Akshay S. Deoras, Pro Hac Vice, Brandon Hugh Brown, Natalie Flechsig, Pro Hac Vice, Kirkland & Ellis LLP, San Francisco, CA, Joshua L. Simmons, Pro Hac Vice, Kirkland & Ellis LLP, New York, NY, Ali-Reza Boloori, Pro Hac Vice, Benjamin Aaron Yaghoubian, Pro Hac Vice, Christopher Lawless, Pro Hac Vice, Justin Singh, Pro Hac Vice, Michael W. De Vries, Pro Hac Vice, Kirkland & Ellis LLP, Los Angeles, CA, Amir Freund, Pro Hac Vice, Kirkland & Ellis LLP, Palo Alto, CA, David Rokach, Megan Margaret New, Kirkland & Ellis LLP, Chicago, IL, Joseph Kuan Liu, Pro Hac Vice, One LLP, Newport Beach, CA, Katherine M. Burke, Pro Hac Vice, Kirkland & Ellis LLP, Washington, DC, for Plaintiff.

Christopher T. Blackford, Pro Hac Vice, E. Robert Yoches, Pro Hac Vice, Christopher T. Blackford, Pro Hac Vice, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Michael J. Allan, Arnold & Porter, Jessica Ilana Rothschild, Pro Hac Vice, Kassandra Michele Officer, Pro Hac Vice, Boyd T. Cloern, Pro Hac Vice, John William Toth, Pro Hac Vice, Steptoe & Johnson LLP, Washington, DC, Daniel Steven Stringfield, Tron Yue Fu, Steptoe & Johnson LLP, Hillary August, Morgan, Lewis & Bockius LLP, John T. Schriver, William Charles Staes, Duane Morris LLP, Chicago, IL, Erik Raymond Puknys, Pro Hac Vice, Jacob Adam Schroeder, Pro Hac Vice, Nicholas D. Petrella, Pro Hac Vice, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA, Joshua M. Ryland, Pro Hac Vice, Mark Wallace McDougall, Pro Hac Vice, Todd R. Tucker, Pro Hac Vice, Calfee, Halter & Griswold LLP, Cleveland, OH, Shaobin Zhu, Pro Hac Vice, Morgan, Lewis & Bockius LLP, Shanghai, for Defendants.

MEMORANDUM OPINION AND ORDER

Magistrate Judge Jeffrey Cole

A.

Motorola has filed a "Second Renewed Motion to Compel Forensic Inspection of Hytera Computers and Network Servers" seeking permission to allow it to conduct a forensic inspection of several Hytera computers in China: namely those of G.S. Kok, Y.T. Kok, Samuel Chia, Jue Liang, Roger Zhang, Phaik Ee Ooi, Yu Kok Hoong, and Qingzhou Chen. Ominously, Motorola cautions that this may only be the beginning [Dkt. # 403, at 1 n.1], despite the fact that discovery is over in less than a month on April 12^th. [Dkt. # 399].

Motorola's quest for forensic inspection began about a year ago on March 1, 2018. [Dkt. # 173]. At that time, discovery was supposedly limited to Hytera's statute of limitations defense, an issue that has eluded resolution since May of 2017 [Dkt. # 32], until a few days ago. [Dkt. # 435]. But discovery unfortunately went far beyond that. [Dkt. # 231]. And, based on Motorola's representations to the court since it amended its Complaint to add a copyright claim (ostensibly, in order to avoid its case being scuttled by Hytera's statute of limitations defense), its quest has gone far enough.

When Motorola first sought forensic examination of the computers in China, it claimed that discovery of Hytera's source code for certain specified products was necessary to combat Hytera's motion for summary judgment and that what was sought was "highly relevant " to Hytera's statute of limitations defense. [Dkt. # 175, at 1](Emphasis supplied). But Motorola was never able to explain how concealment or destruction of information on computers in China – computers that Motorola never had access to or claimed to have access to – somehow thwarted Motorola from discovering that former employees in Malaysia left Motorola's employ with trade secrets. [Dkt. # 231, at 9-12]. And, as it turned out, the discovery was not necessary. It was not even mentioned in the parties' "Stipulated Order to Extend Briefing on Hytera's Motion for Summary Judgment" [Dkt. # 181-1], and Motorola responded to Hytera's motion for summary judgment with a 25-page brief without it on May 4, 2018 [Dkt. # 216, at 23-25], two weeks prior to resolution of its motion to compel forensic inspection.

As I noted at the hearing on the motion to compel in May:

... if you thought it was relevant to summary judgment, you should have interrupted the briefing on that issue and said, "Wait a minute. We can't do what we should be doing effectively because we haven't completed discovery."

The mere fact that you all went ahead and filed and thought whatever you did was enough is -- speaks volumes with me.

[Dkt. # 234, at 9]. And it continues to speak volumes. Indeed, the cases are quite uniform in rejecting claims of prejudice where a party could, but does not, take action and later cries foul. See, e.g. , Alexander v. City of South Bend , 433 F.3d 550, 556 (7th Cir. 2006) ("It is telling that Alexander did not move to suppress or otherwise object to the introduction of the identification evidence on grounds of unconstitutional suggestiveness."); Escandon v. Los Angeles County , 584 Fed.Appx. 517, 520 (9th Cir. 2014) ; DesRosiers v. Moran , 949 F.2d 15, 22 n. 8 (1st Cir.1991) ; In re Sulfuric Acid Antitrust Litigation , 231 F.R.D. 331, 340 (N.D.Ill. 2005) ("It is inconceivable that the plaintiffs would have taken the depositions of Harmon and Dullea, let alone numerous Noranda and Falconbridge witnesses who had extensive collusive dealings with Delta and GAC throughout the class period, if they truly felt they were being or would be severely prejudiced by not having GAC's responses to the outstanding discovery requests. Rather, they would have moved to compel and vigorously complained to the court that the depositions could not proceed without the requested information.").

Motorola indicated that once the summary judgment hurdle was cleared and full-blown discovery was opened, it would come back with a renewed motion for forensic discovery. [Dkt. # 234, at 13-14]. Full-blown discovery, in fact, commenced on July 10, 2018 [Dkt. # 252], or ought to have. [Dkt. # 277]. There was some confusion over Judge Norgle's Order adopting the parties' plan but, in any event, my subsequent Order of August 13, 2018, made it clear that fact discovery was to proceed apace and conclude on February 28, 2019. [Dkt. # 277, at 7]. But, remarkably and inexplicably, the balance of the year went by without a peep from Motorola about renewing its motion for forensic inspection.¹ If that inspection were as critical as now claimed, one would have expected something more than silence from Motorola. See cases cited above. What Judge Posner said in Muhammad v. Oliver , 547 F.3d 874, 877 (7th Cir. 2008) applies here, mutatis mutandis : "if there is an executed standstill agreement, one would expect an allegation to that effect. There is none. The ... silence is deafening." The principle of experience underlying these cases applies to Motorola's conduct.²

On January 11, 2019, fully five months into merits discovery, and just a month and a half before fact discovery was then set to close, Motorola finally filed its "Renewed Motion to Compel Forensic Inspection of Hytera Computers and Network Servers" There was certainly no sense of urgency revealed by that timeline.³ That is significant because Local Rule 16.1 provides that "discovery must be completed before the discovery closing date. Discovery requested before the discovery closing date, but not scheduled for completion before the discovery closing date, does not comply with this order." In RBS Citizens, N.A. v. Husain , 291 F.R.D. 209, 214 (N.D. Ill. 2013). See also Finnerman v. Daimler Chrysler Corp. , 2017 WL 4772736, at *4 (N.D. Ill. 2017) ; G & G Closed Circuit Events, LLC v. Castillo , 2016 WL 3551634, at *7 (N.D. Ill. 2016). It would be truly remarkable had the briefing and resolution of Motorola's motion, and then the complicated process of scheduling and completing forensic examination in China, been accomplished between January 11^th and February 28^th. It wasn't until after Motorola filed its motion that Judge Norgle extended the fact discovery deadline to April 12^th. [Dkt. # 399].

Even with that extension, Motorola's motion is untimely.⁴ The briefing schedule – which Motorola played a role in setting – was set to go through March 6^th, with a further hearing on March 20^th. Even if Motorola's motion were granted instantaneously, and Hytera did not file objections with Judge Norgle under Fed.R.Civ.P. 72(a), that would leave 3 weeks to complete the whole forensic examination process in China. Perhaps tellingly, Motorola never indicates how long it expects that examination to take; the proposed protocol for the inspection suggests it will take at least a week, and probably longer, as Hytera is to allow "reasonable requests for overtime ... on weekends." [Dkt. # 405-1, at 4].

Even more than in ordinary, less complicated cases, resort to court intervention could be anticipated here, involving in camera inspections of materials and complicated issues and extended presentations by counsel on both sides, [Dkt. # 405-1, at 7-9], which would entail lengthy briefing and argument, consideration of those arguments and finally, rulings, which require time for reflection and preparation. Rogers v. Missouri Pac. R. Co. , 352 U.S. 521, 547, 77 S.Ct. 459, 1 L.Ed.2d 515 (1957) (Frankfurter, J., dissenting) And, of course, Motorola versus Hytera isn't the only case on the docket and, Motorola does not own the discovery schedule. See BankDirect Capital Fin., LLC v. Capital Premium Fin., Inc. , 326 F.R.D. 171, 174 (N.D. Ill. 2018) ("The parties do not "own" the discovery schedule, and cannot suspend or extend discovery in accordance with their own desires."); Jones v. UPR Prod., Inc. , 2016 WL 6518652, at *1 (N.D. Ill. 2016) ("Lawyers and parties do not own the discovery schedule. There is an overriding public interest in the prompt resolution of legal disputes. That interest transcends the immediate interest of the parties ....").

Then, when all that is completed, the...