Technology Information Law Blog by Charles Gideon Korrell

Author: gideon.korrell

  • Broadband iTV v. Amazon: CAFC Doubles Down on § 101 Ineligibility

    Broadband iTV v. Amazon: CAFC Doubles Down on § 101 Ineligibility

    In its recent decision Broadband iTV, Inc. v. Amazon.com, Inc., the Federal Circuit affirmed a summary judgment ruling that all asserted claims from five patents were directed to patent-ineligible subject matter under 35 U.S.C. § 101. The opinion, authored by Judge Reyna, offers a comprehensive application of the Alice two-step framework and reiterates that automation of known practices and abstract ideas remains outside the bounds of patentable subject matter—even when dressed up with user interface features and layered templates.

    The Patents at Issue

    The dispute involved five patents, four of which were from a common family (the ’026, ’388, ’750, and ’751 patents) generally relating to electronic programming guides for video-on-demand (VOD) systems. The fifth, the unrelated ’825 patent, focused on dynamically adjusting the guide based on a viewer’s history to minimize keystrokes.

    The Federal Circuit treated claim 1 of the ’026 and ’825 patents as representative. Claim 1 of the ’026 patent recited a “templatized” electronic program guide created from metadata uploaded by content providers and layered with background, template, and content elements. The ’825 patent’s claim 1 described reordering categories in a viewer-specific guide based on usage history, with claim 15 adding a step of generating new categories.

    Step One: Abstract Ideas Remain Abstract

    Applying Alice step one, the court agreed with the district court that the ’026 patent family was directed to “receiving metadata and organizing the display of video content based on that metadata”—a formulation akin to what the court previously found abstract in Electric Power Group v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016), and In re TLI Communications, 823 F.3d 607 (Fed. Cir. 2016).

    BBiTV leaned heavily on Core Wireless Licensing v. LG Electronics, 880 F.3d 1356 (Fed. Cir. 2018), and Data Engine Technologies v. Google, 906 F.3d 999 (Fed. Cir. 2018), arguing that the claims improved user interface functionality. The panel rejected that analogy, distinguishing those decisions as involving specific technological solutions rather than content arrangement based on metadata—a practice deemed more akin to “organizing information,” not an inventive UI architecture.

    For the ’825 patent, the Federal Circuit found the claims directed to the abstract idea of “collecting and using a viewer’s video history to suggest categories of video content”—essentially targeted advertising. As in Intellectual Ventures I v. Capital One, 792 F.3d 1363 (Fed. Cir. 2015), and Free Stream Media Corp. v. Alphonso, 996 F.3d 1355 (Fed. Cir. 2021), the court reaffirmed that tailoring content based on prior interactions is a longstanding commercial practice and abstract even if done digitally.

    Step Two: No “Significantly More”

    At Alice step two, the court found no inventive concept that transformed the abstract ideas into patent-eligible applications. BBiTV pointed to automatic generation of displays from templates, a content management server, and user-specific guide generation. But the court concluded that all these elements were routine and conventional—citing BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018), and Weisner v. Google LLC, 51 F.4th 1073 (Fed. Cir. 2022)—and that automation itself does not rescue an abstract idea.

    The court also dismissed the argument that layering templates or using a log-in step provided the necessary inventive concept, emphasizing that these features were not claimed as technological improvements but merely used as vehicles to execute the abstract idea.

    Strategic Considerations for Protecting UI Innovations

    While Broadband iTV reinforces the high bar for patent eligibility under § 101, particularly for UI-related inventions, it also offers guidance for strengthening future claims. Based on the court’s reasoning and broader commentary on the decision, practitioners should consider the following strategies:

    1. Emphasize Technical Specificity
      Claims should identify the specific technological solution being offered—such as a novel data structure, a new rendering technique, or a UI behavior that solves a particular latency or usability problem—rather than describe high-level functional goals.
    2. Detail the Technical Benefits
      Specifications should clearly articulate how the invention improves a technological process, such as reducing processing time, conserving memory, or enabling new interaction paradigms. Abstract notions of improved “user experience” alone are insufficient.
    3. Avoid Generic Implementations
      When drafting claims, it’s important to incorporate non-generic computing components or unconventional arrangements of conventional elements. Claims that merely recite servers, databases, or templates without more will struggle to survive § 101 scrutiny.
    4. Consider Design Patents for UI Elements
      For UI innovations where the novelty lies in layout or visual arrangement rather than technological function, design patents may offer a more effective path to protection. They can complement utility applications and provide coverage for ornamental aspects.

    Final Thoughts

    This decision continues a trend of eligibility rulings that reject attempts to claim the digital automation of human decision-making or content organization unless coupled with a demonstrable technological advance. It serves as both a warning and a roadmap—highlighting the pitfalls of overbroad functional claims and offering actionable insights for protecting user interface innovations in a post-Alice landscape.ble long-standing commercial or cognitive tasks, even when executed in a modern digital context.

    By Charles Gideon Korrell

  • WARF v. Apple: A Cautionary Tale of Waiver and Preclusion

    WARF v. Apple: A Cautionary Tale of Waiver and Preclusion

    In its August 28, 2024 opinion in Wisconsin Alumni Research Foundation v. Apple Inc., the Federal Circuit issued a decisive ruling affirming two final judgments in favor of Apple, closing the door on WARF’s decade-long effort to assert U.S. Patent No. 5,781,752 across successive generations of Apple processors. The decision underscores the high stakes of litigation strategy—particularly the consequences of waiving infringement theories and the powerful reach of preclusion doctrines.

    Background

    The patent at issue, the ’752 patent, relates to a “table-based data speculation circuit for parallel processing computers.” WARF initially brought suit in 2014 (WARF I) against Apple’s A7 and A8 processors, alleging literal infringement. Shortly before trial, WARF agreed to drop its doctrine of equivalents theory in exchange for Apple not introducing its own patent at trial. A jury found literal infringement, but on appeal, the Federal Circuit reversed, holding that no reasonable jury could find that Apple’s processors met the “particular” limitation of the asserted claims. See Wisconsin Alumni Research Foundation v. Apple Inc., 905 F.3d 1341 (Fed. Cir. 2018).

    In parallel, WARF filed WARF II, targeting Apple’s A9 and A10 processors. Following the reversal in WARF I, WARF sought to revive the doctrine of equivalents for both actions. The district court rejected this effort, finding the doctrine waived in WARF I and barred in WARF II under both issue preclusion and the Kessler doctrine. The Federal Circuit affirmed on all fronts.

    Waiver: Strategic Decisions Come at a Cost

    The panel (Prost, Taranto, Chen, JJ.) upheld the district court’s finding that WARF intentionally waived its doctrine of equivalents theory in WARF I for strategic reasons. WARF had bargained away that theory to exclude potentially damaging evidence—Apple’s own patent on the accused LSD Predictor.

    The court rejected WARF’s argument that the Federal Circuit’s 2018 clarification of the term “particular” constituted a claim construction change that justified resurrecting the abandoned theory. Unlike Exxon Chemical Patents v. Lubrizol, 137 F.3d 1475 (Fed. Cir. 1998), where a new construction was first adopted on appeal, WARF had long been on notice of Apple’s plain-meaning interpretation and opted not to preserve an alternatives-based trial strategy. The court characterized the waiver as intentional and strategic, distinguishing it from forfeiture.

    Preclusion: WARF II Barred by Issue Preclusion and Kessler

    The court further held that WARF II was precluded on two independent bases:

    1. Issue Preclusion: Because the A9 and A10 processors were “essentially the same” as the A7 and A8 (a fact WARF had admitted in earlier briefing), and because infringement was fully litigated in WARF I, the same “issue” was decided. The Federal Circuit emphasized that both literal infringement and the doctrine of equivalents are part of a single infringement issue under § 271, citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950), and Winans v. Denmead, 56 U.S. 330 (1853). It also relied on Nystrom v. Trex, 580 F.3d 1281 (Fed. Cir. 2009), and Aspex Eyewear v. Marchon, 672 F.3d 1335 (Fed. Cir. 2012), in concluding that failing to assert a doctrine-of-equivalents theory in one case bars its assertion against essentially the same products in another.
    2. Kessler Doctrine: Even if issue preclusion didn’t apply, the court held that Apple had acquired the “noninfringing status” of its LSD Predictor, protecting both it and its future sales from repeat litigation. The court emphasized that the Kessler doctrine prevents harassment through successive suits involving the same or trivially modified products, referencing SpeedTrack Inc. v. Office Depot, 791 F.3d 1317 (Fed. Cir. 2015), and Brain Life v. Elekta, 746 F.3d 1045 (Fed. Cir. 2014).

    Key Takeaways

    This decision is a stark reminder that:

    • Strategic waivers are binding. WARF’s tactical decision to drop its doctrine-of-equivalents theory in WARF I could not be undone after the fact.
    • Literal and equivalent infringement theories are not distinct “issues” for preclusion purposes. Once infringement of a product has been adjudicated, relitigating under a different infringement theory is barred.
    • The Kessler doctrine remains robust. It protects adjudged noninfringers from successive suits, even involving post-judgment sales or similar product generations.

    For those navigating complex infringement disputes, this opinion reinforces the need to preserve all viable theories through trial—or risk losing them forever.

    By Charles Gideon Korrell

  • Realtime Adaptive Streaming LLC v. Sling TV: “Red Flags” in § 285 Fee Awards

    In a significant opinion issued on August 23, 2024, the Federal Circuit vacated a district court’s award of attorneys’ fees under 35 U.S.C. § 285 in Realtime Adaptive Streaming LLC v. Sling TV, LLC, No. 23-1035. The decision serves as a clarifying reminder that the label “exceptional” requires more than a retrospective string of unfavorable rulings. It demands careful judicial scrutiny of the substantive merit of each supposed “red flag.”

    Background

    The litigation arose from Realtime’s assertion of several patents, including U.S. Patent No. 8,867,610 (“the ’610 patent”), which was ultimately found invalid under § 101. After prevailing at summary judgment and on appeal, DISH moved for attorneys’ fees. The district court granted the motion, identifying six “red flags” that allegedly should have warned Realtime of the weakness of its case.

    These red flags included:

    1. The Google and Netflix district court decisions finding claims of the related ’535 patent ineligible under § 101.
    2. The Federal Circuit’s nonprecedential decision in Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900 (Fed. Cir. 2020).
    3. IPR decisions invalidating claims of the ’535 patent.
    4. Non-final Office Actions during reexamination of the ’610 patent.
    5. A warning letter from DISH.
    6. Expert opinions from DISH’s technical expert, Dr. Alan Bovik.

    The district court concluded that, in light of these events, Realtime’s “dogged pursuit” of the litigation rendered the case exceptional.

    Federal Circuit: Some Red Flags Are Not So Red

    On appeal, the Federal Circuit emphasized the discretion afforded to district courts under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), but reminded that such discretion is not unbounded. Relying on Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014), the court applied an abuse-of-discretion standard and found that the district court had erred in the weight—and in some cases, the very relevance—assigned to several of the six red flags.

    Notably:

    • Google and Netflix Decisions: The Federal Circuit upheld their relevance, finding the claims in Realtime were “essentially the same in substance” as those invalidated in the earlier cases. These were fair warning signs of potential ineligibility.
    • Adaptive Streaming: By contrast, the court found this decision inapposite. The technology at issue was materially different, and the Federal Circuit criticized the district court for relying on a nonprecedential opinion without a rigorous comparison of claim language.
    • Board Decisions (IPRs and Reexams): The court distinguished prior art invalidity under §§ 102/103 from conventionality under Alice Step Two, citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018), and Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). The district court failed to bridge this analytical gap.
    • Notice Letter: The mere act of sending a letter threatening fees does not convert a case into an exceptional one. The Federal Circuit noted that such letters could become a routine tactic if courts accepted them as decisive evidence of exceptionality.
    • Expert Opinions: The court rejected the notion that a party’s failure to adopt the opposing expert’s views—absent a clear showing of meritless advocacy—could support a fee award. Competing expert declarations are a hallmark of patent litigation, not an aberration.

    Practical Takeaways

    The decision reinforces that fee awards must be grounded in a holistic and fact-specific analysis, not a checklist of litigation setbacks. While unfavorable precedent or IPR outcomes may legitimately raise concerns about a case’s merit, they do not by themselves justify shifting fees.

    This ruling should temper overbroad attempts to bootstrap § 101 ineligibility rulings into fee awards, particularly where litigants have plausible arguments or claim distinctions that the courts ultimately reject. It also underscores that a fee-shifting analysis must account for the nuanced legal standards of subject matter eligibility post-Alice, where conventionality and inventive concepts demand more than mere reference to the prior art.

    Conclusion

    Realtime v. Sling TV is an important checkpoint in the post-Octane jurisprudence. It highlights that not all warning signs are dispositive, and district courts must do more than count “red flags.” They must weigh them—carefully, individually, and with an eye toward whether the case truly “stands out” under § 285.

    By Charles Gideon Korrell

  • Platinum Optics v. Viavi: Dismissal of Appeal for Lack of Standing Despite Prior Infringement Disputes

    In Platinum Optics Technology Inc. v. Viavi Solutions Inc., No. 23-1227 (Fed. Cir. Aug. 16, 2024), the Federal Circuit dismissed an appeal from an inter partes review (IPR) decision for lack of Article III standing. The court declined to reach the merits of the Patent Trial and Appeal Board’s (PTAB) decision upholding the validity of Viavi’s U.S. Patent No. 9,354,369, which claims optical filters using hydrogenated silicon with precise optical properties.

    Background

    Viavi’s ’369 patent claims a hydrogenated silicon material with a high refractive index (n > 3) and low extinction coefficient (k < 0.0005) over a wavelength range of 800–1100 nm—properties touted as enhancing optical filter performance. Platinum Optics Technology Inc. (PTOT) challenged the claims in an IPR, arguing obviousness based on prior art including Pilgrim, Gibbons, Lairson, and Yoda. The PTAB disagreed, concluding that the specific combination of optical properties was not taught or suggested in the cited references and would have required significant experimentation without an expectation of success.

    Following this defeat, PTOT sought Federal Circuit review—but was met with a standing challenge.

    No Injury, No Standing

    The court reiterated that unlike participation before the PTAB, appeal to the Federal Circuit requires Article III standing. Relying on Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992), Spokeo, Inc. v. Robins, 578 U.S. 330 (2016), and Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017), the panel emphasized the need for a “concrete and particularized” injury.

    PTOT cited two bases for standing: (1) continued distribution of the same products previously accused of infringing the ’369 patent, and (2) development of new optical filters. But the infringement claims involving the ’369 patent had been dismissed with prejudice in earlier district court actions (Viavi I and Viavi II), foreclosing future liability from those suits. Citing Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), and Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008), the court held that PTOT’s speculation about the risk of future litigation did not amount to a substantial risk of infringement or a threat sufficient to establish standing.

    As to the new products under development, the court found the supporting declaration from PTOT’s executive vague and conclusory. Following JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217 (Fed. Cir. 2018), and Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, 85 F.4th 1377 (Fed. Cir. 2023), the court explained that declarations lacking specific technical detail or concrete plans cannot support a finding of injury in fact.

    Key Takeaways

    • A history of litigation—without more—does not establish standing to appeal an IPR decision, particularly where infringement claims have been dismissed with prejudice.
    • General assertions about ongoing product development are insufficient. Concrete, detailed plans and a plausible risk of suit are necessary to satisfy Article III.
    • PTOT’s inability to cross the standing threshold means the Federal Circuit left undisturbed the PTAB’s substantive finding that the ’369 patent was not shown to be obvious over the prior art.

    While the technical validity of Viavi’s patent remains intact, Platinum Optics underscores a strategic pitfall for petitioners: an IPR loss cannot always be appealed, even after contentious district court litigation. Petitioners should consider standing implications early—especially if litigation history may later undercut injury arguments on appeal.

    By Charles Gideon Korrell

  • Pegasystems Inc. v. Appian Corp.: Virginia Supreme Court Reverses $2 Billion Trade Secret Verdict Due to Lack of Specificity

    Pegasystems Inc. v. Appian Corp.: Virginia Supreme Court Reverses $2 Billion Trade Secret Verdict Due to Lack of Specificity

    In a major ruling issued on July 30, 2024, the Supreme Court of Virginia in Pegasystems Inc. v. Appian Corp., 904 S.E.2d 247 (Va. 2024), reversed a $2.036 billion judgment in favor of Appian Corporation against its competitor Pegasystems Inc., holding that Appian failed to identify its trade secrets with reasonable particularity and did not present sufficient evidence of misappropriation. The ruling marks one of the most consequential trade secret decisions in Virginia history, and it underscores a central truth in trade secret law: a plaintiff cannot prevail on a theory of misappropriation without clearly articulating what the trade secrets are and how they were used.

    As Charles Gideon Korrell notes, the Court’s opinion offers a clear message to plaintiffs: broad categories, functional descriptions, or circumstantial suspicion are not enough. To meet their burden under the Virginia Uniform Trade Secrets Act (VUTSA), plaintiffs must provide specific, credible evidence tying concrete trade secrets to the alleged misappropriation.

    Background: A Contractor Between Two Worlds

    Appian and Pegasystems are direct competitors in the enterprise software space, each offering low-code platforms for building business process applications. In 2012, Youyong Zou, a developer contracted to work with Appian through an outside staffing agency, was also hired by Pegasystems to provide consulting services. Appian alleged that this dual engagement enabled Pegasystems to exploit confidential knowledge about Appian’s proprietary software—knowledge Zou acquired while working on internal Appian projects.

    At trial, Appian contended that Pegasystems used information from Zou to improve its competing product. A jury found in Appian’s favor and awarded over $2 billion in damages. The trial court denied Pegasystems’ post-trial motions, including for judgment notwithstanding the verdict.

    But on appeal, the Supreme Court of Virginia found that Appian’s evidence did not meet the legal standard required to support its trade secret claims, and that the jury’s verdict could not stand.

    The Court’s Analysis: Trade Secrets Must Be Specifically Identified

    Central to the Court’s ruling was Appian’s failure to identify the specific trade secrets it claimed were misappropriated. The Court reiterated the principle that “a plaintiff must identify a trade secret with sufficient specificity so that it can be determined whether such information exists, whether it was misappropriated, and whether it is legally protectable.” (citing Collelo v. Geographic Services, Inc., 727 S.E.2d 55 (Va. 2012)).

    Rather than presenting discrete technical data, formulas, or uniquely designed processes, Appian relied on broad categories and functional descriptions—for example:

    • Appian’s “tempo” user interface
    • The system’s performance debugging tools
    • Code deployment and rollback capabilities
    • Object type structure for application development

    The Court found that these categories failed to describe what exactly was secret and how it differed from generally known or readily ascertainable information. The fact that a system included common enterprise software functions like performance testing or object design was not enough to show that those features embodied protected trade secrets.

    “While Appian claims that these categories encompassed proprietary design decisions and architectural choices,” the Court explained, “it never described those decisions in a manner that would allow the court—or Pegasystems—to meaningfully evaluate their content.”

    As Charles Gideon Korrell points out, this is a significant clarification for trade secret plaintiffs: “Functional descriptions are insufficient if they don’t map to specific technical content that the plaintiff can show was kept confidential and has independent value.”

    The Burden of Proof and Sufficiency of the Evidence

    Under VUTSA, a plaintiff bears the burden of proving:

    1. That the information qualifies as a trade secret;
    2. That the defendant misappropriated the trade secret; and
    3. That the misappropriation caused harm.

    On all three fronts, the Court found Appian’s showing deficient.

    1. Existence of a Trade Secret

    Appian’s evidence never established precisely what the alleged trade secrets were. It relied heavily on expert testimony and high-level product comparisons, but the Court concluded that this did not substitute for actual definitions of the protected content.

    The Court emphasized that expert witnesses cannot supply missing specificity post hoc:

    “While expert opinion may help the jury understand the nature and importance of a trade secret, it cannot substitute for the plaintiff’s foundational obligation to identify the secret in the first place.”

    Appian failed to differentiate between what was commonly known in the industry and what was uniquely developed by Appian. There was also little evidence that the company took reasonable steps to maintain secrecy beyond standard access controls and contractual obligations.

    2. Misappropriation by Use

    Even assuming trade secrets had been defined, the Court found the evidence of misappropriation lacking. Appian’s theory hinged on Zou’s dual role and timing overlaps between his work on Appian’s system and Pegasystems’ product development. But the Court held that circumstantial overlap alone cannot prove use.

    No source code, design documents, or system architecture from Appian was shown to be present at Pegasystems. No direct evidence tied any particular Appian functionality to a corresponding feature at Pegasystems. While some internal Pegasystems strategy documents mentioned Appian, those materials reflected general competitive awareness—not evidence of secret appropriation.

    In short, “Appian’s evidence invited the jury to speculate that misappropriation occurred”, but “speculation is not a substitute for proof.”

    3. Causation and Damages

    Because Appian failed to establish the existence and use of a trade secret, its damages case collapsed as well. The expert damages model was based on the assumption that misappropriation had occurred. With that assumption unsupported, the entire verdict lacked legal grounding.

    As Charles Gideon Korrell observes, “Courts cannot defer to juries on questions where the foundational legal requirements—like what constitutes a trade secret—were never met.”

    Broader Implications for Trade Secret Litigation

    The Virginia Supreme Court’s ruling in Pegasystems v. Appian sends a strong message:

    • High-dollar verdicts will not stand if the plaintiff cannot define its secrets.
    • Expert opinion and jury sympathy cannot cure legal deficiencies in proof.
    • Competitive access alone is not enough to support an inference of misappropriation.

    For companies pursuing trade secret claims, this case is a vivid illustration of the need to:

    • Define the trade secret precisely in discovery and trial filings;
    • Separate protectable content from general industry knowledge;
    • Connect specific use to specific information, not just general competition;
    • Document efforts to maintain secrecy, not just rely on standard boilerplate.

    For defendants, this decision reinforces a key defense strategy: press hard on the plaintiff’s ability to articulate its secrets with clarity and show evidence of misuse. If they can’t, the case may not survive appellate scrutiny.

    Conclusion

    In reversing one of the largest trade secret verdicts in state history, the Virginia Supreme Court has clarified and elevated the standard for proving misappropriation. Trade secret litigation, particularly among competitors in the software and technology industries, demands precision—not just in engineering, but in pleading and proof.

    As Charles Gideon Korrell aptly puts it: “This case is a master class in how even blockbuster verdicts will fall if the legal fundamentals aren’t met. In trade secret cases, clarity is king.”

    By Charles Gideon Korrell

  • Motorola v. Hytera: Seventh Circuit Upholds Extraterritorial Reach and $271M Punitive Damages Under the DTSA

    Motorola v. Hytera: Seventh Circuit Upholds Extraterritorial Reach and $271M Punitive Damages Under the DTSA

    In Motorola Solutions, Inc. v. Hytera Communications Corp. Ltd., 108 F.4th 458 (7th Cir. July 2, 2024), the Seventh Circuit issued a sweeping and consequential decision affirming a major trade secret misappropriation verdict against Chinese telecommunications company Hytera. The appellate court’s ruling is especially notable for two reasons: (1) its endorsement of the Defend Trade Secrets Act’s (DTSA) extraterritorial reach, and (2) its affirmance of a $271.6 million punitive damages award, one of the largest ever upheld under the statute. Charles Gideon Korrell believes the decision cements key protections for U.S. companies facing foreign-based misappropriation of proprietary technologies, especially in cases where enforcement through monetary awards alone has proven illusory.

    A Global Theft and a Jury’s Historic Verdict

    The case arises from a brazen and well-orchestrated theft of Motorola’s trade secrets, committed by three former Motorola engineers recruited by Hytera in Malaysia. Acting under Hytera’s direction before and after their resignation from Motorola, the engineers downloaded more than 10,000 documents, including Motorola’s proprietary source code, from its secure systems. That code later appeared—verbatim, including Motorola’s own typos—in Hytera’s competing line of high-end DMR (digital mobile radio) products.

    The jury found in Motorola’s favor on both trade secret and copyright claims, awarding $764.6 million in total damages. The district court later reduced the award to $543.7 million, composed of $135.8 million in compensatory damages under the DTSA, $271.6 million in DTSA punitive damages (the statutory maximum of 2x), and a revised copyright award. Hytera appealed the damages awards, and Motorola cross-appealed the denial of a permanent injunction.

    The DTSA Applies to Foreign Sales: The Extraterritoriality Holding

    One of the core issues on appeal was whether the DTSA permits recovery for trade secret misappropriation occurring outside the United States. The Seventh Circuit became the first federal appellate court to directly confront and resolve this issue—and did so unequivocally in favor of extraterritorial application.

    Hytera argued that because much of its conduct occurred overseas—including the hiring of Motorola engineers and product development—the DTSA should not reach its foreign sales. But the court rejected this argument, relying heavily on 18 U.S.C. § 1837(2), which provides that “this chapter also applies to conduct occurring outside the United States if … an act in furtherance of the offense was committed in the United States.”

    Although § 1837 was originally enacted in 1996 as part of the Economic Espionage Act (EEA), the court reasoned that Congress intended for the 2016 DTSA—which amended the EEA to create a private right of action—to inherit § 1837’s extraterritorial provisions. According to the court, the DTSA must be read as part of a unified statutory scheme:

    “Congress was not acting to change an existing interpretation of the EEA, but rather was creating a private right of action in the statutory chapter. … [T]he chapter amended through the DTSA should be read as a cohesive whole.”

    The court also found that the required “act in furtherance” of the offense had occurred domestically: Hytera had marketed and demonstrated infringing radios at U.S. trade shows, thereby “using” Motorola’s trade secrets in a way sufficient to establish misappropriation under § 1839(5). This act triggered the statute’s extraterritorial application, allowing Motorola to recover damages for Hytera’s worldwide sales of DMR products developed using the stolen trade secrets.

    Charles Gideon Korrell notes that this part of the ruling will likely prove to be the most impactful: it gives teeth to the DTSA’s protections for U.S. companies when the bad actors—and the profits—are overseas, so long as some “act in furtherance” can be shown in the United States.

    $271.6 Million in Punitive Damages Survives Constitutional Scrutiny

    The court also upheld the $271.6 million in exemplary damages awarded under the DTSA, rejecting Hytera’s arguments that the award violated due process.

    The DTSA authorizes punitive damages of up to twice the amount of compensatory damages if the misappropriation is “willful and malicious.” The district court adopted that full multiplier after finding Hytera’s conduct met the standard, and the Seventh Circuit found no constitutional problem with the size of the award.

    In doing so, the court distinguished its prior ruling in Epic Systems Corp. v. Tata Consultancy Services Ltd., 980 F.3d 1117 (7th Cir. 2020), which had vacated a similarly sized punitive damages award under Wisconsin state law. Whereas the Epic Systems award was evaluated against open-ended state law standards, the court explained, the DTSA embodies a congressional judgment about the appropriate cap for punitive damages. That legislative determination is entitled to significant deference under BMW of North America v. Gore, 517 U.S. 559 (1996), and its progeny.

    “There is no reason to search outside the text of the DTSA for legislative guidance … Congress has made a specific and reasonable legislative judgment about punitive damages in cases like this one.”

    The court also emphasized that Hytera’s conduct was exceptionally reprehensible, both in the original theft and in its post-verdict gamesmanship, including deleting evidence, inflating R&D costs, and resisting discovery. That, coupled with the quantifiable harm to Motorola—$86.2 million in lost profits and $73.6 million in avoided R&D costs—justified a 2:1 punitive award. Charles Gideon Korrell observes that the opinion sends a strong message: willful and malicious trade secret theft will not only be punished, but that punishment can—and should—reflect the full gravity of the misconduct.

    Reconsidering Injunctive Relief on Remand

    The Seventh Circuit also found error in the district court’s refusal to revisit its earlier denial of a permanent injunction. Although the court had initially concluded that a royalty-based remedy would suffice, Motorola’s post-trial evidence showed that Hytera was either unable or unwilling to pay the court-ordered royalties.

    The appellate court held that the district court erred in denying Motorola’s Rule 60(b) motion for reconsideration based on a mistaken belief it lacked jurisdiction once the case was on appeal. Under Fed. R. Civ. P. 62.1 and established Seventh Circuit precedent, a district court may (and sometimes must) issue an indicative ruling in such circumstances.

    The panel remanded with instructions for the district court to reassess whether Hytera’s continued misconduct and refusal to pay justify permanent injunctive relief going forward.

    Conclusion

    The Motorola v. Hytera decision will likely become one of the foundational cases for interpreting the Defend Trade Secrets Act. It affirms the statute’s extraterritorial reach, recognizes the broad remedial powers it confers—including large punitive awards—and warns that companies cannot insulate themselves from consequences by offshoring their misconduct. Charles Gideon Korrell believes that with this decision, the Seventh Circuit has made clear that willful misappropriation of U.S. trade secrets will meet with serious and global consequences, particularly where deterrence demands more than just monetary damages.

    By Charles Gideon Korrell