DOJ, Hytera Spar Over Identifying Expert Witnesses in Trade Secrets Case

U.S. District Judge John Tharp for Northern Illinois in Chicago appeared during a telephone status hearing Thursday to have resolved a longstanding impasse between DOJ and defendant Hytera Communications over the government’s request for Hytera to disclose the identities of its expert witnesses before they can get access to sensitive discovery materials. Tharp said at the end of the hearing he thinks Hytera had the better argument.

A grand jury in May 2021 returned indictments listing 22 counts of trade secret theft against Hytera and seven of its engineers who developed digital mobile radios for Motorola in Malaysia beginning in 2004. The engineers quit Motorola in 2008 and 2009 to go to work for Hytera in Shenzhen, and the government alleges they took Motorola’s DMR trade secrets with them.

The government’s position is that “an expert in this case would want to review unredacted versions of documents as they pertain to potential trade secret information,” said DOJ attorney Melody Wells. DOJ asks that those experts “be identified before they receive discovery materials in the case,” she said. “This would allow the government to come to the court if we had an objection for good cause, and allow the court to determine then whether those discovery materials could be provided to the experts.”

DOJ wants the ability to raise any objection for the court’s ruling “if we believe there was a conflict or something problematic about that particular individual receiving proprietary trade secret information belonging to the victim company,” said Wells, referring to Motorola.

It’s Hytera’s position that the defendant “has already agreed it would disclose in advance to the government the names of any experts who would review source code,” countered Hytera attorney Rachel Cannon of Steptoe & Johnson. Source code is “essentially where the bulk, if not all, of the trade secrets lie,” she said.

'Invades' Attorney-Client Privilege

For anything beyond source code, argued Cannon, “it’s our position that providing advance disclosure of the identity of Hytera’s experts, including consulting experts, invades the attorney-client privilege because it reveals our strategy and exactly what Hytera is thinking in terms of its legal defense.” The government asked that the provision be added to the case’s protective order “under the theory that Hytera’s experts might at some theoretically future date become affiliated with either Hytera, Motorola or a competitor,” she said.

Hytera thinks DOJ’s concern “is just too speculative to justify the restrictions the government is requesting,” said Cannon. The DMR technology involved in the case is “a very specialized area,” she said. Any potential expert “could theoretically in the future become affiliated with Motorola, Hytera or a competitor,” she said.

The allegations in the indictment “are not limited to source code,” said Wells, suggesting Hytera is overstating what it’s willing to share in advance with the government about the identities of its expert witnesses. The indictment also includes allegations of a theft of trade secrets “conspiracy” that involves “a wide range of documents,” she said. The indictment alleges “significant theft in terms of volume of information that goes way beyond just the source code,” she said. DOJ doesn’t “dispute” that source code is “a very significant part of this case, but it is not in any way the totality of the case,” she said.

All the government is seeking in advance are the names and qualifications of Hytera’s expert witnesses, said Wells. “It would not in any way reveal the defense strategy in the case. And in any event, that’s information we would eventually receive, certainly for their testifying experts.”

'Can't Unring the Bell'

The problem with “sending over discovery materials to folks like this, without dealing with objections in advance, is that we can’t unring the bell” if something goes awry with a Hytera expert witness, she said. “It’s not the government’s materials. These are victim-company materials and victim-company information, and we’re trying to protect that as much as possible.”

When the judge asked Wells what sort of objection the government might raise about a Hytera expert witness, she responded that “you could imagine a situation where the expert is someone who we believe was involved in the theft of trade secrets, or who was employed by Hytera at the time that this took place.” There’s also the scenario of experts who work for a current Motorola competitor, she said. “Disclosing that information to them would put Motorola at a disadvantage, because then a competitor company would have access to their trade secret information,” she said.

DOJ’s arguments “are entirely speculative,” countered Cannon for Hytera. “We can’t imagine a reputable expert from a reputable company who would reveal Motorola’s alleged trade secrets and run off with them and steal them,” she said. “We just don’t think this is grounded in reality.” She said any expert who Hytera would retain would sign and be “bound” by the case's protective order. “What we object to is the advance disclosure to the government and Motorola, for their edification, of who we’re consulting,” she said.

Tharp concluded the hearing by saying he’s “of the view that Hytera’s got the better part of the argument here.” That’s especially so, he said, in light of the defendant’s “compromise position” that it’s willing to share in advance with the government the identity of expert witnesses specializing in source code. He understands the government’s concerns, he said, “but I don’t think that warrants requiring the defendant to provide a list of folks they’re going to consult with.” He set the next telephone status hearing in the case for March 31.