United States District Court, N.D. Illinois, Eastern Division
MOTOROLA SOLUTIONS, INC. Plaintiff,
HYTERA COMMUNICATIONS CORP, et al, Defendants.
MEMORANDUM OPINION AND ORDER
JEFFREY COLE, UNITED STATES MAGISTRATE JUDGE
too often never comes, and so one ought not to reject it
merely because it comes late.” Henslee v. Union
Planters Nat. Bank & Trust Co., 335 U.S. 595, 600
(1949) (Frankfurter, J., dissenting)
on in this case, Hytera filed a motion to dismiss
Motorola's Complaint, arguing that Motorola failed to
file within the applicable limitations period. Indeed, it
would seem that Motorola waited almost ten years after its
intellectual property was allegedly taken to initiate suit.
On September 7, 2017, after the parties had briefed the
motion to dismiss, Judge Der-Yeghiayan (shortly before his
retirement) wrote that “Motorola's claims appear to
be untimely based upon the representations made by
[Hytera].” However, he determined it was best to
convert Hytera's motion to dismiss to a motion for
summary judgment in order to resolve the statute of
limitations issue based on evidence rather than allegations
and representations. [Dkt. #58, at 2].
the court allowed the parties until October 6, 2017, to
conduct discovery on the statute of limitations issue and
stayed all other discovery. [Dkt. #58]. We say
“notably” because, nearly eight months
ago, the judge allowed the parties one month in
which to take discovery on a very limited topic.
While the inquiry should have been uncomplicated, it has
become a long, drawn out, pitched battle - one, in a
rhetorical sense, to rival the Punic Wars - albeit without
the elephants and the Alps and the sheer drama.
September 20, 2017, Motorola filed a motion to compel,
seeking a broad range of documents and arguing they were
relevant to the issue of Hytera concealing the theft of
Motorola's trade secrets. There were three categories of
documents going back nine years: Hytera's internal
documents explaining how they developed their radio products;
documents covering Hytera's use, receipt, and
consideration of Motorola's trade secrets and products;
and documents covering any investigation by Hytera into its
possession of Motorola trade secrets. [Dkt. #81, at 13-15].
Hytera protested that such discovery went beyond the statute
of limitations issue. [Dkt. #81, at 12]. Judge Der-Yeghiayan,
while reiterating that discovery on issues beyond the statute
of limitations was stayed [Dkt. #81, at 10-11], expressed
concern that Hytera's motion for summary judgment could
“basically eliminate [Motorola's] complaint”
and allowed the broad discovery over Hytera's objections.
[Dkt. #81, at 13]. Hytera said it would need until December
1, 2017, to make such an expansive production, and Judge
Der-Yeghiayan set that as the new statute of limitations
discovery deadline. [Dkt. #81, at 15].
that, the parties exchanged motions to compel repeatedly.
[Dkt. ## 67, 84, 110, 119, 121, 140, 173]. Deadlines were
extended, from one month to several. [Dkt. #91]. Thousands of
pages of memoranda and exhibits were filed. And, again, this
was all over the supposedly limited discovery on a limited
topic that ought to have taken little time and effort. The
very nature of what occurred tends to sustain the all too
prevalent observation that discovery has become more
important than the actual case. Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 595, n.13 (2007); A.H. Robins
Co. v. Piccinin, 788 F.2d 994, 1013 (4th Cir. 1986).
upshot of all this is Motorola's March 1, 2018 motion to
compel was filed five months into this “limited”
discovery process and one month after the final, extended
deadline for this “limited” discovery had passed.
[Dkt. #91]. Among other things, Motorola now asks to conduct
a forensic examination of the computers of “key Hytera
witnesses who have been involved in the use of Motorola's
confidential information and any relevant Hytera servers . .
. on which Hytera has stored Motorola documents, ” all
of which are located in China. [Dkt. # 175, at 5]. But even
that is not the end. Indeed, Motorola says it wants to
“begin with forensic inspection of the
computers of the following Hytera employees: G.S. Kok, Y.T.
Kok, Samuel Chia, Jue Liang, Roger Zhang, Phaik Ee Ooi, Yu
Kok Hoong.” [Dkt. #175, at 5 n.2 (emphasis added)]. The
word “begin” is italicized for obvious reasons.
We are now over eight months into this statute of limitations
discovery with no end in sight. In fact, Motorola wants to
“begin” forensic inspection one month after the
deadline for statute of limitations discovery has passed. One
is reminded of Churchill's famous quip: “Now this
is not the end. It is not even the beginning of the
the course of two lengthy hearings on March 21 and April 4,
2018, I tentatively concluded that forensic examination of
Hytera's computers would be appropriate, but only if the
parties could arrive at a suitable protocol that would not,
among other things, run afoul of Chinese law. As we discuss,
infra at 5, that was a mistake. But the law frowns
on relying on a blunder to gain an opportunistic advantage.
Cf. Architectural Metal Systems, Inc. v. Consolidated
Systems, Inc., 58 F.3d 1227, 1231 (7th Cir.1995);
Market Street Associates; Packer Trading Co. v.
CFTC, 972 F.2d 144, 150 (7th Cir 1992); Centex
Construction v. James, 374 F.2d 921, 923 (8th
event, I was told that examination of the computer could be
accomplished without running afoul of Chinese Law, by resort
to the Hague Convention procedures. Motorola, however,
maintained that this would take up too much time - a
remarkable protest considering the already unnecessarily
prolonged history of the discovery that was supposed to be
limited to the timeliness of the Motorola Complaint. What
impressed me initially at the March 21 hearing were
Motorola's discussion of two emails that Hytera had long
produced to Motorola, that seemed to indicate that Hytera
thought certain software should be rewritten to make it look
different from Motorola software. That initially appeared
relevant to fraudulent concealment as such a tack would seem
make it more difficult for Motorola to discover that the
formerly-Motorola-now-Hytera employees had somehow
misappropriated trade secrets. [Dkt. #209, at 20-25, 49,
some point between March 21 and April 4, as counsel for
Hytera put it at the April 4 hearing, those emails became a
“crowbar to get everything” [Dkt. #210, at 45],
and we went from discovery relevant to the equitable tolling
of the statute of limitations, which remains the scope of
discovery allowable at this point, to looking for anything,
as I unfortunately and incorrectly put it at the April 4
hearing, “of value or relevance to this case.”
[Dkt. #210, at 46].
the April 4th hearing progressed, that is clearly
where things went, with the limitations of discovery to the
statute of limitations issue being put out of view and
replaced by what was relevant to the alleged theft of
Hytera's “confidential information” and
generally those who may have been recipients of it. [Dkt.
#210, at 54]. Under that expanded view, discovery would then
encompass any file that implicated any Hytera/Motorola
confidential information or showed use of the Motorola code
or information by Hytera related to this case. [Dkt. #210, at
58-60, 64]. Evidence that Hytera was using Motorola code or
information might be relevant to Motorola's case-in-chief
but, but the issue at hand was equitable tolling of the
statute of limitations. And, the material sought by Motorola
was not relevant to the narrow issue of whether Motorola knew
or should have known enough to have filed its Complaint
earlier. See generally 4 Wright, Miller, Steinman,
Federal Practice and Procedure, Section 1056 at 257, et.
the end of the hearing, in response to counsel for Hytera
stating that he “accept[ed] that [he] lost the
argument, ” I pointed out that I could change my mind
and that “reconsideration is a valuable tool.”
[Dkt. #210, at 72]. As indeed it is. See White v.
Wheeler, U.S., 136 S.Ct. 456, 462 (2015); Terry v.
Spencer, F.3d (7th Cir. 2018); Zoretic v.
Darge, 832 F.3d 639 (7th Cir. 2016); Bank
of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d
1185, 1191 (7th Cir.1990); BP Amoco Chemical v. Flint
Hills Resources LLC, 2007 WL 1232085 (N.D.Ill.
after reviewing the transcripts of the hearings and
Motorola's arguments in its two briefs in support of how
the materials on these computers that Motorola wanted to
inspect are relevant, I have concluded that my tentative
inclination to allow discovery in China was in error.
“Being manned by humans, the courts are not perfect and
are bound to make some errors.” Illinois v.
Allen, 397 U.S. 337, 346-347 (1970). Accord In re
City of Milwaukee, 788 F.3d 717, 722 (7th Cir. 2015);
Mukhtar v. California State University, Hayward 319
F.3d 1073, 1076 (9th Cir.2003); Fujisawa
Pharmaceutical Co., Ltd. v. Kapoor, 115 F.3d 1332
(1997). But the law frowns on relying on a blunder to gain an
opportunistic advantage. Cf. Architectural Metal Systems,
Inc. v. Consolidated Systems, Inc., 58 F.3d 1227, 1231
(7th Cir.1995); Market Street Associates; Packer Trading
Co. v. CFTC, 972 F.2d 144, 150 (7th Cir 1992);
Centex Construction v. James, 374 F.2d 921, 923 (8th
scope of discovery that I was initially inclined to allow
was, in the context of the present inquiry that had been
narrowed by the district court to the limitations issue,
overbroad. What is being sought goes beyond the issue of
equitable tolling. In the end, Motorola's counsel and I
were talking about relevance to allegations in Motorola's
complaint. [Dkt. #210, at 92-95]. And so, well beyond the
statute of limitations, by the ...