“(3) Remedies. In a civil action brought under this subsection with respect to the misappropriation of a trade secret, a court may – … (B) award – (i)(I) damages for actual loss caused by the misappropriation of the trade secret; and … (C) if the trade secret is willfully and maliciously misappropriated, award exemplary damages in an amount not more than 2 times the amount of the damages awarded under subparagraph (B); and (D) if … the trade secret was willfully and maliciously misappropriated, award reasonable attorney’s fees to the prevailing party.”
“Motorola does not seek to enforce the US Judgment in respect of sums awarded as compensatory or punitive damages under the DTSA in these proceedings” (see also paragraph 6 of its skeleton argument to the same effect). Despite not seeking to enforce these sums, Motorola went on to state that its “position as to the severability of the compensatory damages awarded under the DTSA … from the punitive damages … including but not limited to the right to bring proceedings against [Hytera] in future in respect of those sums – remains reserved.”
“With respect to post-judgment interest, the Court agrees with the parties that post-judgment interest is provided by statute. 28 U.S.C. § 1961. The Court agrees with Motorola that the post-judgment interest should be calculated on the entire award.”
“The judgment of the district court is REVERSED IN PART with respect to the availability of copyright damages for Hytera’s extraterritorial sales, Hytera’s entitlement to prove apportionment of its copyright damages under a proximate-cause theory, and the denial of Motorola’s Rule 60(b) motion for reconsideration of the denial of injunctive relief. The case is REMANDED for further proceedings on those issues consistent with this opinion. In all other respects, the judgment of the district court is AFFIRMED.”
“5.— Restriction on enforcement of certain overseas judgments. (1) A judgment to which this section applies shall not be registered … and no court in the United Kingdom shall entertain proceedings at common law for the recovery of any sum payable under such a judgment. (2) This section applies to any judgment given by a court of an overseas country, being— (a) a judgment for multiple damages within the meaning of subsection (3) below; … (3) In subsection (2)(a) above a judgment for multiple damages means a judgment for an amount arrived at by doubling, trebling or otherwise multiplying a sum assessed as compensation for the loss or damage sustained by the person in whose favour the judgment is given.”
“that neither Service Temps or SAS Institute deals squarely with the situation confronting the court on this occasion: the enforcement of interest, costs and fees orders pursuant to a judgment that contains an award of unexceptionable damages which (as things stand) is enforceable and has been enforced alongside an award of multiple damages”
“if you find for Motorola on its trade secret claims, you may, but are not required to, assess exemplary damages against Hytera. The purposes of exemplary damages are to punish Hytera for its conduct and to deter Hytera and others from engaging in similar conduct in the future. In order for Motorola to recover exemplary damages you must find that Motorola has proved by preponderance of the evidence that Hytera’s acts were willful and malicious… if you find that exemplary damages are appropriate, then you must use sound reason in setting the amount of those damages. Exemplary damages, if any, should be in an amount sufficient to fulfil the purposes that I have described to you, but should not reflect bias, prejudice, or sympathy toward either party. In determining the amount of any exemplary damages, you should consider the following factors: 1. The reprehensibility of the conduct; 2. The impact of the conduct on Motorola; 3. The relationship between Motorola and Hytera; 4. Hytera's financial condition; 5. The likelihood that such conduct would be repeated by Hytera or others if an award of his exemplary damages is not made; 6. The relationship of any award of exemplary damages to the amount of actual harm Motorola suffered. If you find that Hytera acted willfully and maliciously, you may award Motorola an amount of exemplary damages up to two times the amount of the compensatory damages you award Motorola for trade secret misappropriation for the time during which it acted willfully and maliciously.”
“as a response to American laws which purport to regulate, to an undue degree, trading activity outside the United States, Section 5 of [PTIA] forbids the enforcement in the United Kingdom of any judgmentfor multiple damages… It is not clear exactly what is covered by a judgment for multiple damages. Section 5(2) defines it as one “for an amount arrived at by doubling, trebling or otherwise multiplying” the sum assessed as compensation. This would appear to mean that judgement for any sum which is multiplied, but not for one to which a sum is simply added, is caught by the prohibition on enforcement contained in the act. It is not easy to see the policy which draws the line in this place; and it may yet be that a judgment for exemplary damages on top of the compensatory sum could be denied recognition if there is evidence (but what would it be?) of a subliminal multiplication of the compensatory sum.”
“…the DTSA sets a cap on the punitive damages available at “not more than 2 times the amount of the damages awarded” under the DTSA’s compensatory damages provisions. 18 U.S.C. § 1836(b)(3)(C). In capping punitive damages at a ratio of two-to-one, the DTSA functions like a host of other federal statutes authorizing double or treble damages—especially for wrongdoing in commerce—whose constitutionality is virtually beyond question. State Farm, 538 U.S. at 425 (“[S]anctions of double, treble, or quadruple damages to deter and punish” have “a long legislative history, dating back over 700 years and going forward to today.”); Gore, 517 U.S. at 580 & n.33 (noting centuries-long history of such legislation); see, e.g., 15 U.S.C. § 15(a) (mandating treble damages for antitrust violations); 18 U.S.C. § 1964(c) (mandating treble damages for racketeering violations); 35 U.S.C. § 284 (authorizing treble damages for patent infringement); and 15 U.S.C. § 1117(a) (authorizing treble damages for trademark infringement)… Here, as in § 1981a and other federal statutes like the Sherman Act, RICO, and patent and trademark laws authorizing double or treble damages, Congress has made a specific and reasonable legislative judgment about punitive damages in cases like this one… As explained above, we affirm the district court’s$135.8 million compensatory damages award because a procedural error in determining apportionment was harmless. The evidence amply supports a compensatory award of that amount. The$271.6 million in DTSA punitive damages is exactly double, and thus, “not more than 2 times the amount” of compensatory damages awarded by the district court.”
“I accept, and indeed it is not in issue between the parties, that the 1980 Act makes clear its hostility to awards of multiple damages by barring enforcement in the United Kingdom of any part of such award including the basic compensatory award to which a multiple element has been applied and superadded. The wording of the definition in s.5(3) makes that clear. However, I do not consider that the wording provides the answer to the question whether, when the judgment is in part only a judgment for multiple damages as defined in s.5(3) The RICO claim , but also comprises a judgment for simple compensatory damages in respect of separate causes of action to which no multiple element has been applied The breach of fiduciary duty / fraud claims , it is to be regarded as indivisible for the purposes of enforcement under s.5(1). It seems clear to me that the provisions of s.5, taken as a whole, beg that question rather than answering it, and that they raise an ambiguity properly to be resolved by an exercise of purposive construction in which (if necessary) application of the rule in Pepper v Hart is legitimate: see generally Section 217 of Bennion: Statutory Interpretation (4th ed) at 526-528.”
“(3) In subsection (2)(a) above a judgment for multiple damages means a judgment only to the extent that it is for an amount arrived at by doubling, trebling or otherwise multiplying a sum assessed as compensation for the loss or damage sustained by the person in whose favour the judgment is given”; Or as: “(3) In subsection (2)(a) above a judgment for multiple damages means a judgment for or including an amount arrived at by doubling, trebling or otherwise multiplying a sum assessed as compensation for the loss or damage sustained by the person in whose favour the judgment is given.”
“51. So far as the non-RICO elements of the judgment are concerned, the US court documents in this case make clear that the judgment sought to be enforced consists of sums in respect of ordinary compensatory damages for private causes of action similar to those available under English law. In my view it is both desirable and appropriate that enforcement of those elements should be open to the claimant unless plainly precluded by the terms of the 1980 Act, and the approach to the construction of the Act should be based upon that premise. 52. I have already indicated my view that the terms of the 1980 Act do not in terms preclude such an approach; nor do policy considerations require that the ambiguity of the wording should be resolved so as to preclude enforcement in toto. 53. In my view the robust and sensible approach to s.5 of the 1980 Act in relation to a composite judgment of the kind now before us, is not to treat the multiple damages element of the judgment as definitive of, or 'infecting', its character as a whole, but to read s.5(1) as precluding proceedings for recovery at common law only to the extent that the judgment sought to be enforced is for an amount arrived at by multiplying a sum assessed as compensation for the loss or damage sustained by the person in whose favour the judgment was given.”
“I think the same purposive reasoning [as adopted by the Court of Appeal in Lewis] leads to the conclusion that the genuinely compensatory elements of an award subject to multiplication should be equally recoverable.” which she considered paid insufficient regard to the actual wording of the PTIA. She concluded at [243]-[244] that: “When one goes back to the [PTIA] one finds that the prohibition (“no court in the United Kingdom shall entertain proceedings at common law for the recovery of any sum payable under such a judgment”) relates to “a judgment for multiple damages.” … The judgment relates therefore to the cause of action. The statute does not distinguish between different elements of an order entered under a judgment. If there is a judgment based on multiplication, then no part of it may be enforced.”
“I am not persuaded that there is any basis for severing the compensatory element of a judgment from its excess. Section 5(1) is clear in its terms. It prohibits the statutory registration of a judgment which falls within s. 5(2) or common law proceedings for the recovery of sums payable under such a judgment.”
“It is consistent with the purpose of the [PTIA] to give a wide meaning to the words at the end of s. 5(1): “… proceedings at common law for the recovery of any sum payable under such a judgment.””
“The effect of theProtection of Trading Interests Act 1980 is that such judgments are not enforceable in the United Kingdom at common law or otherwise, including in respect of an award of compensatory damages which has been multiplied, though where there are judgments on separate causes of action, a judgment under one for compensatory damages may still be enforced notwithstanding that judgment under another is for multiple damages and so unenforceable: Lewis v Eliades… SAS Institute Inc v World Programming Ltd…”
“The facts of the present case are more complex than in Lewis both because here the claim is for enforcement of the costs element of a single judgment that explicitly provided for trebling with only quantification deferred, and because the costs order was made under the very statute (RICO) which permits the trebling.”
“The court finds that Motorola is entitled to reasonable attorney fees for prevailing on its claims against Hytera for misappropriation of trade secrets and copyright infringement.”
“No foreign judgment will be recognised or enforced in England at common law unless it is ‘‘final and conclusive.’’ The test of finality is the treatment of the judgment by the foreign tribunal as a res judicata. ‘‘In order to establish that [a final and conclusive] judgment has been pronounced, it must be shown that in the court by which it was pronounced, it conclusively, finally, and forever established the existence of the debt of which it is sought to be made conclusive evidence in this country, so as to make it res judicata between the parties.’… A foreign order which is liable to be abrogated or varied by the court which pronounced it is not a final judgment.”
“The judgment of the district court is REVERSED IN PART with respect to the availability of copyright damages for Hytera’s extraterritorial sales, Hytera’s entitlement to prove apportionment of its copyright damages under a proximate cause theory, and the denial of Motorola’s Rule 60(b) motion for reconsideration of the denial of injunctive relief. The case is REMANDED for further proceedings on those issues consistent with this opinion. In all other respects, the judgment of the district court is AFFIRMED.”
“16.3. Further or alternatively, if (contrary to the First Defendant’s case) any sums awarded in the US Judgment in respect of costs, interest or fees are not unenforceable by reason of the PTIA because they are attributable solely to the Claimants’ Copyright Act claim, the Claimants are in any event not entitled to recover such sums in light of the partial reversal and remanding of the US Judgment by the Seventh Circuit Court. Following reconsideration of the US Judgment by the Illinois Court, the sums awarded to the Claimants in respect of costs and/or interest and/or fees are liable to be varied by that Court, such that the US Judgment is not final or conclusive in these respects.”
“14.1 The first sentence is denied. The fact that the quantum of damages due to the claimants under the US judgement under the Copyright Act has now been remanded to the Illinois court for recalculation does not mean that the claimants are not entitled to receive sums awarded pursuant to (separate) orders for costs, interest and counsel’s fees made by the Illinois court. The Seventh Circuit Court did not state in its opinion or final judgement that such orders were reversed, set aside or stayed in whole or in part. Those orders therefore remained valid and enforceable. 14.2 With respect to the second sentence, the Seventh Circuit Court has not given any judgment, order or other direction that the orders made by the Illinois court for costs, interest and counsel’s fees should be reconsidered by the Illinois court. Such orders therefore remain valid, final and enforceable at this time. The Claimants deny that the orders for costs and counsel’s fees are liable to be varied by the Illinois court; they are not based on the quantum of damages awarded but rather result from the First Defendant’s liability to pay any damages (i.e. were made on a costs follow the event basis). As the prevailing party the Claimants were entitled to their costs in the Illinois proceedings regardless of the amount of damages ultimately awarded. As noted above the Seventh Circuit Court highlighted in its opinion that the First Defendant's liability was not at issue on appeal.”
“Motorola’s case is not that the Illinois Court cannot recalculate the sum awarded in respect of pre-judgment interest when it reconsiders the damages awarded under the Copyright Act, in the sense that it is barred by reason of US law or procedure. Rather, Motorola’s case, as clearly stated at paragraphs 14.1 and 14.2 of the Amended Reply, is that the order of the Illinois Court dated10 August 2021 requiring HCC to pay to Motorola USD 51,128,975 in pre-judgment interest (the “Interest Order”) is now valid and enforceable as: (i) it has not been reversed, set aside or stayed in whole or in part by the Opinion or Final Judgment of the Seventh Circuit Court; and (ii) the Seventh Circuit Court has not given any judgment, order or other direction that the Interest Order should be reconsidered by the Illinois Court. Further, the Illinois Court has given no indication that it will reconsider the Interest Order.”
“While we do not object to adopting an approach whereby the parties’ advocates make submissions at trial as to relevant matters of US law by reference to source materials (including US case law) which are provided to the Court as contemplated by H3.3 of the Commercial Court Guide, we do not agree with the so-called “propositions of US law” set out at Annex 1 of Your Letter.”
“13.2 The Cost/Interest/Fees Sum is final and conclusive for the purposes of enforcement in England and Wales, the Illinois Court had jurisdiction to award that sum, and the sum is a sum of money (rather than a tax, fine or other penalty). This is because nothing in the US Court of Appeals seeks to stay or otherwise alter the Costs/Interest/Fees Sum: the Fees Orders and the Costs Order flow from the finding that Hytera is liable under the Copyright Act and the DTSA (a finding that was not appealed and has been left undisturbed by the US Court of Appeals) and no contrary order has been made as regards the Interest Orders. 13.3 Against that background, the only question for this Court on this occasion is whether the Costs/Interest/Fees Sum is capable of being severed from the objectionable part of the US Judgment; namely the Exemplary Damages Sum under the DTSA.”
“As further detailed in what follows, Motorola relies on the propositions of US law that (i) all parts of the US Judgment affirmed by the US Court of Appeals (including the Costs/Interests/Fees Sum) are enforceable absent any variation by the Illinois Court; (ii) the costs and fees portion (at least) of the Costs/Interests/Fees Sum is tied to the finding of Hytera’s liability (which was not appealed and not overturned or remitted by the US Court of Appeals); and (iii) the Costs/Interests/Fees Sum was ordered at the discretion of the Illinois Court and/or pursuant to its statutory powers. At the date of filing this skeleton argument, the parties are in the process of agreeing a Schedule of agreed/disputed ‘Propositions of US Law’ (see Steptoe’s proposal at [IP/22-26] and King & Spalding’s response at [IP/38-40]) and it is anticipated that this will be completed in good time before the hearing. ”