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	England and Wales High Court (Commercial Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Commercial Court) Decisions >> Motorola Solutions, Inc & Anor v Hytera Communications Corporation Ltd & Ors [2025] EWHC 257 (Comm) (23 January 2025) URL: http://www.bailii.org/ew/cases/EWHC/Comm/2025/257.html Cite as: [2025] WLR(D) 94, [2025] EWHC 257 (Comm)

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IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
COMMERCIAL COURT (KBD)

		Royal Courts of Justice, Rolls Building Fetter Lane, London, EC4A 1NL
		23 January 2025

Sean O'Sullivan KC:

1. I heard yesterday an application dated 15 July 2024 by the first defendant, which I am going to call "Hytera," to set aside or permanently stay the judgment of Cockerill J dated 3 November 2023 in the sum of US$136.3 million, which I will call "the English judgment." This is my judgment on that application.
2. The English judgment was itself premised upon one part of a judgment of the Illinois District Court, which I will call "the Illinois Court," dated 8 January 2021. I will call that "the Illinois Court judgment." At the time when the English judgment was entered, Hytera had already launched an appeal against the Illinois Court judgment, the US Appeal, before the Seventh Circuit of the US Court of Appeals, which I will call "the US Appeal Court." The US Appeal Court handed down judgment on that appeal on 2 July 2024. Hytera's appeal was partially successful, and the US Appeal Court reversed the part of the Illinois Court judgment which had been the basis for the English judgment, albeit that that element was then remitted or remanded to the Illinois Court for a fresh assessment of the damages (on the correct basis).
3. I have to consider first, briefly, the Claimants ("Motorola")'s application for adjournment of the hearing. Motorola's formal position was that the substantive application should be adjourned pending the issuance of the further judgment by the Illinois Court (i.e. assessing damages on the correct legal basis). Henshaw J directed that the application to adjourn be listed at yesterday's hearing and that it would be: "…a matter for the judge hearing the applications to decide in what order they should be argued and decided".
4. Motorola says that, to the extent I am making any decisions on Hytera's application to release the security, which Hytera put up as the price for obtaining a stay of execution of the English judgment, that application depends on the amount of damages eventually awarded under the Copyright Act by the Illinois Court. There is a contentious issue between the parties as to the likely figure for the revised damages. All that is agreed is that the upper limit of that revised figure is US$14,674,823, plus interest and costs.
5. Hytera's position is the adjournment application should be refused because, on both parties' primary cases, the prospect of a new judgment being issued by the Illinois Court is irrelevant to the outcome of Hytera's substantive application.
6. In his oral submissions yesterday, Mr Sprange KC, for Motorola, said very little about the adjournment application. He sensibly recognised that it made limited sense simply to adjourn if we are going to have to descend into the detail of the substantive application in any event. It seems to me he was right to take that course.
7. To the extent that there is a point of principle concerning the court's power to set aside or vary a judgment, it makes sense for me to resolve that issue. There is no doubt that point is going to remain live. As I will explain, nobody is suggesting that the Illinois Court might revert to a judgment for damages under the Copyright Act in the sum of US$136.3 million. To the extent that the reason for adjourning would be to hold the ring, because a further decision is to be made by the Illinois Court in due course, that seems to me really to be a question about the appropriate remedy if the application is successful to any degree. To use an adjournment to achieve that goal would be unprincipled. It would also be duplicative of effort, potentially requiring the whole application to be fought again at some point in the future. So, for all of those reasons, I dismiss the application for an adjournment.
8. I need to describe, at this stage, the facts in a little more detail before turning to the legal issues. I note, however, that this dispute has already resulted in a series of reported decisions, many of which outline the factual background. See, for example, the decision of the Court of Appeal with the neutral citation [2021] EWCA Civ 11. I will focus only on the parts of the story which matter for my purposes. None of what follows is intended to be controversial.
9. Hytera is a Chinese developer and manufacturer of two-way radio equipment and related technology. Motorola is a US competitor of Hytera, headquarters in Chicago, Illinois.
10. On 14 March 2017, Motorola brought proceedings against Hytera in the Illinois Court, alleging, among other things, theft of intellectual property, trade secret misappropriation and copyright infringement. On 14 February 2020, a civil jury in those proceedings returned a verdict in favour of Motorola on the basis of a theft of 21 distinct trade secrets. A sum was awarded in respect of copyright infringement, on the basis that the reason for the copyright infringement was so that Hytera could build a competing two-way radio product using Motorola's source code and trade secrets.
11. There is now no dispute about the underlying misconduct. Hytera has recently agreed to enter a voluntary guilty plea to conspiring to steal trade secrets in violation of Title 18 of the United States Code, s.1832(a)(5) in criminal proceedings brought by the United States Department of Justice.
12. The original jury verdict of 14 February 2020 was varied by the Illinois Court on 8 January 2021, so as to reduce the amount of the overall judgment debt to US$543.7 million. That comprised US$136.3 million in what is described as "disgorged profits" under the US Copyright Act 1976 ("the Copyright Act damages award"); US$135.8 million in disgorged profits under the Defend Trade Secrets Act of 2016; and US$271.6 million in punitive damages under that same act.
13. On 14 July 2023, Motorola amended its claims in the present English action to claim, among other relief, the sum of US$136.3 million premised upon the Copyright Act damages award. On 8 August 2023, Hytera filed its defence in the present proceedings. Hytera admitted Motorola's claim to enforce the Copyright Act damages award in the amount of US$136.3 million. Hytera says that it had no choice but to make this admission because it is well-established, as a matter of English law, that a pending appeal does not prevent a foreign judgment being "final and conclusive" for the purpose of enforcement at common law. I will say a little more about that in due course.
14. However, Hytera also made clear that its defence was pleaded "…expressly without prejudice to its arguments on its appeal before the US Appeals Court" (that is para.2 of the Defence), and, further that: "It is possible that, depending on the outcome of its appeal, elements of the US judgment will be vacated by the US Appeal Court and remitted to the Illinois Court, which could then vary those remitted elements" (that is para.11 of the Defence).
15. On 2 October 2023, at the first English CMC, Motorola made an application for summary judgment on its claim to enforce the Illinois Court judgment, to the extent of that Copyright Act damages award. As I have said, Hytera had already admitted this part of Motorola's claim. In those circumstances, Hytera consented to summary judgment being entered against it on the Copyright Damages award.
16. At the same time as consenting to summary judgment in respect of that amount, Hytera issued an application for a stay of execution of the resulting judgment. Hytera says that the purpose of this stay application was to avoid the prejudice that Hytera would suffer if it were required to satisfy the English judgment, but the Illinois Court judgment was then set aside by the US Appeal Court. It observes that Motorola, in that context, proposed, as a condition of consenting to a stay of execution, that the amount of the English judgment should be paid into court or held in escrow pending the outcome of the US appeal. The reason for that was expressed in a letter from King & Spalding dated 23 October 2023 to be that: "In the event of a judgment against [Motorola], such funds can be returned to [Hytera] in full."
17. In due course, Jacobs J granted the stay application, on the basis that the Illinois Court judgment might be set aside on appeal and that Hytera would suffer irremediable prejudice if it had been required to pay to Motorola the sums due under the English judgment in the meantime. He required Hytera to pay into court the sum of US$25 million as a condition of the stay continuing until the US Appeal Court decision was rendered.
18. In November 2024, Calver J heard the trial in relation to the claims in the present proceedings which were seeking to enforce other ingredients of the Illinois Court judgment. At the risk of oversimplifying a complicated issue, the learned Judge dismissed all of those claims, on the basis that enforcement was precluded by s.5 of the Protection of Trading Interests Act 1980. I understand that permission to appeal has recently been granted by the Court of Appeal.
19. In the meantime, Hytera had appealed against the Illinois Court judgment. That appeal was heard on 5 December 2023 by the US Appeal Court. The US Appeal Court issued its opinion on 2 July 2024. It vacated the Illinois Court judgment as regards the Copyright Act damages award and remitted Motorola's claim in that regard to the Illinois Court for it to reassess damages in accordance with the principles that are outlined in the opinion.
20. Mr Sprange suggested that the US Appeal judgment did not actually reverse the decision in relation to the Copyright Act damages award, because there is a further stage that is to take place in the appeal process, i.e. it has been remanded to the Illinois Court, not just reversed. However, on its face, the order of the US Appeal Court does reverse that part of the Illinois Court judgment. In the absence of evidence from US lawyers about some difference between US and English proceedings, I would understand the way it is expressed to mean that the Illinois Court judgment is no longer valid. I would understand it to work in the same way as when, in this jurisdiction, the Court of Appeal allows an appeal on a point relevant to quantum and then remits that issue of quantum to the first instance court for further consideration.
21. To explain why it was remitted, I should explain that the decision of the US Appeal Court in relation to the Copyright Act damages award was that, first, the Illinois Court had erred in awarding damages by reference to Hytera's profits on sales outside the United States and, second, that the Illinois Court had, at least on the face of the Illinois Court judgment, erred in failing to apportion Hytera's profits to take into account Hytera's own contribution to those profits.
22. Motorola points out that the US Appeal Court commented, in its opinion, that, "The most startling fact about these appeals is that Hytera's liability is not at issue. It concedes that it engaged in the blatant theft of trade secrets and copying of proprietary computer code".
23. As I have said, it is now common ground that Hytera's total US sales in the relevant period, for the purpose of the Copyright Act claim, were only US$14.6 million or thereabouts. It follows that the maximum amount of the damages which can be awarded under the Copyright Act is US$14.6 million (before interest and costs).
24. In the light of the opinion of the US Appeal Court, that figure therefore now operates as a cap on the damages which Motorola can recover under this head. I emphasise that that figure does not take into account any apportionment, to reflect Hytera's own contribution to the profits. As I have said, there is a dispute about whether any apportionment is appropriate, which is now before the Illinois Court. I obviously cannot form any view about that one way or another.
25. Turning to the law, the essential point of principle that arises on this application is what should happen to an English judgment which is premised upon a foreign judgment if the foreign court subsequently allows the judgment debtor's appeal. Hytera's position is that the English judgment should be set aside. Motorola's formal position is that the English judgment has continued and separate vitality, independent of the underlying foreign judgment. Indeed, Motorola contends that the judgment creditor should still be free to enforce the English judgment. It says that this result is not as surprising as it might sound, because the judgment debtor would, or at least might, be able to seek to recover any overpayment from the judgment creditor in the foreign jurisdiction.
26. However, it is fair to say that Mr Sprange's focus, both in his skeleton and in oral submissions yesterday, was on the fact that we know that the Illinois Court will be issuing a further judgment due course. He maintained the formal position that, even in a simple case in which a foreign judgment is reversed on appeal, without anything being remitted, the English judgment would supposedly continue unaffected. But Mr Sprange could see how unattractive that outcome would be and he focused his fire on how the English Court should deal with a more nuanced case like the present. I understand entirely why he takes that approach, but it seems to me that one has to start with the issue of principle as to what powers the English court has, and what the English Court can and should do when the foundation for a judgment which has been rendered is undermined by a subsequent appeal in the foreign court.
27. Slightly surprisingly, the efforts of Counsel did not uncover any English authorities which address precisely the point of principle to which I have just referred. There are, however, a number of cases about the circumstances in which a foreign judgment can be enforced under the English common law. These are to the effect that it does not prevent a foreign judgment being final that it could be, or is, subject to appeal. The leading case in this regard is perhaps Nouvion v Freeman (1889) LR 15 App Cas 1. At p.13, Lord Watson said:

"In order to its receiving effect here, a foreign decree need not be final in the sense that it cannot be made the subject of appeal to a higher Court; but it must be final and unalterable in the Court which pronounced it; and if appealable the English Court will only enforce it, subject to conditions which will save the interests of those who have the right of appeal."

28. Lord Bramwell made a similar point, but went slightly further, at p.16.

"If a judgment in a foreign court were reversed upon error and an action upon the judgment had been brought in an English court and judgment given in that action on the judgment, then afterwards when the original judgment was reversed upon error, I suppose there would, in such a case as that, be some remedy for the defendant who has got rid of the first judgment against him."

29. His Lordship indicated that the mechanism by which this would be done would, in the past, have been a writ of "audita querela" (a procedure which he referred to as "old-fashioned", even in 1889). A writ of "audita querela" apparently stemmed from English common law and served to permit a defendant who has had a judgment rendered against him or her to seek relief from the consequences of such a judgment where there was some new evidence or legal defence that was not previously available. That procedure was abolished in England in 1875. Even before it was abolished, it looks as if it had been carefully circumscribed in its scope by decisions about the circumstances when it could be used.
30. Bringing matters right up to date: in Moss & Ors v Martin & Anor [2022] EWHC 3258 (Comm), HHJ Russen KC was concerned with a judgment of the Dallas court which he referred to as the "2022 Judgment". Summary judgment had been granted in England in relation to the claimant's enforcement proceedings in respect of that 2022 judgment, despite the fact that the 2022 Judgment was subject to appeal in Texas.
31. One of the issues before HHJ Russen was whether any order continuing the freezing injunction should contain an express liberty for the defendants to apply for its discharge or variation in the event of their appeal in the United States against the 2022 judgment being successful. The learned judge indicated, at [19], that his "instinctive reaction to that was to say that the defendants' success on the appeal in the United States… would be a relevant change of circumstance" for the purposes of an application to vary the injunction. My instinctive reaction is the same.
32. The judge also had to decide whether to grant a stay of execution in relation to the English judgment which had been entered by way of enforcement of the 2022 Judgment. He refused a stay, but Hytera say that it is nevertheless implicit in his decision that he took the view that the 2022 Judgment would be set aside, if the appeal against the foreign judgment were allowed, in just the same way as a successful appeal against an English domestic judgment would lead to that judgment being set aside.
33. Hence, the judge suggested that:

(1) A substantive appeal could only be pursued in the foreign court (that is [39]).

(2) The same principles governed applications for a stay of execution of a foreign judgment pending foreign appeal, as applied to applications for a stay of execution of an English judgment pending a domestic appeal, because these principles "fairly and appropriately balance the interests of the parties while respecting the prima facie and forcibility of a judgment debt" (that is [45]-[46]).

(3) The judgment debtor should not be placed in a worse position purely because the underlying judgment is a foreign judgment, rather than an English one, i.e. where a stay would be available pursuant to CPR r.52.16 (that is [48]).

(4) Most importantly, to quote from [51(ii)]:

"The appeal which the defendants have filed in Texas is capable of amounting to a special circumstance which renders it inexpedient to enforce the relevant parts of the November Order. That is because the Texas appeal has the potential to undermine the foundation of those parts of the November Order (and the basis of the English Judgment so far as the 2022 Judgment is concerned); and that appeal, rather than an English appeal which might support the application for a stay under CPR 52.16, is the appropriate one for them to pursue in attacking the payment obligation which they say should be stayed."

34. I will refer also in this context to the decision of Mr Justice Jacobs in this present litigation just over a year ago on 19 January 2024, which has the neutral citation Motorola Solutions, Inc & Anor v Hytera Communications Corporation Ltd & Ors [2024] EWHC 149 (Comm). He granted a stay of enforcement, to which I have already referred. He made clear that he did not accept that the question of whether it is inexpedient to enforce the judgment or order could simply be answered by saying that there is an appeal pending in a foreign jurisdiction. But he explained why that was at [26] with an example:

"I do not consider that any in expediency would arise in the context of an appeal involving well-resourced parties, where a payment pursuant to the judgment under appeal could be made without difficulty and then returned if the appeal succeeds".

35. He expressed agreement with HHJ Russen KC in Moss v Martin to the effect that there was a close analogy between the approach to stays of enforcement of an English judgment and the approach which should be used when considering whether or not to order a stay of enforcement of an English judgment which gives effect to a foreign judgment. Specifically, he outlined (at [28]):

"In a case solely involving the English courts, there will be a valid judgment at first instance, which may be altered by an appeal court; for example, where there is a High Court judgment which is subject to an appeal to the Court of Appeal. An appeal does not operate as a stay: see CPR 52.16. However, principles have been developed, as explained in Hammond Suddard and other cases, where a stay will be granted, and these are discussed in the White Book in the context of CPR 52.16. In a case with a foreign element, there is again a valid judgment at first instance: here the judgment of Cockerill J, which gives effect to the first instance judgment in Illinois. Both first instance judgments may potentially be altered by the outcome of an appeal. The only difference from the first situation is that the relevant appeal is not in England, but is to the appeal court in the foreign jurisdiction. I do not consider there should be any difference, however, in the basic principles which are applied in the two situations when a stay of enforcement is sought."

36. I derive from the cases I have just outlined that the English courts assume now, and have assumed since the late 19^th century, that a successful appeal in relation to a foreign judgment would be relevant to the enforcement of that foreign judgment in England, even if an English judgment premised upon that foreign judgment had already been handed down. If that was not the assumption, I cannot see why it would ever be thought appropriate to stay enforcement of the English judgment by reference to the possibility of a successful foreign appeal. If the English judgment would be unaffected by a successful appeal of a foreign judgment on which it was founded, then, for example, HHJ Russen KC would have been wrong to say that the Texas appeal had "the potential to undermine the foundation" of the English judgment.
37. Some slightly more tangential insight along the same lines can be gained from Merchant International Co Ltd v Natsionalna Aktsionerna Kompaniia Naftogaz Ukrainy [2012] EWCA Civ 1. The Court of Appeal in that case upheld the decision of David Steel J in refusing to set aside, pursuant to CPR 13.3, a default judgment obtained to enforce a Ukrainian judgment of 2006 that had then been repealed by a judgment given in 2011. That 2011 judgment does not appear to have been an appeal, in the sense that we would use that word in England, but was nevertheless a decision by a superior court.
38. Lord Justice Toulson explained (at [66]) that the defendant had had no defence to the claim when that default judgment was answered and, at [67], that:

"The basis of the application to set aside was that Naftogaz had subsequently obtained a judgment from the SCCU setting aside the previously final judgment."

39. In that context, he held that:

"It was proper for David Steel J to consider whether the judgment of the SCCU dated 7 April, 2011 [i.e. the 2011 judgment, which purported to overturn the 2006 judgment] violated the principles of substantial or natural justice as understood by the English courts."

40. He then expanded on this at [78]-[79]. At [78]:

"An English judgment is a form of property which may have a real value… To set aside a judgment properly obtained is to deprive the judgment creditor of an asset. It may be just to do so, but it may not be. Third parties may also be affected. A third party may advance money on the security of it. It is not difficult to envisage circumstances where there could be real injustice to a judgment creditor or a third party by depriving them of the fruits of a judgment properly entered. In deciding whether to exercise the court's discretion under CPR r.13.3 to set the judgment, the court has to consider the question of what is just. In this case the court was being asked to set aside a judgment which had been properly obtained, on the basis of a later proceeding which involved a fundamental denial of legal certainty and a fair process. The judge's refusal to do so was just."

41. There is something for everyone in this decision. Hytera is, in my judgment, right to suggest that the impression conveyed by the Court of Appeal is that the English default judgment would probably have been set aside, but for the problems with the 2011 Ukrainian judgment. If it were otherwise, it is not easy to see why the Court of Appeal expressed itself in the way that it did.
42. For its part, Motorola submits that this decision makes clear that the English court may, in the exercise of its discretion and its analysis of what is just, choose to uphold an English judgment enforcing a foreign debt, notwithstanding the outcome of a foreign appeal. Expressed in that general way, that proposition must also be correct.
43. There is no doubt that setting aside a default judgment under CPR 13.3 involves a discretion which may engage questions about what is just in all the circumstances. Quite how that translates to a scenario in which the application is made to set aside summary judgment under CPR 3.1(7), on the basis of a successful appeal where there is no complaint about the conduct of that appeal procedure, is less clear.
44. I will refer briefly to the case of Aeroflot-Russian Airlines v Berezovsky [2013] EWCA Civ 20, where the Court of Appeal considered the correct approach to a claim to enforce the second judgment of the Russian courts, which had increased by tenfold the defendant's liability in respect of claims addressed in an earlier judgment. I have to say that I struggled to see how the discussion in that case, which is really about when the finality principle would be breached in relation to a foreign judgment, assists me one way or the other.
45. More useful, although again only by way of analogy, was the Australian decision in Benefits Strategies Inc v Prider [2007] SASC 250. That concerned a very similar situation to ours, where summary judgment had been entered on the basis of a foreign judgment, the latter then being declared to be void in the foreign court. The Australian court set aside the summary judgment, relying on a rule in that jurisdiction, namely r.84.12 of their Supreme Court Rules, which provided that:

"The Court may vary or set aside a judgment or order at any time if the justice of the case so requires."

46. The judge explained his approach (at [17]), saying:

"The clear principle that has emerged is that a foreign judgment is only binding and conclusive so long as it stands. A corollary of this principle is that where a judgment is made entirely on the basis of a foreign judgment and the foreign judgment is later overturned and set aside, a good reason exists to set aside the judgment that relied on it."

47. In David v Kazal [2019] NSWSC 1763, it was therefore recorded as being common ground that:

"If the appeal were allowed any judgments ordered in this court against Tony and Adam Kazal could not be enforced and would have to be either set aside (as in Benefit Strategies Group Inc. v. Prider…) or permanently stayed…"

48. Pulling the threads together in relation to the point of principle (thus far): in my judgment the need for some procedural mechanism so as to take into account the effect of an appeal on a foreign judgment, which has itself been relied upon to obtain an English judgment, is perfectly obvious. Where the cases which have been cited to me (again, thus far) are less helpful is in identifying by what route the foreign appeal might be taken into account once judgment has been given in England.
49. Turning to that issue, it appears to be common ground that it would not be straightforward to appeal such an English judgment. If permission to appeal were sought before the foreign appeal succeeded, it seems to me it would be impossible to show that the first instance English decision was wrong. In a case like the present, it would therefore be necessary to appeal long out of time.
50. I accept that an appeal out of time is a possible solution to the problem, but it does not seem to me a very satisfactory one. It is hard to see why the Court of Appeal would be the appropriate venue for an application of this kind, which involves nothing which could meaningfully be called a "review" of the first instance decision. If there was no other option, then I have no doubt the Court of Appeal would fashion a remedy in an appropriate case. But is there really no other option?
51. Hytera says that CPR 3.1(7) provides a route which allows this court to set aside the English judgment. In effect, it argues that that rule is the modern means for what would once have been done using a writ of audita querela. CPR 3.1(7) provides:

"A power of the court under these Rules to make an order includes a power to vary or evoke the order."

52. Since the power of the court to order summary judgment is a power under the CPR, it might be thought to follow that there is a power to vary or revoke such an order.
53. In terms of how that power is to be exercised, and the limits placed on it by authority, my attention was drawn to a series of cases. The first in time was Roult and North West Strategic Health Authority [2009] EWCA Civ 444, in which the Court of Appeal held that CPR 3.1(7) is not confined to purely procedural or case management orders, and might extend to non-procedural, but continuing, orders which called for revocation or variation, although it was said that the discretion it conferred would normally be exercised only where the judge who had made the original order had been misled by erroneous information, or a subsequent event had destroyed the basis on which the order had been made. Subject to limited exceptions of that kind, however, their Lordships suggested that CPR 3.1(7) could not be used to revoke a final order disposing of a case.
54. Hughes LJ said (at [15]) that CPR 3.1(7) "cannot constitute a power in a judge to hear an appeal from himself in respect of a final order" and further that such a wide reading of the rule, such as allowing changes of position to justify varying a final order:

"…would come close to permitting any party to ask any judge to review his own decision and, in effect, to hear an appeal from himself on the basis of some subsequent event."

55. In Tibbles v SIG [2012] EWCA Civ 518, the Court of Appeal emphasised (at [39(i)]) that, whilst the revocation jurisdiction in CPR 3.1(7) is apparently broad and unfettered:

"…considerations of finality, the undesirability of allowing litigants to have two bites of the cherry and the need to avoid undermining the concept of appeal, all push towards a principled curtailment of an otherwise open discretion".

56. The normal justifications for revocation of an interlocutory order include: first, where there has been a material change of circumstances since the order was made and, second, where the facts on which the original decision was based were misstated, whether innocently or otherwise. That is made clear in Tibbles at [39(ii)]. Even in that context (i.e. interlocutory orders), it was said (at [39(vii)]) that:

"…the successful invocation of the rule is rare …Such is the interest of justice in the finality of a court's orders that it ought normally to take something out of the ordinary to lead to variation or revocation of an order, especially in the absence of a change of circumstances in an interlocutory situation".

57. I emphasise again that Tibbles was a case about interlocutory orders, not final orders like the present. The Court of Appeal made clear that the test in relation to final orders would be, if anything, more restrictive.
58. In Terry v BCS Corporate Acceptances Ltd [2018] EWCA Civ 2422, the Court of Appeal was concerned with a final order; a default judgment on a claim that was said to have been fraudulent. Their Lordships held that one of the established routes for case where it was alleged that judgment had been obtained by fraud should have been used, namely a fresh action seeking the relief of setting aside the original judgment, or an appeal to the Court of Appeal (seeking to rely upon fresh evidence). The Court of Appeal did not consider that CPR 3.1(7) was an available option.
59. Hamblen LJ, giving the judgment of the court, explained (at [75]):

"In summary, the circumstances in which CPR 3.1(7) can be relied upon to vary or revoke an interim order are limited. Normally, it will require a material change of circumstances since the order was made, or the facts on which the original decision was made being misstated. General considerations such as these will not, however, justify varying or revoking a final order. The circumstances in which that will be done are likely to be very rare given the importance of finality."

60. Hytera admits that "very rare" is not the same as "never". It says the present is an exceptional case, as revealed by the absence of authority dealing with such situations. It is also right to observe that the Court of Appeal in Terry noted (at [79]) that the correct procedural route for challenging a default judgment is CPR 13.3, which (I observe) was the discretionary power which had been assumed to be available in the Merchant International case.
61. The case of Vodafone Group Plc v IPCom GmbH & Co KG [2023] EWCA Civ 113 might in some ways be said to provide a close analogy with the present case. IPCom had succeeded on a claim that its patent had been infringed by Vodafone. That decision had been unsuccessfully appealed to the Court of Appeal, and the Supreme Court was being petitioned, but in the meantime the underlying patent was revoked by the European Patent Office, with the effect that the patent was retrospectively invalidated.
62. Lewison LJ described the problem (at [14]) as follows:

"The problem is that, despite the revocation of a patent, the declaration of the infringement, the order for the inquiry into damages and the costs order made by this court still stand, even though the fundamental basis for those orders (infringement of a valid patent) has been falsified. Not only that, but Vodafone has actually paid the costs. What, if anything, can or should this court now do about it?"

63. Vodafone's answer was that an order should be made setting those previous orders aside under CPR 3.1(7), but the Court of Appeal did not agree. Lewison LJ said (at [35]) that "there is no authority which absolutely precludes the invocation of CPR rule 3.1(7) in relation to final orders", but he pointed out, if Vodafone was right in its submission that "…exercise of the court's powers under CPR rule 3.1(7) is engaged where there is an incontrovertible fact subsequent to judgment which undermines the basis of that judgment", CPR 3.1(7) would have been engaged in the case of Roult. But it was not.
64. Lewison LJ's conclusion (at [54]) was that:

"The overwhelming thrust of the authorities is that the court's power under CPR rule 3.1(7) to vary or revoke orders either cannot or should not be used to discharge a sealed final order. The limited exception thus far even contemplated in civil proceedings is the case of a continuing order (such as a final injunction)…"

65. In Vodafone, of course, the case was before the Court of Appeal, and hence CPR 52.30 was potentially engaged. That rule allows appeals to be reopened, but imposes some specific conditions for doing so which are not mirrored in CPR 3.1(7). For reasons which are not clear, but might have had something to do with those conditions, Vodafone had not made an application under that rule. Lewison LJ said (at [45]):

"…where CPR r.52.30 is potentially engaged, there is little, if any, room for the exercise of a power under CPR rule 3.1 (7)."

66. Importantly, Lewison LJ pointed out that there were various steps that Vodafone could have taken to avoid finding themselves in this difficult position, such as seeking a stay of the trial or obtaining an undertaking from IPCom to repay in the event of the patent being invalidated. Lewison LJ described those as "well-trodden paths for experienced patent litigators" and was critical of Vodafone for its failure to take any of them.
67. In a short concurring judgment, Arnold LJ expressed agreement with Lewison LJ's conclusions (at [67]), saying that:

"…this court does not have jurisdiction under CPR rule 3.1(7) to re-open its sealed final order of 19 February 2021. Even if there were jurisdiction, it should not be exercised because Vodafone is the author of its own misfortune through failing to take steps which were open to it to protect itself against the foreseeable events which have transpired".

68. The justification for the second part of that statement is easy to find in Lewison LJ's judgment, having regard to the features of that case which I have just emphasised. The first is, with respect, less obvious, at least if this reference to the court not having jurisdiction is read entirely literally. I understand Lewison LJ's conclusion on the availability of CPR 3.1(7) to have been that it would very rarely be appropriate to use CPR 3.1(7) to reopen a final order, not that there is a complete prohibition against ever doing so.
69. I would suggest that, in that case, the history, and perhaps especially the potential role of CPR 52.30, meant that there was no scope for an order under CPR 3.1(7). There was, therefore, no discretion left to exercise; no decision left to make. In that sense, there was "no jurisdiction" to make such an order. However, I do not understand Lewison LJ to have been saying that the same would always be true in relation to a final order.
70. That analysis seems to me consistent with the approach of Hamblen LJ in Terry. The Court of Appeal in that case was saying that it would be very rare that a final order can properly be reopened, but saying that allows for the possibility that doing so could be justified.
71. Assuming that is the correct approach – in other words, assuming that I could have jurisdiction to use CPR 3.1(7) in respect to a final order, in a sufficiently exceptional case – it seems to me that I must compare the facts of our case with the reasons why the Court of Appeal thought no order could or should be made in Vodafone.
72. Looking at why setting aside a final order was said to be something which should not be done in Vodafone, an important reason given was that it was a problem of the party seeking relief's own making. In our case, I find it difficult to see what Hytera could have done differently in relation to the application for summary judgment. To use Arnold LJ's phrase which I quoted before, I cannot see what steps were "open to it to protect itself". Hytera reserved its position as best it could, but the potential for a foreign appeal is not a ground for resisting summary judgment. I have already explained the logic for that.
73. Mr Sprange suggested that Hytera could nevertheless have fought the summary judgment application in the hope of causing delay, requested an undertaking from Motorola about repayment in the event of a successful appeal, or a stay of the proceedings before the summary judgment application or something of that kind. I am afraid that, in the light of the authorities to which I have referred, none of those options seemed to me remotely realistic. Whatever Mr Sprange might say now, I cannot believe Motorola would have offered any useful undertaking. It would be a counsel of despair to suggest that the right course is for a party to seek to generate delay by advancing hopeless arguments.
74. The next set of reasons why it was said in Vodafone that it would rarely be appropriate to set aside a final order, comes under the broad heading of "finality". In this context, it does seem to me that cases like the present are genuinely exceptional. I cannot see that setting aside an English judgment could sensibly be said to offend the principle of finality, on the special facts of this case. It in no way offends the principle of finality for a foreign judgment to be subject to appeal in accordance with the proper procedure in that jurisdiction. This is a peculiar situation where finality is not really relevant.
75. In the same way, setting aside the English judgment could not be said to cut across or undermine the concept of an appeal. If anything, it is respecting the concept of an appeal, but recognising that appeals might, in cases about foreign judgments, properly be heard in another jurisdiction.
76. If it adds anything, I am also in no doubt – as I have already indicated – that a successful appeal could amount to a material change of circumstances. Indeed, it is hard to think of a more fundamental change of circumstances, in a case where the whole claim is premised upon a foreign judgment, than for that judgment to be reversed on appeal.
77. It does not seem to me to add anything to say that this possibility was foreseeable, and even foreseen, by Hytera. As I have said, there was nothing that Hytera could realistically have done to avoid ending up in the position in which they now find themselves.
78. Most importantly, unlike in Vodafone, neither party before me was able to identify any better means by which the summary judgment order might be set aside, if not by using CPR 3.1(7). Mr Rubin KC, for Motorola, made no bones about it. He said that CPR 3.1(7) was the only realistic option.
79. Mr Sprange argued faintly at one point that the correct route might be to start new proceedings in order to obtain an order setting aside the English judgment. But he was unable to articulate the reason for suggesting that fresh proceedings of that type were necessary. A fresh action is undoubtedly an available option when it is alleged that a judgment has been obtained by fraud. That is because the fraud needs to be proved and, if it can be proved, a finding of fraud gives rise to relevant remedies. It is not obvious how that would work on our facts. On what basis would the judge, in the second set of proceedings, be empowered to set aside the summary judgment in the first set of proceedings? Indeed, absent fraud, why would there not be an issue estoppel or the equivalent?
80. Mr Sprange also suggested that an alternative solution would be for me to grant a permanent stay of the English judgment. The problem with that is that I cannot see why using a different procedural power (from the list in CPR 3.1) to achieve the same basic outcome would engage any different principles. Permanently to stay enforcement of the English judgment would be functionally equivalent to setting that judgment aside. It would just involve using a different form of words in my order.
81. If CPR 3.1 permits me to stay execution permanently, I cannot see why it would not allow me to set the judgment aside. The restrictions on the use of CPR 3.1 (7) in relation to final orders - i.e. those which have been identified in the decisions of the Court of Appeal to which I have referred – are principled restrictions, not mere technical points about the terminology used.
82. Moreover, a permanent stay would seem to me to have the potential to create a number of procedural problems, especially for Motorola, without really putting it in any stronger position in relation to the arguments about the security, which plainly were at the forefront of Mr Sprange's mind. That suggestion seemed to me, in short, to be a blind alley.
83. To my mind, as I have said, the only realistic alternative to using CPR 3.1 to set aside (or, indeed, permanently to stay) the English judgment, would be an appeal to the Court of Appeal out of time. That seems to me to be an unsatisfactory course, for the reasons I have already explained. If I am wrong about that, the Court of Appeal can of course say so and claim any issues of this kind for itself. But I would be reluctant to be the one to suggest that that busy Court must take on all applications of this kind. I should add that that option was not urged on me by Mr Sprange and was strongly deprecated by Mr Rubin.
84. I am comforted in that regard by the fact that in Nouvion v Freeman, Lord Bramwell did not suggest that an appeal would be the route by which the problem which he had identified would be solved. Instead, Lord Bramwell referred to a type of writ previously used to put right injustices; a power which was expressed in wide terms, but which had been very carefully circumscribed by authority. There does seem to me to be an analogy there with CPR 3.1(7).
85. For all of these reasons, I take the view that there is scope for CPR 3.1(7) to provide the solution to the problem in an exceptional case like the present. I am satisfied that it can be used to set aside a final order in these very specific and limited circumstances, namely where that final order was premised upon a foreign judgment which has been undermined by an appeal in another jurisdiction.
86. I should perhaps add that Mr Sprange helpfully made clear that he was not saying that I did not have jurisdiction to set aside a final order under CPR 3.1(7), just that I should not do so on the facts of this case. Indeed, Motorola's argument was not that CPR 3.1(7) did not permit the order of Cockerill J to be set aside, but rather that what Mr Sprange called the "blunt instrument" of CPR 3.1(7) is not the appropriate procedural tool on the facts of this case.
87. I have already referred to, and rejected, some of the alternative options which Mr Sprange suggested to me in the course of yesterday's oral submissions. Some other alternatives he offered were much more specific to the facts of this case. For example, he submitted that the right answer might be that Motorola should still be permitted to enforce the summary judgment sum, subject only to an undertaking from Motorola to set off any overpayment against other sums owed to it before the foreign court, or perhaps subject to Hytera's "right" to apply to the Illinois court for restitution of any overpayment.
88. These do not seem to me to advance matters. The first problem with these options is that they do not actually provide any answer to the issue of principle. To rely upon these as the "solutions" to that issue amounts to accepting that the English court does not have a mechanism to deal with the problem of an appeal in the foreign jurisdiction which comes after judgment being entered here, and therefore that we must either hope that the judgment creditor will be magnanimous enough to offer an undertaking, or that the foreign court has some mechanism for putting right any injustice.
89. In relation to the latter possibility, I accept that in Moss v Martin (at [58(iiii)]), HHJ Russen KC referred, in passing, to the possibility (in the event of the appeal succeeding) of proceedings being brought in the US to recover any money which had been paid. However, the proceedings being in the US was said to be an assumption made by the defendants "based upon where the claimants and their assets are based." I do not read that as suggesting that the correct approach would be to pursue proceedings in the foreign jurisdiction. It is simply a recognition that that might end up being the only option in that case, given the location of the claimant's assets. HHJ Russen was indicating that this risk – namely, that the defendants might hypothetically have to go to the US to seek recovery – was not a sufficient reason, on the facts of that case, for granting a stay of execution. That is a long way from saying that the right, let alone the only, option is to hope that a foreign court will be able to fill this supposed hole in English Court procedure.
90. Moreover, in the present case, neither the proposed undertaking, nor a proposed right to restitution in the foreign jurisdiction, would offer a satisfactory solution, from the perspective of the English Court. The Illinois Court judgment includes substantial sums which Calver J has held cannot be enforced in England. I do not accept that the English Court must accept an outcome where Motorola would, via a back door, be able to enforce US$136 million out of those otherwise unenforceable sums.
91. In terms of the exercise of my discretion under CPR 3.1(7), however, that still leaves the issue of how I should take into account the fact that, while Hytera has succeeded on its appeal against the Illinois Court judgment, it may, in practice, only have succeeded in reducing the quantum. As I have said, the finding on liability stands.
92. The parties' positions in that regard were, again, starkly different. Hytera argued that there was currently no money judgment in favour of Motorola, and hence the only option was for me to set aside the English judgment and send Motorola back to square one. Motorola argued that I should, in the exercise of my discretion, simply leave the English judgment in place, until the dispute about quantum has been resolved by the Illinois court. Another suggestion from Mr Sprange, to which I have already referred, was that I might stay the English judgment permanently, but nevertheless leave the security in place, ready for that final or that further decision of the Illinois Court.
93. I did wonder at one point if there might be a middle way, such as varying the English judgment so that it provides for judgment in favour of Motorola in relation to Copyright Act damages, but with the final amount of that judgment to be subject to assessment once a final decision of the Illinois Court had been rendered. However, I have been persuaded that doing so would be wrong as a matter of principle on the specific facts of this case. A foreign judgment can only be enforced in this country if it is for a definite sum of money: see Rule 46 in Dicey and Morris at pp.872-874. If Motorola were to apply for summary judgment today, on the basis of the liability finding in the US, asking for judgment for a sum to be assessed, it seems to me inevitable that the application would be refused. That is true notwithstanding that there is no dispute on liability, but only in relation to quantum.
94. Mr Sprange offered another variation on the same theme. He suggested that I might only order a further stay of enforcement on an interim basis, pending clarity on the remanded issue. I agree that that course is theoretically open to me, as a matter of discretion, as I consider whether to order that the English judgment be set aside. But what would be the justification for following that course? Motorola says that Hytera want to get away without paying anything towards any judgments in favour of Motorola because those behind Hytera are "crooks". That is an emotive submission, but it is important to remember that Motorola previously sought, and even obtained, a freezing injunction, but that order was reversed by the English Court of Appeal on the grounds that there was no admissible evidence of risk of dissipation. I cannot order that the security be retained on the basis of risk of dissipation, and I should not be deciding whether or not to set aside the English judgment with an eye to how the security might be preserved.
95. Mr Sprange made much of the timings in this regard. He accepted that it is unclear when the Illinois Court will render its further judgment, but he suggested that it might only be a short number of weeks. On that basis, he encouraged me to hold the ring for now; to wait and see. However, the fact is that Hytera made the present application in July 2024. If it had been decided then, Mr Sprange's submission, to the effect that the Court should wait and see, would have had very limited force. The fact that the application happened to come on for hearing yesterday, on 22 January 2025, is just a consequence of listing difficulties. It is hard to see why vagaries of listing should make a difference to the way in which I approach the application. To put it another way, it seems to me that both parties are stuck, for good or ill, with the date on which the application has ended up being heard.
96. Having heard all of the arguments, it seems to me that I ought to grasp the nettle. If I take the view that the English judgment should properly be set aside, then I should make that order, and then see where it leaves me. I should not be trying to find ways to avoid taking any positive step, simply on the basis that the Illinois Court may, in due course, render a further judgment, which on any view will be in a lesser amount. In circumstances where there is, as a result of the US Appeal process, currently no final judgment for an ascertained amount which could properly be enforced in this country, it seems to me that the principled course is for me to set aside the English judgment. If the timing ends up appearing unfortunate for Motorola, I would politely suggest that it is a consequence of the way in which the US proceedings have progressed, rather than any fault with the English procedure.
97. Indeed, one way of looking at where we are today is that Motorola has obtained summary judgment in England for an amount which the US Appeal Court has now decided was much more than Mototola was entitled to. If that appeal had happened to be decided before the summary judgment application, Motorola would not have obtained the English judgment. It would not yet have been able to obtain any judgment in this country. Motorola is currently unable to enforce a foreign judgment under the English common law, because it cannot show that it is entitled to any definite sum. It cannot show that there is a debt which Hytera is obliged by that foreign judgment to pay. If and when Motorola has a judgment which can be enforced in England, of course, it can amend its pleadings and apply for summary judgment again. If it obtains judgment in England, and there is no further appeal process outstanding in the US, then it is likely to be able to enforce the same without further delay.
98. All of these considerations lead towards the same conclusion: namely that the right order to make on the current application is to set aside the English judgment.
99. Having decided that I should set aside the order granting summary judgment, it seems to me inevitably to follow that the security, which has been put up as the price of staying enforcement of the English judgment, should be released. Again, it must be remembered that the reason for that security being ordered by Jacob J was that Motorola would, unless a stay of enforcement was granted, be entitled to enforce the English judgment in the amount of US$136 million. That is not the position today.
100. In the light of the decision I have just made, there is no longer any English judgment for which a stay of enforcement is required. Mr Rubin says it would therefore not be a legitimate exercise of my discretion to require Motorola to maintain that security. I agree. Both parties agree that Jacob J's order which required the putting up of security is to be characterised as the price for the stay of enforcement which he was granting. It was not to be understood as security for the English judgment, let alone as security for a potential future judgment. If putting up that security represents the price for continuing the stay, then the problem for Motorola is that the stay is no longer required. That being so, it does not seem to me that I can properly require Hytera to continue paying that price.
101. Motorola's justifications for my doing so were all variations on the basic theme that, if I did not, Hytera would never satisfy the further judgment which Motorola anticipates obtaining in due course. But if Motorola cannot satisfy the test for a freezing injunction, then I struggle to see how I could properly order that security be kept in place on that basis.
102. Mr Sprange argued with great vigour that, if I allowed the security to be returned, Motorola would be prejudiced, because it had been prevented from enforcing the English judgment on the basis that this security would continue to be available. There are two answers to that. First, it is far from clear why this kind of balancing of prejudice is relevant to the present exercise. That seems to assume that I can decide what should happen to the security, as if I were sitting under a palm tree dispensing justice as I saw fit. But surely I need to start by asking on what basis I am ordering that the security should remain in place? As I have explained, once there is no English judgment and hence no further need for a stay of execution, there is simply no proper basis for requiring the security to be maintained.
103. The second answer is that the prejudice identified by Motorola is that it has been unable to enforce a judgment to which, it now turns out, Motorola was not entitled. I am not convinced that such inability can properly be described as "prejudice". Even if it can, it does not persuade me that I should make the retention of the security a condition of my order setting aside the English judgment.
104. For all of those reasons, I will grant the relief sought by Hytera in its application.