## Facts

- Motorola Solutions, Inc. and a Malaysian affiliate competed with Hytera Communications Corp. Ltd. in the professional digital mobile radio (DMR) market.
- Motorola alleged Hytera recruited three Motorola engineers in Malaysia who, before departing, downloaded thousands of confidential files, including trade secrets and copyrighted source code.
- Motorola alleged the engineers delivered the materials to Hytera abroad and Hytera used them to develop competing DMR products.
- Motorola alleged Hytera marketed and sold DMR products worldwide, including in the United States, and that the products incorporated Motorola’s trade secrets.
- Motorola asserted DTSA claims based on pre-2016 acquisition abroad and continued post-enactment use and commercialization, including U.S. sales.

## Issues

1. Whether the DTSA’s extraterritorial provision, 18 U.S.C. § 1837, applies to private civil actions and can reach foreign misappropriation when acts in furtherance occur in the United States.
2. Whether applying the DTSA to alleged misappropriation that began before May 11, 2016 is impermissibly retroactive when the complaint alleges continued post-enactment use and sales.

## Decision

- The court denied Hytera’s Rule 12(b)(6) motion to dismiss the DTSA claims.
- The court held § 1837’s extraterritorial scope applies to DTSA civil actions and is not limited to criminal prosecutions.
- The court held Motorola plausibly alleged “acts in furtherance” in the United States (including U.S. marketing and sales), satisfying § 1837 even though Hytera was a foreign entity.
- The court held the DTSA was not applied retroactively because Motorola alleged at least one post-May 11, 2016 act of misappropriation, including continued use and commercialization of the trade secrets in products sold in the United States.

## Legal Principles

- DTSA extraterritoriality under 18 U.S.C. § 1837 extends to civil DTSA claims when statutory prerequisites are met, including where “an act in furtherance of the offense was committed in the United States.”
- Domestic marketing and sales tied to products allegedly developed using misappropriated trade secrets can qualify as “acts in furtherance” sufficient to reach related foreign conduct at the pleading stage.
- The DTSA applies to “any misappropriation . . . for which any act occurs on or after” May 11, 2016; a plaintiff must plausibly allege a post-enactment act (such as continued use, disclosure, or commercialization), not merely pre-enactment acquisition.
- Pre-enactment acquisition does not bar a DTSA claim when the complaint alleges continuing misappropriation through post-enactment exploitation and sales.

## Conclusion

The court allowed Motorola’s DTSA claims to proceed, concluding that the statute can reach foreign misappropriation in a civil action when the complaint alleges acts in furtherance in the United States and that the DTSA covers post-enactment use and commercialization even if the initial acquisition occurred before May 11, 2016.


Motorola Sols., Inc. v. Hytera Commc'ns Corp. Ltd., 436 F. Supp. 3d 1150 (N.D. Ill. 2020)