UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

INVENTUS POWER, INC., and 

ICC ELECTRONICS (DONGGUAN) LTD., 

 Plaintiff, 

v. 

SHENZHEN ACE BATTERY CO., LTD., 

 Defendants. 

Case No.: 1:20-cv-03375 

 

Judge: Honorable Robert M. Dow, Jr. 

Magistrate Judge: Honorable Jeffrey Cummings 

DEFENDANT’S REPLY TO PLAINTIFFS’ OPPOSITION TO DEFENDANT’S 

RULE 12(b)(2) MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 1 of 11 PageID #:3556
i 

TABLE OF CONTENTS

INTRODUCTION ................................................................................................................................ 1

LEGAL STANDARDS ........................................................................................................................ 2

ARGUMENTS ...................................................................................................................................... 3

A. Plaintiffs Reliance on the “Effect Doctrine” to Establish Personal Jurisdiction Is Inconsistent 

with the Supreme Court’s Decision in Walden v. Fiore and Should Be Rejected ................ 3 

B. ACE’s Forum-Related Activities Do Not Give Rise to Plaintiffs’ Alleged Injury ..................... 3 

1. 2019 PROMAT trade show .................................................................................................... 3 

2. ACE’s English-language website ........................................................................................... 4 

C. Material Facts about Plaintiffs’ Allegation of ACE’s Involvement in the Alleged 

Misappropriation Are in Dispute ............................................................................................ 5 

1. Alleged unauthorized downloading at ACE’s direction is in dispute .................................... 5 

2. Alleged unauthorized downloading by Jun (Yancey) Yang is in dispute .............................. 6 

3. Alleged unauthorized downloading by Kui (Gerrard) Liu is in dispute ................................. 6 

4. Alleged unauthorized downloading by Xinliang (Robert) Cao is in dispute ......................... 7 

5. Alleged unauthorized downloading/misappropriation by Gang (Lucken) Cai, Jingyang 

(Paul) Mai, Haihua (Alan) Liu, Jina (Conner) Guan, Guochao (Andy) Quan is in dispute ... 7 

CONCLUSION .................................................................................................................................... 8

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 2 of 11 PageID #:3557
1

INTRODUCTION 

Shenzhen Ace Battery Co., Ltd. (“ACE” or “Defendant”) submits this reply to Inventus Power, 

Inc. (“Inventus”) and ICC Electronics Ltd.’s (“ICC”) (together “Plaintiffs”) opposition to ACE’s Rule 

12(b)(2) motion to dismiss for lack of personal jurisdiction. 

To establish specific personal jurisdiction, a plaintiff’s alleged injury must have arisen out of 

the defendant’s forum-related activities. ACE’s forum-related activities within the state of Illinois 

were limited to 1) marketing its previously existing battery products in this District through in-person 

attendance at trade shows; and 2) maintaining an English-language website to market its battery 

products to customers in the United States, including in this District. TRO, p. 10, Dkt. No. 48. 

Neither of ACE’s forum-related activities is sufficient to establish specific personal jurisdiction. 

 Plaintiffs also alleged that ACE knowingly misappropriated “materials that originated from and 

are located at Inventus in this District.” Id. Because material facts regarding Plaintiffs’ allegation are in 

dispute, specific personal jurisdiction based on Plaintiffs’ allegation can only be established if Plaintiffs 

can prove: A) the alleged unauthorized mass downloading by ICC’s ex-employees did occur, and the 

downloading was at ACE’s direction; or B) the alleged downloading by ICC’s ex-employees did occur, 

and ACE’s forum -related activities (in-person attendance of the trade shows and marketing and selling 

through ACE’s website) are acts in furtherance of the alleged unauthorized downloading. 

 Material facts about specific personal jurisdiction based on Plaintiffs’ allegation are in dispute. 

First, all eight ICC’s ex-employees deny unauthorized mass downloading of Plaintiffs’ trade secrets. 

Second, ACE denies that the unauthorized mass downloading, if any, was under ACE’s direction. 

Third, because ACE never misappropriated any Plaintiffs’ trade secrets, ACE’s forum-related activities 

cannot give rise to Plaintiffs’ alleged misappropriation. 

 Due to Plaintiffs’ refusal to de-designate Plaintiffs’ sealed declarations from attorneys’ eyes only to 

confidential [Dkt. No. 54, p.2], ACE does not have access to Plaintiffs’ specific allegations. Consequently, 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 3 of 11 PageID #:3558
2

Defendant disputes all material facts relating to personal jurisdiction to the best of its ability, combining 

responses to specific allegations with categorical denial. 

LEGAL STANDARDS 

There are three “essential requirements” for the exercise of specific jurisdiction over an out-ofstate defendant: “First, the defendant’s contacts with the forum state must show that it “purposefully 

availed [itself] of the privilege of conducting business in the forum state or purposefully directed [its] 

activities at the state. Second, the plaintiff’s alleged injury must have arisen out of the defendant’s 

forum-related activities. And finally, any exercise of personal jurisdiction must comport with traditional 

notions of fair play and substantial justice.” Curry v. Revolution Labs., LLC, 949 F.3d 385, 398 (7th Cir. 

2020) (quoting Lexington Ins. Co. v. Hotai Ins. Co., Ltd., 938 F.3d 874, 878 (7th Cir. 2019)). 

In addition, specific jurisdiction is case-specific, the claim must be linked to the activities or 

contacts with the forum. Kipp v. Ski Enter. Corp. of Wis., Inc., 783 F.3d 695, 698 (7th Cir. 2015) (citing 

Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S. Ct. 2846, 2851(2011)). 

If personal jurisdiction is challenged under Rule 12(b)(2), the court must decide whether any 

material facts are in dispute. Hyatt Int'l Corp. v. Coco, 302 F.3d 707, 713, (7th Cir. 2002). If material 

facts about personal jurisdiction are in dispute, the court must hold an evidentiary hearing to resolve them, 

at which point the party asserting personal jurisdiction must prove what it alleged. Id., see also Philos 

Techs., Inc. v. Philos & D, Inc., 802 F.3d 905, 912 (7th Cir. 2015). In some circumstances, particularly 

when the court is required to assess credibility in order to resolve factual disputes, the court may be 

required to allow either cross-examination of witnesses or pre-hearing discovery if a party so requests. 

Philos Techs., 802 F.3d 905, 912 (citing Boit v. Gar-Tec Prods., Inc., 967 F.2d 671, 676 (1st Cir. 1992)). 

// 

// 

// 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 4 of 11 PageID #:3559
3

ARGUMENTS 

A. Plaintiffs Reliance on the “Effect Doctrine” to Establish Personal Jurisdiction Is Inconsistent 

with the Supreme Court’s Decision in Walden v. Fiore 1 and Should Be Rejected 

Citing Riddell, Inc. v. Monica,

2

 Plaintiffs alleged that personal jurisdiction exists over ACE under 

the “effect doctrine.” Dkt. No. 126, pp. 14-15. This analysis is flawed and should be rejected. 

Consistent with the TRO [Dkt. No. 48, p. 28], the “effect doctrine” (even in Riddell) is relevant 

to the “purposeful availment inquiry”, not to establish personal jurisdiction entirely. 

“The Supreme Court in Walden ‘rejected’ the theory that personal jurisdiction can be based on 

intentional acts taken outside a forum state which the defendant knows will cause effects inside the 

forum state.” Gold Medal Prod. Co. v. Bell Flavors & Fragrances, Inc., 2017 WL 1365798, 2017 U.S. 

Dist. LEXIS 57640, at *17-18 (S.D. Ohio Apr. 14, 2017) (citation omitted).3 In Walden, the Supreme 

Court emphasizes that jurisdiction over a defendant must be based on the contacts that “defendant 

[it]self” creates with the forum states. Walden, 134 S. Ct. at 1122. The Supreme Court has consistently 

“rejected attempts to satisfy the defendant-focused ‘minimum contacts’ inquiry by demonstrating 

contacts between the plaintiff (or third parties) and the forum State.” Id. at 1123. 

Therefore, this Courts’ personal jurisdiction over ACE should be based on ACE’s forum-related 

activities, and the “effect doctrine” does not establish personal jurisdiction over ACE. 

B. ACE’s Forum-Related Activities Do Not Give Rise to Plaintiffs’ Alleged Injury 

1. 2019 PROMAT trade show 

Supported by Mr. Zhao’s affidavit [Ex. A, ¶7], ACE categorically denies Plaintiffs’ allegation 

that ACE acquired or disclosed any of Plaintiffs’ trade secret. ACE categorically denies Plaintiffs’ 

1 Walden v. Fiore, 134 S. Ct. 1115 (2014). 

2 Riddell, Inc. v. Monica, 2003 WL 21799935, 2003 U.S. Dist. LEXIS 13053, at *7 (N.D. Ill. Jul. 23, 2003), 

3

 The decision in Gold Medal Prod. Co. v. Bell Flavors & Fragrances, Inc., 2017 U.S. Dist. LEXIS 57640, 2017 

WL 1365798, at *10 (S.D. Ohio Apr. 14, 2017) was recognized by this District Court in Gold Medal Prods. Co. v. 

Bell Flavors & Fragrances Inc., 2018 WL 1135629, 2018 U.S. Dist. LEXIS 35711, at *2 (N.D. Ill. Mar. 2, 2018). 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 5 of 11 PageID #:3560
4

allegation that ACE, sold, displayed, referenced, promoted or marketed any products that utilized any of 

Plaintiffs’ trade secrets at the 2019 PROMAT trade show. 

As admitted by Plaintiffs [Dkt. No. 126, pp. 14-15], ACE’s attendance at the 2019 PROMAT trade 

show (April 2019) occurred prior to the earliest alleged mass downloading (August 2019, Dkt. NO. 1, ¶36). 

Under 18 U.S.C.§1839, “misappropriation” requires either “acquisition” or “disclosure” of a trade secret. 

ACE could not have acquired or disclosed Plaintiffs’ trade secrets at the 2019 PROMAT trade show 

because the alleged mass downloading was later in time. Logically, an event that occurred earlier in time 

cannot be an act in furtherance of an alleged offense that was committed later in time. 

In the absence of any counterevidence, ACE’s attendance at the 2019 PROMAT trade show 

in Chicago cannot give rise to Plaintiffs’ alleged trade secret misappropriation. 

2. ACE’s English-language website 

Supported by Mr. Zhao’s affidavit [Ex. A, ¶8], ACE categorically denies Plaintiffs’ allegation 

that ACE acquired or disclosed any Plaintiffs’ trade secrets. ACE categorically denies Plaintiffs’ allegation 

that ACE, sold, displayed, referenced, promoted or marketed any products containing Plaintiff’s trade 

secret to the United States through ACE’s English-language website. 

The Seventh Circuit has held that “having an ‘interactive website’ should not open a defendant 

up to personal jurisdiction in every spot on the planet where that interactive website is accessible.” 

Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796, 803 (7th Cir. 2014). 

However, evidence of extensive sales through an interactive website may suffice to show that a 

defendant has targeted the jurisdiction. Curry, 949 F.3d at 400. 

Plaintiffs relied on Virgin Enterprises Ltd. v. Jai Mundi, Inc.4 [Dkt. No. 126, n.3] in an attempt 

to establish personal jurisdiction over ACE. However, the facts in the present case are distinguishable 

from Virgin. In Virgin, the defendant JMI “maintains an online store where customers can purchase 

cigarettes and related products.” Id. Furthermore, JMI has sold large volume of products to the state of 

4 Virgin Enterprises Ltd. v. Jai Mundi, Inc., 2014 WL 3605541, at *4 (N.D. Ill. July 18, 2014) 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 6 of 11 PageID #:3561
5

Illinois through its interactive website. Id. Therefore, the Virgin court found that JMI’s website 

expressly targeted Illinois customers through its online store. 

 Here, ACE’s English-language website is accessible throughout the world and does not expressly 

target the state of Illinois or Illinois customers. The website does not function as an on-line store and is not 

even highly interactive. Furthermore, no sales have been made to the state of Illinois through ACE’s 

English-language website. In fact, ACE has never sold its products to Illinois. Ex. A, ¶9. 

 Therefore, ACE’s English-language website does not establish sufficient contact to support the 

exercise of personal jurisdiction. 

C. Material Facts about Plaintiffs’ Allegation of ACE’s Involvement in the Alleged 

Misappropriation Are in Dispute 

Plaintiffs further alleged that the unauthorized mass downloading by ICC’s ex-employees (ACE’s 

current employees) was at ACE’s direction [Dkt. No. 1, ¶¶4, 36-37, 42, 52, 64] in an attempt to 

establishes the Court’s personal jurisdiction over ACE. Material facts surrounding Plaintiffs’ allegation 

are in dispute. At minimum, an evidentiary hearing is warranted to resolve the disputed material facts 

before specific personal jurisdiction can be established based on Plaintiffs’ allegation. 

1. Alleged unauthorized downloading at ACE’s direction is in dispute 

Plaintiffs alleged that there is “unrebutted evidence” showing that the alleged unauthorized 

downloading was at ACE’s direction. Dkt. No. 126, p. 9 (citing Sealed Declaration of Zack Lau, Dkt. 

No. 11). 

It is unclear to ACE how Zack Lau, Plaintiffs’ forensic examiner, could link the alleged 

unauthorized downloading to “ACE’s discretion.” However, any allegation and/or circumstantial 

inferences that may have been provided by Zack Lau in his sealed affidavit [Dkt. No. 11] or by anyone 

else is disputed by ACE. 

Supported by Mr. Zhao’s affidavit [Ex. A, ¶4], ACE categorically denies any allegation and/or 

circumstantial inferences that any alleged unauthorized downloading was at ACE’s direction. The fact that 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 7 of 11 PageID #:3562
6

ACE requires “all new employees to sign an agreement before the employment, agreeing not to use any 

confidential information or trade secret of others during their employment with ACE” [No. 32-1, ¶ 7] 

supports ACE’s position that “ACE has never directed any current or former employees to misappropriate 

trade secrets from either ICC or Inventus.” Id. 

2. Alleged unauthorized downloading by Jun (Yancey) Yang is in dispute 

Yang claimed that all of his downloading activity was part of his job of regularly backing Plaintiffs 

servers. Dkt. No. 38-2, ¶3-9. However, Yang’s former manager at ICC, Ewin Li, provided a declaration 

denying that he ever gave Yang specific instructions regarding how to conduct backups or received USB 

thumb drives from Yang. Dkt. No. 48, p. 21 (Citing Sealed Declaration of Ewin Li, Dkt. No. 42). 

Yang disputed that “Li’s declaration is not true.” Ex. B, ¶3. Logically, Yang would not have asked 

Ewin Li, an employee at ICC, to testify on Yang’s behalf if Yang did not believe that he was telling the 

truth. Dkt. No. 38-2, ¶10. 

Therefore, material facts concerning unauthorized downloading by Yang is in dispute. 

3. Alleged unauthorized downloading by Kui (Gerrard) Liu is in dispute 

Plaintiffs alleged Mr. Gerrard Liu downloaded Plaintiffs’ trade secrets on October 7, 8, 9, and 10. 

Dkt. No. 40, p. 2. 

From the records available to ACE, Plaintiffs did not dispute that Mr. Gerrard Liu took a whole 

day off on October 9, 2019. Dkt. No. 38-3, ¶7. Plaintiffs also did not dispute that Mr. Gerrard Liu did not 

attend the office on October 9, 2019 and had no access to his work computer. Id. 

Plaintiffs failed to explain why Plaintiffs’ forensic record showed that Mr. Gerrard Liu downloaded 

multiple files on October 9, 2019. In the absence of any counterevidence, Plaintiffs’ forensic record of Mr. 

Gerrard Liu downloading files on October 9, 2019 must be falsified. Ex. C, ¶6. 

Furthermore, Mr. Gerrard Liu in his affidavit declares that he never downloaded any of 

Plaintiffs’ trade secrets, and all of Plaintiffs’ forensic record showing Mr. Gerrard Liu downloaded files 

on October 7, 8, 9, and 10 must also be falsified. Ex. C, ¶7. 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 8 of 11 PageID #:3563
7

4. Alleged unauthorized downloading by Xinliang (Robert) Cao is in dispute 

Plaintiffs initially alleged Cao “downloaded hundreds of documents” prior to his departure 

from ICC. Dkt. No. 1, ¶37. Plaintiffs later changed that Cao “accessed ‘hundreds of folders’” prior to 

his departure from ICC. Dkt. No. 34. p. 3. It is unclear whether Plaintiffs continuous to allege that Cao 

downloaded any of Plaintiffs’ trade secrets. 

Plaintiffs further alleges that Cao used Plaintiffs’ trade secrets to apply for three Chinese 

Patents: CN210467927U, CN210272576U and CN210272484U. According to Plaintiffs, Plaintiffs’ 

“confidential technology” has been disclosed in the three Chinese Patents. Therefore, Plaintiffs should 

be able to pinpoint the specific claims in the Chinese Patents and provide evidence to prove the 

technology in the Chinese Patents are in fact developed by Plaintiffs. 

Cao in his affidavit declares that he never misappropriated any of Plaintiffs’ trade secrets. 

Ex. D, ¶3. He further denies any personal involvement in developing the three Chinese Patents. Id. ¶4. 

Therefore, material facts as to unauthorized downloading by Cao is in dispute. 

5. Alleged unauthorized downloading/misappropriation by Gang (Lucken) Cai, Jingyang 

(Paul) Mai, Haihua (Alan) Liu, Jina (Conner) Guan, Guochao (Andy) Quan is in dispute 

 

From the records available to ACE, Plaintiffs did not make specific allegations against Gang 

(Lucken) Cai, Jingyang (Paul) Mai, Haihua (Alan) Liu, Jina (Conner) Guan, Guochao (Andy) Quan.5 

Gang (Lucken) Cai, Jingyang (Paul) Mai, Haihua (Alan) Liu, Jina (Conner) Guan, and Guochao 

(Andy) Quan all declare that they did not misappropriated Plaintiffs’ trade secrets. Ex. E, F, G, H. 

In the absence of any counterevidence, Plaintiffs unsubstantiated allegation against Jingyang 

(Paul) Mai, Haihua (Alan) Liu, Jina (Conner) Guan should not be supported. 

Accordingly, at minimum, an evidentiary hearing is warranted to resolve disputes as to the 

alleged material facts put forth to support personal jurisdiction. 

5

 Plaintiffs forensic examiner Zack Lau “with inventus’ assistance” obtained computers, including computers of Cai 

and Quan, and forensically imaged the hard drives. TRO, Dkt. No. 48, p. 4 (citing Sealed Declaration of Zack Lau, 

Dkt. No. 11). However, no specific allegation was made against Cai and Quan. 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 9 of 11 PageID #:3564
8

CONCLUSION 

For the foregoing reasons, ACE respectfully requests that this Honorable Court dismiss 

Plaintiffs’ Complaint under Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction. 

Alternatively, ACE respectfully requests that this Honorable Court hold an evidentiary hearing to 

resolve disputes as to the alleged material facts put forth to support personal jurisdiction. 

Date: 03/09/2021 

Respectfully Submitted: 

/s/ He Cheng 

He Cheng 

Robin.Cheng@glacier.law 

Glacier Law PLLC 

745 Fifth Avenue, Suite 500 

New York, NY 10151 

Tel: +1 (332) 208-8882 

Tao Liu 

Tao.Liu@glacier.law 

Glacier Law PLLC 

745 Fifth Avenue, Suite 500 

New York, NY 10151 

Tel: +1 (332) 208-8882 

Andrew Palmer 

Andrew.Palmer@glacier.law 

Glacier Law PLLC 

200 East Randolph, Suite 5100 

Chicago, IL 60601 

Tel: +1 (312) 448-7772 

Attorneys for Defendant

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 10 of 11 PageID #:3565
9 

CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this March 09, 2021, I electronically filed the foregoing with 

the Clerk of Court using the CM/ECF system, along with the attached Exhibits, and service was 

perfected on all counsel of record and interested parties through this system, which will deliver a true 

and correct copy of the foregoing documents via CM/ECF. 

Date: 03/09/2021 /s/ He Cheng 

He Cheng 

Case: 1:20-cv-03375 Document #: 128 Filed: 03/09/21 Page 11 of 11 PageID #:3566