1 

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 SHENZHEN ACE BATTERY CO., LTD.,’S 12(b)(2) 

MOTION TO DISMISS AND INCORPORATED MEMORANDUM OF LAW 

Defendant, Shenzhen Ace Battery Co., Ltd. hereby moves to dismiss Plaintiffs’ Complaint, 

[Dkt. No.1], pursuant to Federal Rule of Civil Procedure 12(b)(2) lack of personal jurisdiction.1

INTRODUCTION 

Inventus Power, Inc. (“Inventus”) is a Delaware corporation with its headquarters and 

principal place of business in Illinois. ICC Electronics Ltd. (“ICC”) is a Chinese corporation with 

its headquarters and principal place of business in Dongguan, China. Defendant Shenzhen ACE 

Battery Co., Ltd. (“Ace” or “Defendant”) is a Chinese corporation with its headquarter and 

principal place of business in Shenzhen, China. 

1

 In the present case, Defendant has not waived its Rule 12(b) defenses. Under Fed. R. Civ. P. 

12(h)(1) & (g)(2), any defense listed in Rule 12(b)(2) – (5) is only waived if the defense is not 

raised either in a responsive pleading or in a prior 12(b) motion to dismiss. Defendant has 

previously filed a motion to dismiss based on forum non conveniens. Courts have addressed this 

specific issue previously, holding that a motion to dismiss based on forum non conveniens does 

not waive the defendant’s 12(b) defenses. See Yavuz v. 61 MM, Ltd., 576 F.3d 1166, 1173, (10th 

Cir. 2009). Therefore, a Rule 12(b) motion to dismiss is still available to Defendant. 

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Inventus and ICC (together, “Plaintiffs”) filed this action against ACE, alleging trade 

secret misappropriation under the Defend Trade Secrets Act (“DTSA”) pursuant to 18 U.S.C. §§ 

1836(b) &1839 et seq.; and state trade secret misappropriation claim under Illinois Trade Secrets 

Act (“ITSA”), 765 ILCS 1065 et seq. Compl. ¶¶ 49-73, Dk No.1. 

By grouping two companies Inventus and ICC together as “Inventus” in all their files, 

Plaintiffs easily disguised the most crucial facts that Inventus and ICC are two separate entities 

from two different countries, ACE has never hired any employees from Inventus, and none of the 

alleged trade secret misappropriation happened in Illinois or in the United States. 

In fact, all the pertinent events took place in China. All the alleged wrongful download 

and misappropriation of trade secret took place in Southern China, not in U.S. Decl. of Zhao, 

¶ 20, Dk No. 32-1. All potential witnesses, ex-employees of ICC and management at ICC and 

ACE are in China. Id. The three utility patent applications accused on using the Plaintiff’s trade 

secret were filed in China. Id. Defendant has not established any purposeful contacts aimed at the 

forum state of Illinois. Therefore, dismissal based on lack of personal jurisdiction is proper. 

STATEMENT OF FACTS 

It is undisputed that ACE hired ex-employees of ICC in China, including Gang (Lucken) 

Cai, Kui (Gerrard) Liu, Guochao (Andy) Quan, Xinliang (Robert) Cao, Jun (Yancey) Yang, 

Haihua (Alan) Liu, Jina (Conner) Guan, and Jingyang (Paul) Mai (collectively “ex-employees”). 

Plaintiffs allege that ex-employees, while they were still working at ICC, under ACE’s 

direction, downloaded over 100,000 confidential documents, including documents that were 

related to trade secrets shared by Inventus and ICC. Compl. ¶¶ 4, 36-37, 42, Dk No.1. 

Defendant is the rightful owner of three Chinese Utility Patents in dispute (Chinese 

Patent Nos. CN210467927U, titled “A lithium battery packaging container;” CN210272576U, 

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titled “A lithium ion battery cell integration and packaging;” and CN210272484U, titled “A 

lithium ion battery formation cabinet) (collectively “Patents”). DK, 7-1, 7-2, 7-3. The Patents 

were purchased form a Chinese patent broker and were filed in September 2019. Decl. of Zhao, 

¶ 10, Dk No. 32-1. The Patens were granted in April 2020 and May 2020, respectively. 

Plaintiffs allege that Defendant’s Patents purportedly feature Plaintiffs’ trade secrets that 

were wrongfully downloaded by ex-employees under ACE’s direction. Compl. ¶ 37, Dk No.1. 

Plaintiffs allege that Defendant planned to steal trade secrets by hiring ex-employees of 

ICC and instructed ex-employee, before leaving for their new job, to download files that might 

include Inventus’ trade secret. 

Based on these industrial espionage allegation, Plaintiffs filed their complaint under the 

Defend Trade Secrets Act (“DTSA”) pursuant to 18 U.S.C. §§ 1836(b) &1839 et seq.; and state 

trade secret misappropriation claim under Illinois Trade Secrets Act (“ITSA”), 765 ILCS 1065 

et seq., on June 08, 2020, together with a motion for a temporary restraining order ("TRO"). 

Compl. ¶¶ 49-73, Dk No.1, 6. The TRO was granted on July 13, 2020. Dk No. 48. 

ARGUMENT 

A complaint need not allege personal jurisdiction, but once a defendant moves to dismiss 

on that ground, the plaintiff bears the burden of establishing that jurisdiction is proper under both 

the federal and Illinois constitutions. Purdue Res. Found v. Sanofi–Synthelabo, S.A., 338 F.3d 

773, 782 (7th Cir. 2003). The Illinois long-arm statute “permits its courts to exercise personal 

jurisdiction on any basis permitted by the constitutions of both Illinois and the United States.” 

BE2 LLC v. Ivanov, 642 F.3d 555, 558 (7th Cir. 2011); see also 735 ILCS 5/2-209(c). Thus “the 

state statutory and federal constitutional inquiries merge.” Tamburo v. Dworkin, 601 F.3d 693, 

700 (7th Cir. 2010). The federal test for personal jurisdiction under the Due Process Clause of the 

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Fourteenth Amendment authorizes a court to exercise jurisdiction over a non-resident defendant 

only if the defendant has “certain minimum contacts with [the state] such that the maintenance of 

the suit does not offend ‘traditional notions of fair play and substantial justice.’” Int’l Shoe Co. v.

Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). In 

other words, “it is essential in each case that there be some act by which the defendant 

purposefully avails itself of the privilege of conducting activities within the forum State, thus 

invoking the benefits and protections of its laws.” Hanson v. Denckla, 357 U.S. 235, 253 (1958). 

The requirement that a defendant have “minimum contacts” with the forum ensures that a nonresident defendant will not be forced to litigate in a jurisdiction as a result of “random, fortuitous, 

or attenuated contacts” with the forum or the unilateral activity of the plaintiff; the defendant 

“should reasonably anticipate being haled into court” there. Burger King Corp. v. Rudzewicz, 

471 U.S. 462, 474-75 (1985). 

“Personal jurisdiction can be either general or specific, depending on the extent of the 

defendant’s contacts with the forum state.” uBID, Inc. v. GoDaddy Grp., Inc., 623 F.3d 421, 425 

(7th Cir. 2010). Here, neither general jurisdiction nor specific personal jurisdiction can be 

constitutionally exercised over Defendant. 

A. This Court Lacks General Jurisdiction over Defendant. 

The Supreme Court has noted that a court may assert general jurisdiction over a foreign 

corporation “‘to hear any and all claims against [it]’ only when the corporation’s affiliations with 

the forum state are so constant and pervasive ‘as to render [it] essentially at home in the forum 

State.’” Daimler AG v. Bauman, 571 U.S. 117, 122 (2014) (citing Goodyear Dunlop Tires 

Operations, S. A. v. Brown, 564 U. S. 915, 919 (2011)). “The paradigm all-purpose forums for 

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general jurisdiction are a corporation’s place of incorporation and principal place of business.” 

Id. at 118. (citing Goodyear, 564 U. S., at 924) 

In this case, ACE is a Chinese corporation with its headquarter and principal place of 

business in Shenzhen, China. Under the “at home” test, it is obvious that ACE is not “at home” 

in Illinois, and thus, should not be subject to general or “all purpose” jurisdiction in Illinois. 

Further, ACE’s attendance of a tradeshow in Illinois is neither continuous nor systematic. ACE’s 

contacts with Illinois is a single instance and misses the mark of “so constant and pervasive as to 

render it essentially at home.” 

Therefore, this Court should only consider whether specific or “conduct-linked” 

jurisdiction exists in this case. 

B. This Court Lacks Specific Personal Jurisdiction over Defendant. 

Plaintiff alleges that Defendant is subject to personal jurisdiction in this Court because it 

has attended a tradeshow in Chicago, and the alleged misappropriated trade secret were 

developed in Inventus’ headquarter in Illinois. 

There are three “essential requirements” for the exercise of specific jurisdiction over an 

out-of-state defendant: “‘[1] 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. [2] Second, the plaintiff’s alleged injury must 

have arisen out of the defendant’s forum-related activities. And [3] 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)). “The plaintiff bears the burden of 

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satisfying the first two prongs of the test.” Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 

797, 802 (9th Cir. 2004). 

1. Defendant’s contacts with the forum state do not all show “purposeful availment.” 

In intentional tort cases, “the purposeful availment inquiry focuses on whether the 

conduct underlying the claims was purposely directed at the forum state,” and looks to “whether 

the plaintiff has shown ‘(1) intentional conduct (or ‘intentional and allegedly tortious’ conduct); 

(2) expressly aimed at the forum state; (3) with the defendant’s knowledge that the effects would 

be felt—that is, the plaintiff would be injured— in the forum state.’” Walls v. VRE Chicago 

Eleven, LLC, 344 F. Supp. 3d 932, 944 (N.D. Ill. 2018) (quoting Tamburo, 601 F.3d 702-03); see 

also Micro Data Base Sys., Inc. v. Dharma Sys., Inc., 148 F.3d 649, 654 (7th Cir. 1998) 

(“misappropriation of a trade secret is an intentional tort”). 

Defendant concedes that its attendance of the 2019 PROMAT tradeshow in Chicago and 

to promote its product purposefully availed itself to the forum state. 

Defendant contests, however, that the alleged stealing of trade secret of ex-employees, 

even taken as true, does not “purposefully avail” Defendant to the forum state. 

Plaintiffs have to prove both that the ex-employees of ICC in fact wrongfully downloaded 

Plaintiffs’ trade secrets and that Defendant directed the ex-employees to do so or has in fact 

acquired or used the alleged stolen trade secrets. 

Nothing in the Complaint and Exhibitions attached to the Complaint provide any direct 

evidence in support of Plaintiffs’ allegation that Defendant intentionally planned the stealing of 

Plaintiffs’ trade secrets. No evidence was provided to link Defendant’s hiring of ICC’s exemployees to the alleged tortious intent of misappropriating Plaintiffs’ trade secrets. 

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Plaintiffs relied heavily on their sealed documents [Dkt. No. 8, 9, 10, 11,12, 35, 36, 41 and 

42] to establish Defendant’s purposeful availment. Limited information in the sealed documents 

were included in this Court’s Memorandum Opinion and Order. Order, pp 10-12, Dkt. No. 48. The 

declaration of Tom Nguyen focuses on Yang’s (an ex-employee) access to Plaintiffs’ trade secrets 

through a server in Hong Kong or through email requests, while still working at ICC. Id. This may 

establish this Court’s specific personal jurisdiction over Yang but does not prove Defendant’s 

knowledge or involvement in the alleged trade secret misappropriation. 

In fact, multiple declarations provided by Plaintiffs argue against Defendant’s involvement 

in the alleged trade secrete misappropriation. Reply to TRO, Exh. 4, ¶ 7, Exh. 5, ¶ 5, Exh. 6, ¶ 4, 

Dkt. No. 34-1, 34-2, 34-3. Defendant has also taken appropriate steps to prevent the any potential 

misappropriation of trade secrets form others, including requiring “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.” Decl. of Zhao, ¶ 7, Dk No. 32-1. 

From the available information, Plaintiff failed to provide any material evidence that shows 

Defendant planned the alleged trade secrete misappropriation. Therefore, the alleged wrongful 

download of Plaintiffs’ trade secrets by ex-employees does not “purposefully avail” Defendant to 

the forum state. 

2. Plaintiff’s alleged injury does not arise out of the defendant’s forum-related activities. 

Plaintiffs’ alleged injuries, misappropriated trade secret, do not arise from Defendant 

attendance of the 2019 PROMAT tradeshow in Chicago, since the trade show happened in April 

2019, and any alleged trade secret misappropriation happened towards the end of 2019. Compl. 

Exh. 1. Dkt. No. 1. There is no direct or indirect connection between the trade show in Chicago 

and the alleged injuries. 

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Other tradeshows that Defendant attended in 2019 were in Michigan and Utah respectively. 

Since Plaintiff failed to provide sufficient evidence to show that Defendant planned the 

alleged trade secret misappropriation, or that Defendant has acquired or used the alleged trade 

secret, Plaintiffs’ alleged injuries does not arise out of the defendant’s forum-related activities, 

CONCLUSION 

For the foregoing reasons, Defendant respectfully requests that this Court dismiss 

Plaintiff’s Complaint with prejudice. 

Date: 08/24/2020 

 Respectfully Submitted: 

/s/ He Cheng 

He Cheng 

Tao Liu 

Andrew Palmer 

Glacier Law PLLC 

745 5th Ave., Ste 500, 

NEW YORK, NY 10015 

Attorneys for Defendant

 

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this August 24, 2020, I electronically filed the foregoing 

with the Clerk of Court using the CM/ECF system, 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: 08/24/2020 /s/ He Cheng 

He Cheng

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