IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

INVENTUS POWER, INC., and ICC

ELECTRONICS (DONGGUAN) LTD. 

Plaintiffs, 

v. 

SHENZHEN ACE BATTERY CO., LTD.,

Defendant. 

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Civil Action No.: 1:20-cv-03375 

Honorable Robert M. Dow, Jr. 

Magistrate Judge Jeffrey Cummings 

MEMORANDUM IN SUPPORT OF PLAINTIFFS’ MOTION TO FIND DEFENDANT 

IN CONTEMPT OF THE COURT’S DISCOVERY RULINGS 

Case: 1:20-cv-03375 Document #: 186-1 Filed: 11/17/21 Page 1 of 21 PageID #:4800
TABLE OF CONTENTS 

Page 

I. INTRODUCTION .............................................................................................................. 1

II. BACKGROUND ................................................................................................................ 2

A. AcePower Refused to Comply with Judge Dow’s Expedited Discovery 

Order and Judge Cummings’s Order Granting Inventus’s Motion to 

Compel .................................................................................................................... 2

B. This Court Ordered Discovery Under The Federal Rules ...................................... 3

C. AcePower Failed To Comply With The Court’s October 22 Deadline And 

Now Refuses to Comply with the Court’s Order Compelling Discovery 

Under the Federal Rules .......................................................................................... 5

III. LEGAL STANDARD ......................................................................................................... 7

IV. ARGUMENT ...................................................................................................................... 8

A. AcePower Violated the Court’s Order by Failing to Produce Any 

Documents Responsive to Inventus’s Requests for Production ............................. 8

B. AcePower Violated the Court’s Order with Respect to Interrogatory 

Responses .............................................................................................................. 11

C. AcePower’s Failure to Abide by the Court’s Orders Necessitates 

Imposition of Sanctions ........................................................................................ 12

V. CONCLUSION ................................................................................................................. 15

 

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Ari Officer v. Duran, 

No. 12 C 10195, 2014 WL 51330 (N.D. Ill. Jan. 2, 2014) ........................................................7 

Burns v. Imagine Films Ent., Inc., 

198 F.R.D. 593 (W.D.N.Y. 2000) ..............................................................................................8 

Caisse Nationale de Credit Agricole v. CBI Indus., Inc.

90 F.3d 1264 (7th Cir. 1996) ...................................................................................................11 

Dickson v. Chicago Allied Warehouses, Inc., 

No. 90 C 6161, 1993 WL 362450 (N.D. Ill. Sept. 15, 1993) .....................................................8 

Drive Time Auto., Inc. v. Deguzman, 

No. 2:14-CV-00782-RFB, 2015 WL 1288152 (D. Nev. Mar. 19, 2015) ................................14 

E.E.O.C. v. Sears, Roebuck &Co., 114 F.R.D. 615 (N.D. Ill. 1987), 

reconsideration granted in part on other grounds, 138 F.R.D. 523 (N.D. Ill. 

1991) ..........................................................................................................................................8 

Fautek v. Montgomery Ward & Co., 

96 F.R.D. 141 (N.D. Ill. 1982) ...................................................................................................8 

Goplin v. WeConnect, Inc., 

893 F.3d 488 (7th Cir. 2018) ...................................................................................................11 

Klein-Becker USA, LLC v. Englert, 

711 F.3d 1153 (10th Cir. 2013) ...............................................................................................13 

Life After Hate, Inc. v. Free Radicals Project, Inc., 

No. 18 C 6967, 2020 WL 5848429 (N.D. Ill. Oct. 1, 2020) ....................................................13 

Lightspeed Media Corp. v. Smith, 

830 F.3d 500 (7th Cir. 2016) ...................................................................................................15 

Moro v. Shell Oil Co., 

91 F.3d 872 (7th Cir. 1996) .....................................................................................................11 

Oklahoma Federated Gold & Numismatics, Inc. v. Blodgett, 

24 F.3d 136 (10th Cir. 1994) ...................................................................................................14 

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Olivet Baptist Church v. Church Mut. Ins. Co., 

No. 13 C 1625, 2015 WL 765715 (N.D. Ill. Jan. 7, 2015), 

report and recommendation adopted, No. 13 C 1625, 2015 WL 764051 (N.D. 

Ill. Feb. 23, 2015) ...............................................................................................................10, 11 

Ropak Corp. v. Plastican, Inc., 

No. 04 C 5422, 2006 WL 2385297 (N.D. Ill. Aug. 15, 2006) .................................................13 

S.E.C. v. Brewer, 

No. 10 C 6932, 2011 WL 3584800 (N.D. Ill. Aug. 15, 2011) ................................................14 

SmithKline Beecham Corp. v. Apotex Corp., 

No. 98 C 3952, 2000 WL 1310669 (N.D. Ill. Sept. 13, 2000) .................................................11 

Solvay Specialty Polymers USA, LLC v. Zhenguo (Leo) Liu, 

331 F.R.D. 187 (N.D. Ga. 2019) ................................................................................................7 

This, LLC v. Jaccard Corp., 

No. 3:15-CV-1606(JBA), 2017 WL 547902 (D. Conn. Feb. 9, 2017) ....................................13 

Tobias v. Davidson Plywood, 

241 F.R.D. 590 (E.D. Tex. 2007) .............................................................................................14

VYSE Gelatin Co. v. Hicks, 

No. 17-CV-2937, 2019 WL 13084200 (N.D. Ill. June 3, 2019) ....................................9, 10, 11 

Wanderer v. Johnston, 

910 F.2d 652 (9th Cir. 1990) ...................................................................................................14 

Williams v. Thompson, 

No. 94 C 5669, 1996 WL 124446 (N.D. Ill. Mar. 19, 1996) ...................................................13 

Zenith Elecs. Corp. v. WH-TV Broad. Corp., 

395 F.3d 416 (7th Cir. 2005) ...................................................................................................13 

Statutes 

28 U.S.C. § 1927 ............................................................................................................................15 

28 U.S.C. § 2254 ............................................................................................................................11 

Rules 

Fed. R. Civ. P. 16 ...........................................................................................................................15 

Fed. R. Civ. P. 37 .........................................................................................................................7, 8 

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1 

I. INTRODUCTION 

Defendant Shenzhen Ace Battery Co., Ltd. (“AcePower”) has shown a nearly complete 

disregard for the discovery orders issued by this Court dating back to mid-2020. It still has failed 

to produce a single document to Inventus nearly a year-and-a-half after expedited discovery was 

ordered (beyond those documents it voluntarily attached as exhibits to support its own positions 

in the case), and continues to raise already-rejected objections based on Chinese law as an excuse 

for not fully responding to interrogatories that this Court found directly relate to the jurisdictional 

discovery ordered by this Court. It is now clear that AcePower made a strategic decision to disobey 

orders from this Court and to improperly withhold essentially all discovery in order to achieve its 

overall goal of continuing to use Inventus’s stolen trade secrets to benefit its business for as long 

as possible while frustrating Inventus’s efforts over more than a year to progress this case, which 

as a result, is causing Inventus to continue suffering significant competitive harm. Defendant’s 

disregard for this Court’s orders and authority should not be condoned. 

AcePower’s most recent violation of this Court’s orders concerns this Court’s September 

30, 2021 order requiring AcePower to “supplement its interrogatories and fully respond to the 

requests for production . . . by October 22, 2021.” Dkt. 180 (“Order”) at 34. But more than three 

weeks after that deadline, AcePower still has failed to provide a proper response to each of those 

interrogatories and perhaps more egregiously still has not produced documents to Inventus’s 

counsel as required by the Court’s orders, again citing Chinese laws as a basis for its violation. 

Dkt. 182; Dkt. 180 at 25 (rejecting AcePower’s argument that it may be penalized or prosecuted 

for producing documents for a U.S. litigation). The Court already expressly dispatched with these 

types of arguments, concluding that discovery would be governed by the Federal Rules and not 

the Hague Convention because “Ace has failed to satisfy its burden to . . . support the application 

of the Hague Convention procedures here.” Dkt. 180 at 25; see also id. at 16-29. Moreover, 

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AcePower did not ask the Court’s permission to violate its orders, but simply made a unilateral 

decision to do so. Then, knowing that this motion was coming, AcePower filed another motion 

(Dkt. 182) raising arguments that cannot stand in view of this Court’s rulings and requesting 

permission after the fact to not produce the documents in the United States as required. It is long 

past time for AcePower to comply with this Court’s orders, and its continued failure to do so 

warrants a finding that AcePower is in contempt of the Court’s orders. This Court already warned 

that AcePower’s continued refusal to comply with discovery orders “will result in the imposition 

of sanctions,” Dkt. 100 at 8, but to no avail as shown by AcePower’s continued non-compliance. 

Accordingly, to address AcePower’s ongoing failure to comply with this Court’s discovery 

orders, Inventus moves for an order (1) finding AcePower in contempt, (2) striking AcePower’s 

denials that it committed trade secret misappropriation, its affirmative defenses, and its objection 

to this Court’s jurisdiction, (3) requiring AcePower to produce the ordered documents and to fully 

respond to the interrogatories required by the Court in Dkts. 179 and 180 within five days of the 

Court’s order on the instant motion, (4) imposing any additional sanctions the Court deems proper 

if AcePower fails to fully comply with Dkts. 179 and 180 by the Court’s new deadline or files a 

motion to compel prior to complying, and (5) barring AcePower from seeking additional discovery 

from Inventus unless or until AcePower complies with its Court-ordered discovery obligations. 

II. BACKGROUND 

A. AcePower Refused to Comply with Judge Dow’s Expedited Discovery Order 

and Judge Cummings’s Order Granting Inventus’s Motion to Compel 

On July 13, 2020, Judge Dow granted Inventus’s motion for expedited discovery. Dkt. 48. 

The parties’ Joint Status Report on July 21, 2020, stipulated to “a 21-day response period for all 

written discovery,” agreeing to provide “substantive responses beyond mere objections.” Dkts. 

55, 58. Consistent with this stipulation, and Judge Dow’s orders, Inventus served 10 

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Interrogatories and 13 Requests for Production (“RFP”) on July 30, 2020, requesting information 

about fundamental, basic issues in this case. Dkts. 74-2, 74-3. AcePower failed to serve any 

responses or objections by the August 20 deadline, and confirmed on August 21 that it would 

continue refusing to provide written responses unless Inventus asked the Court to compel 

AcePower to do so. Dkt. 74-4. On August 24, 2020—well over a year ago now—Inventus was 

forced to file a Motion to Address Defendant AcePower’s Failure to Respond to Interrogatories 

and Requests for Production (Dkt. 74) outlining AcePower’s deficiencies. AcePower also filed a 

Motion for Entry of Protective Order (Dkt. 69) on the same day. In view of AcePower’s conduct, 

the Court held that it would consider AcePower’s Motion (Dkt. 69) as its only objections. 

On November 12, 2020—just over a year ago—this Court ordered AcePower to “fully and 

non-evasively respond to the discovery requests [served by Inventus on July 30, 2020] ... without 

further objections apart from privilege objections, if any,” by November 30, 2020, and cautioned 

AcePower that “[f]ailure to comply ... will result in the imposition of sanctions.” Dkt. 100 at 8. 

Despite the Court’s clear direction, November 30, 2020 came and went without AcePower 

producing a single document or providing sufficient answers to Inventus’s interrogatories, instead 

raising a new objection that Inventus must request documents under the Hague Convention in light 

of Chinese laws. Inventus was forced to file yet another motion to compel—this time requesting 

compliance with the Court’s orders to produce documents, conduct Court-ordered forensic 

inspection, and compel depositions under the Federal Rules—as well as a motion for sanctions 

given AcePower’s direct violations of the Court’s orders. Dkts. 103, 111. 

B. This Court Ordered Discovery Under The Federal Rules 

On September 30, 2021, the Court granted Inventus’s motion to compel discovery under 

the Federal Rules rather than the Hague Convention, expressly rejecting AcePower’s arguments 

that Chinese laws preclude its compliance with United States discovery, including depositions, 

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written discovery, and document productions. See Dkts. 179, 180.1 The Court ordered AcePower 

to verify all of its interrogatory responses and respond to Inventus’s Interrogatory Nos. 1, 2, 5 

(limited to U.S. customers only), and 6 by October 22, 2021. Dkt. 180 at 7. The Court also ordered 

AcePower to “fully respond” to RFP Nos. 4, 5 (limited to U.S. customers only), 9, and 13 (limited 

to U.S. customers only) by October 22, 2021. Id. Finally, the Court permitted depositions under 

the Federal Rules, ordering that they “shall be completed by December 3, 2021.” Id. at 34. The 

Court expressly concluded that all of this discovery was “appropriately tailored to the current scope 

of jurisdictional discovery....” Id. at 6. 

In finding that the Federal Rules apply, the Court explained that AcePower “has failed to 

show at the second step that the sovereignty issues at stake and the principles of comity favor the 

application of the Hague Convention.” Dkt. 180 at 11. AcePower had challenged the application 

of the Federal Rules based on Article 277 of Chinese Civil Procedure law, arguing that AcePower, 

as a Chinese company, was prohibited from providing discovery without permission from Chinese 

authorities through the Hague Convention. Dkt. 180 at 13-15. The Court disagreed with 

AcePower, holding that “[t]he importance of the depositions and documents Inventus seeks related 

to jurisdictional discovery is indisputable” (id. at 17) and there is “little doubt that the jurisdictional 

discovery Inventus seeks can only be obtained directly from Ace” (id. at 19), and further that “Ace 

had little fear of penalties when it previously produced documents located in China – including 

emails and blood test and x-ray results– to support its own litigation position” (id. at 25). 

 1

 Though the Court denied Inventus’s request for sanctions (Dkt. 74), it warned that sanctions “will” be 

imposed upon AcePower for further non-compliance (Dkt. 100). Plaintiffs moved for sanctions again based 

on AcePower’s continued non-compliance (Dkt. 111), and the Court denied it without prejudice (Dkt. 178) 

because (1) the scope of discovery was broader than the jurisdictional discovery currently at issue, and (2) 

the Court had not yet addressed the parties’ dispute over whether the Hague Convention applied. However, 

when the Court issued its most recent order compelling discovery (Dkt. 180), discovery was already limited 

to jurisdictional issues and the Court had already ruled that discovery should proceed under the Federal 

Rules, so this does not excuse AcePower’s continued disobedience. 

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C. AcePower Failed To Comply With The Court’s October 22 Deadline And Now 

Refuses to Comply with the Court’s Order Compelling Discovery Under the 

Federal Rules 

More than three weeks after the October 22, 2021 deadline, AcePower still has not 

complied with the Court’s Order to fully respond to Inventus’s RFPs or interrogatories. Indeed, 

Inventus still has not received any documents that AcePower was ordered to produce. And it is 

clear that AcePower never intended to comply with the Court’s deadline. While AcePower 

requested a two-week extension from Inventus on October 19, Inventus never agreed to provide it 

based on AcePower’s refusal to meet certain necessary conditions (such as providing a rolling 

production). See Dkt. 181-1. On October 22—the day AcePower was ordered to comply with its 

discovery obligations—AcePower represented that it had “so far” identified “10-15 documents.” 

Dkt. 181-1 at 4. This confirms that AcePower could have at least partially complied—albeit in a 

highly deficient manner—with the Court’s Order by producing some documents before the 

deadline, but chose not to do so. After failing to obtain an extension from Inventus, AcePower’s 

October 22, 2021 email raised a “new” excuse for violating the Court’s Order, namely that a 

Chinese law enacted in June 2021 prevented AcePower from producing documents to Inventus’s 

U.S.-based counsel. AcePower asked whether it could produce the documents to Kirkland & Ellis 

Shanghai office instead. Inventus rejected this request, stating that AcePower needed to “produce 

these documents in the United States immediately, as required by the Court.” Dkt. 181-1 at 2. 

And production of documents in the U.S. is, in fact, what was required by the Court—AcePower 

was ordered to “fully respond to the requests for production ordered in this Opinion” (Dkt. 180 at 

34), and the RFPs require production “at the offices of Kirkland & Ellis LLP, 555 South Flower 

Street, Los Angeles, CA 90071, or at such other place as may be mutually agreeable to counsel.” 

Dkt. 181-2. Such production also is necessary so that the documents may be used in this case. 

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At 10:06 PM CT on November 4, 2021—two weeks after the October 22 deadline—

AcePower wrote to Inventus and stated that “[a]s agreed, ACE has mailed it responses with 

Exhibits to Plaintiffs counsel’s Shanghai Office on or about 11/4/2021.” Dkt. 181-1 at 1. But 

there was no such agreement; no place other than Kirkland’s Los Angeles office was ever agreed 

to by Inventus, and AcePower’s purported production of electronic documents printed in hard copy 

and shipped to Kirkland’s Shanghai office does not comply with the Court’s Order. At that time, 

AcePower provided no information to confirm it had sent any materials to Kirkland’s Shanghai 

office. On November 5, 2021, AcePower provided a tracking number, indicating that a package 

containing unknown materials will arrive in Shanghai on November 6, 2021—15 days past the 

Court’s deadline. At 9:00 PM CT on November 5, the tracking number indicated that the package 

was delivered to an unspecified address in Shanghai. 

During a subsequent November 9, 2021 meet and confer—more than two weeks after the 

Court’s production deadline—Inventus explained that AcePower’s alleged production of hard 

copy documents to Shanghai not only violated this Court’s September 30 order but also violated 

the Court’s ESI order, which requires documents to be produced in TIFF format. Ex. 1 (11/9/2021 

email from K. Bendix to R. Cheng). In response, AcePower agreed that it would produce the 

required TIFF files after an unidentified “‘vetting’ process is completed”, but refused to provide a 

date certain by which it would do so. Ex. 2 (11/10/2021 email from R. Cheng to K. Bendix).2

 But 

instead of producing any TIFF files as promised, AcePower instead filed an untimely motion (more 

 2

 On November 10, 2021, AcePower sent an email alleging that “the Production was sent to Kirkland & Ellis 

LLP’s Shanghai Office in good faith to avoid the complication of the newly implemented China’s Cybersecurity Law and the ‘vetting’ process,” which was “based on information and belief that counsel from 

Kirkland & Ellis LLP’s Shanghai Office were involved in this litigation.” Ex. 2 (11/10/2021 email from 

R. Cheng to K. Bendix). But in addition to never having raised “the newly implemented China’s Cybersecurity Law and the ‘vetting’ process” prior to the October 22 deadline, AcePower’s email also fails to 

excuse its unilateral decision to send documents to Shanghai—after both this Court and Inventus 

specifically directed AcePower to produce the documents in the US—based on a claim that “counsel from 

Kirkland & Ellis LLP’s Shanghai Office were involved in this litigation,” though none have appeared. 

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than three weeks after the Court’s deadline) raising more China law objections and requesting 

permission to produce documents to Kirkland’s Shanghai office, further demonstrating that it 

never intended to produce these documents to the United States. Dkt. 182. 

In addition, the supplemental interrogatory responses AcePower provided on October 22 

are woefully deficient and do not comply with the Court’s order including because it failed to 

provide any response to Interrogatory No. 5, and also failed to verify its previous responses. 

Finally, while AcePower has failed to comply with its Court-ordered discovery obligations, 

it has continued to needlessly increase the cost of this case for Inventus by demanding all new 

depositions of Inventus employees. On November 11, 2021, AcePower served three deposition 

notices—for Wenhua (Ewin Li), and two additional Inventus employees that the Court has not 

ordered to be deposed (Nuo Ma and Tom Nguyen), and on November 17 demanded dates for their 

availability—even though AcePower still has not produced a single document. Ex. 3 (11/12/2021 

email from R. Cheng to K. Bendix); Ex. 4 (11/17/2021 email from R. Cheng to K. Bendix). 

III. LEGAL STANDARD 

Fed. R. Civ. P. 37(b)(2) provides that if a party “fails to obey an order to provide or permit 

discovery,” then “the court where the action is pending may issue further just orders,” including 

the seven enumerated sanctions listed in subsection (2)(A). These sanctions include “directing 

that the matters embraced in the order or other designated facts be taken as established,” 

“prohibiting the disobedient party from supporting or opposing designated claims or defenses,” 

and “rendering a default judgment against the disobedient party.” Fed. R. Civ. P. 37(b)(2)(A); see 

also Ari Officer v. Duran, No. 12 C 10195, 2014 WL 51330, at *3 (N.D. Ill. Jan. 2, 2014) 

(recommending sanction of deeming certain facts as established where “Defendants’ repeated 

failures to meet deadlines and comply adequately with discovery requests—despite numerous 

warnings by the Court—demonstrate objectively unreasonable behavior.”); Solvay Specialty 

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Polymers USA, LLC v. Zhenguo (Leo) Liu, 331 F.R.D. 187, 190 (N.D. Ga. 2019) (entering default 

judgment and permanent injunction in trade secret misappropriation case where defendant “in bad 

faith, failed to comply with the Court’s discovery orders” on two separate occasions). “Under the 

rule, complete and accurate responses are required.” Dickson v. Chicago Allied Warehouses, Inc., 

No. 90 C 6161, 1993 WL 362450, at *12 (N.D. Ill. Sept. 15, 1993) (granting attorneys’ fees for 

bringing motion to compel discovery responses) (citing Fautek v. Montgomery Ward & Co., 96 

F.R.D. 141, 144–145 (N.D. Ill. 1982)). “Even if a failure to respond is the result of negligence, 

sanctions may be imposed.” Id. “Dilatory and partial compliance does not remove a case from 

the ambit of the rule.” Id. (citing E.E.O.C. v. Sears, Roebuck &Co., 114 F.R.D. 615, 626 (N.D. 

Ill. 1987), reconsideration granted in part on other grounds, 138 F.R.D. 523 (N.D. Ill. 1991)). In 

addition to enumerated sanctions, “any of the orders listed in Rule 37(b)(2)(A)(i)—(vi),” sanctions 

can include reasonable expenses, including attorneys’ fees, caused by the failure to serve a written 

response. Fed. R. Civ. P. 37(d)(3). 

“A severe sanction is particularly appropriate when a party made a strategic decision to 

disobey the court’s orders, since such a sanction can influence ‘other parties to other lawsuits 

[who] would feel freer than we think Rule 37 contemplates they should feel to flout other discovery 

orders of other district courts.’” Burns v. Imagine Films Ent., Inc., 198 F.R.D. 593, 601 (W.D.N.Y. 

2000) (striking defendants’ answers and explaining that “Defendant made a strategic decision to 

disobey this Court’s orders, to further their over-all goals in this litigation.”). 

IV. ARGUMENT 

A. AcePower Violated the Court’s Order by Failing to Produce Any Documents 

Responsive to Inventus’s Requests for Production 

AcePower failed to produce any documents, and has thus violated the Court’s Order to 

“fully respond to the requests for production ordered...by October 22, 2021.” Dkt. 180 at 34. 

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Instead, at 11:53 PM CT on October 22—seven minutes before the Court’s deadline for AcePower 

to fully respond to Inventus’ RFPs—AcePower sent an email raising a new, untimely objection, 

stating that “the newly implemented Chinese Data Security Law restricts transferring certain data 

and information” and insisted that it could only comply with the Order by producing documents 

in China, requesting permission to send the documents to Kirkland’s Shanghai office. Dkt. 181-1 

at 4. However, Inventus explicitly rejected AcePower’s request, reiterating that compliance 

required AcePower to “produce these documents in the United States immediately, as required by 

the Court.” Dkt. 181-1 at 2-3. To this day, Inventus has not received a single document from 

AcePower despite express orders from this Court requiring AcePower to provide such documents. 

AcePower’s discovery tactics violate this Court’s orders and warrant sanctions for multiple 

reasons. First, AcePower never requested an extension of time from the Court to comply with the 

Court’s Order. See VYSE Gelatin Co. v. Hicks, No. 17-CV-2937, 2019 WL 13084200, at *2 (N.D. 

Ill. June 3, 2019) (“Given that Defendants waited until the last minute to request an extension of 

time to comply with the Court’s order from the Plaintiff (notably, not from the Court), and that 

Defendants responses were inadequate, the Court concludes that Defendants acted willfully, in bad 

faith, with fault,” and the “sanction of striking Defendants’ affirmative defenses is proportional 

to Defendants’ failure to comply with their discovery obligations.”). Indeed, AcePower waited 

over three weeks to file its November 15 motion to produce documents in Shanghai (Dkt. 182). 

Nor did AcePower obtain agreement on an extension from Inventus. See Dkt. 181-1. But even if 

the AcePower had obtained agreement on its requested two-week extension from Inventus, 

AcePower still to this day has not produced any documents as required by the Court’s Order, 

which is a clear violation of its own unilateral extension, and therefore sanctions are warranted. 

VYSE Gelatin Co., 2019 WL 13084200, at *2. 

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Second, producing hard copy documents to Kirkland’s Shanghai office violates the Court’s 

Order to produce documents in the United States under the Federal Rules (Dkt. 180 at 26, 34) and 

fundamentally frustrates the purpose of the document production: to enable this Court (not a court 

in Shanghai) to evaluate AcePower’s jurisdictional objection. It also violates the Court’s ESI order 

requiring the parties to produce documents in TIFF format.3 AcePower admitted it did not provide 

any TIFFs when it purportedly mailed hard copy documents to Shanghai, and indeed, to date, still 

has not provided a single TIFF of any document to Inventus, though it conceded on a meet and 

confer it was able to and intended to do so. This is also sanctionable conduct. See, e.g., Olivet 

Baptist Church v. Church Mut. Ins. Co., No. 13 C 1625, 2015 WL 765715, at *1 (N.D. Ill. Jan. 7, 

2015), R & R adopted (party’s “lackadaisical approach to discovery is unacceptable and deserving 

of sanctions” where party did not produce promised discovery, and “obfuscated” damages claim). 

Third, the Court has already disposed of AcePower’s argument that Chinese law prohibits 

production of the documents in the United States, rendering this new objection about an old topic 

improper.4 Dkt. 180 at 16-26. The Court’s rationale for disposing with these arguments applies 

with equal force to AcePower’s new argument regarding the Chinese Data Security Law enacted 

in June 2021. See Dkt. 180 at 17-19, 23, 25. Moreover, to the extent AcePower asserts that the 

objections raised in its October 22 email are somehow different in kind from those already rejected 

by the Court (and they are not), these objections are indisputably waived, given AcePower’s failure 

to raise them in any pleading, notice to the Court, or even via email at any time prior to the Court’s 

 3

 See Dkt. 93 (Document Production Protocol Order) at ¶ 4(a) (“Documents that are maintained in paper 

format shall be scanned as black and white images” into “Tagged Image File Format” (“TIFFs”). 

4

 See Dkt. 180 at n. 16 (“Ace argued in passing that the court order requiring it to send its computer devices 

to the United States for examination might constitute a violation of Chinese secrecy laws . . . . Ace has not, 

however, expounded on this argument with respect to the production of documents, nor did the Chinese 

Ministry of Justice recognize any other laws that would be violated by Ace’s production.”); id. at 23 (“Ace 

has not specifically contended that the production of documents would violate other significant Chinese 

laws.”); id. at 17 (“Notwithstanding its burden to show that the Hague Convention should apply to the 

production of documents, Ace inexplicably fails to address any of these factors in its motion ....”). 

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Order, though it had many months to do so if it was truly concerned.5 Indeed, AcePower should 

have moved for reconsideration of the Court’s Order in advance of the October 22 deadline, rather 

than disregarding it based on its unilateral assertion that Chinese law prohibits compliance. VYSE 

Gelatin Co., 2019 WL 13084200, at *2; Olivet Baptist Church, 2015 WL 765715, at *1. In fact, 

AcePower claims that one of the statutes that it is now relying on to evade this Court’s Order was 

enacted on November 1, 2021 (Dkt. 182 at 2) such that timely compliance with this Court’s 

October 22, 2021 deadline would have mooted that issue even under AcePower’s flawed argument. 

At bottom, there is no excuse for AcePower’s repeated violations, and AcePower’s conduct 

establishes that it will not comply with Court orders and will continue to raised long-since 

adjudicated and waived objections absent significant sanctions (and perhaps, even then). 

B. AcePower Violated the Court’s Order with Respect to Interrogatory Responses 

 AcePower’s recent interrogatory responses—its “supplemental” responses to Interrogatory 

Nos. 5 and 6, served on October 22, 2021, and the verified, previously provided Interrogatories, 

served on November 4, 2021—also violate this Court’s Order. First, AcePower did not receive 

permission from the Court to disregard its October 22, 2021 deadline and serve verified responses 

nearly two weeks after the deadline. If AcePower believed it was not in a position to follow the 

 5

 See, e.g., Goplin v. WeConnect, Inc., 893 F.3d 488, 490 (7th Cir. 2018) (motion for reconsideration properly 

denied where party failed to show “not only that [the] evidence was newly discovered or unknown to it 

until after the hearing, but also that it could not with reasonable diligence have discovered and produced 

such evidence [during the pendency of the motion].”) (quoting Caisse Nationale de Credit Agricole v. CBI 

Indus., Inc., 90 F.3d 1264, 1269 (7th Cir. 1996)) (emphasis added); see also SmithKline Beecham Corp. v. 

Apotex Corp., No. 98 C 3952, 2000 WL 1310669, at *3 (N.D. Ill. Sept. 13, 2000) (describing “clear Seventh 

Circuit precedent holding that a motion to reconsider is not the appropriate vehicle for the introduction 

of new evidence that could have been presented to the court prior to the ruling.”) (citing Moro v. Shell 

Oil Co., 91 F.3d 872, 876 (7th Cir. 1996)) (emphasis added); Emerson v. Gramley, 91 F.3d 898, 900 (7th 

Cir. 1996) (“The day after the appeals were argued to us, President Clinton signed into law the Antiterrorism 

and Effective Death Penalty Act of 1996, Pub.L. 104-132, 110 Stat. 1214, which among other things 

amends 28 U.S.C. § 2254(d) to require federal courts in habeas corpus proceedings to give greater deference 

to the determinations made by state courts than they were required to do under the previous law. Although 

three months have elapsed since the enactment of this highly publicized law, the state has not asked us 

to consider its possible bearing on these appeals, and we consider the issue waived.”). 

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12 

Court’s Order, it should have promptly sought relief from the Court. Unilaterally flouting the 

Court’s deadlines cannot be condoned. As the Court noted, “[u]nverified interrogatory answers, 

including those signed only by a party’s counsel, are subject to being stricken.” Dkt. 180 at 7. 

Second, AcePower’s supplemental responses fail to provide the information required by 

the Court’s Order. Dkt. 180 at 7, 34. For example, AcePower’s supplemental response to 

Interrogatory No. 5 does not provide any response at all. Instead, AcePower objects that the 

request “asks for speculation and improper or wrong assumptions” and noncommittally indicates 

it is “amicable to discussing this interrogatory further” if Inventus can provide a list of customers 

with only a “CONFIDENTIAL” designation. Dkt. 181-3. In addition to clearly violating the 

Court’s mandate to “fully respond” to the interrogatory, AcePower’s suggestion that it requires a 

“full list of [Plaintiffs’] U.S. based customers and/or suppliers” to provide a substantive response 

lacks merit. Inventus has identified exemplary customers throughout this litigation, which 

Inventus indicated to AcePower. See, e.g., Dkt. 1 ¶ 20; Dkt. 8 at 8, n.7; Dkt. 82 at 9. And although 

Inventus indicated that it is amenable to discussing a comprehensive list of its customers, that does 

not prevent it from investigating on its own which of Inventus’s customers it currently sells to in 

the U.S., and responding to this interrogatory, and in any event, this information cannot be shared 

without an “Attorneys’ Eyes Only” designation given the confidential nature of this information 

and the fact that AcePower is accused of trade secret theft. Indeed, this is the same argument that 

the Court expressly rejected in August 2020. See Dkt. 181-4 at 6, 10-11. 

C. AcePower’s Failure to Abide by the Court’s Orders Necessitates Imposition of 

Sanctions 

The sanctions requested by Inventus—striking AcePower’s denials of Inventus’s trade 

secret misappropriation allegations, its affirmative defenses, and its objection to this Court’s 

jurisdiction, and imposing any additional appropriate sanctions for failure to fully comply with 

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13 

Dkts. 179 and 180 within five days of an order on the instant motion—are warranted in view of 

AcePower’s egregious and vexatious conduct. Courts regularly sanction parties for refusing to 

provide discovery in violation of court orders.6 AcePower has now violated three Court orders 

requiring production,7

 and this Court has already put AcePower on notice that sanctions would be 

imposed if it failed to comply with court orders in the future. See Dkt. 100 at 8; see also KleinBecker USA, LLC v. Englert, 711 F.3d 1153, 1160 (10th Cir. 2013) (no abuse of discretion in 

entering default judgment as discovery sanction where “the district court found that warnings from 

the magistrate judge placed Mr. Englert on notice that he would be culpable for any future 

violations”); Williams v. Thompson, No. 94 C 5669, 1996 WL 124446, at *1, *3 (N.D. Ill. Mar. 

19, 1996) (where court warned that “[s]anctions will be imposed if discovery is not furnished to 

plaintiff” and “defendants have repeatedly flaunted court orders and discovery deadlines ... it is 

appropriate to enter judgment for Williams on the issue of liability”). Courts in this District have 

imposed a wide range of sanctions for failure to comply with discovery orders, including adverse 

inferences or prohibiting a party from relying on the discovery to support its case.8

 AcePower’s 

repeated refusal to comply with this Court’s orders demonstrate that no sanction less severe than 

striking AcePower’s denials and affirmative defenses will deter further egregious discovery 

 6

 See, e.g., This, LLC v. Jaccard Corp., No. 3:15-CV-1606(JBA), 2017 WL 547902, at *7 (D. Conn. Feb. 9, 

2017) (sanctioning party who submitted non-compliant interrogatory responses). 

7

 Life After Hate, Inc. v. Free Radicals Project, Inc., No. 18 C 6967, 2020 WL 5848429, at *5 (N.D. Ill. Oct. 

1, 2020) (granting “attorneys’ fees related to drafting, filing and arguing Plaintiff’s two motions to compel 

and drafting and filing its instant motion” and noting that “[i]n determining the appropriate sanction, we 

‘weigh not only the straw that finally broke the camel’s back, but all the straws that the recalcitrant party 

piled on over the course of the lawsuit.’”). 

8

 Ropak Corp. v. Plastican, Inc., No. 04 C 5422, 2006 WL 2385297, at *5 (N.D. Ill. Aug. 15, 2006) (limiting 

defendant’s reliance on documents for defense to those produced by the date previously ordered by the 

court, and ordering defendant to produce such documents); Zenith Elecs. Corp. v. WH-TV Broad. Corp., 

395 F.3d 416, 420 (7th Cir. 2005) (affirming ban on party from introducing evidence not disclosed in 

interrogatory response); This, LLC v. Jaccard Corp., 2017 WL 547902, at *7 (sanctioning party with jury 

instruction of mandatory rebuttable presumption for non-compliant interrogatory response). 

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misconduct by AcePower.9 Indeed, AcePower has repeatedly demonstrated its commitment to 

obstructing Inventus’s efforts to move this case forward in an attempt to rectify AcePower’s 

massive trade secret theft. Moreover, the requested sanction is less severe than sanctions awarded 

by other courts in similar circumstances, including entry of a default judgment for failing to engage 

in discovery in a timely fashion.10 Court orders have been insufficient to ensure AcePower’s 

compliance, and thus these sanctions are warranted.11

Moreover, AcePower has “unreasonably and vexatiously multiplied” these proceedings by 

filing frivolous motions with waived arguments to further delay discovery, in addition to failing to 

comply with multiple Court orders to provide discovery. In addition to its previously-filed motion 

for sanctions (Dkt. 111), Inventus has been forced to file multiple motions to compel (Dkts. 74, 

86, 103) and motions for status conference (Dkts. 61, 127, 166) to address AcePower’s manifest 

 9

 See, e.g., Tobias v. Davidson Plywood, 241 F.R.D. 590, 594 (E.D. Tex. 2007) (“A party is not allowed to 

lie in wait behind a log and then ambush the other party with a key piece of evidence after extensive 

discovery and expenses have been incurred,” and where a key document was disclosed late, “the court will 

not allow evidence ... to be presented in this case,” and “[b]ecause the existence of [that document] is an 

essential element of Defendant’s affirmative defense, the court will strike the defense.”) (emphasis added). 

10 Wanderer v. Johnston, 910 F.2d 652, 655 (9th Cir. 1990) (affirming district court’s entry of default where 

magistrate judge found that since “case was filed, defendants have done nothing, as far as discovery is 

concerned, in a timely fashion. The record discloses that defendants have consistently failed to respond, 

not only to discovery requests from plaintiffs but also to the orders of this court.”); id. at 653 (“The severe 

sanction of default was justified by the defendants’ repeated and inexcusable obstructions of every type of 

discovery attempted by the plaintiffs.”); Oklahoma Federated Gold & Numismatics, Inc. v. Blodgett, 24 

F.3d 136, 140 (10th Cir. 1994) (affirming “refus[al] to allow [defendant] to present any evidence in this 

case” where he “failed to comply with the discovery requests of plaintiff or to make himself available for 

deposition, despite a court order”); see also Drive Time Auto., Inc. v. Deguzman, No. 2:14-CV-00782-RFB, 

2015 WL 1288152, at *3 (D. Nev. Mar. 19, 2015) (ordering defendants to show cause why their answers 

should not be stricken and default judgment entered against them for serving untimely discovery responses). 

11 See S.E.C. v. Brewer, No. 10 C 6932, 2011 WL 3584800, at *5, *6 (N.D. Ill. Aug. 15, 2011) (where 

defendants consented to an order requiring defendants to respond to discovery requests on an expedited 

basis but did not comply, and plaintiff SEC filed a contempt motion, “the court gives the defendants 10 

days from the date of entry of this order to fully comply with the October 29 Order [to produce expedited 

discovery]. If they do not, a daily sanction of $1,000 per defendant shall be imposed until full compliance 

is attained. The court concludes that this amount is sufficient to coerce compliance with the October 29 

Order given the defendants’ financial situation. The court further notes that nonmonetary sanctions are also 

available in contempt cases.” While the sanctioned party alleged that they “did not see the discovery 

requests until ...they retained new counsel,” and also “point[ed] to the volume of information requested as 

an apparent reason for the delay,” the court disagreed on both points and found them in contempt.). 

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15 

discovery failures, yet AcePower still has not produced a single document. This behavior makes 

a mockery of the Court’s orders and the judicial system, and should be sanctioned. See 28 U.S.C. 

§ 1927. AcePower has indisputably “unreasonably and vexatiously multiplied” the proceedings 

in this case, further warranting sanctions under Seventh Circuit law. Lightspeed Media Corp. v. 

Smith, 830 F.3d 500 (7th Cir. 2016) (where an attorney misleads a party about its production 

obligations in order to delay production, that constitutes “vexatious and obstructive conduct” and 

sanctions are warranted); Castillo v. St. Paul Fire & Marine Ins. Co., 938 F.2d 776, 779 (7th Cir. 

1991) (continued conduct in the face of a court order was a “deliberate frustration of defendants’ 

discovery attempts,” which “unreasonably and vexatiously prolonged” proceedings “in violation 

of 28 U.S.C. § 1927” and “was also subject to sanctions under Rule 16 and Rule 37(b)”). 

Additionally, AcePower has continued to act vexatiously by insisting on more and more 

discovery (including depositions) from Inventus while simultaneously failing to comply with this 

Court’s discovery orders. Such an approach is not only inequitable, but it also needlessly drives 

up the cost and burden of this litigation while simultaneously depriving Inventus of any ability to 

move it forward given AcePower’s refusal to reasonably engage in discovery. Accordingly, as an 

additional sanction for AcePower’s vexatious failure to abide by the Court’s orders, Inventus 

requests that AcePower be barred from continuing to insist on receiving additional discovery from 

Inventus unless or until it fulfills its own discovery obligations. 

V. CONCLUSION 

Inventus respectfully requests that its Motion to Find Defendant in Contempt of the 

Court’s Discovery Rulings be granted.12

 12 Counsel for both parties met and conferred by telephone on November 9 to discuss AcePower’s deficient 

discovery responses and document production, and the present motion, but are at an impasse. 

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DATED: November 17, 2021 Respectfully submitted, 

/s/ Gianni Cutri 

Gianni Cutri 

Gianni.cutri@kirkland.com 

KIRKLAND & ELLIS LLP 

300 North LaSalle 

Chicago, IL 60654 

Telephone: (312) 862-2000 

Facsimile: (312) 862-2200 

Adam Alper (admitted pro hac vice) 

adam.alper@kirkland.com 

Natalie Flechsig (admitted pro hac vice) 

natalie.flechsig@kirkland.com 

KIRKLAND & ELLIS LLP 

555 California Street 

San Francisco, CA 94104 

Telephone: (415) 439-1400 

Facsimile: (415) 439-1500 

Michael De Vries (admitted pro hac vice) 

michael.devries@kirkland.com 

Kevin Bendix (admitted pro hac vice) 

kevin.bendix@kirkland.com 

Benjamin A. Herbert (admitted pro hac vice) 

benjamin.herbert@kirkland.com 

Yimeng Dou (admitted pro hac vice ) 

yimeng.dou@kirkland.com 

KIRKLAND & ELLIS LLP 

555 South Flower Street 

Los Angeles, CA 90071 

Telephone: (213) 680-8400 

Facsimile: (213) 680-8500 

Attorneys for Plaintiffs 

INVENTUS POWER, and ICC 

ELECTRONICS (DONGGUAN) LTD. 

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CERTIFICATE OF SERVICE 

I, Gianni Cutri, an attorney, hereby certify that on November 17, 2021, I caused a true and 

correct copy of the foregoing document to be served via the Court’s ECF system upon all counsel 

of record. 

DATED: November 17, 2021 /s/ Gianni Cutri

 Gianni Cutri 

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