IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

INVENTUS POWER, INC., and 

ICC ELECTRONICS (DONGGUAN) LTD., 

Plaintiff, 

v. 

SHENZHEN ACE BATTERY CO., LTD., 

Defendant. 

Case No. 1:20-cv-03375 

Judge Robert M. Dow, Jr. 

Magistrate Judge Jeffrey 

Cummings 

DEFENDANT’S MOTION FOR RECONSIDERATION UNDER FED. R. CIV. P. 60 

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TABLE OF CONTENTS 

Page 

I. Introduction ..........................................................................................................................1

II. Procedural History Regarding Source Code Discovery .......................................................2

III. Legal Standards ....................................................................................................................7

A. Motion for Reconsideration Under Rule 60(b) ........................................................7

B. Personal Jurisdiction Discovery ...............................................................................8

IV. Argument .............................................................................................................................8

A. Source Code is Outside the Scope of Limited Jurisdictional Discovery .................8

B. Ace’s Source Code Is Irrelevant To Personal Jurisdiction Over Ace ....................10

C. Producing Ace’s Source Code Is Unduly Burdensome And Not 

Proportional to the Needs of This Case .................................................................11

D. Ace’s Production Is Sufficient to Investigate Ace’s Contacts With This 

District....................................................................................................................12

V. Conclusion .........................................................................................................................13

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TABLE OF AUTHORITIES 

 Page(s) 

CASES 

Alexan v. Burke, 

62 F. Supp. 3d 784 (N.D. Ill. 2014) ...........................................................................................8 

Aon plc v. Infinite Equity, Inc., No. 19-cv-07504, 2020 WL 10459742 (N.D. Ill. Aug. 7, 2020) 

....................................................................................................................................................9 

Bank of Waunakee v. Rochester Cheese Sales Inc., 

906 F.2d 1185 (7th Cir. 1990) ...................................................................................................8 

Brandon v. Chi. Bd. of Educ., 

143 F.3d 293 (7th Cir. 1998) .....................................................................................................8 

Cent. States, Se. & Sw. Areas Pension Fund v. Reimer Express World Corp., 

230 F.3d 934 (7th Cir. 2000) .....................................................................................................8 

Inventus Power v. Shenzhen Ace Battery, 

No. 1:20-cv-07252 ...................................................................................................................13 

Marchionda v. Embassy Suites, Inc., 

122 F. Supp. 3d 208 (D.N.J. 2015) ............................................................................................9

Mart v. Berkshire Hathaway Inc., 

Case No. 3:10-CV-118, 2010 WL 11575057 (N.D. Ind. Aug. 2, 2010) ....................................9 

Motorola Sols., Inc. v. Hytera Commc’ns. Corp., 

365 F. Supp. 3d 916 (N.D. Ill. 2019) .................................................................................11, 12 

Philips Med. Sys. (Cleveland), Inc. v. Buan, 

No. 19 CV 2648, 2022 WL 604285 (N.D. Ill. Mar. 1, 2022) ..................................................11 

River Vill. W. LLC v. Peoples Gas Light and Coke Co., 

618 F. Supp. 2d 847 (N.D. Ill. 2008) .........................................................................................8

Snap-On, Inc. v. Robert Bosch LLC, 

No. 09-C-6914, 2012 WL 6106474 (N.D. Ill. Dec. 10, 2012) ...................................................8 

Spigot, Inc. v. Hoggatt, 

Case No. 2:18-cv-764, 2019 WL 4980455 (M.D. Fla. Oct. 8, 2019) ......................................10 

In re Testosterone Replacement Therapy Prod. Liab. Litig. Coordinated Pretrial Proc., 

136 F. Supp. 3d 968 (N.D. Ill. 2015) .........................................................................................8

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United States v. Swiss Am. Bank, Ltd., 

274 F.3d 610 (1st Cir. 2001) ......................................................................................................8 

Wang v. Wu, 

Case No. SA CV 16-84, 2016 WL 10957847 (C.D. Cal. Dec. 7, 2016) ...................................9 

RULES 

Fed. R. Civ. P. 60(b) ........................................................................................................................8 

OTHER AUTHORITIES 

David Moncure, The Conflict Between United States Discovery Rules and the Laws of China: 

The Risks Have Become Realities, 

16 Sedona Conf. J. 283, 283 (2015) .........................................................................................11 

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I. INTRODUCTION 

Defendant Shenzhen Ace Battery Co., Ltd. (“Ace”) respectfully requests the Court 

reconsider its previous orders compelling Ace to make all source code for eighty (80) different 

products available for Inventus Power, Inc. and ICC Electronics Ltd. (collectively, “Inventus”) to 

inspect as part of jurisdictional discovery. Dckt. #218; Dckt. #220 at 18. As the Court is aware, 

Ace recently obtained new attorneys in this matter. Dckt. #253, 254, 255. After reviewing the 

discovery motion practice in this case with fresh eyes, several issues became clear that counsel 

against the extreme remedy of source code production in jurisdictional discovery. 

First, the production of source code for inspection by Inventus’s counsel and experts is 

inconsistent with the procedural history of this case, which previously permitted such discovery 

only as part of Inventus’s preliminary injunction motion and even then was limited to a Court 

appointed neutral forensic examiner to inspect both parties’ source code. But that procedure was 

suspended when Judge Dow limited discovery to the sole issue of personal jurisdiction, noting the 

need to not put the “cart before the horse.” Second, source code is irrelevant to personal 

jurisdiction here. The only allegations in the Complaint tying source code to personal jurisdiction 

relate to allegedly misappropriated source code having been “developed in Illinois.” See Dckt. #1 

(“Compl.”) at ¶ 18. But that question relates to Inventus’s source code, not Ace’s. 

Third, the burden to Ace of producing its source code—the crown jewels of any business—

is not proportional to the needs of the case at this limited jurisdictional stage. To do so and comply 

with strict Chinese state secrets laws, Ace must review the code for all 80 products for Chinese 

state secrets and then obtain permission from the Chinese government to make it available for 

inspection. Finally, Inventus and the Court have a more than sufficient record to assess personal 

jurisdiction. Ace has produced over one million pages, including over 700 technical documents, 

which already goes beyond the limited issue of personal jurisdiction. And beyond Ace’s 

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substantial production, Inventus has sought and will receive documents from third parties it alleges 

to be related to Ace’s contact with the District. 

For these reasons as well as those articulated below, Ace respectfully requests the Court 

reconsider its previous orders compelling Ace to make its highly confidential source code available 

for Inventus to inspect as part of jurisdictional discovery. 

II. PROCEDURAL HISTORY REGARDING SOURCE CODE DISCOVERY 

Inventus alleges that this Court has personal jurisdiction over Ace “as a result of intentional 

contacts with this District” and “knowing misappropriation of trade secrets” that were allegedly 

developed in this District. Compl. at ¶ 15. Specifically, Inventus alleges that its purported trade 

secrets were “developed at and ultimately taken from Inventus’s Woodridge, Illinois 

headquarters,” including the “source code base for a key project relating to the development of 

Inventus’s medium-to-large sized battery packs.” Id. at ¶¶ 17-18. 

On July 13, 2020, in response to Inventus’s motion for a preliminary injunction―where 

Inventus had the burden to prove a likelihood of success on the merits―Judge Dow ordered 

expedited discovery on the merits of the trade secret misappropriation claims, stating, “inspections 

of devices used by the individuals in question while working for Defendant seems a highly logical 

place to focus attention in determining whether any of Plaintiffs’ trade secrets have been disclosed 

to and used by Defendant.” Dckt. #48 at 31. Following Judge Dow’s order, the parties agreed to 

use a neutral forensic examiner to examine “potentially relevant files, including documents, source 

code, data, and emails[.]” Dckt. #55 at 4.1

 Magistrate Judge Cummings selected an examiner and 

ordered that the examiner “shall process the forensic data and conduct a search for potentially 

relevant files, including documents, source code, data, emails or information using search criteria 

 

1

 All emphasis added unless otherwise noted. 

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to be negotiated between the parties in good faith.” Dckt. #99 at 1. The scope of the examination 

would have extended to both Ace’s and Inventus’s confidential information. Id. at 1-2. 

On August 17 and 24, 2020, Ace served its Motions to Dismiss for lack of personal 

jurisdiction and forum non conveniens, arguing that all “pertinent events [alleged by Inventus] 

took place in China,” all of the implicated employees are based in China, and all potential 

witnesses, including those of Plaintiff ICC, are based in China. Dckt. #65 at 1, Dckt. #70 at 1. 

Thereafter, on March 17, 2021, Judge Dow ordered a hearing to “encompass . . . evidentiary 

matters relating to the disputed facts concerning jurisdiction basically on the question of whether 

former ICC / current ACE employees misappropriated trade secrets that originated in 

Woodridge.” Dckt. #132. As a result of Judge Dow’s order, on March 18, 2021, Magistrate Judge 

Cummings stayed the ruling related to the preliminary-injunction-based merits discovery (Dckt. 

#48), including the examination of source code by the neutral forensic expert, pending resolution 

of the motions to dismiss. Dckt. #133. Magistrate Judge Cummings also ordered the parties to 

meet and confer on the scope of jurisdictional discovery, id, resulting in a March 24, 2021 Joint 

Status Report. Dckt. #143. In that Report, Inventus sought jurisdictional discovery on five topics: 

Topic 1: AcePower’s presence in the United States and in this District (or the 

presence of its United States-based alter ego, CBAK (and the relationship 

between those entities) (this Topic is covered by Inventus’s Requests for 

Production Nos. 5, 8 and 13, and Interrogatory Nos. 5 and 6). 

Topic 2: Sales and marketing of the accused products in the United States and in 

this District, either by AcePower or CBAK (this Topic is covered by Inventus’s 

Request for Production Nos. 12 and 13 and Interrogatory Nos. 5 and 6). 

Topic 3: AcePower’s recruitment of the AcePower Employees and AcePower’s 

involvement/knowledge of their theft (this Topic is covered by Inventus’s 

Request for Production Nos. 1-6 and 9-12 and Interrogatory Nos. 1 and 2). 

Topic 4: The AcePower Employee’s improper downloads of Inventus’s trade 

secrets and use of those trade secrets by AcePower, including the requested 

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forensic inspections relating to those issues (this Topic is covered by Inventus’s 

Request for Production Nos. 1, 2, 6, 7, and 9-12 and Interrogatory Nos. 3-10). 

Topic 5: AcePower’s communications with the Chinese government, specifically 

with respect to the Chinese government’s alleged issuance of letters regarding 

AcePower’s ability to proceed with discovery in this case (this Topic is covered 

by Inventus’s Interrogatory Nos. 4 and 10). 

Dckt. 143 at 2. Notably, only Topic 4 refers to “the requested forensic inspections.” 

On April 8, 2021, Judge Dow concluded that “holding an evidentiary hearing prior to the 

completion of jurisdictional discovery would put the proverbial cart before the horse,” and directed 

the parties to undertake jurisdictional discovery under the supervision of Magistrate Judge 

Cummings. Dckt. #146 at 1. Judge Dow did not address the scope of permissible jurisdictional 

document discovery, but noted “‘[f]oreign nationals usually should not be subjected to extensive 

discovery in order to determine whether personal jurisdiction over them exists.’” Id. at 2 (citation 

omitted). Nothing in Judge Dow’s order suggested that the scope of jurisdictional discovery 

should extend to Ace’s source code, particularly after such discovery was expressly halted. 

Following the April 8 order, Inventus filed a Reply in Support of its Motion to Compel 

Depositions regarding Jurisdictional Discovery. Dckt. #152. Therein, Inventus “narrowed the 

scope of the jurisdictional discovery” they sought to only Topics 1-3 above. Id. at 4. Inventus 

explicitly dropped its Topic 4 related to forensic inspections, which was the previous basis for the 

inspection of source code. Id. (“Inventus no longer seeks jurisdictional discovery related to Topic 

Nos. 4 and 5.”). Inventus did not argue that source code would be responsive to any of the 

remaining topics. Id. at 4-6. 

On September 24, 2021, Magistrate Judge Cummings clarified the scope of jurisdictional 

discovery and denied an older merits-based motion to compel forensic examination (Dckt. #103), 

reasoning “forensic examination of [Ace’s] computers does not fall within [the] limited scope of 

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jurisdictional discovery,” and noting Inventus “ha[s] removed the forensic inspections from their 

recently narrowed proposed topics for jurisdictional discovery, thus conceding those inspections 

are outside the current phase of discovery.” Dckt. #177. Less than a week later, Magistrate Judge 

Cummings further narrowed jurisdictional discovery to limited interrogatories and requests for 

production. Magistrate Judge Cummings’s order did not suggest the production of source code 

(or even technical documents) by either party, and reiterated that the scope of jurisdictional 

discovery is limited to narrowed Topics 1-3. Dckt. #180 at 6 (addressing Dckt. #74-3 at 10-11). 

However, during a January 11, 2022 status hearing, Inventus suggested, for the first time, 

that they might need source code to determine whether Ace was “selling or planning to sell or 

marketing in the United States” any products incorporating Inventus’s alleged trade secrets for the 

purposes of jurisdictional discovery. Dckt. #207 at 8-9. Inventus argued that Ace’s “sales of the 

products accused of misappropriation or at least embodying the trade secrets in the United States 

[] is a key aspect of jurisdiction for us and is obviously a focal point of jurisdictional discovery.” 

Id. at 8. Inventus further argued that “there needs to be accountability in terms of what technical 

documentation they produce. They need to give us their internal specifications. They need to give 

us the development documents. It’s the only way – and possibly even access to code. It’s the only 

way that we’ll be able to actually discern, you know . . . which [Ace products] are the ones that we 

should be focusing on for jurisdiction.” Id. at 13. Tellingly, however, Inventus did not explain at 

all why technical information of this nature, in particular Ace’s proprietary source code, is relevant 

to showing contacts with this District. See id. at 8-9, 13. Inventus likewise did not explain why it 

would now be appropriate for Inventus, rather than a neutral forensic examiner, to have access to 

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Ace’s source code.2

 Magistrate Judge Cummings ordered Ace to produce a list of their products 

to Inventus, explaining: “[W]hat we’re doing here is we’re working with a process that would 

enable [Inventus] to select the products for which they want you, your client, to produce technical 

information, namely, the internal . . . specification from the development documents[.]” Id. at 14. 

On February 4, 2022, Inventus formally requested that “the Court order, as an initial step, 

that Ace[] produce current technical documentation on all products currently listed in Ace[]’s 

product list, including technical product specifications, schematics, and code, so that Inventus can 

distinguish between the products and adequately analyze them.” Dckt. #208 at 2. Inventus did 

not articulate why it specifically needed source code, in addition to technical product specifications 

and schematics, to “distinguish between [Ace’s] products and adequately analyze them.” See id. 

Following a March 25, 2022 status conference, Magistrate Judge Cummings ordered the 

“production of technical documents (technical product specification, schematics, and source 

code),” and ordered Ace to produce “source code (on a machine available for review in New York) 

for the 80 products requested by Inventus.” Dckt. #218. However, during the conference, 

Magistrate Judge Cummings stated “[w]hether there is jurisdiction over here in the United States 

concerns things such as Ace’s marketing efforts, its contacts here, participation in trade shows, 

you know, its activities, which would subject it to the jurisdiction of this court. That’s really . . . 

the limited issue in the jurisdictional discovery, and that’s all we’re dealing with right now[.]” 

Dckt. #220 at 67-68. Indeed, when addressing Ace’s request for documents relating Ace’s 

purported use of Inventus’s trade secrets, Magistrate Judge Cummings stated: “That goes to the 

merits. It goes to the merits of the case, and we’re not – and we’re not there yet.” Id. at 76. 

 

2

 To the extent the Court maintains its order that Ace produce source code, Ace would request that 

Magistrate Judge Cummings again appoint a neutral forensic examiner to review it. 

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Pursuant to Magistrate Judge Cummings’s order, Ace prepared to make its source code 

available for inspection, and downloaded its source code to Ace’s computers in New York. Dckt. 

#227 at 3. However, due to a formal investigation and warning by the Chinese Ministry of State 

Security on April 28, 2022, Ace was prohibited from releasing the password to its encrypted 

computer. Dckt. #230. Ace was warned that it would face extreme sanctions and criminal 

penalties if it transmitted any data that was not first examined and released by the government. Id. 

Accordingly, Ace held off on production of its source code. 

Inventus thereafter filed a Motion for Sanctions, and, in the course of that briefing, 

attempted to explain the purported relevance of source code to jurisdictional discovery, claiming 

that it needs Ace’s source code to “reveal how Ace[] is using Inventus’s trade secrets in its own 

products offered to U.S. customers.” Dckt. #237 at 5. Inventus seemingly takes the position that 

it must have access to discovery that would prove the merits of its trade secret claim in order to 

establish personal jurisdiction to pursue that claim, conflating liability discovery of the preliminary 

injunction phase with the current jurisdictional discovery: “Judge Dow found that Inventus’s 

evidence of misappropriation, which included a forensic analysis showing downloading of specific 

source code files, gave it ‘a sufficient likelihood of success in establishing misappropriation.’ ... 

This evidence is particularly relevant: to oppose personal jurisdiction, Ace[] contends that its 

products sold in the U.S. do not incorporate Inventus trade secrets.” Id. (citations omitted). 

III. LEGAL STANDARDS 

A. Motion for Reconsideration Under Rule 60(b) 

A court will grant a motion for reconsideration when: “(1) the court has patently 

misunderstood a party; (2) the court has made a decision outside the adversarial issues presented 

to the court by the parties; (3) the court has made an error not of reasoning but of apprehension; 

(4) there has been a controlling or significant change in the law since the submission of the issue 

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to the court; or (5) there has been a controlling or significant change in the facts since the 

submission of the issue to the court.” River Vill. W. LLC v. Peoples Gas Light and Coke Co., 618 

F. Supp. 2d 847, 850 (N.D. Ill. 2008) (citing Bank of Waunakee v. Rochester Cheese Sales Inc., 

906 F.2d 1185, 1191 (7th Cir. 1990)); Fed. R. Civ. P. 60(b). Under Rule 60(b), a court may grant 

relief due to “mistake, inadvertence, surprise, or excusable neglect” and “encompasses mistakes 

by judicial officers as well as litigants.” Alexan v. Burke, 62 F. Supp. 3d 784, 788 (N.D. Ill. 2014) 

(citing Brandon v. Chi. Bd. of Educ., 143 F.3d 293, 295 (7th Cir. 1998)). 

B. Personal Jurisdiction Discovery 

As this Court has noted, “[i]n ordering jurisdictional discovery, the court is mindful that 

‘[f]oreign nationals usually should not be subjected to extensive discovery in order to determine 

whether personal jurisdiction over them exists.’” In re Testosterone Replacement Therapy Prod. 

Liab. Litig. Coordinated Pretrial Proc., 136 F. Supp. 3d 968, 976 (N.D. Ill. 2015) (quoting Cent. 

States, Se. & Sw. Areas Pension Fund v. Reimer Express World Corp., 230 F.3d 934, 945 (7th Cir. 

2000)); Dckt. #146. “A diligent plaintiff who sues an out-of-state corporation and who makes out 

a colorable case for the existence of in personam jurisdiction may . . . be entitled to a modicum of 

jurisdictional discovery if the corporation interposes a jurisdictional defense.” United States v. 

Swiss Am. Bank, Ltd., 274 F.3d 610, 625 (1st Cir. 2001) (citation and emphasis omitted). A 

plaintiff’s jurisdictional discovery requests must be weighed against the burden on a foreign party. 

Snap-On, Inc. v. Robert Bosch LLC, No. 09-C-6914, 2012 WL 6106474, at *5 (N.D. Ill. Dec. 10, 

2012). 

IV. ARGUMENT 

A. Source Code is Outside the Scope of Limited Jurisdictional Discovery 

Source code discovery is outside the scope of the limited personal jurisdiction discovery 

contemplated by the Court. Source code discovery was originally injected into the case during 

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expedited liability discovery in connection with Inventus’s preliminary injunction motion, and 

even at that point it was limited to inspection by a neutral forensic examiner. But that process was 

suspended when Judge Dow limited discovery to the sole issue of personal jurisdiction, noting the 

need to not put the “cart before the horse.” Dckt. #146 at 1. Thereafter Inventus removed forensic 

inspections from their narrowed topics for jurisdictional discovery and this Court reasoned 

“forensic examination of [Ace’s] computers does not fall within [the] limited scope of 

jurisdictional discovery.” Dckt. #177 (citing Dckt. #152 at 6). Despite this record, Inventus has 

sought to expand the scope of jurisdictional discovery to include inspection of Ace’s source code 

by its own attorneys and experts. 

This is impermissible merits discovery that is outside the scope of Judge Dow’s order 

limiting discovery to the sole issue of personal jurisdiction. Requests like those of Inventus—to 

exceed the limited scope of jurisdictional discovery, and skip straight to liability—are routinely 

denied. See, e.g., Aon plc v. Infinite Equity, Inc., No. 19-cv-07504, 2020 WL 10459742, at *2 

(N.D. Ill. Aug. 7, 2020) (“Aon impermissibly blurs the line between discovery for the entire case 

and expedited discovery for the limited purpose of the preliminary injunction evidentiary 

hearing”); Marchionda v. Embassy Suites, Inc., 122 F. Supp. 3d 208, 211 (D.N.J. 2015) 

(“Jurisdictional discovery should not, however, serve as a ‘fishing expedition’ into the underlying 

merits, all while ‘under the guise of jurisdictional discovery.’”) (citation omitted); Mart v. 

Berkshire Hathaway Inc., Case No. 3:10-CV-118, 2010 WL 11575057, at *6 (N.D. Ind. Aug. 2, 

2010) (“[T]his Court considers the majority of Mart’s document requests to be not sufficiently 

targeted to issues of jurisdictional, but instead appear more akin to merits-based discovery. As 

such ... this Court considers the requests to be inappropriate.”); Wang v. Wu, Case No. SA CV 16-

84, 2016 WL 10957847, at *1 (C.D. Cal. Dec. 7, 2016) (denying discovery that went to the merits 

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of plaintiff’s claims); Spigot, Inc. v. Hoggatt, Case No. 2:18-cv-764, 2019 WL 4980455, at *4-5 

(M.D. Fla. Oct. 8, 2019) (refusing to require production of “highly sensitive information during 

the jurisdictional-discovery phase” because it went to “merits of [the] case”). Likewise here, 

Inventus should not be permitted to dig through Ace’s highly confidential source code and 

compare it to Inventus’s own code to establish jurisdiction—the exact exercise that Inventus would 

later engage in in an attempt to prove liability if the Court finds that it has personal jurisdiction 

over Ace. This is precisely the “cart before the horse” Judge Dow expressly cautioned against. 

Dckt. #146 at 1. 

B. Ace’s Source Code Is Irrelevant To Personal Jurisdiction Over Ace 

Inventus has yet to offer any compelling reason why source code discovery is relevant to 

Ace’s contacts with this District. Indeed, the only allegation in the Complaint tying source code 

to personal jurisdiction alleges that Inventus’s source code was “developed in Illinois.” Compl. at 

¶ 18. However, information relevant to that allegation is uniquely in Inventus’s possession (e.g., 

where its code was developed and electronically stored, and who developed it).3

 This information 

could not be found in Ace’s source code, and Inventus does not (and cannot) argue otherwise. 

Turning to Ace’s source code, Inventus has not provided any explanation for why that code 

would demonstrate how Ace has availed itself of the laws of Illinois such that personal jurisdiction 

is proper.4

 By its own admission, Inventus has already identified the 80 products that are “most 

 

3

 Ace presumes that Inventus would vehemently oppose jurisdictional discovery of its own code. 

But if Inventus is permitted to review Ace’s code and compare that code to its own, Ace requests 

the opportunity to perform the same analysis of Inventus’s code in order to respond to any position 

from Inventus regarding supposed overlap in the code that somehow confers personal jurisdiction 

on Ace. 

4

 Even Inventus admits that the relevance of the code is not specific to Illinois: “all source code 

[is] essential for Inventus to determine the extent of [the alleged] use and incorporation of its trade 

secrets into Ace[]’s competing products in the U.S. and elsewhere.” Dckt at 237 at 1. 

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relevant” to its allegations, so additional source code discovery is not needed for that exercise. 

And since source code does not demonstrate where a product is sold, marketed, or manufactured, 

it is irrelevant to determining what intentional contacts, if any, Ace has with this District. 

C. Producing Ace’s Source Code Is Unduly Burdensome And Not Proportional 

to the Needs of This Case 

“Under Rule 26, the discovery sought must not only be relevant, but it must be 

‘proportional’ to the needs of the case, ‘considering the importance of the issues at stake in the 

action, the amount in controversy, the parties’ relative access to relevant information, the parties’ 

resources, the importance of the discovery in resolving the issues, and whether the burden or 

expense of the proposed discovery outweighs its likely benefit.’” Motorola Sols., Inc. v. Hytera 

Commc’ns. Corp., 365 F. Supp. 3d 916, 924 (N.D. Ill. 2019) (citation omitted). Here, the burden 

of Ace producing highly confidential source code located in China for 80 products is not 

proportional to the needs of the case at this limited jurisdictional stage, especially considering the 

serious implications of Chinese state secret laws. In light of the directive from the Chinese 

Ministry of State Security, Ace would have to spend significant resources conducting a state 

secrets review in conjunction with relevant Chinese state agencies before allowing inspection or 

face significant criminal exposure. See David Moncure, The Conflict Between United States 

Discovery Rules and the Laws of China: The Risks Have Become Realities, 16 Sedona Conf. J. 

283, 283 (2015) (“Documents that fit within the broad definition of ‘state secrets’ under PRC law 

may not be produced without risk of substantial criminal penalties.”); see also Philips Med. Sys. 

(Cleveland), Inc. v. Buan, No. 19 CV 2648, 2022 WL 604285, at *2 (N.D. Ill. Mar. 1, 2022) (“[I]n 

recognition of the potential liability a party fulfilling its discovery obligations could face for 

violating foreign law, courts ‘should exercise special vigilance to protect foreign litigants from the 

danger that unnecessary, or unduly burdensome, discovery may place them in a disadvantageous 

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position.’”) (citation omitted). Indeed, courts deny requests for production of source code located 

in China even during merits-based discovery if a party cannot demonstrate that such production is 

proportional to the needs of the case. See, e.g., Motorola Solutions, 365 F. Supp. 3d at 930 

(“Motorola has not even made a convincing case that what it seeks is relevant. But even if it had, 

the proposed forensic examination of computers in China is far out of proportion with the needs 

of this case.”). 

Beyond the burden of Chinese states secrets laws, Inventus would have to hire an expert to 

review Ace’s source code and compare it to Inventus’ own source code. Ace in turn would have 

to hire an expert to rebut Inventus’ expert’s opinions. This is not a simple or quick process and 

further counsels against the production of source code at this limited jurisdictional stage. See Aon 

plc, 2020 WL 10459742, at *2 (“Defendants correctly point out that the true burden would not 

come from the production of the additional source code, but from the significant time and expense 

needed to review and analyze that code.”). 

D. Ace’s Production Is Sufficient to Investigate Ace’s Contacts With This District 

By June 7, 2022, Ace had produced 182,338 documents, totaling over one million pages, 

during limited jurisdictional discovery.5

 Concurrent with its change in counsel (Dckt. #250), Ace 

remedied the technical issues with its prior productions and provided a corrected production, with 

extracted text files and updated document identifiers (i.e., Bates-numbers), as ordered by 

Magistrate Judge Cummings. Dckt. #232. To the extent Inventus has identified any subsequent 

problems with Ace’s document production, Ace’s new counsel has worked diligently to address 

those issues in a timely manner. Accordingly, there has been a significant change in the facts since 

the Magistrate Judge Cummings’s order directing production of Ace’s source code. 

 

5

 In contrast, Inventus has only produced 278 documents, totaling 2,237 pages. 

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Furthermore, on July 18, 2022, Ace produced another 7,634 documents in response to 

additional search terms requested by Inventus, which include documents from both the former 

Inventus employees and Ace sales associates whom Inventus contends have contacts with this 

District. These documents underwent a Chinese state secrets review and could therefore be 

lawfully produced in the United States as part of this litigation. As of today, Ace has produced a 

total of 189,975 documents, and 1,213,500 pages, in jurisdictional discovery. 

Ace’s production of documents to date, which includes more than 700 technical 

documents, including product specifications, schematics, and development and testing documents, 

is more than sufficient to allow Inventus to investigate alleged contacts with this District. Indeed, 

the production of such detailed technical documents arguably is already outside the scope of 

personal jurisdiction discovery contemplated by the Court. See Dckt. #132, 133. What’s more, 

Inventus has also sought and will be receiving jurisdictional discovery from third parties. Inventus 

served third party CBAK Energy Technology, Inc. with a subpoena requesting, among many other 

things, all documents referring or relating to any communications or relationship between Ace and 

CBAK. Inventus Power v. Shenzhen Ace Battery, No. 1:20-cv-07252, Dckt. #2-1, at 4-7 (N.D. Ill. 

Nov. 5, 2020). CBAK has since agreed to produce responsive documents requested by the 

subpoena that are relevant to the personal jurisdiction dispute. Id., Dckt. #74. Ace’s production 

of documents to date combined with CBAK’s forthcoming production is more than sufficient to 

assess personal jurisdiction. 

V. CONCLUSION 

For the reasons set forth above, Ace respectfully requests reconsideration of Magistrate 

Judge Cummings’ orders to produce source code in jurisdictional discovery. 

Date: July 20, 2022 Respectfully submitted 

Case: 1:20-cv-03375 Document #: 261 Filed: 07/20/22 Page 17 of 18 PageID #:6418
14 

/s/ Matthew W. Walch 

Matthew W. Walch 

Sean M. Berkowitz (ARDC No. 6209701) 

sean.berkowitz@lw.com 

Matthew W. Walch (ARDC No. 6226308) 

matthew.walch@lw.com 

LATHAM & WATKINS LLP 

330 North Wabash Avenue, Suite 2800 

Chicago, Illinois 60611 

Telephone: (312) 876-7700 

Facsimile: (312) 993-9767 

Kevin C. Wheeler (pro hac vice) 

kevin.wheeler@lw.com 

LATHAM & WATKINS LLP 

555 Eleventh Street, NW, Suite 1000 

Washington, D.C. 20004 

Telephone: (202) 637-2200 

Facsimile: (202) 637-2201 

Rachel R. Blitzer (pro hac vice pending) 

rachel.blitzer@lw.com 

Stephen D. O’Donohue (pro hac vice) 

stephen.odonohue@lw.com 

LATHAM & WATKINS LLP 

1271 Avenue of the Americas 

New York, NY 10020 

Telephone: (212) 906-1274 

Facsimile: (212) 751-4864 

Attorneys for Defendant 

Case: 1:20-cv-03375 Document #: 261 Filed: 07/20/22 Page 18 of 18 PageID #:6419