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-03357 

Judge Honorable Robert M. Dow, Jr. 

Magistrate Judge Honorable Jeffrey Cummings 

DEFENDANT SHENZHEN ACE BATTERY’S 

MOTION TO COMPEL PRODUCTION OF DOCUMENTS 

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Table of Contents 

Introduction ....................................................................................................................................... 1

Procedural Background ..................................................................................................................... 1

Legal Standard .................................................................................................................................. 2

Arguments ......................................................................................................................................... 2

I. The Following Topics Fall Within the Jurisdictional Discovery ......................................... 3

Topic A. Alleged unauthorized download of documents originated from IL by ACE 

Employees ............................................................................................................. 3

1. Whether the alleged mass download actually occurred ..................................... 3

2. Whether the alleged mass download was authorized system back-up .............. 4

3. Whether the alleged misappropriated documents originated from IL ............... 4

Topic B. The connection between the alleged download and ACE’s forum -related 

activities ................................................................................................................ 5

Topic C. ACE’s alleged use of Plaintiffs’ trade secrets ....................................................... 6

II. ACE’s Requests for Production All Fall Within The Scope Of The Jurisdictional 

Discovery And Are Narrowly Tailored To The Jurisdictional Discovery ........................... 6

Conclusion ........................................................................................................................................ 7

 

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INTRODUCTION 

ACE served its Requests for Production (“RFP”) to Plaintiffs on December 11, 2021 

(attached as Exhibit 1). Plaintiffs initially objected ACE’s Requests on January 3, 2022 (attached as 

Exhibit 2), and further objected ACE’s Requests on January 31, 2022 after two meet and confer 

sessions (attached as Exhibit 3). 

To date, Plaintiffs have not produced any documents in response to any of ACE’s Requests.1

It appears that Plaintiffs were not informed about ACE’s Requests for Production and have not been 

engaged in any document production, because neither Plaintiffs’ responses were verified by 

Plaintiffs. (See Ex. 2 and Ex. 3). 

The main issue here is that “Inventus disagrees that [ACE’s] Request falls within the scope of 

jurisdictional discovery.” (Ex. 3, p.17, also asserted in response to RFP No. 1-15). Plaintiffs’ empty 

promise to produce “documents sufficient to support Inventus’s allegation” does not address the RFP 

because ACE is seeking documents that would demonstrate this Court’s lack of personal jurisdiction 

over ACE, likely including documents that undermine Inventus’ allegations, the opposite of what 

Plaintiffs promised to produce. 

Therefore, ACE respectfully requests that this Court review ACE’s Requests and order 

Plaintiffs to produce relevant documents that are within the scope of the jurisdictional discovery. 

PROCEDURAL BACKGROUND 

On December 11, 2021, ACE served its Requests for Production (“RFP”) to Plaintiffs. 

The Parties have agreed to a 21-day response period for all written discovery. [Dkt. 55, p.2]. 

On January 3, 2022, Plaintiffs served their initially objected ACE’s Requests. 

On January 5, 2022, ACE served Plaintiffs a deficiency letter, explaining why Plaintiffs’ 

boilerplate objections of “overly broad,” “premature,” “confidentiality,” are not proper. (Exhibit 4). 

1

 Plaintiffs produced several files, around 2,200 pages, in connection with Plaintiffs’ response to ACE’s 

interrogatories, which is currently under review. 

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On January 31, 2022, after two meet and confer sessions, Plaintiffs further objected ACE’s 

Requests, asserting that “Inventus disagrees that [ACE’s] Request falls within the scope of 

jurisdictional discovery” to all of ACE’s RFP No. 1-15, except No. 16. See Ex. 3. 

LEGAL STANDARD 

 A party may seek an order to compel discovery when the opposing party fails to respond to 

discovery requests. Fed. R. Civ. P. 37(a). 

“During discovery, the parties are supposed to disclose all relevant information, so that the 

resolution of disputed issues may be based on a full and accurate understanding of the facts and, 

ultimately, produce a fair and just result.” Ammons-Lewis v. Metro. Water Reclamation Dist. of 

Greater Chicago, No. 11 C 6920, 2012 WL 5363425, at *7 (N.D. Ill. Oct. 9, 2012), report and 

recommendation adopted, No. 11 C 6920, 2012 WL 5356041 (N.D. Ill. Oct. 30, 2012), aff’d, 543 F. 

App’x 591 (7th Cir. 2013). 

ARGUMENTS 

Specific jurisdiction is case-specific, the claim must be linked to the activities or contacts 

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

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

of jurisdiction discovery extends to the “activities or contacts with the forum” that support the claim. 

“The Court has broad discretion in delineating the proper scope of jurisdictional discovery.” 

Zinkia Entm't v. P'ships & Unincorporated, No. 21 C 916, 2021 U.S. Dist. LEXIS 220494, at *3 

(N.D. Ill. June 1, 2021) (citing Gilman Opco LLC v. Lanman Oil Co., Inc., 2014 WL 1284499, at *7 

(N.D. Ill. Mar. 28, 2014). 

This Court has previously defined the scope of the jurisdictional discovery partially based on 

Judge Dow’s jurisdictional analysis in the Temporary Restraining Order. [Dkt. 180, Part II.A. p.5] 

(“See 48, at 7-12 (explaining why Plaintiff has demonstrated ‘at least a reasonable likelihood of both 

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establishing personal jurisdiction and defeating a motion to dismiss for forum non conveniens’”)). 

Here, Plaintiffs’ claims are based on specific facts that ACE Employees (former ICC employees), 

under ACE’s direction, mass downloaded Plaintiffs’ trade secrets originated from Illinois, while 

working at ICC. [See Dkt. 1, ¶¶ 4-6, 8, 10, 34, 36-37, 52; see also Dkt. 143, p. 5, Joint Status Report -

Inventus’s Position “AcePower Employees—at AcePower’s direction—improperly downloaded 

thousands of documents and source code files they obtained from (and were originated in) this 

District, and have used those trade secrets while working at AcePower. See, e.g., Dkt. 1 ¶¶ 4-6, 8”]. 

The Court has found the above alleged facts to be relevant to the jurisdiction analysis. [See 

Dkt. 48, Part B.1.a. Analysis - Jurisdiction and Venue, p. 10, “ACE’s alleged misappropriation was 

allegedly knowingly directed to materials that originated from and are located at Inventus in this 

District. Plaintiff presents evidence (including a forensic analysis and declarations) that ACE 

employees, while working for Plaintiff and for the purpose of aiding Defendant, downloaded en 

masse volumes of documents that originated at Inventus’s facilities in this District”]. 

Therefore, files and documents relevant to the specific facts alleged by Plaintiffs in support 

of their jurisdiction argument are well within the jurisdictional discovery. 

I. The Following Topics Fall Within the Jurisdictional Discovery 

Topic A. Alleged unauthorized download of documents originated from IL by ACE Employees 

This topic includes three subtopics which are discussed in detail below. 

1. Whether the alleged mass download actually occurred 

There would be no personal jurisdiction over ACE if the underlying alleged unauthorized 

mass download had never occurred. 

Several of the accused ACE Employees provided affidavits, stating that they “did not 

misappropriate any of Plaintiffs’ trade secrets.” [See Dkt. 38-3, Dkt. 129-1]. 

Therefore, documents and communications that are relevant to the alleged mass download by 

ACE Employees fall well within the scope of the jurisdictional discovery. 

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2. Whether the alleged mass download was the result of authorized system maintenance 

and back-up 

Upon information and believe, Plaintiffs misrepresented the record of ICC’s server system 

maintenance and back-up as the record of the alleged mass download. 

Declared by ACE Employee Jun (Yancy) Yang, when he worked at ICC, he was responsible 

for daily maintenance of the SVN (subversion) Server and backing-up the SVN server periodically. 

[Dkt. 38-2, ¶¶3-4]. The back-up was stored on four portable hard disks. See Id. Yang’s supervisor at 

ICC, Plaintiffs’ witness Wenhua (Ewin) Li, also confirmed that the four portable hard disks were 

used for authorized back-up of the servers. See Depo of LI, 36:1-38:3, attached as Exhibit 5. 

Furthermore, under ICC’s Capability Maturity Model Integration (CMMI) program, some 

software and source codes need to be backed-up on a daily basis. [Dkt. 38-2, ¶6]. The documents 

needed for back-up and the frequency of the back-up are all detailed in ICC’s CMMI program. Id. 

While the records of the SVN Server may appear to be Yang downloading documents from 

the server to an external hard drive, it was Yang conducting system maintenance and back-up. 

Therefore, documents and communications regarding the record of SVN Servers 

maintenance and backing-up, the requirements for system back-up under the CMMI program, and 

ACE Employees’ authorization to access the servers and confidential information, all fall within the 

scope of jurisdictional discovery. 

Consequently, relevant documents and communications must be produced. Custodian who 

are in possession of the documents and communications should also be identified for content search. 

3. Whether the alleged misappropriated documents originated from IL 

 

The alleged mass download occurred in Guangzhou, China, when the ACE Employees 

(former ICC employees) were working at ICC. [Dkt. 1, ¶¶35-41]. The alleged unauthorized mass 

download did not occur in Illinois. 

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To support the connection between the alleged mass download and this forum, Plaintiffs 

specifically alleged that “Inventus U.S. and Guangzhou teams share a network drive that allows the 

Chinese team ... to request and access highly confidential materials originating in this District,” and 

“a large number of documents accessed and downloaded by the AcePower Employees are clearly 

marked as originated from ‘Woodridge, IL’—in this District.” [Dkt. 1, ¶¶17, 19]. 

Whether the alleged misappropriated documents originated from Illinois affects the personal 

jurisdiction and the alleged contacts with the forum. For example. if the alleged misappropriated 

documents are not originated from Illinois, e.g. originated locally in China or originated from 

Germany, it would not establish sufficient contact between Defendant and the forum state. 

 Therefore, to the extent that Plaintiffs allege that the mass download did occur and was 

unauthorized, and the misappropriated documents originated from Illinois, all relevant documents 

and communications should be produced, so their origin can be examined. 

Topic B. The connection between the alleged download and ACE’s forum -related activities 

 

The alleged download was acted by individual ACE Employees while they worked at ICC. 

[See Dkt. 1, ¶¶ 4-6, 8, 10, 34, 36-37, 52]. The alleged action, even taken as true, may only constitute 

forum-related activities of these individual employees. 

To impute the alleged download to ACE, Plaintiffs specifically alleged that ACE “target 

Inventus from inside, ... by recruiting high-ranking Inventus personnel, ... who, at AcePower’s 

direction, downloaded over 100,000 confidential technical documents and source code.” Id. at 4. 

Without these specific allegations, the alleged download does not establish any contacts between 

ACE and the forum state. 

Therefore, documents and communications relevant to Plaintiffs’ allegation that ACE 

actively targeted and recruited “Inventus from inside,” and directed these employees to mass 

download Plaintiffs’ trade secrets fall within the scope of jurisdictional discovery. 

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Topic C. ACE’s alleged use of Plaintiffs’ trade secrets 

 

To support the Jurisdiction section of their Complaint, Plaintiffs further alleged that ACE 

1) used Plaintiffs’ trade secrets to improve and develop competitive products [Dkt. 1, ¶¶ 19, 34, 37]; 

2) used Plaintiffs’ trade secrets in ACE’s Chinese patents application. [Id. at ¶37]; and 3) approached 

Plaintiffs’ U.S. based customers [Id. at ¶¶20, 47]. 

To the extent that Plaintiffs rely on these specific allegations to establish this Court’s 

personal jurisdiction over ACE, documents and communications relevant to their specific allegations 

“ACE used of Plaintiffs’ trade secrets” fall within the scope of jurisdictional discovery. 

II. ACE’s Requests for Production All Fall Within The Scope Of The Jurisdictional 

Discovery And Are Narrowly Tailored To The Jurisdictional Discovery 

ACE’s RFP are narrowly tailored to the above-mentioned topics. The table below shows how 

each RFP is relevant to the jurisdictional discovery. 

Topic A Alleged unauthorized download of documents originated from Illinois 

by ACE Employees

1. Whether the alleged mass download actually occurred 

2. Whether the alleged mass download was the result system 

maintenance and back-up 

3. Whether the alleged misappropriated documents originated from IL 

1, 3, 4, 5 

7, 8 

12, 13, 14, 15

Topic B The alleged download and ACE’s forum -related activities 6, 9, 10, 

Topic C ACE’s alleged use of Plaintiffs’ trade secrets 2, 11, 16 

RFP No. 1 All Documents, Communications and Things that Plaintiffs used, relied on, or considered 

in drafting the Complaint. (ACE has agreed to narrow this Request to jurisdictional related documents 

and communications only. See email communication attached as Exhibit 6). 

RFP No. 2 All Documents, Communications and Things supporting Plaintiffs’ allegation that ACE’s 

Chinese Patents use, copy, incorporate, or disclose Plaintiffs’ confidential information or trade secrets. 

RFP No. 3 All Documents, Communications and Things supporting Plaintiffs’ allegation that ACE 

directly misappropriated Plaintiffs’ confidential information or trade secrets. 

RFP No. 4 All Documents, Communications and Things supporting Plaintiffs’ allegation that ACE 

indirectly misappropriated Plaintiffs’ confidential information or trade secrets. 

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RFP No. 5 All Documents, Communications and Things supporting Plaintiffs’ allegation that each 

and every of ACE Employees misappropriated Plaintiffs’ confidential information or trade secrets. 

RFP No. 6 All Documents, Communications and Things supporting Plaintiffs’ allegation that the 

ACE Employees’ alleged unauthorized mass downloading or misappropriation of Plaintiffs’ 

confidential information or trade secrets was under ACE’s direction or instruction. 

RFP No. 7 All Documents, Communications and Things that are relevant to Plaintiffs’ management, 

storage, retention, transfer and destruction of their confidential information or trade secrets. 

RFP No. 8 All Documents, Communications and Things that are relevant to Plaintiffs’ 

implementation of procedures to protect Plaintiffs’ confidential information and trade secrets. 

RFP No. 9 All Documents, Communications and Things supporting Plaintiffs’ allegation that ACE 

targeted and recruited employees from Plaintiffs. 

RFP No. 10 All Documents, Communications and Things that are relevant to Plaintiffs’ hiring, 

firing and employee resignation process. 

RFP No. 11 All Documents, Communications and Things supporting Plaintiffs’ allegation that ACE’s 

products use, copy, incorporate or disclose any of Plaintiffs’ confidential information or trade secrets. 

RFP No. 12 All Documents, Communications and Things that are relevant to Plaintiffs’ SVN Servers 

back-up procedures. 

RFP No. 13 The portion of Plaintiffs’ CMMI program that are relevant to SVN Servers back-up and 

procedures of protecting Plaintiffs’ confidential information and trade secrets. 

RFP No. 14 All Documents, Communications and Things that are relevant to Plaintiffs’ changes or 

migrations of Plaintiffs’ SVN Servers between January 2018 and June 2020. 

RFP No. 15 All Documents, Communications and Things that are relevant to the problems with 

Plaintiffs’ SVN Servers that occurred between December 2019 and January 2020. 

RFP No. 16 All Documents, Communications and Things supporting Plaintiffs’ allegation that ACE 

or ACE Employees approached or solicited Plaintiffs’ U.S. based customers and suppliers. 

CONCLUSION 

For the foregoing reasons, ACE respectfully requests this Court order Plaintiffs to produce 

relevant documents that are within the scope of the jurisdictional discovery. 

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Date: 02/08/2022 

Respectfully Submitted: 

/s/ He Cheng 

He Cheng 

Robin.Cheng@glacier.law 

Tao Liu 

Tao.Liu@glacier.law 

Glacier Law LLP 

200 Park Avenue, Suite1703 

New York, NY 10166 

www.glacier.law 

Tel: +1 (332) 208-8882 

Fax: +1 (312) 801-4587 

Attorneys for Defendant

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this February 8, 2022, I electronically filed the foregoing file 

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

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

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

Date: 02/08/2022 /s/ He Cheng 

He Cheng 

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