United States District Court, N.D. California
HONG KONG UCLOUDLINK NETWORK TECHNOLOGY LIMITED, et al., Plaintiffs,
SIMO HOLDINGS INC., et al., Defendants.
ORDER GRANTING PLAINTIFFS' MOTION TO DISMISS
FIFTH AND SIXTH COUNTERCLAIMS DOCKET NO. 75
M. CHEN UNITED STATES DISTRICT JUDGE
instant case began as a patent infringement lawsuit filed by
certain uCloudlink entities against certain SIMO entities.
The case now includes counterclaims brought by certain SIMO
entities against certain uCloudlink entities for trade secret
are three SIMO entities:
(1) SIMO Holdings Inc. (“SIMO”).
(2) Skyroam, Inc. (“Skyroam, Inc.”).
(3) Shenzhen Skyroam Technology Co., Ltd. (“Skyroam
(also Plaintiffs in the case) are two uCloudlink entities:
(1) Hong Kong uCloudlink Network Technology Limited
(“uCloudlink Hong Kong”).
(2) uCloudlink (America) Ltd. (“uCloudlink
pending before the Court is
Plaintiffs'/Counterdefendants' motion to dismiss the
counterclaims for trade secret misappropriation (the fifth
and sixth causes of action). The Court previously granted
Counterdefendants' motion to dismiss these counterclaims
but gave Counterclaimants leave to amend. See Docket
No. 67 (order). Counterdefendants argue that the amended
counterclaims are still deficient.
considered the parties' briefs and accompanying
submissions, as well as the oral argument of counsel, the
Court hereby GRANTS the motion to dismiss
the trade secret misappropriation counterclaims.
FACTUAL & PROCEDURAL BACKGROUND
operative second amended counterclaims (“SACC”),
Counterclaimants allege as follows with respect to the trade
secret misappropriation claims.
overall technology at issue involves providing users of
mobile devices such as phones and hotspots (‘uCloudlink
devices') the ability to travel internationally and
access data through those devices without having to pay
expensive roaming fees or purchase a country-specific SIM
card for each new country visited.” SACC ¶ 26.
2008, SIMO founded and patented its virtual SIM technology,
some of which” it disclosed in patents. SACC ¶ 87.
“In 2013, SIMO launched its vSIM platform, ”
which “delivers local data, internationally, allowing
the user to connect to dozens of different cellular networks
without changing his or her SIM card.” SACC ¶ 88.
Skyroam owns trade secrets related
solutions for optimizing the virtual SIM technology.
Skyroam's trade secrets include, inter alia,
methods and solutions for optimizing the distribution of seed
SIM, protocol for upgrade designs, methods of use for proxy
communication servers, virtual SIM allocation, design of the
backend billing system, and data link management for carrier
SACC ¶ 95. The trade secrets “significantly
increase the usability, reliability, and consistency of the
connections required for mobile hotspot users through vSIM
technology.” SACC ¶ 99.
April 2013, Skyroam hired Wang Bin as its Systems
Architect. See SACC ¶ 112. Previously,
Wang Ban had “worked with Counterdefendants' CEO
Gao Wen and other uCloudlink founders and/or individual
investors at . . . Huawei.” SACC ¶ 9. In 2011, Gao
Wen and “several other Huawei colleagues” left
Huawei to form Counterdefendants and related uCloudlink
entities to compete with Counterclaimants. SACC ¶ 11.
Wang Bin did not go with Gao Wen and these colleagues but
instead joined Skyroam Shenzhen in April 2013 (i.e.,
some two years later). See SACC ¶ 11.
Systems Architect for Skyroam, Wang Bin “obtained
detailed knowledge” of Skyroam's trade secrets,
“including solutions for roaming SIM cards, virtual SIM
allocation, [and] design of backend billing system.”
SACC ¶ 113. In addition, while employed by Skyroam,
“Wang Bin authored numerous specification documents
based on information that Skyroam engineers disclosed to
him.” SACC ¶ 120. During his employment with
Skyroam, Wang Bin copied certain Skyroam trade secrets to a
USB drive and then downloaded them to his personal computer.
See SACC ¶ 125.
August 2013 - i.e., just four months after he
started working at Skyroam - Wang Bin left employment with
Skyroam. See SACC ¶ 12. Then, “just one
month after leaving Skyroam, ” Wang Bin started working
for uCloudlink Shenzhen (actually, a predecessor entity of
uCloudlink Shenzhen) “as a system engineer for testing,
maintenance, and technical support of backend servers.”
SACC ¶ 126. Although Wang Bin was formally hired by
uCloudlink Shenzhen, he actually interviewed with Tan Zhu, a
Vice President of uCloudlink Hong Kong. See SACC
¶ 127. At some point, Wang Bin was promoted from being a
system engineer to Director of Operation and Maintenance
Department “to support operation and maintenance of
backend servers.” SACC ¶ 128. Then, in March 2017,
Wang Bin “began serving as the leader of the Security
Group at uCloudlink Shenzhen, responsible for establishing
information security systems, security compliance, and
audit.” SACC ¶ 131.
his time with uCloudlink Shenzhen, Wang Bin transferred the
Skyroam trade secrets he had copied to his uCloudlink work
computer. See SACC ¶ 129.
“Counterclaimants were able to identify at least one
Chinese patent application, CN105491555A, [submitted by
uCloudlink Shenzhen that discloses the contents of the Skyroam
Confidential Documents copied over from Wang Bin's
Skyroam computer to his uCloudlink computer.” SACC
¶ 132 (adding that this patent application lists Wang
Bin and Gao Wen as co-inventors). The technical disclosure
for this patent application “includes large sections
that were copied word for word from the stolen
Skyroam trade secret document.” SACC ¶ 133
(emphasis in original). Other patents “that uCloudlink
applied for and owns that list Wang Bin as an inventor and
that are based on or otherwise include some of
Counterclaimants' stolen trade secrets” can be
identified in ¶ 137 of the SACC. SACC ¶ 137
(identifying five other patent applications). The patent
applications appear to have been filed in 2015 and/or 2016.
See SACC ¶¶ 137, 173. There is a
“lack of evidence of any conception or reduction to
practice” for “any of the inventions allegedly
conceived and reduced to practice” which is indicative
of the fact that “[t]he ‘inventors' did not
memorialize any of their ‘ideas' [because] they
already existed word for word in documents stolen
from Skyroam.” SACC ¶ 139 (emphasis in original).
manufacture, offer for sale, and sell products and services
in the United States that embody the Wang Bin Patents, and
therefore, are based, at least in part, on Skyroam's
trade secrets and the Skyroam Confidential Documents.”
SACC ¶ 179.
October 12, 2018, as part of a patent infringement lawsuit
that Skyroam entities filed against uCloudlink entities in a
New York district court, uCloudlink Hong Kong and uCloudlink
America supplemented a response to an interrogatory and
identified Wang Bin as a current uCloudlink employee who had
formerly worked for Skyroam Shenzhen. See SACC
¶ 140. On the same day, the uCloudlink entities produced
nearly 30, 000 pages of documents and “[b]uried in this
massive production were 14 internal Skyroam documents. Many
of these documents were labeled by Skyroam as
‘Confidentiality Level: Top Secret' and/or bore
Skyroam's trademark.” SACC ¶ 141 (referring to
these documents as the “Skyroam Confidential
October 19, 2018, a hearing was held before the New York
district court during which the parties discussed Wang Bin
and the Skyroam documents. During the hearing, uCloudlink
Hong Kong and uCloudlink America admitted that Wang Bin
“explicitly refused to cooperate with [their] forensic
expert . . . hired to create an ...