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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION METHODE ELECTRONICS, INC.

, Plaintiff, v. WENSHENG WENG, Defendant. ) ) ) ) ) ) ) ) ) COMPLAINT Plaintiff Methode Electronics, Inc. (Methode), by and through its attorneys, JENNER & BLOCK LLP, hereby alleges as its Complaint against defendant Wensheng Weng, a/k/a Vincent Weng (Weng), as follows: INTRODUCTION 1. While employed by Methode, Weng learned about a solution that other Methode

Case No. ______________ JURY DEMANDED

engineers had invented to address an issue that affected many of Methodes products. Almost immediately after he was terminated, Weng wrongfully used that information to file a patent for the solution that the other Methode employees, not Weng, had developed. That application resulted in U.S. Patent No. 8,001,849 (the 849 patent, attached as Exhibit A). Because the 849 patent and any related patent applications disclose and claim inventions developed by Methode employees, they are properly owned by Methode. Weng is not an inventor on the 849 patent, and Methode, therefore, seeks to correct the inventorship. Moreover, regardless of whether Weng were to be deemed to be an inventor on the 849 patent (which he should not), Weng breached his Methode Employee Confidentiality and Assignment of Inventions Agreement (the Agreement), a copy of which is attached as Exhibit B, by improperly using

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Methodes information to obtain the 849 patent and then refusing to assign the 849 patent to Methode when requested to do so. JURISDICTION AND VENUE 2. This Court has jurisdiction over this action pursuant to 28 U.S.C. 1331, 1338,

1367, 2201, and 2202 and 35 U.S.C. 256. 3. The Agreement contains a choice of law and forum selection provision, which

states that the Agreement shall be governed by and construed according to the laws of the State of Illinois and that any litigation arising out of this Agreement shall be brought in the Circuit Court of the State of Illinois or the United States District Court for the Eastern District of the Northern District of Illinois. (Ex. B, 19.) 4. Venue is proper in this district pursuant to Section 19 of the Agreement and under

28 U.S.C. 1391(b). THE PARTIES 5. Methode is a Delaware corporation with its principal place of business in

Chicago, Illinois. 6. Methode develops, manufactures, sells, and distributes devices employing

electrical, electronic, wireless, safety radio remote control, sensing and optical technologies to control and convey signals through sensors, interconnections and controls. Its components are in the primary end markets of the automobile, computer, information processing and networking equipment, voice and data communication systems, consumer electronics, appliances, aerospace vehicles and industrial equipment industries. 7. Wensheng Weng currently is a resident of Canton, Michigan. Weng worked for

Methode from May 2007 until January 2009. Weng is the sole named inventor and current owner of record of the 849 patent.

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FACTUAL BACKGROUND Methodes Development of Magneto-Elastic Torque Sensing Technology 8. Methode uses and develops various magnetic sensors that sense magnetic fields

and changes in magnetic field properties due to applied loads in shafts or other metallic structures. A frequently occurring problem that arises with this technology is interference caused by external magnetic fields given off by other nearby metal structures or even the variations in the earths ambient magnetic field. technology. 9. Methode has developed various solutions to reduce the effect of this external This interference reduces the accuracy of the sensing

magnetic field problem. One such solution to the external magnetic field problem that Methode invented is the invention covered by the 849 patent. Before Wengs employment with Methode, however, Methode employees already had developed the magneto-elastic torque sensing technology covered by the 849 patent. Specifically, Methode employees Chris Jones, Maria Rice and Chris Liston (collectively, the Methode Inventors) developed this solution as part of a project to provide systems and methods for measuring torque. 10. Indeed, in 2006, the Methode Inventors developed a prototype that used the

invention claimed in the 849 patent. During the period of Wengs employment with Methode, the Methode Inventors continued to work on this prototype as well as a next generation solution to the external magnetic field problem. Wengs Employment with Methode 11. Wengs job duties included providing various engineering services in support of

Methodes research and development activities. 12. Throughout his employment with Methode, Weng worked with technologies Initially, Weng physically was located at a

related to Methodes Magna-lastic subsidiary.

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Methode facility in Chicago, Illinois. In early 2008, Weng moved to Detroit and worked remotely from Methodes Southfield, Michigan facility. 13. While employed at Methode, Weng worked on a number of projects, including:

(1) an occupant weight sensor; (2) a load cell for a lawnmower; (3) a torque/speed sensor for the output shaft of an automobile transmission; and (4) a torque sensor for the input shaft of an automobile transmission. All of these projects involved magnetic sensors and all of them involved external magnetic field issues. Weng worked on these projects with the Methode Inventors; the Methode Inventors also worked on Methodes torque sensor project covered by the 849 patent. 14. The Methode Inventors discussed with Weng their proposed solution to the

ambient magnetic field problem and their work on the 2006 torque sensor project while working on projects with Weng. 15. Also during his employment with Methode, Weng had access to Methodes

standard network access drive, which contained project files for all current Methode projects, including the torque sensor project covered by the 849 patent. Weng had access to these files so he could carry out his employment responsibilities. Wengs Employee Confidentiality and Assignment of Inventions Agreement 16. 17. As a condition of his employment with Methode, Weng signed the Agreement. Pursuant to the Agreement, Weng agreed that all information he learned through

his employment concerning Methodes business was the exclusive property of Methode and that Weng would not disclose or use that information except in connection with his authorized duties for Methode. Specifically, Paragraph 1 of the Agreement provides that: I agree that all information concerning the Company, including the Companys customers and suppliers, and its business developed by me or acquired by me

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from others during the course of my employment, except information which is or becomes generally available to the public, shall be the exclusive property of the Company and will not be disclosed by me to any person except in connection with the performance of my authorized duties or as otherwise expressly authorized by the Company. Such information shall include but not be limited to: product and service designs, business plans, marketing plans, financial data, programs, systems, formats, screen designs and input and output specifications, inclusive of documentation, research and development, machines, discoveries, trade secrets, inventions, methods, formulae, compositions, data, data bases, drawings, lists, customer lists including phone lists or rolodexes, customer accounts, potential customer accounts, pricing policies, profits, policy statements, sales and promotion techniques and practices, computer designs, computer programs whether embodied in source or object code, computer languages or formats, software in any form or medium belonging to the Company or being used by the Company or any of its customers, information as to the Companys services and products, files, reports, notes, business plans, policies, compensation policies or levels, techniques, know-how, compilations or other recorded matter, innovative design, assembly, tooling, molds, dies, inserting, processing, manufacturing, curing, measuring, machining techniques, finishing, prototype development, laser application, ultrasonic welding and bonding and copies or reproductions of such information is the property of the Company or its customers or suppliers, including information belonging to or entrusted to the Company by its customers or suppliers (collectively referred to as PROPRIETARY INFORMATION). (Ex. B, 1.) 18. Additionally, Weng agreed to keep any such information confidential, both during

his employment and at any time after termination of his employment. Specifically, Paragraph 2 of the Agreement provides that: I will not during or at any time after the termination of my employment with the Company use for myself or others or divulge or convey to others any PROPRIETARY INFORMATION obtained by me during the period of my employment. (Ex. B, 2.) 19. Moreover, Weng agreed not to interfere with Methodes business operations after

he left Methodes employ. Specifically, Paragraph 3 provides that: I recognize that my employment also affords me knowledge about the Companys operations which would enable me to unfairly interfere with its business should I leave the Companys employ. Therefore, in consideration of my being employed

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by the Company, I agree not to now, or in the future, impair or interfere with the business of the Company in any way. (Ex. B, 3.) 20. Weng further agreed to assign any invention conceived or made by him, either

solely or in conjunction with others during the period of his employment with Methode. Specifically, Paragraph 8 of the Agreement provides that: I will promptly disclose in writing to the Company all inventions, discoveries, developments, improvements, and innovations (herein called Inventions), whether patentable or not, conceived or made by me, either solely or in concert with others during the period of my employment with the Company, including, but not limited to, any period prior to the date of this Agreement, whether or not made or conceived during working hours which: (a) (b) (c) relate in any manner to the existing or contemplated business or research activities of the Company, or are suggested by or result from my work at the Company, or result from the use of the Companys time, materials, or facilities

And that all such inventions shall be the exclusive property of the Company. (Ex. B. 8.) 21. Weng also agreed to assign Methode all rights he had in any invention as defined

by the Agreement. Specifically, Paragraph 9 of the Agreement provides that: I hereby assign to the Company my entire right, title and interest to all such Inventions which are the property of the Company under the provisions of Paragraph 8 of the Agreement and to all unpatented inventions which I now own except those specifically described in a statement which has been separately executed by a duly authorized officer of the Company and myself and attached hereto and I will, at the Companys request and expense, execute specific assignments to any such Invention and execute, acknowledge and deliver such other documents and take such further actions as may be considered necessary by the Company at any time during or subsequent to the period of my employment with the Company to obtain and defend letters patent in any and all countries and to vest title in such Inventions in the Company or its assigns. (Ex. B. 9.)

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22.

Weng further agreed that any invention (as defined in Paragraph 8) described in a

patent application filed by him within six months following termination of his employment would be presumed to have been conceived or made by him during the period of his employment. Specifically, Paragraph 10 of the Agreement provides that: I agree that any Invention disclosed by me to a third person or described in a patent application filed by me or on my behalf within six (6) months following the period of my employment with the Company shall be presumed to have been conceived or made by me during the period of my employment with the Company unless proved to have been conceived and made by me following the termination of my employment with the Company. (Ex. B. 10.) 23. Weng additionally agreed that any breach of these obligations would entitle In

Methode to preliminary and permanent injunctive relief and resulting money damages. particular, Paragraph 12 of the Agreement provides: I understand that in the event of a breach or threatened breach of any of the covenants contained in this Agreement, the Company may not have an adequate remedy at law and the Company shall therefore be entitled to obtain injunctive relief, in addition to any other remedies it may have. (Ex. B. 12.) 24. Weng further agreed that the Agreement would remain in full force and

effect following termination of [his] employment for any reason. (Ex. B 16.) Weng Wrongfully Patents the Methode Inventors Invention 25. 26. Methode terminated Weng as an employee on January 30, 2009. On March 28, 2009, less than two months after Weng left Methodes employ,

Weng filed U.S. Patent Application No. 12/383,748, now issued as the 849 patent. 27. The 849 patent issued on August 23, 2011.

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28.

On January 2, 2010, Weng filed U.S. Patent Application No. 12/651,469 (the

469 application) and assigned it to SMTS LLC, a company affiliated with Weng. The 469 application has since been abandoned. 29. Pursuant to Agreement, on April 10, 2013 and again on May 1, 2013, Methode

requested that Weng assign both the 849 patent and the 469 application to it. On April 18, 2013 and again on May 13, 2013, Weng refused. COUNT I (For Declaratory Judgment to Correct Inventorship under 35 U.S.C. 256) 30. herein. 31. The invention described and claimed in the 849 patent relates to systems for Methode incorporates by reference Paragraphs 1 through 29 as if fully set forth

measuring torque and methods for matching the sensitivity of multiple magnetic field sensors. The systems and methods covered by the 849 patent were first developed by the Methode Inventors. 32. 849 patent. 33. 34. 35. 36. 37. Weng filed the patent application leading to the 849 patent on March 28, 2009. The application for the 849 patent was filed by Weng alone. The Methode Inventors are true and proper inventors of the 849 patent. Weng is not a proper inventor of the 849 patent. The Methode Inventors rights to the invention covered by the 849 patent were The Methode Inventors were the first to conceive of the methods identified in the

assigned to Methode. 38. The omission of the Methode Inventors as the inventors on the 849 patent arose

without any deceptive intention on the part of Methode or the Methode Inventors.

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39.

Methode has requested Weng to correct inventorship and the ownership of the

849 patent to identify the Methode Inventors as the true inventors and Methode as an owner of record. Weng has not agreed with Methodes request. 40. An actual controversy exists between Methode and Weng with respect to the

inventorship and ownership of the 849 patent. WHEREFORE, Methode respectfully requests entry of judgment in its favor and against Weng as follows: (a) declaring that the Methode Inventors are true and proper inventors of the 849 patent and that Weng is not a proper inventor of the 849 patent; (b) directing the Commissioner of Patents and Trademarks to correct the error in named inventors of the 849 patent and to issue a certificate naming the Methode Inventors as inventors on the 849 patent; (c) declaring that Methode is the sole owner of the 849 patent and removing Weng as an inventor on the 849 patent; (d) awarding Methode its reasonable attorneys fees and costs; and (e) awarding Methode such other relief as the Court deems just and necessary. COUNT II (Breach of Contract) 41. herein. 42. 43. 44. 45. Methode and Weng were parties to the Agreement. The Agreement is a valid and enforceable contract. Methode fully performed under the Agreement. Pursuant to Paragraph 1 of the Agreement, Weng agreed that information he Methode incorporates by reference Paragraphs 1 through 29 as if fully set forth

learned about Methodes business belonged to Methode and that he would not disclose it unless authorized by Methode to do so.

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46.

Pursuant to Paragraph 2 of the Agreement, Weng agreed that after he left

Methode, he would not use any of Methodes information for his own use. 47. Pursuant to Paragraph 3 of the Agreement, Weng acknowledged that he was privy

to information about Methodes operations and, therefore, agreed not to impair or interfere with Methodes business after he left Methodes employ by using that information. 48. Pursuant to Paragraph 8 of the Agreement, Weng agreed that he would promptly

disclose to Methode all inventions, discoveries, developments, improvements, and innovations . . . conceived or made by [him], either solely or in concert with others during the period of [his] employment with Methode. He further agreed to disclose all such inventions, discoveries, developments, improvements, and innovations whether or not made or conceived during working hours that (a) relate in any manner to the existing or contemplated business or research activities of Methode, or (b) are suggested by or result from his work for Methode; or (c) result from the use of [Methodes] time, materials, or facilities. (Ex. B. 8.) 49. Pursuant to Paragraph 9 of the Agreement, Weng also agreed to assign Methode

all rights he had in any invention as defined by Paragraph 8 of Agreement. (Ex. B. 9.) 50. Wengs filing of the 849 patent and the 469 application breached all of the

above provisions of the Agreement. 51. First, Weng breached Paragraphs 1, 2, and 3 of the Agreement by using

information he learned about the Methode Inventors invention for his personal gain. 52. Information about the Methode Inventors invention belonged to Methode. Weng

only had access to that information by virtue of his employment with Methode. 53. Weng publicly disclosed that information through his patent application without

Methodes authorization.

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54.

Weng used that information to obtain a patent in his name for that invention even

though that invention belongs to Methode. 55. Presumably Weng is attempting to commercialize the technology covered by that

patent in competition with Methode or will try to use that information to somehow otherwise interfere with Methodes business. 56. Second, Weng breached Paragraphs 8 and 9 of the Agreement by obtaining 849

patent and also by failing to assign the 849 patent to Methode when requested to do so. 57. As a result of Wengs breaches of the Agreement, Methode has been injured.

Among other things, Weng has improperly disclosed Methode information to the public without Methodes authorization. Methode had an interest in keeping that information private. Weng also improperly patented Methodes invention and has refused to assign the 849 patent to Methode even though it is the rightful owner. 58. Additionally, Methode will be irreparably harmed if Weng is permitted to benefit

from his improper use of Methodes information. WHEREFORE, Methode respectfully requests that this Court: (1) enter judgment against defendant Wensheng Weng for all damages resulting from his breach of the Agreement, in an amount to be determined by a jury; (2) require specific performance of the contract by ordering Weng to assign all right, title, and interest in the 849 patent and the 469 application to Methode and any related U.S. or foreign patent application, continuation, continuation-in-part, divisional or reissue application; (3) permanently enjoin Weng from directly or indirectly seeking patents on Methode inventions or inventions that Weng developed as a Methode employee; (4) permanently enjoin Weng from publicly disclosing or otherwise using Methodes information; and (5) grant any other relief as may be appropriate and just.

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Dated: July 3, 2013

Respectfully submitted, METHODE ELECTRONICS, INC.,

By: /s/ Debbie L. Berman One of its attorneys Debbie L. Berman (# 6205154) Aaron A. Barlow (# 6200865) Michael H. Margolis (# 6297115) JENNER & BLOCK LLP 353 N. Clark Street Chicago, IL 60654-3456 Counsel for Methode Electronics, Inc.

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