Xiaomi faces jurisdictional fight in New York
Chinese electronics company Xiaomi is operating in the US and can’t escape litigation by claiming a lack of jurisdiction, according to a filing in a patent suit against the company.
Dareltech sued Xiaomi at the US District Court for the Southern District of New York in late 2018, accusing the Chinese company of patent infringement of its selfie stick technology.
Dareltech’s employees are named as inventors of the selfie stick patents and the company focuses on the smartphone industry, though it does not currently make products.
David Hecht, managing partner of Pierce Bainbridge Beck Price & Hecht’s New York office and co-head of the firm’s IP group, is representing Dareltech in its patent dispute with Xiaomi.
Speaking to WIPR, Hecht said: “Xiaomi has apparently been free-riding on American innovation for some time. Not only does Xiaomi sell its products directly through Amazon and Walmart (and link to these retailers from its US website), but, according to its agents, it also has offices on both coasts and well as warehouses.”
Responding to the suit, Xiaomi filed a statement in February 2019 from its director of North American operations, Vincent Yan.
“Xiaomi does not have any subsidiaries in the US. Xiaomi does not maintain any offices in the State of New York or own any property in New York,” said Yan.
But, according to Hecht, Xiaomi has been doing business in the US and even has what has been called “a secret operation” in New York.
Hecht’s argument is based on videos he took in December last year, when he attended Mi Fan, a promotional event for Xiaomi products in New York, with a hired private investigator.
In a submission to the court, filed in early March, Hecht said he didn’t expect to speak with any Xiaomi employees and was instead planning to investigate how Xiaomi products were being offered for sale by third parties within the US.
But, in videos which were submitted to the court and have been seen by WIPR, what appear to be Xiaomi employees describe the company’s “secret operation” in New York and warehouses in the US.
“I spoke with several individuals attending the December 7 event and was shocked when
certain individuals working at the event spontaneously made statements about Xiaomi
doing business and maintaining an office in New York City,” said Hecht in his submission to the court.
Hecht’s submission was filed in response to Xiaomi’s attempt to have the video evidence disqualified.
In early February 2019, Xiaomi’s representatives Jones Day filed a motion to disqualify the Pierce Bainbridge lawyers from the case and to exclude the videos from evidence, claiming that the evidence was obtained by Hecht in violation of ethical rules, including rule 8.4 (misconduct) of the New York Rules of Professional Conduct.
Hecht and the private investigator have claimed that their phones were visible at the time of recording and that the people they were talking to could see the phones were active and recording.
But Jones Day has insisted that it “appears from the angle and the conduct of the interviewees that the recordings were done without the Xiaomi workers’ knowledge that they were being recorded”.
In another submission, filed on Friday, March 8, Jones Day identified one of the people in one of the recordings as an In Vizible (a PR agency) employee who was contracted to work at the Mi Fan event and reportedly did not know he was being videotaped by Hecht.
Pierce Bainbridge has asked the court for leave to take a deposition from the In Vizible employee for purposes of jurisdictional discovery.
WIPR has emailed and left telephone messages for the Jones Day lawyers that are representing Xiaomi, as well as contacting the company itself. We will update the story should they respond.
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