We've writtenbefore about how delay can kill your discovery motions. We got another straightforward example on Monday in Novartis Pharmaceuticals Corporation v. HEC Pharm Co., Ltd., C.A. No. 20-133, D.I. 340 (D. Del. Mar 31, 2025).
There, the defendants sought depositions of two foreign inventors through the Hague convention. The defendants have known the relevance of the inventors' knowledge since at least July, 2022, but only moved for issuance of letters rogatory in December 2024.
The case was stayed for a portion of that time, but in total, the Court found that there was no good reason that it should have taken so long to seek this discovery:
Rarely does a motion go unopposed. The more common response to all but the most quotidian of requests is an offer to duel.
I've been waiting to use this picture, which I think is meant to be taken seriouslyChris De Lima, Unsplash
Thus, I usually count even the most grudging and proviso-laden non-opposition as a win. Which, sometimes, works out.
This brings us to the case of TOT Power Control, S.L. v. LG Elecs. Inc., C.A. No. 21-1304-MN-SRF (D. Del. May 16, 2024). The plaintiff there had listed several formal technical employees as having discoverable information on their initial disclosures. As discovery progressed, however, five of these persons who resided overseas in Spain and Denmark stated …
Not the city, which is probably a nice place with a rich tradition of tulips and sausages, but the convention on international service of process which is a nightmare for those of us used to the stereotypically fast and loose system that reigns on this side of the pond.
Can you believe that out of 6 tries this was the best drawing of a tulip eating a sausage? I think we'll hold off SKYNET for another few monthsAI-Generated, displayed with permission
The rules are labyrinthine, the requirements that can be figured out are onerous, and it frequently takes months for the central authority to determine that you've done something wrong and need to start the whole process over again. If, however, you somehow manage to get the central authority's stamp of approval, you've effectively insulated yourself from later attacks on the method of service.
That was the lesson of Judge Williams recent opinion in Tigo Energy Inc. v. SMA Solar Tech. Am. LLS, C.A. No. 22-915-GBW (D. Del. Oct. 23, 2023) (Mem. Op.). The plaintiff there had sued a german company and its american subsidiary for patent infringement. Service on the U.S. entity was easy enough, but the German parent refused to waive service, forcing the Plaintiff to go through the Hague. After a rejection, the central authority accepted the application and effected service on the German parent. The German parent then moved to dismiss for ineffective service, alleging that the documents failed to comply with the Hague convention, and that the German central authority accidentally served an unrelated company.
Canada is a hard land. The weather is brutal. The moose, especially fierce. This isn't even touching on the whole hockey thing.
But the harshest part—worse than the indefatigable Mounties or the endless karaoke versions of You Oughta Know—is service.
Serving a Canadian is a real pain in the poutine.
AI-Generated, displayed with permission
Or so I thought.
Those with the misfortune of having to serve a foreign defendant will no doubt be aware of Rule Rule 4(f)(2)(C)(ii) which provides that a foreign individual may be served by "using any form of mail that the clerk addresses and sends to the individual and that requires a signed receipt." This rule applies to foreign corporations by way of Rule 4(h).
The issue I had always seen with service in this manner is that it's trivially easy for the defendant to simply ignore the registered mail. No signature, no return receipt, no service. It seems I was wrong about this.
The patentee in MG FreeSites Ltd. v. Scorpcast, LLC d/b/a HaulStars, C.A. No. 20-1012-MFK -- the "Haulstars"—indisputably had the clerk send the summonses to the foreign defendants (at this point I must admit that most of the defendants were actually Cypriot, but I know more about Canada so that's what I went with) via the ...
We talked earlier this year about how Judge Hall permitted e-mail service of a complaint to a Taiwanese corporation under FRCP 4(f)(3), and we wondered whether this may be a reliable way to skirt cumbersome foreign service issues going forward.
As of Friday, the answer is still trending towards "yes." The previous case involved Taiwan, which is not a party to the Hague Convention. On Friday, Judge Noreika permitted service via e-mail on the U.S.-based counsel of a Korean entity—a party to the Hague convention—sidestepping the need to engage in cumbersome and time-consuming international service procedures:
Pursuant to Rule 4(f)(3), the Court may order that …
Depositions have been especially hard during the pandemic. Luckily, the quick proliferation of Zoom and its competitors have made it possible to take remote depositions that roughly approximate the experience of angrily objecting across a conference table.
International depositions, however, have remained problematic. In the past, witnesses could simply be shuffled from a country with hugely restrictive deposition procedures to a more friendly jurisdiction -- be it the Netherlands, the UK, a consulate, or even beautiful Delaware.
Travel restrictions and the closing of consular offices have made this a non-starter in many cases and so there has been a bit of a resurgence in proceedings under the Hague as parties struggle to get what discovery they …
Magistrate Judge Hall recently issued a report and recommendation examining the issue of timeliness of service of process on foreign defendants via the Hague Convention. Although Judge Hall denied the foreign defendants' motion to dismiss, the discussion of timeliness is worth noting.
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
