A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Service

Like all right-thinking people, I hate the Hague.

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 months
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 months AI-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.

Judge Williams found these arguments ...

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 ...

You've got . . . 2 new complaints!
You've got . . . 2 new complaints! Brett Jordan, Unsplash

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 …

Service of process on a foreign defendant can be tricky. If the foreign defendant will not agree to waive service under Rule 4(d), a plaintiff is left with methods of service under Rule 4 that are often complex and time-consuming, and come with no guarantee that the service will ultimately be effective.

And while Rule 4 does not set a deadline for service of process on foreign defendants, as it does for domestic defendants, the time to serve is not unbounded. Helpfully, Rule 4 provides a fallback that opens up the door to other--perhaps less onerous--methods of service, including simply sending an email (in the right circumstances).

When Can You Serve by E-mail?

She just served a defendant in Taiwan
She just served a defendant in Taiwan Brooke Cagle, Unsplash

Last week Magistrate Judge Hall permitted service on a foreign defendant by email pursuant to FRCP 4(f)(3), which provides that, in addition to various other methods of service, service of process may be achieved "by other means not prohibited by international agreement, as the court orders."

As Judge Hall recounted, plaintiff DivX LLC first attempted service by certified mail on Taiwanese defendant Realtek Semiconductor Corp., but Realtek apparently refused to accept the mail delivery. ...