Federal Circuit Denies Mandamus Request Seeking To Require Service Under Hague Convention
On September 10, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order denying a petition for a writ of mandamus to the United States District Court for the Western District of Texas, Nos. 6:20-cv-00952-ADA, 6:20-cv-00953-ADA, 6:20-cv-00956-ADA, 6:20-cv-00957-ADA, and 6:20-cv-00958-ADA, Judge Alan D. Albright, directing dismissal of five patent infringement actions for insufficient service of process and lack of personal jurisdiction. In re: ONEPLUS TECHNOLOGY (SHENZEN) CO., __ F.3d __ (Fed. Cir. Sept. 10, 2021). In its order, the CAFC let stand Judge Albrights’s decision finding that the mandamus petitioner’s right to service only under the Hague Convention is not clear and indisputable.
In September 2020, five related patent infringement actions were filed against petitioner, a Chinese company, in the United States District Court for the Western District of Texas. In these actions, plaintiff patent owner alleged that petitioner has no place of business or employees in the United States. Although the People’s Republic of China is a signatory to the Hague Service Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters, 20 U.S.T. 361 (Nov. 15, 1965) (“the Hague Convention”), patent owner elected not to attempt service under the Hague Convention. Instead, citing the burdens involved in effecting service through Hague Convention procedures, patent owner requested that the district court grant it leave under Fed. R. Civ. P. 4(f)(3) to use alternative methods to effect service. The district court granted the motion, and patent owner served the complaint and summons on attorneys who had represented petitioner in the past and on petitioner’s authorized agent for service in Hayward, California.
Petitioner made a special appearance to challenge the sufficiency of the service and the district court’s jurisdiction over it. The district court rejected the challenge, holding that Rule 4(f)(3) gave it discretion to order service of a foreign defendant by means other than those prescribed by the Hague Convention, and that the service was effective to grant the court in personam jurisdiction over petitioner. Petitioner then sought mandamus on grounds that the service was ineffective; that the district court lacked personal jurisdiction over petitioner as a consequence; and, that it was an abuse of discretion for the district court to authorize alternative service in the absence of a showing of a need to do so.
Because under Fed. R. Civ. P. 4(k)(1)(A), service of a summons establishes jurisdiction over a defendant who is subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located, petitioner argued that the district court has jurisdiction only if petitioner is subject to jurisdiction in Texas under the Texas long-arm statute. Petitioner further argued that the Texas long-arm statute requires the transmittal of documents abroad to a foreign defendant, thus requiring service under the Hague Convention, which governs transmission of judicial or extrajudicial documents for service abroad.
The CAFC rejected these arguments as contrary to its decision in Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222 (Fed. Cir. 2010). In that case, the CAFC explained that petitioner’s arguments confuse service of process under Rule 4(f)(3) respecting serving individuals in a foreign country, which provides for court-directed service by any means not prohibited by international agreement, with service under Rule 4(e)(1) respecting serving individuals in the United States, which does not require a court order and provides for service by following state law. Rule 4(e)(1) restrictions on service under state law do not foreclose court-ordered substituted service under Rule 4(f)(3). The CAFC also referred to its decision in Nuance Communications in rejecting petitioner’s argument that Rule 4(f) by its terms applies only to service of process effected abroad.
Petitioner’s final argument was that the district court committed a clear abuse of discretion by authorizing alternative service under Rule 4(f)(3) even though patent owner made no showing that service under the Hague Convention had been tried and failed, would have been unlikely to succeed, or was otherwise impracticable. The district court authorized alternative service merely because it regarded the Hague Convention procedure as slow and expensive.
The CAFC did express concerns about the district court’s invocation of “other means” of service under Rule 4(f)(3) based solely on the fact that service under the Hague Convention is more cumbersome than other means of service on representatives of a foreign entity. The CAFC further noted that Rule 4(f)(3) was not meant to displace the other rules for service in every instance in which “other means” of service are seen as more convenient. But, the CAFC also explained that Rule 4(f)(3) is not merely a “last resort” or a type of “extraordinary relief” for a plaintiff seeking to serve process on a foreign defendant and is on equal footing with Rule 4(f)’s other subsections, e.g., Rule 4(f)(1)’s “by any internationally agreed means.”
The CAFC noted that, while some courts, in the exercise of their discretion under Rule 4(f)(3), have looked to whether there has been a showing that plaintiff has reasonably attempted to effectuate service by conventional means and have required a showing that the circumstances render the court’s intervention necessary, such considerations guide the exercise of discretion, and are not akin to an exhaustion requirement.
Guided by these observations, and the fact that the district court has not announced that it intends to order alternative service in every case in which more conventional means of service would be merely inconvenient, the CAFC decided that issuing a writ of mandamus, a form of extraordinary relief, was not warranted. The CAFC did, however, note that its order denying mandamus does not foreclose petitioner from raising its arguments on appeal from a final judgment against it.