Case 2:22-cv-00134-JRG-RSP Document 31 Filed 07/11/22 Page 1 of 11 PageID #: 259
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ADVANCED MICRO DEVICES, INC., ET
`AL.,
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`Plaintiffs,
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`v.
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`Case No.: 2:22-cv-00134--JRG-RSP
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`JURY TRIAL DEMANDED
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`TCL INDUSTRIES HOLDINGS CO., LTD.;
`ET AL.,
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`Defendants.
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`PLAINTIFFS’ MOTION FOR ALTERNATIVE SERVICE ON DEFENDANT REALTEK
`SEMICONDUCTOR CORP. PURSUANT TO FED. R. CIV. P. 4(f)(3)
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`Plaintiffs Advanced Micro Devices, Inc. and ATI Technologies ULC (collectively,
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`“AMD” or “Plaintiffs”) respectfully move this Court for alternative service pursuant to Rule
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`4(f)(3) of the Federal Rules of Civil Procedure. AMD seeks an order by this Court granting its
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`request to effectuate service in this case via electronic mail to Defendant Realtek Semiconductor
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`Corp. (“Realtek”) through its in-house counsel, its outside U.S. counsel Mann Tindel & Thompson
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`(“Mann Tindel”) appearing in this action on behalf of Realtek, and its outside U.S. counsel at
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`Orrick Herrington & Sutcliffe LLP (“Orrick”) representing Realtek in an ongoing International
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`Trade Commission (“ITC”) action.
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`This is at least the third case in which Realtek, represented by Orrick, has refused mailings
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`by the Clerk of Court, forcing the plaintiffs to move for alternative service—in which at least two
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`other United States District Courts have granted on Realtek’s counsel by electronic means under
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`similar circumstances. See, e.g., Rock Creek Networks, LLC v. Realtek Semiconductor Corp., Case
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`Case 2:22-cv-00134-JRG-RSP Document 31 Filed 07/11/22 Page 2 of 11 PageID #: 260
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`No. 6-21-cv-00081 (W.D. Tex.), Dkt. No. 10 (Mar. 30, 2021) (ordering alternative service on
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`Realtek’s outside counsel including at Orrick); DivX, LLC v. Realtek Semiconductor Corp. et al.,
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`Case No. 1-20-cv-01202 (D. Del.), Dkt. No. 19 (Feb. 5, 2021) (ordering alternative service on
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`Realtek’s outside counsel including at Orrick).
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`Further, to the extent either Realtek or any party seeks stay of these proceedings pending
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`the parallel International Trade Commission case, AMD respectfully requests that the present
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`motion for alternative service be adjudicated before any such stay is entered. See, e.g., Lighting
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`Sci. Group Corp. v. Nichia Corp., 2019 U.S. Dist. LEXIS 232761 at *1-7 (Aug. 8, 2019)
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`(considering and ruling on plaintiff’s motion for alternative service, after issuing ruling on a
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`mandatory stay of the case pending ITC proceedings under § 1659, also noting that “Plaintiff may
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`continue to attempt to serve Nichia Japan while the stay is pending”).
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`I.
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`FACTUAL BACKGROUND
`A.
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`Defendant Realtek, Despite Representation by U.S. Counsel Here and in a Co-
`Pending International Trade Commission Matter, Refuses a Reasonable
`Extension to Sync P.R. 3-1 and P.R. 3-2 Deadlines with All Defendants, While
`Also Refusing Reasonable Methods of Service
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`Defendant Realtek has engaged U.S. counsel to appear in this action (through law firm
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`Mann Tindel). Defendant Realtek is also represented in a co-pending 19 U.S.C. § 1337 unfair
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`importation investigation at the ITC, Inv. No. 337-TA-1318, captioned Certain Graphics Systems,
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`Components Thereof, and Digital Televisions Containing the Same (the “1318 Investigation”),
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`through three U.S. law firms appearing in the ITC (including Mann Tindel and Orrick), who are
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`actively litigating on behalf of Realtek in the 1318 Investigation. In that co-pending matter,
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`Realtek’s ITC Orrick counsel includes Jordan Coyle based in Washington, D.C., as well as Robert
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`2
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`Benson, based in Orrick’s offices in Irvine, CA and Taipei, Taiwan.1 The 1318 Investigation
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`involves the same five patents asserted in this case.2
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`Realtek has filed appearances in this action, and their national counsel has actively taken
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`positions on behalf of Realtek relating to this matter, yet Realtek refuses reasonable forms of
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`service, and refuses to agree to an extension of time on P.R. 3-1 and P.R. 3-2 disclosures (and the
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`corresponding P.R. 3-3 and P.R. 3-4 disclosures), which would sync deadlines with the other
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`defendants.
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`For example, the week of June 20th, 2022, even though no Realtek attorney had filed an
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`appearance in this action, nor accepted service of the complaint and summons, counsel for AMD
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`discussed extending the deadlines for P.R. 3-1 and P.R. 3-2 disclosures with Realtek’s ITC national
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`counsel by phone, in a good faith attempt to obtain Realtek’s position on an extension. Ex. 1,
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`Emails between AMD and Realtek counsel dated June 28 – July 1, 2022, at 3. After delaying in
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`providing a position for a week, on Friday July 1, 2022, Realtek responded that it would be willing
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`to agree to a 10-day extension (despite being informed of Defendant TCL’s willingness to agree
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`to a 21-day extension to July 26, 2022), but stated that “if TCL does not request the automatic stay
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`under § 1659, and if AMD believes a further extension is warranted in order to sync the deadlines,
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`we can consider that further issue next week [i.e., the week of July 5th, 2022].” Id. at 1. The next
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`week, AMD reached back out again to Realtek, but on July 6, 2022, without any explanation,
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`Realtek responded that “Realtek does not believe any further extensions are warranted with respect
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`1 In addition, though yet to make an appearance in this case, Mr. Benson and the undersigned have
`communicated about this matter on several occasions by phone and email. The meet and confer
`communication pertinent to this motion was conducted between Mr. Benson and the undersigned.
`2 Given the Commission’s recent setting of a target date for completion of the ITC Investigation
`for seventeen (17) months, AMD has filed a pending motion for partial termination of the 1318
`Investigation as to one of the five patents in the ITC Investigation.
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`3
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`to upcoming contention deadlines.” Ex. 2, Emails between AMD and Realtek counsel dated July
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`5 & 6, 2022.
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`B.
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`Despite Filing Appearances in this Case, Realtek Has Evaded Several
`Attempts of Service of the Complaint and Summons in this Action, by the
`Clerk of this Court, by a Taiwanese Process Server, and by AMD by E-Mail
`to Realtek’s In-House and Outside Counsel
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`On May 13, 2022, Plaintiff AMD requested this Court’s Office of the Clerk to serve
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`Realtek by international mail under Fed. R. Civ. P. 4(f)(2)(C)(ii). On May 19, 2022, the Court’s
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`Office of the Clerk sent the Complaint, Summons, AMD Corporate Disclosure Statement, Report
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`on Patent Filing, and Notice of Appearance for AMD Counsel to Realtek’s headquarters at No. 2,
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`Innovation Road II, Hsinchu Science Park, Hsinchu, Taipei, Taiwan. Ex. 3, Cover Letter from
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`Court’s Office of the Clerk to Realtek (May 19, 2022). The Office of the Clerk’s delivery was
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`“[r]efused by recipient” five times, on May 23, 2022, May 24, 2022, May 25, 2022, May 26, 2022,
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`and May 27, 2022. Ex. 4, FedEx Advanced Shipment Tracking 776904698455. On June 2, 2022,
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`this Court’s Office of the Clerk received a return delivery of the package. Ex. 5, FedEx Advanced
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`Shipment Tracking 943718232948.
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`On June 8, 2022, prior to AMD receiving any notice of any outside law firm representing
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`Realtek in this action or in the ITC, AMD sent the U.S. District Court Complaint, Summons, AMD
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`Corporate Disclosure Statement, Report on Patent Filing for this action to Realtek In-House
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`General Counsel, Gina Hung, in Hu Kou Hsiang, Taiwan, via email. Ex. 6, Email from M. De
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`Renzis to G. Hung (June 8, 2022), at 2. Following Realtek’s filing of a notice of appearance in
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`the ITC action through its counsel at Orrick, on June 9, 2022, AMD forwarded that email with the
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`U.S. District Court complaint, summons, and materials to Orrick, and requested confirmation that
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`Realtek accepts electronic service of the U.S. District Court complaint and materials. Id. at 1-2.
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`In response, Robert Benson of Orrick refused to accept electronic service on behalf of Realtek, on
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`June 12, 2022. Id. at 1.
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`On Friday June 24, 2022, a law firm in Taiwan was hired by AMD (Tai E International
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`Patent & Law Office) attempted delivery of the complaint and summons in this case on Realtek.
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`Ex. 7, Decl. of Chen, Liang-Chih of Tai E International Patent & Law Office (July 1, 2022), ¶ 1-
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`2. Upon visiting Realtek on June 28, 2022, Realtek’s security guard directed the Taiwanese
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`process server to Realtek’s mailroom. Id., ¶ 5. A Realtek mailroom clerk then took AMD’s
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`package and inspected the envelope. Id. After inspecting the envelope, the mailroom clerk
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`inquired about the nature of the documents and the process server informed the mailroom clerk
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`that these were legal documents from a U.S. law firm. Id. The mailroom clerk then made a phone
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`call and replied to the process server that Realtek refused to receive the documents. Id. Despite
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`the process server’s further explanation that these documents included complaints filed by AMD
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`and ATI in the U.S. District Court, the process server was asked to leave the building by the
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`Realtek security guard, and the guard then escorted him to leave the building. Id.
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`On July 6, 2022, with yet another attempt to avoid contested motion practice, Realtek’s
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`counsel at Orrick once again refused to agree to electronic service of the district court complaint
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`and summons in this action. Ex. 2.
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`At the same time, Realtek, through its counsel Orrick, also has been actively litigating in
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`the ITC’s 1318 Investigation. This includes their participation in the parties’ bi-weekly discovery
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`committee meeting teleconferences, occurring on June 17, 2022 and July 1, 2022. Also, for
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`example, on June 27, 2022, Realtek filed a verified response to the ITC complaint. Also in the
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`1318 Investigation, Realtek has propounded fifteen interrogatories and 121 document requests on
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`AMD.
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`II.
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`LEGAL STANDARDS
`A.
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`Alternative Service Is Appropriate by Email on a Taiwanese Defendant
`Where Reasonable Efforts Have Proven Unsuccessful
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`Rule 4(f)(3) of the Federal Rules of Civil Procedure allows for service of process outside
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`of the United States to be accomplished by “other means.” Fed. R. Civ. P. 4(f)(3). Such “alternate
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`service” must be directed by the Court, and not prohibited by international agreement. Id.; In re
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`Heckmann Corp. Securities Litigation, C.A. No. 10-378-LPS-MPT, 2011 WL 5855333, at *3 (D.
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`Del. Nov. 22, 2011). Service by email is not prohibited by international law for a Taiwanese
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`defendant. See, e.g., Rock Creek Networks, LLC v. Realtek Semiconductor Corp., Case No. 6-21-
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`cv-00081 (W.D. Tex.), Dkt. No. 10 (Mar. 30, 2021) (ordering alternative service on Realtek’s
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`outside counsel including at Orrick); DivX, LLC v. Realtek Semiconductor Corp. et al., Case No.
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`1-20-cv-01202 (D. Del.), Dkt. No. 19 (Feb. 5, 2021) (ordering alternative service on Realtek’s
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`outside counsel including at Orrick); see also STC.UNM v. Taiwan Semiconductor Mfg. Co. Ltd.,
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`2019 U.S. Dist. LEXIS 231994 at *3-4, *5 (granting a motion for alternate service on a Taiwanese
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`defendant through its U.S. Counsel”); see, e.g., UNM Rainforest Innovations v. D-Link Corp., No.
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`6-20-CV-00143-ADA, 2020 U.S. Dist. LEXIS 122328, at *9 (W.D. Tex. July 13, 2020)
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`(“[]Taiwan is not a signatory to the Hague convention, nor are they a signatory to any other treaty
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`related to the international service of judicial documents. Thus, D-Link cannot be served pursuant
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`to Hague Convention requirements.”).
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`“The court may require the plaintiff to show that reasonable efforts to serve the defendant
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`have been made and proven unsuccessful, and the court’s intervention is necessary to prevent more
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`futile attempts at service.” Heckmann Corp., 2011 WL 5855333, at *3. The plaintiff need not try
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`every permissible type of service for the Court to authorize alternate service, as Rule 4(f)(3) service
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`“is not a last resort or extraordinary relief.” Id.
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`Possible means of alternate service include: publication, ordinary mail, mail to the
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`defendant’s last known address, delivery to defendant’s attorney, delivery to the defendant’s
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`United States subsidiary, telex, and, increasingly, e-mail.” See e.g., Marks & Sokolov, LLC v.
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`Mireskandari, C.A. No. 13-3152, 2015 WL 1133788, at *5 (E.D. Pa. Mar. 11, 2015). Service
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`upon the foreign corporation’s counsel, for example by email, satisfies due process if “there is
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`regular contact between the attorney and the defendant.” Heckmann, 2011 WL 5855333, at *4;
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`see, e.g., Knit With v. Knitting Fever, Inc., C.A. No. 08-4221, 2010 WL 4977944, at *5 (E.D. Pa.
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`Dec. 7, 2010) (granting alternate service on counsel where the attorneys had regular contact with
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`the client, and the client had actual notice of the action); LG Elecs., Inc. v. ASKO Appliances, Inc.,
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`C.A. No. 08-828, 2009 WL 1811098, at *4 (D. Del. June 23, 2009) (allowing service on counsel).
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`III. ARGUMENT
`A.
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`Realtek Should Be Ordered To Accept Service by Electronic Means
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`“The rules governing service of process are not designed to create an obstacle course for
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`Plaintiffs to navigate, or a cat-and-mouse game for defendants who are otherwise subject to the
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`court’s jurisdiction.” Verizon Trademark Servs., LLC v. Producers Inc., 2011 WL 3296812, at *5
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`(M.D. Fla. Aug. 2, 2011) (quoting TRW Inc. v. Derbyshire, 157 F.R.D. 59, 60 (D. Co. 1994)).
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`Realtek has shown a pattern of cat-and-mouse tactics in avoiding service. For several reasons,
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`under these circumstances, this Court should permit alternate service by electronic means on
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`Realtek. See, e.g., Rock Creek Networks, LLC v. Realtek Semiconductor Corp., Case No. 6-21-
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`cv-00081 (W.D. Tex.), Dkt. No. 10 (Mar. 30, 2021) (ordering alternative service on Realtek’s
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`outside counsel including at Orrick); DivX, LLC v. Realtek Semiconductor Corp. et al., Case No.
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`1-20-cv-01202 (D. Del.), Dkt. No. 19 (Feb. 5, 2021) (ordering alternative service on Realtek’s
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`outside counsel including at Orrick); see also STC.UNM v. Taiwan Semiconductor Mfg. Co. Ltd.,
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`2019 U.S. Dist. LEXIS 231994 at *3-4, *5 (granting a motion for alternate service on a Taiwanese
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`defendant through its U.S. Counsel).
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`First, Realtek has appeared and is actively litigating in the 1318 Investigation at the ITC,
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`which involves the same five patents asserted in this case. It is represented by competent U.S.
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`counsel, who is actively advancing Realtek’s interests, including through issuing and responding
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`to hundreds of discovery requests in the ITC. In other words, there is clearly “regular contact
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`between the attorney and the defendant.” Heckmann, 2011 WL 5855333, at *4; Knit With, 2010
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`WL 4977944, at *5; LG Elecs., Inc.., 2009 WL 1811098, at *4.
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`Second, AMD’s counsel has made more than reasonable efforts to serve Realtek, which
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`have proven unsuccessful. These efforts include through informal means by seeking an acceptance
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`of service through Realtek’s ITC counsel, and in-house counsel, delivery by local process server
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`in Taiwan, and through formal means by international mail addressed by the Clerk requiring a
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`signed receipt, each of which have been refused or evaded by the recipient. Exs. 3-7. Accordingly,
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`repeated efforts to serve Realtek have been made, yet have proven unsuccessful. As demonstrated
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`by Realtek’s pattern of conduct, further attempts by this Court’s Office of the Clerk to serve
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`Realtek by international mail would be met with the same resistance. The Court’s intervention is
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`therefore necessary to prevent more futile attempts at service. Heckmann, 2011 WL 5855333, at
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`*3. As the court in Heckmann noted, the AMD need not try every permissible type of service for
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`the Court to authorize alternate service, because Rule 4(f)(3) service “is not a last resort or
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`extraordinary relief.” Id.
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`Third, such relief is eminently reasonable under the circumstances. The alternate service
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`pursuant to Rule 4(f)(3) sought must comport with due process, namely “notice that is reasonably
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`calculated, under the totality of the circumstances, to inform of the pending the action and allow
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`the opportunity to respond and object.” Id. Where, as here, those criteria are clearly met, it is
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`entirely within the Court’s discretion to grant alternate service. Id. Even better for AMD here,
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`there is no question that Realtek is already “informed of the pending action”—its counsel at Mann
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`Tindel has appeared in this action, and its counsel Orrick currently represents Realtek and is
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`actively participating in the 1318 ITC Investigation discovery process, and well as actively taking
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`positions on behalf of Realtek in this action.
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`Accordingly, the Court should exercise its considerable discretion in this case, and should
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`grant such alternate service on Realtek via email to its in-house counsel, its U.S. counsel at Mann
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`Tindel, and its U.S. counsel at Orrick.
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`IV. CONCLUSION
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`For at least the foregoing reasons, AMD respectfully moves this Court to grant AMD’s
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`request to effectuate service in this case via electronic mail to Defendant Realtek Semiconductor
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`Corp. (“Realtek”) United States (“U.S.”) through its in-house counsel, its outside U.S. counsel
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`Mann Tindel & Thompson appearing in this action on behalf of Realtek, and its outside U.S.
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`counsel at Orrick Herrington & Sutcliffe LLP representing Realtek in an ongoing International
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`Trade Commission (“ITC”) action.
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`Further, to the extent either Realtek or any party seeks stay of these proceedings pending
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`the parallel International Trade Commission case, AMD respectfully requests that the present
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`motion for alternate service be adjudicated before any such stay is entered. See, e.g., Lighting Sci.
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`Group Corp. v. Nichia Corp., 2019 U.S. Dist. LEXIS 232761 at *1-7 (Aug. 8, 2019).
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`Dated: July 11, 2022
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`By: /s/ Eric H. Findlay
`Eric H. Findlay
`State Bar No. 00789886
`Brian Craft
`State Bar No. 04972020
`FINDLAY CRAFT, P.C.
`102 N. College Ave. Suite 900
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`Tyler, Texas 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`Email: efindlay@findlaycraft.com
`Email: bcraft@findlaycraft.com
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`Michael T. Renaud
`James M. Wodarski
`Michael J. McNamara
`Adam S. Rizk
`William Meunier
`Marguerite McConihe
`Matthew A. Karambelas
`Catherine Xu
`Tianyi Tan
`MINTZ LEVIN COHN FERRIS
` GLOVSKY AND POPEO PC
`One Financial Center
`Boston, MA 02111
`617-542-6000
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`Attorneys for Plaintiffs ATI Technologies
`ULC and Advanced Micro Devices, Inc.
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` Pursuant to Local Rule CV-7(h)-(i), the undersigned has conferred with counsel for
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`CERTIFICATE OF CONFERENCE
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`Realtek, Robert Benson, and understands that Realtek does not consent to electronic service of the
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`summons and Complaint. Therefore, counsel for AMD believes that the Parties are at an impasse
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`on the issue and that Realtek is opposed to the relief sought in this motion.
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`/s/ Eric H. Findlay
`Eric H. Findlay
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing document
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`has been served on July 11, 2022 to all counsel of record who are deemed to have consented to
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`electronic service via the Court’s CM/ECF system.
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`/s/ Eric H. Findlay
`Eric H. Findlay
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`11
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