Case 2:22-cv-00134-JRG-RSP Document 39 Filed 08/01/22 Page 1 of 5 PageID #: 464
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`ADVANCED MICRO DEVICES, INC. and
`ATI TECHNOLOGIES ULC,
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` Plaintiffs,
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`v.
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`TCL INDUSTRIES HOLDINGS CO., LTD.,
`ET AL.,
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` Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:22-cv-00134-JRG-RSP
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`Before the Court is the Motion for Alternative Service filed by Plaintiffs Advanced Micro
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`ORDER
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`Devices, Inc. and ATI Technologies ULC. Dkt. No. 31. Having considered the Motion, the Court
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`finds that it should be GRANTED.
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`BACKGROUND
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`I.
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`Plaintiffs filed this action on May 5, 2022 alleging infringement of five United States
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`patents by Defendant Realtek Semiconductor Corp, among others. Dkt. No. 1. According to the
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`Complaint, Realtek is a Taiwanese corporation with its principal place of business in Taiwan. Id.
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`at ¶ 39. The five patents in this suit are also involved in a parallel proceeding before the
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`International Trade Commission, with Realtek being a party to the ITC proceeding. Realtek is
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`represented by U.S. counsel from the firms Mann Tindel & Thompson and Orrick Herrington &
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`Sutcliffe LLP in the ITC proceedings. Dkt. No. 31 at 1.
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`Plaintiffs have made multiple unsuccessful attempts to serve Realtek. On May 13, 2022,
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`Plaintiffs requested the Clerk of Court to send process via international mail pursuant to Fed. R.
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`Civ. P. 4(f)(2)(C)(ii). Id. at 4. The Clerk of Court on May 19, 2022 sent the necessary documents
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`via FedEx, but delivery was refused five times and ultimately returned to the Clerk of Court on
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`June 2, 2022. Id.
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`On June 8, 2022. Plaintiffs sent process to Realtek’s In-House General Counsel, Gina
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`Hung, in Hu Kou Hsiang, Taiwan, via email. Id. On June 9, 2022, upon Realtek’s U.S. counsel
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`filing a notice of appearance in the ITC proceeding, Plaintiffs forwarded the email with process to
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`U.S. counsel. On June 12, 2022, Robert Benson of Orrick responded to the email and refused to
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`accept electronic service. Id. at 5.
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`Later, on June 24, 2022, Plaintiffs hired a law firm in Taiwan to serve process on Realtek.
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`Id. On June 28, 2022, a representative from the Taiwanese law firm on Plaintiffs’ behalf visited
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`Realtek’s principal place of business in Taiwan and attempted to serve the documents. Id. Realtek
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`refused to accept the documents and Plaintiffs’ representative was escorted out of the building by
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`security. Id. Finally, on July 6, 2022, Plaintiffs asked Realtek’s U.S. counsel if it would accept
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`service via email and, again, Realtek refused.
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`While Plaintiffs were attempting to serve Realtek, it was actively participating in the ITC
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`proceeding. Realtek participated in bi-weekly discovery meetings; responded to the ITC
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`complaint; and sought discovery. Id. Because of Realtek’s refusal, Plaintiffs ask the Court to allow
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`Plaintiffs to effectuate service via email to Realtek’s U.S. counsel at Mann Tindel and at Orrick,
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`who are actively litigating the related ITC proceeding on behalf of Realtek.
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`II. LEGAL STANDARD
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`Under Federal Rule of Civil Procedure 4(h)(2), a foreign corporation, partnership, or other
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`unincorporated association located outside the United States must be served “in any manner
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`prescribed by Rule 4(f) for serving an individual, except personal delivery under (f)(2)(C)(i).” Fed.
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`R. Civ. P. 4(h)(2). Rule 4(f), in turn, states that an individual in a foreign country may be served:
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`(1) by any internationally agreed means of service that is reasonably calculated to
`give notice, such as those authorized by the Hague Convention on the Service
`Abroad of Judicial and Extrajudicial Documents;
`(2) if there is no internationally agreed means, or if an international agreement
`allows but does not specify other means, by a method that is reasonably
`calculated to give notice:
`(A) as prescribed by the foreign country’s law for service in that country in an
`action in its courts of general jurisdiction;
`(B) as the foreign authority directs in response to a letter rogatory or letter of
`request; or
`(C) unless prohibited by the foreign country’s law, by:
`(i) delivering a copy of the summons and of the complaint to the individual
`personally; or
`(ii) using any form of mail that the clerk addresses and sends to the
`individual and that requires a signed receipt; or
`(3) by other means not prohibited by international agreement, as the court orders.
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`Fed. R. Civ. P. 4(f).
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`Rule 4(f)(3) is “not a ‘last resort’ or a type of ‘extraordinary relief’ for a plaintiff seeking
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`to serve process on a foreign defendant.” In re OnePlus Tech. (Shenzhen) Co., Ltd., 2021 WL
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`4130643, at *3 (Fed. Cir. Sept. 10, 2021) (quoting Rio Props., Inc. v. Rio Int’l Interlink, 284 F.3d
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`1007, 1015 (9th Cir. 2002)). To the contrary, Rule 4(f)(3) “stands independently on equal footing”
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`with other methods of service under Rule 4(f). Id. (quoting Nuance Communications, Inc. v. Abbyy
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`Software House, 626 F.3d 1222, 1239 (Fed. Cir. 2010)). However, courts must be mindful that “Rule
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`4(f)(3) was not meant to displace the other rules for service in every instance in which alternative
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`means of service are seen as more convenient.” OnePlus, 2021 WL 4130643, at *3. District courts
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`are granted broad discretion in authorizing alternative service. Id. at *3–4.
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`Once a district court has determined to authorize service under Rule 4(f)(3), the court must
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`consider whether the requested means of alternative service comports with due process as to each
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`defendant. SIMO Holdings, Inc. et al. v. Hong Kong uCloudlink Network Tech. Co. Ltd., Case No.
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`2:20-CV-00003-JRG, 2020 WL 6578411, at *2 (E.D. Tex. June 15, 2020). “The method of
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`service crafted must be ‘reasonably calculated, under all circumstances, to apprise interested parties
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`of the pendency of the action and afford them an opportunity to present their objections.’” RPost
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`Holdings Inc. v. Kagan, Case No. 2:11-CV-238-JRG, 2012 WL 194388, at *2 (E.D. Tex. Jan. 23,
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`2012) (quoting Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S. 306, 312 (1950)).
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`III. DISCUSSION
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`First, the Court finds that the requested forms of alternative service are not prohibited by
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`international agreement because (1) Taiwan is not a signatory to the Hague Convention, see, e.g.,
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`Vista Peak Ventures, LLC v. GiantPlus Tech. Co., Ltd., No. 2:19-cv-00185-JRG, 2019 WL
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`4039917, at *2 (E.D. Tex. Aug. 27, 2019), and (2), even if it was a signatory, the alternative
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`methods would be effected in the United States and thus not implicate the Hague Convention.
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`Thus, the particular facts and relief sought here allow for alternative service under Rule 4(f)(3).
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`Second, the Court finds that refusal by Realtek to accept service—both by FedEx
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`international priority mail, which was authorized pursuant to Rule (4)(f)(2)(C)(ii), and by in-
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`person service by a Taiwanese representative of Plaintiffs—weighs in favor of granting alternative
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`service under Rule 4(f)(3). Stingray IP Solutions, LLC v. TP-Link Tech. Co., Ltd., 2021 WL
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`6773096, at *3 (E.D. Tex. Nov. 19, 2021) (“[T]he Court further finds that [Plaintiff’s] multiple
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`attempts to effectuate service—combined with [Defendants’] role in refusing to accept service by
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`FedEx mail following this Court's authorization of such service under Rule 4(f)(2)(C)(ii)—also
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`favors granting alternative service under Rule 4(f)(3).”).
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`Moving to the next step of the analysis—whether the alternative means comport with due
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`process—the Court finds that Plaintiffs’ requested alternative service upon U.S. counsel for
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`Realtek is reasonably calculated, under these circumstances, to apprise it of the pendency of the
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`action and afford them a fair opportunity to present their objections.
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`First, Plaintiffs have shown that Realtek is actively being represented by Orrick in the
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`parallel ITC proceeding and the ITC proceeding involves the same parties and patents. Dkt. No.
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`31 at 8. Second, U.S. counsel at Mann Tindel have appeared on behalf of Realtek in this case. Dkt.
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`Nos. 25, 26. Finally, Robert Benson of Orrick, who is also counsel for Realtek in the ITC
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`proceeding, has opposed the present Motion, along with other motions, in this case on behalf of
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`Realtek. See, e.g., Dkt. No. 31 at 10 (Certificate of Conference stating “counsel for Realtek, Robert
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`Benson, . . . does not consent to electronic service of the summons and complaint.”). Thus, the
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`Court concludes that service on U.S. counsel is reasonably calculated to apprise Realtek of this
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`proceeding, especially given that U.S. counsel at Mann Tindel have appeared in this case.
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`IV. CONCLUSION
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`In light of the foregoing, the Court GRANTS the Motion (Dkt. No. 31) and directs
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`Plaintiffs to serve process on Realtek under Rule 4(f)(3) by delivering via email the summons and
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`complaint to Realtek’s counsel of record in the ITC proceedings at Mann Tindel & Thompson and
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`Orrick Herrington & Sutcliffe LLP. Upon completion of such alternative service, Plaintiffs shall
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`file a Notice supported by a personal declaration as to the completion of such alternative service,
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`together with supporting receipts and/or other relevant documents, showing the date of such service
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`upon Realtek.
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`5
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 1st day of August, 2022.
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