United States District Court, N.D. California, San Jose Division
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFF'S MOTION FOR SUBSTITUTED SERVICE RE: DKT. NOS.
VIRGINIA K. DEMARCHI UNITED STATES MAGISTRATE JUDGE.
Celgard, LLC (“Celgard”) filed this patent
infringement action on September 16, 2019. Defendants are
Shenzhen Senior Technology Material Co. Ltd.
(“Senior-China”) and Shenzhen Senior Technology
Material Co. Ltd. (US) (“Senior-US”). According
to defendants, Senior-China is a publicly traded Chinese
corporation, and Senior-U.S. is a California corporation and
subsidiary of Senior-China. Dkt. No. 30 at ECF 6-7.
now moves for an order for “substituted service”
under Rule 4(f)(3).Specifically, Celgard asks that the Court
not only permit defendants to be served via their U.S.
counsel, Latham & Watkins LLP, but also retroactively
deem service to be effective as of September 17, 2019 when
Celgard emailed a copy of the complaint and summons to
counsel at the Silicon Valley office of another law firm,
Ropes & Gray LLP.
the present motion was filed, Celgard filed a proof of
service with respect to Senior-U.S. Dkt. No. 29. Celgard and
Senior-U.S. have since stipulated that Senior-U.S. may have
an extension of time to November 21, 2019 to respond to
Celgard's complaint. Dkt. No. 32. Celgard's pending
motion for alternate service therefore is deemed moot as to
Senior-China, the dispute over alternate service remains
unresolved. The United States and China are signatories to
the Hague Convention, which provides a means of effecting
service of process in this matter. However, the parties'
respective papers indicate that the timing and manner of
service are not the focus of their ongoing disagreement.
Indeed, Senior-China is willing to waive formal service of
process, and Celgard apparently is willing to give
Senior-China until December 16, 2019 (a date proposed by
Senior-China) to respond to the complaint. Dkt. No. 30 at ECF
5; Dkt. No. 33 at ECF 10, 11. In the course of negotiating a
possible compromise, however, both Celgard and Senior-China
sought to impose additional, extraneous conditions on one
another. Senior-China required Celgard to agree to refrain
from moving for preliminary injunctive relief at any time
before Senior-China responds to the complaint. For its part,
Celgard insisted that defendants waive their right to proceed
before a district judge appointed under Article III of the
U.S. Constitution, and instead consent to the jurisdiction of
a magistrate judge for all proceedings in this matter,
including trial. The parties apparently are now before the
Court because they could not reach agreement on their
respective proposed additional terms.
Court offers no comment on the parties' additional
conditions, except to say that they have no bearing on the
present motion. The sole question presented is whether the
Court should permit Senior-China to be served by a means
other than through the Hague Convention. Upon consideration
of the moving and responding papers, the Court grants the
motion in part and denies it in part.
4(f) governs service of process on individuals and
corporations outside the United States, and authorizes
service “by any internationally agreed means of
service, ” including through the Hague Convention.
Fed.R.Civ.P. 4(f)(1); see also Fed. R. Civ. P. 4(h).
Alternatively, Rule 4(f)(3) allows service “by other
means not prohibited by international agreement, as the court
orders.” Fed.R.Civ.P. 4(f)(3). Rule 4(f)(3) does not
“create a hierarchy of preferred methods of service of
process, ” and “service of process under Rule
4(f)(3) is neither a last resort nor extraordinary
relief.” Rio Properties, Inc. v. Rio Int'l
Interlink, 284 F.3d 1007, 1014-15 (9th Cir. 2002)
(internal quotations and citation omitted). Rather, the rule
“is merely one means among several which enables
service of process on an international defendant.”
Id. at 1015. All that Rule 4(f)(3) requires is
service (1) directed by the court and (2) not prohibited by
international agreement. Id. at 1014. Additionally,
the alternate means of service must comport with due process.
Id. at 1016. China is a signatory to the Hague
Convention, and ordinarily, should be served in that manner
unless the Court, in its discretion, determines that
“the particularities and necessities of a given case
require alternate service of process under Rule
Senior-China points out that Celgard has not yet attempted
service under the Hague Convention, as noted above, Rule 4(f)
does not prefer or require service by other means. Rio
Properties, Inc., 284 F.3d at 1015 (“[N]o language
in Rules 4(f)(1) or 4(f)(2) indicates their primacy, and
certainly Rule 4(f)(3) includes no qualifiers or limitations
which indicate its availability only after attempting service
of process by other means.”); see also In re LDK
Solar Sec. Litig., No. C07-05182 WHA, 2008 WL 2415186,
at *2 (N.D. Cal. June 12, 2008) (“Significantly, [Rule]
4(f)(3) stands independently of [Rule] 4(f)(1); it is not
necessary for plaintiffs to first attempt service through
‘internationally agreed means' before turning to
‘any other means not prohibited by international
agreement.'”) (quoting Rule 4(f)(1), (3)).
proposes to serve Senior-China through its U.S. counsel and
seeks retroactive permission to serve Ropes & Gray
through the September 17 email Celgard sent to that firm. The
Court declines to retroactively authorize the September 17
email, which was sent before Celgard sought leave to do so.
Brockmeyer v. May, 383 F.3d 798, 806 (9th Cir. 2004)
(stating that plaintiffs “must obtain prior court
approval for the alternative method of serving
Senior-China argues that service through email or Federal
Express is not allowed without prior court approval,
Senior-China does not contend that service on its U.S.
litigation counsel at Latham & Watkins through such means
is prohibited by the Hague Convention or any other
international agreement. Rather, Senior-China argues that the
circumstances of the present action do not support alternate
service at all.
justification for alternate service is weak. Celgard makes an
unsupported claim that service through the Hague Convention
will be too cumbersome and costly. Generally, the fact that
alternate service will be faster does not, by itself, justify
service by alternate means. Keck v. Alibaba.com,
Inc., 330 F.R.D. 255, 259 (N.D. Cal. 2018). Nor has
Celgard convincingly demonstrated that there is any
particular urgency in this matter.
same time, however, Senior-China indisputably already has
actual notice of this action. Indeed, both defendants have
been actively communicating with Celgard and acting in this
litigation through their counsel at Latham & Watkins. As
noted above, Senior-U.S. has been served. Permitting
alternate service as to Senior-China therefore will ensure
that this matter will be able to proceed without undue delay.
Accordingly, the Court authorizes service via email and
Federal Express on Latham & Watkins, Senior-China's
U.S. counsel in this litigation. Celgard shall proceed to
effect such service forthwith, and in any event, no later
than November 4, 2019. The Court finds that, under the
circumstances presented, these means of service comport with
due process. See Juicero, Inc. v. iTaste Co., No.
17-cv-01921-BLF, 2017 WL 3996196, at *3 (N.D. Cal. June 5,
2017) (finding that alternate service was reasonably
calculated to apprise defendants of the pending action where
the defendants were already in contact with plaintiff through
their U.S.-based legal counsel). Senior-China shall have
until December 16, 2019 to respond to the complaint.