With its well-established and robust legal system, including the right to a jury trial and the potential for large damages awards, the United States remains a popular venue for enforcing global patent rights. Further, while the availability for a potential plaintiff to select a desired venue for U.S.-based defendants has been curtailed by TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258 (2017), venue remains proper for foreign entities in any district where defendant’s contacts satisfy the state’s long-arm statute and federal due process. Brunette Machine Works v. Kockum Indus., 406 U.S. 706 (1972).

Service however is distinct from venue, and must comply with Federal Rule of Civil Procure 4. Whether service is proper is often a complicated analysis that involves due process considerations and flows from U.S. Constitutional principals and state laws. The Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (“Hague Convention”) purportedly facilitates transmission and service of legal documents between signatory countries through its Central Authority system. While this system theoretically reduces costs and saves time and resources, in reality, service is not guaranteed and often takes many months if successful at all.

Service of foreign defendants through the Hague Convention however may not always be necessary. In In re Aputure Imaging Industries Co., Ltd (Fed. Cir. 2024), the E.D. Texas permitted plaintiff (Rotolight) to serve (through substitute service) Chinese defendant Aputure by emailing the summons and complaint to Aputure's U.S. counsel.  Aputure sought mandamus relief to vacate the order permitting substitute service. The Federal Circuit denied Aputure’s mandamus petition because, while Rotolight had not complied with the Hague Convention to serve Aputure, Rotolight did comply with Rule 4(h), which governs service of a foreign corporation. Specifically, the Federal Circuit noted that Rotolight moved for and was granted its request to complete substitute service pursuant to a Texas statute that allowed for electronic service. The Federal Circuit noted that the district court’s authorized electronic substitute service pursuant to a state stature was permissible under Rule 4 (h)(2) which allows for service “in any manner prescribed by Rule 4(f) for serving an individual, except personal delivery under (f)(2)(C)(i).” Rule 4(f) permits service under the Hague Convention (4(f)(1)) if the defendant’s country is a signatory to the Hague Convention; by any other “method that is reasonably calculated to give notice” if the defendant’s country is not a party to the Hague Convention, or if the defendant’s Hague Convention country allows for, but does not specify other means of service; or generally “by other means not prohibited by international agreement, as the court orders.” In noting that district “courts are generally accorded broad discretion in determining whether to allow alternative means of service”, the Federal Circuit explained that “Rule 4(f)(2) does not displace Rule 4(f)(3), which permits service by ‘other court-ordered means not prohibited by international agreement.’”

This decision is consistent with recent previous Federal Circuit decisions on the issue, including In re Realtek Semiconductor Corp., (Fed. Cir. 2023), where in a similar set of circumstances, the Federal Circuit denied mandamus relief in finding that Rule 4(f3) “’stands independently’ and ‘on equal footing' with Rule 4(f)(2)’.”