Fellow Industries, Inc. v. Turlyn International, Inc.

Background

Fellow Industries filed a patent-infringement lawsuit concerning a kettle design against several defendants. The amended complaint named four U.S.-based defendants and five China-based defendants, including Haier Information Technology and Haier Global Trading. Fellow Industries said it had served the U.S.-based defendants through traditional methods. Three of the five China-based defendants later waived service, so the motion ultimately concerned only Haier Information Technology and Haier Global Trading.

Fellow Industries asked the court to authorize service by email under Rule 4(f)(3) of the Federal Rules of Civil Procedure. That provision allows a court to order service abroad by means that are not prohibited by an international agreement. The proposed email address was buyer.sda@haierhk.com. Fellow Industries relied in part on communications with Lauren Kerwin concerning Haier America and on counsel’s statement that an investigative firm had determined that both China-based defendants used the proposed email address.

Court’s Analysis

The court began with the Hague Service Convention because both the United States and China are parties to it. The Convention generally governs service of judicial documents abroad in civil or commercial cases and provides approved service methods. The court explained that Rule 4(f)(3) cannot be used in a manner prohibited by the Convention.

The court rejected Fellow Industries’ reliance on Rio Properties because that case involved Costa Rica, which was not a party to the Convention. The court also rejected the argument that urgency justified email service. Fellow Industries asserted that it faced irreparable harm from the defendants’ continuing misappropriation of intellectual property, but the court found no evidence of an urgent need, such as an extended delay by China’s central service authority or an unknown physical address. The court stated that accepting the plaintiff’s brief assertions would make the urgency exception apply in every misappropriation case.

The court further held that, even if urgency had been shown, Fellow Industries had not established that email service was reasonably calculated to notify the two defendants and give them an opportunity to respond. Communications with Kerwin concerned Haier America, and Kerwin did not say that she represented the China-based defendants or was authorized to accept service for them. The court also found that counsel’s statement about the defendants’ use of the proposed email address lacked a supporting foundation because Fellow Industries did not provide evidence explaining how that determination was made.

Ruling

The court concluded that the proposed email service did not satisfy Rule 4(f) or constitutional due process. It denied without prejudice Fellow Industries’ Motion to Serve Defendants Haier Information Technology and Haier Global Trading by Alternative Means. The court stated that it might consider a future motion if Fellow Industries showed that China’s Ministry of Justice was unwilling to carry out service, that the defendants’ physical addresses were unknown and could not reasonably be identified, or that another exception to the Hague Service Convention applied.