Shenzhen Chengront Technology Co., Ltd v. Besign Direct
- Rochon
- 1:22-cv-10281
- U.S. District Court · Southern District of New York
- 5
Shenzhen Chengront v. Besign Direct: Judge Rochon denied emergency orders for a patent dispute, including a temporary restraining order and alternate service.
Shenzhen Chengront Technology Co., Ltd. could not obtain the requested emergency restraints or alternative service at this stage. Besign Direct and Shenzhen JianYi KeJi Youxian Gongsi were not subjected to the requested temporary restraining order, asset freeze, or expedited discovery, and the patent-infringement claims remained undecided.
What happened
Shenzhen Chengront Technology sued Besign Direct and Shenzhen JianYi KeJi Youxian Gongsi, alleging infringement of its adjustable-laptop-stand patent. It requested an emergency order stopping the alleged infringement and permission to serve the defendants by email and a secure website.
The court found that Shenzhen Chengront waited about ten months after learning of the alleged infringement before seeking emergency relief, which undermined its claim of immediate, irreparable harm. The court also found that the Hague Convention applied to service on the Chinese defendant and that, under the court’s analysis, China’s objections barred service by email.
Judge Rochon denied the temporary restraining order, alternate-service request, expedited discovery, security bond, and request to freeze the defendants’ assets. The court did not decide whether the patent was infringed; Shenzhen Chengront may renew its request for a preliminary injunction after service is completed or waived.
The detailed version
- Shenzhen Chengront Technology Co., Ltd v. Besign Direct · No. 1:22-cv-10281
- Rochon
- Dec. 9, 2022
Background
Shenzhen Chengront Technology Co., Ltd. sued Besign Direct and Shenzhen JianYi KeJi Youxian Gongsi for allegedly infringing a patent for an adjustable laptop stand. The complaint alleged that the parties had shared information about the invention in 2020, that the defendants initially purchased the invention from Shenzhen Chengront and sold it through Amazon, and that Besign Direct stopped purchasing the invention around February 2022 but continued selling an allegedly infringing product.
The same day it filed the lawsuit, Shenzhen Chengront sought an emergency temporary restraining order, permission to serve the defendants by alternative means under Federal Rule of Civil Procedure 4(f)(3), expedited discovery, a security bond, and an order freezing the defendants’ assets. The opinion notes that it was unclear whether Besign Direct was an entity or instead the trade name of an Amazon storefront.
Temporary Restraining Order
A temporary restraining order is an emergency court order. The court explained that the plaintiff had to show likely immediate and irreparable harm, a sufficient likelihood or serious question concerning success on the merits, and that the public interest favored relief. The court also noted that a significant delay in seeking emergency relief can show that immediate relief is not necessary.
Shenzhen Chengront confirmed at the December 8, 2022 hearing that it had known about the alleged infringement since February 2022. It nevertheless waited about ten months, until December 5, 2022, to sue and seek a temporary restraining order. The court concluded that this delay supported the inference that Shenzhen Chengront was not suffering irreparable harm requiring immediate relief. The court therefore denied the temporary restraining order. For the same reasons, it denied the related requests for expedited discovery, a security bond, and an order freezing the defendants’ assets.
Alternative Service
Shenzhen Chengront sought permission to serve the defendants in China by email and through a secure website containing copies of the summons, complaint, and any court order. Rule 4(f)(3) allows a court to order alternative service on a person in a foreign country, but the method cannot be prohibited by an applicable international agreement.
The court found that the Hague Convention applied because Shenzhen Chengront had alleged a specific address in China for Shenzhen JianYi KeJi Youxian Gongsi and had not conducted enough investigation to show that the address was inaccurate. The court explained that Shenzhen Chengront could renew the request after sufficient due diligence if it determined that the address was inaccurate.
The court relied on an earlier Southern District of New York decision’s analysis that China’s objection to service through postal channels also prohibited service by email. It rejected Shenzhen Chengront’s argument that urgent circumstances created an exception. The court therefore denied the request for alternative service.
Disposition
The court denied Shenzhen Chengront’s ex parte motion for a temporary restraining order and alternate service. It allowed Shenzhen Chengront to renew a preliminary-injunction request after service had been completed or waived and ordered Shenzhen Chengront to update the court about service efforts and prosecution of the case by January 9, 2023. The opinion did not decide the underlying patent-infringement claim.
Read the full 5-page opinion on CourtListener, the free public archive maintained by the Free Law Project.