Tag Archives: Japan

Case of the Day: Akebia Therapeutics v. Fibrogen

The case of the day is Akebia Therapeutics, Inc. v. Fibrogen, Inc. (9th Cir. 2015). Fibrogen, a San Francisco biotech company, owns European and Japanese patents on the use of certain chemical compounds to treat anemia. Akeiba, a competitor, brought opposition proceedings in the European Patent Office and the Japanese Patent Office, asserting that the patents are invalid. Akeiba brought an application under § 1782 seeking leave to serve subpoenas for documents and testimony on Fibrogen. The judge granted the application ex parte, and Fibrogen appealed.
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Case of the Day: South Carolina v. Hitachi Displays, Ltd.

The case of the day is South Carolina v. Hitachi Displays, Ltd. (D.S.C. 2013). South Carolina sued Epson Imaging Devices Corp., a Japanese company, for conspiring to fix prices on thin film transistor-liquid crystal display panels. The case had been stayed pending resolution of a petition for certiorari in the Supreme Court. The state asked Epson’s US counsel to accept service by email, but he refused. It then sought to serve Epson in Japan via the Japanese central authority, but its request apparently used an old address for Epson, and the central authority could not effect service.

South Carolina then sought leave under FRCP 4(f)(3) to make service on Epson via its US counsel. The judge denied the motion. For the most part, this seems a permissible exercise of the judge’s discretion, even if it would also have been permissible and probably advisable to allow the state to make service by alternative means: the judge found that Epson’s correct address was readily obtainable, and that because of the stay South Carolina had adequate time to effect service via the Japanese central authority. The only sour note is the judge’s characterization of service on US counsel as “improper.” I think this has the potential to mislead. Service on US counsel wouldn’t be improper; but that doesn’t mean the judge had to permit it.

Case of the Day: Montana Trucks, LLC v. UD Trucks North America, Inc.

The case of the day is Montana Trucks, LLC v. UD Trucks North America, Inc. (D. Mont. 2013). UD Trucks was headquartered in Saitama, Japan. Montana Trucks sought leave under FRCP 4(f)(3) to serve the summons and complaint by mail and courier, and to serve the documents without a translation.

Let’s pause for a moment. Article 10(a) of the Hague Service Convention provides that the Convention does not interfere with the freedom to send judicial documents via the postal channel. Why, then, did Montana Trucks think it necessary to seek leave of court? FRCP 4(f)(1) permits service by “any internationally agreed means of service … such as those authorized by the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents,” and FRCP 4(f)(2)(C)(ii) permits service by mail, unless prohibited by the foreign country’s law. But FRCP 4(f)(2)(C)(ii) applies only “if there is no internationally agreed means, or if an international agreement allows but does not specify other means.”

I have previously noted a split of authority about whether the Convention affirmatively authorizes service by mail, or whether, on the other hand, it merely permits service by mail. If the Convention itself authorizes service by mail, then Montana Trucks could simply have mailed the documents under FRCP 4(f)(1), without leave of court. The Hague Convention’s translation requirements apply only when the service of process is to be effected under Article 5, via the foreign state’s central authority. So assuming that on the facts of the case the service of untranslated documents does not pose any Due Process problems, there was no reason for a motion.

If, on the other hand, the Convention does not affirmatively authorize service by mail—and I believe this is the better reading of Article 10—is service by FRCP 4(f)(2)(C)(ii) available? In prior posts, I’ve more or less assumed that it is, noting only that in such cases the mail must be addressed and sent by the clerk rather than the plaintiff, as FRCP 4(f)(2)(C)(ii) requires on its face. But remember that FRCP 4(f)(2) comes into play only “if there is no internationally agreed means, or if an international agreement allows but does not specify other means.” In a Hague Convention case there are internationally agreed means. So the question is whether the Convention “allows but does not specify other means.” It seems to me the answer is “no.” The Convention specifies all of the means it allows, including service by postal channels. It seems to me that the language of FRCP 4(f)(2) doesn’t relate to the Hague Convention, but rather to conventions such as the Inter-American Convention on Letters Rogatory, which are non-exclusive, i.e., which authorize particular methods of service but which do not forbid otherwise applicable methods of service.

So although I don’t know offhand of cases on point, I think that if you want to serve process via postal channels under the Convention, and if you are in a jurisdiction like the Ninth Circuit that holds that the Convention itself does not affirmatively authorize service of process, yes, you should bring a motion for leave of court under FRCP 4(f)(3).

The court, after a longer discussion than was really necessary, approved service by mail. So far so good. But the court then rejected the motion for leave to serve untranslated documents. It did so in part on due process grounds, which is conceivably correct, though given that the defendant was apparently a sophisticated business entity, it’s questionable whether there was really a due process concern here. More troublesome was the judge’s conclusion that the Convention required translations. As I have previously pointed out, translations are only required if the service is to be made via the Central Authority. So the judge got this point wrong.