The case of the day is In re Aperture Imaging Industries Co. (Fed. Cir. 2024). Rotolight sued Aperture for patent infringement in the Eastern District of Texas. Aperture is based in China. Rotolight sought leave under Texas Rule of Civil Procedure 106(b) to serve Aperture by email served on its counsel.

The court authorized the service over Aperture’s objections, and Aperture sought review of the order by writ of mandamus. To prevail, it had to show that its right to relief was “clear and indisputable.” It argued that Rotolight should have had to try service under the Hague Service Convention first, citing FRCP 4(f)(2) and 4(h)(2).

The Federal Circuit correctly denied the petition. Even if FRCP 4(f) and 4(h)(2) applied,¹ it’s well established that a plaintiff doesn’t have to try the other methods of service in FRCP 4(f) before resorting to a motion for alternative service under FRCP 4(f)(3). That’s easy.

But there’s a more intriguing point. Alternate service on a foreign party’s US counsel, though pretty common, is doctrinally shaky. The citation to Texas civil procedure really helps to illustrate why the practice is shaky. If the service is service abroad, then FRCP 4(e)(1), which incorporates state law methods of service, simply doesn’t apply, because FRCP 4(e) applies only to service within the United States. But most of the cases that authorize service on a company abroad by serving the US lawyer point to FRCP 4(f)(3), which, like all of Rule 4(f), applies only to service made outside the United States.

The court noted that the lower court had apparently decided that the service could be made in the United States, and thus Rule 4(f) didn’t apply at all. This raises the question, which the court, perhaps unsurprisingly given the posture of the case, doesn’t really get into: when you serve process on a foreign company by delivering the summons and complaint to someone in the United States, are you serving process in the United States, or in the foreign country?

We know from Volkswagen that, at least as far as the United States is concerned, when you deliver a summons and complaint to a US subsidiary of a foreign company, there is no “occasion to transmit” the documents abroad for service. This seems clearly correct. First, the Convention (art. 1) speaks of an occasion to transmit a document abroad for service (doit être transmis à l’étranger pour y être signifié ou notifié). The transmission is not the same as the service; the transmission is for the purpose of allowing the service to happen. Second, the policies that underlie the limitations on just letting American cowboys fire off summonses to China or Germany or wherever have to do with the foreign states’ assertion that serving process in their territory without their permission infringes their judicial sovereignty; but delivering papers to a US lawyer of subsidiary can’t really raise those concerns.

But what about the service? Here are the possibilities, I think.

• The service is effected outside of the United States, and that is why it’s proper to seek leave to serve under FRCP 4(f)(3).
• The service is effected inside the United States, but the cases that cite FRCP 4(f)(3) are correctly decided, because the limitation in FRCP 4(f) to service outside the United States is referring to where the mystical effect of the service is felt, not where the documents are delivered. The delivery of documents in the United States has some sort of “spooky action at a distance.” It’s not clear in this case whether service under a method permitted by state law works.
• The service is effected inside the United States, and so the cases that cite are FRCP 4(f)(3) are wrongly decided, and Rotolight was right to cite a state law method of service.

Image credit: Håkan Bergknut (CC BY-SA)

1. Rule 4(h)(2) incorporates the provisions of Rule 4(f), except for personal delivery, when the defendant is a corporation being served abroad.