Blitzsafe Texas, LLC v. Zhejiang Geely Holding Group Co., Ltd. et al

MOTION for Alternate Service of Defendants Geely Sweden Holdings AB, Volvo Car AB, and Volvo Car Corporation Pursuant to Fed. R. Civ. P. 4

E.D. Tex.April 4, 2018

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION BLITZSAFE TEXAS, LLC, Plaintiff, v. ZHEJIANG GEEHLY HOLDING GROUP CO., LTD, SHANGHAI GEELY ZHAOYUAN INTERNATIONAL INVESTMENT CO., LTD., GEELY SWEDEN HOLDINGS AB, VOLVO CAR AB, VOLVO CAR CORPORATION, AND VOLVO CAR USA, LLC, Defendants. § § § § § § § § § § § § § § § § § Case No. 2:17-cv-420-JRG JURY TRIAL DEMANDED PLAINTIFF BLITZSAFE TEXAS, LLC’S MOTION FOR ALTERNA TIVE SERVICE OF DEFENDANTS GEELY SWEDEN HOLDINGS AB, VOL VO CAR AB, AND VOLVO CAR CORPORATION PURSUANT TO FED. R. CIV. P. 4(h)(2) Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 1 of 10 PageID #: 536 Plaintiff Blitzsafe Texas, LLC (“Blitzsafe”) respectfully files this Motion for Alternative Service of Defendants Geely Sweden Holdings AB (“Geely”), Volvo Car AB (“Volvo AB”), and Volvo Car Corporation (“Volvo Car Corp.,” and togeth r with Geely and Volvo AB, the “Swedish Defendants”) pursuant to Fed. R. Civ. P. 4(h)(2) and 4(f)(3). Blitzsafe requests that this Court issue an order permitting it to serve the Swedish Defendants with the Second Amended Complaint by e-mail to their U.S. counsel because the Swedish Defendants are on notice of the action as a result of being served with the initial Complaint, have been in contact with their U.S.-based outside counsel regarding this action, and merely seek to delay these proceedings by refusing to accept service except through the Hague Convention. In the event that the Court does not so order the unopposed motion for leave to file a Second Amended Complaint (Dkt. 68), Blitzsafe respectfully requests this Court issue an order permitting it to serve the Swedish Defendants with the First Amended Complaint by e-mail to their U.S. counsel. I. INTRODUCTION AND FACTUAL BACKGROUND On May 12, 2017, Blitzsafe filed the present action against seven Volvo entities, including Swedish Defendants Geely, Volvo AB, and Volvo Car Corp., alleging infringement of U.S. Patent No. 7,489,786 (the “’786 Patent”) and U.S. Patent No. 8,155,342 (the “’342 Patent”). Dkt. 1 ¶¶ 12, 13. Immediately after initiating the action, Blitzsafe began the process of serving Defendants, who are Swedish companies, through the Hague Convention. Each Swedish Defendant was properly served with the initial Complaint: Geely was served on September 22, 2017 (Dkt. 37); and Volvo Car AB and Volvo Car Corp. were served on September 18, 2017 (Dkt. 48). On September 5, 2017, prior to completion of service of the initial Complaint on the Swedish Defendants in Sweden, Blitzsafe filed its Fr t Amended Complaint (“Amended Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 2 of 10 PageID #: 537 2 Complaint”) (Dkt. 29) in response to TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), addressing venue requirements as to domestic entities only. Specifically, Blitzsafe’s Amended Complaint added venue-related all g tions as to domestic defendants Volvo Car USA, LLC and Volvo Cars of North America, LLC. Id. The factual allegations as to the foreign defendants, acts of infringement, and Patents-in-Suit in the Amended Complaint are the same as the initial Complaint. Compare Dkt. 1 ¶¶ 12, 13, 14-35 with Dkt. 29 ¶¶ 28, 29, 30- 51. In an attempt to avoid the unnecessary delay inherent in complying with the service requirements of the Hague Convention, and prior to filing this Motion, Blitzsafe sought a waiver from the Swedish Defendants permitting informal service of the Amended Complaint by electronically serving the Swedish Defendants’ U.S. counsel, DLA Piper LLC (“DLA Piper”). Ex. 1 at 1 (E-mail from Mr. Mercadante to Ms. Jenkins, dated Feb. 22, 2018). DLA Piper was in regular communication with the Swedish Defendants, but did not provide Blitzsafe with a response for over a month. Ex. 2 at 1 (E-mail from Ms. Jenkins to Mr. Mercadante, dated March 9, 2018, stating they are “working with their clients” regarding service of the Amended Complaint); Ex. 3 at 1 (E-mail from Mr. Satchwell to Mr. Mercadante, dated March 27, 2018, stating they “circled back” with their clients). Ultimately, on the morning of a status conference with the Court, DLA Piper informed Blitzsafe that the Swedish Defendants would not authorize DLA Piper to accept service on their behalf. Ex. 3 at 1 (“Volvo . . . [has] instructed me not to accept service on the foreign entities.”). Concurrently herewith, Blitzsafe filed an unopposed motion (Dkt. 68) to file a Second Amended Complaint which includes reference to general venue patent statute 28 U.S.C. § 1391 (Dkt. 68-1 ¶ 22). This reference was included in the initial Complaint (Dkt. 1 ¶ 11) which was served upon the Swedish Defendants (Dkts. 37, 48), but was inadvertently omitted from the Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 3 of 10 PageID #: 538 3 Amended Complaint.1 Blitzsafe asked the Swedish Defendants if they would waive service of the Second Amended Complaint through the Hague Convention and permit DLA Piper to accept service on their behalf. Ex. 4 at 1-2 (E-mail from Mr. Satchwell to Mr. Mercadante, dated April 3, 2018). The Swedish Defendants refused Blitzsafe’ request. Id. at 1. II. ARGUMENT Service on an entity outside of the United States is governed by Federal Rule of Civil Procedure 4(h)(2) which permits service in any manner permitted by Rule 4(f) for serving an individual in a foreign country. Fed. R. Civ. P. 4(h)(2). Under Rule 4(f)(3), federal courts have discretionary authority to direct service “by other means not prohibited by international agreements.” Fed. R. Civ. P. 4(f)(3). A court can order any method of service so long as it is “reasonably calculated, under all the circumstances, to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections.” Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S. 306, 314 (1950). Issuing an order permitting alternative service on the Swedish Defendants via their U.S. counsel complies with the Federal Rules of Civil Procedure for many reasons. First, numerous courts permit service on a foreign defendant via its U.S. counsel to avoid unnecessary delay associated with serving a foreign defendant through the Hague Convention. See e.g., GLG Life Tech Corp. Sec. Litig., 287 F.R.D. 262, 266 (S.D.N.Y. 2012) (ordering alternative service via defendant’s counsel and noting that “courts have frequently cited delays in service under the Hague Convention as supporting an order of alternative service under Rule 4(f)(3)”); Brown v. 1 On March 27, 2018, in response to Blitzsafe’s notice of voluntary dismissal as to Defendant Volvo Cars of North America, LLC, the Court dismissed the action as to Defendant Volvo Cars of North America, LLC without prejudice. Dkt. 66. On April 4, 2018, Blitzsafe filed a notice of voluntary dismissal dismissing the action as to Defendants Zhejiang Geely Holding Group Co., Ltd. and Shanghai Geely Zhaoyuan International Investment Co., Ltd. (Dkt. 67) voluntarily and without prejudice. Defendants Volvo Cars of North America, LLC, Zhejiang Geely Holding Group Co., Ltd., and Shanghai Geely Zhaoyuan International Investment Co. Ltd. have been removed from the Proposed Second Amended Complaint. Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 4 of 10 PageID #: 539 4 China Integrated Energy, Inc., 285 F.R.D. 560, 562-66 (C.D. Cal. 2012) (ordering alternative service and noting that service under the Hague Convention would take four to six months); Ackerman v. Global Vehicles U.S.A., Inc., No. 4:11-cv-687, 2011 WL 3847427, at *3 (E.D. Mo. Aug. 26, 2011) (authorizing service on defendant’s U.S. counsel “so as to not further delay” the lawsuit); Knit With v. Knitting Fever, Inc., No. 08-4221, 2010 WL 4977944, at *5 (E.D. Pa. Dec. 7, 2010) (granting plaintiff leave to serve a defendant via its U.S. counsel where Hague Convention service would take up to three months). Blitzsafe has already served the Swedish Defendants with the initial Complaint through the Hague Convention which took approximately four months. Dkts. 37, 48. It would likely take Blitzsafe at least another four months to serve the Swedish Defendants through the Hague Convention with the Second Amended Complaint. An order permitting Blitzsafe to serve the Swedish Defendants’ U.S. counsel would avoid this unnecessary delay. Second, an order permitting alternative service via the Swedish Defendants’ U.S. counsel is permitted by Rule 4(f)(3) because it is not in co travention of international agreement, i.e., the Hague Convention. The rules and procedures regarding service set forth by the Hague Convention are only applicable “in civil or commercial matters, where there is occasion to transmit a judicial or extrajudicial document for service abroad.” Hague Convention, Art. 1. If valid service occurs within the United States-the relief Blitzsafe is requesting-the Hague Convention would not be implicated, regardless of the Swedish Defendants’ location abroad. See Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694, 707 (1988) (“Where service on a domestic agent is valid and complete under both state law and the Due Process Clause, our inquiry ends and the Convention has no further implications. Whatever internal, private communications take place between the agent and a foreign principal are beyond the concerns Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 5 of 10 PageID #: 540 5 of this case.”); Brown, 285 F.R.D. at 564 (“The mere fact that the foreign individual defendants reside in a country that is a signatory to the [Hague] Convention, however, does not compel the conclusion that the Convention applies to service on th se defendants.”). Third, service on the Swedish Defendants through their U.S. counsel, DLA Piper, comports with due process as the Swedish Defendants are on notice of the claims asserted against them and have been in communication with their U.S. counsel regarding this case. Ex. 2 (email from DLA Piper stating they are “working with heir clients” regarding service of the Amended Complaint); Ex. 3 (email from DLA Piper stating they “circled back with their clients”). The Swedish Defendants cannot argue that they are not apprised of the pendency of the action or the claims asserted against them becaus they were served with the initial Complaint through the Hague Convention over six months ago (Dkts. 37, 48), and the initial Complaint contains the same claims of infringement of the same patents as the Second Amended Complaint (Compare Dkt. 1 ¶¶ 12, 13, 14-35 with Dkt. 68-1 ¶¶ 24, 25, 32-47). Moreover, service on the Swedish Defendants through their U.S. counsel will adequately apprise the Swedish Defendants of the contents of the Second Amended Complaint and afford them an opportunity to present their objections as DLA Piper has been in regular communication with them regarding this litigation. Exs. 2, 3. Courts regularly find that service on a foreign defendant’s U.S. counsel comports withdue process where, like here, a defendant is in regular contact with its U.S. counsel. See Canal Indem. Co. v. Castillo, No. DR-09-CV- 43-AM-CW, 2011 WL 13234740, at *2 (W.D. Tex. Mar. 30, 2011) (finding service on foreign defendant through its U.S. counsel comported with due process because defendant was in regular communication with its U.S. counsel); Knit With, 2010 WL 4977944, at *5 (granting plaintiff leave to serve defendant via counsel in the U.S., in part, because “it [wa]s abundantly Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 6 of 10 PageID #: 541 6 clear that both [defendants] possess full notice of both the lawsuit as a whole and the contents of the Complaint”); Marlabs Inc. v. Jakher, No.07-cv-04074, 2010 WL 1644041, at *3 (D.N.J. Apr. 22, 2010) (finding that service upon the foreign defendant through his attorney comports with constitutional due process since defendant was clearly on notice of the contents of the instant complaint and had regular contact with its at orney). Accordingly, Blitzsafe requests an order permitting it to serve the Swedish Defendants with the Second Amended Complaint by e-mail through their U.S. counsel, DLA Piper. See, Nuance Commc'ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1239-40 (Fed. Cir. 2010) (determining that service via defendant’s attorney is permitted under Rule 4(f)(3) because it comports with due process and foreign law considerations); Canal Indem. Co., 2011 WL 13234740, at *2 (same); Marlabs, Inc., 2010 WL 1644041, at *3 (same); Knit With, 2010 WL 4977944 (same). III. CONCLUSION Accordingly, Blitzsafe respectfully requests that the Court grant its Motion for Alternative Service and issue an Order permitting Blitzsafe to serve Swedish Defendants Geely, Volvo AB, and Volvo Car Corp. with the Second Amendd Complaint via e-mail to their U.S. counsel, DLA Piper. Dated: April 4, 2018 Respectfully submitted, BROWN RUDNICK LLP /s/ Alfred R. Fabricant Alfred R. Fabricant NY Bar No. 2219392 Email: afabricant@brownrudnick.com Peter Lambrianakos NY Bar No. 2894392 Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 7 of 10 PageID #: 542 7 Email: plambrianakos@brownrudnick.com Vincent J. Rubino, III NY Bar No. 4557435 Email: vrubino@brownrudnick.com Joseph M. Mercadante NY Bar No. 4784930 Email: jmercadante@brownrudnick.com Alessandra C. Messing NY Bar No. 5040019 Email: amessing@brownrudnick.com Shahar Harel NY Bar No. 4573192 Email: sharel@brownrudnick.com John A. Rubino NY Bar No. 5020797 Email: jrubino@brownrudnick.com Daniel J. Shea NY Bar No. 5430558 Email: dshea@brownrudnick.com BROWN RUDNICK LLP 7 Times Square New York, NY 10036 Telephone: 212-209-4800 Facsimile: 212-209-4801 Samuel F. Baxter Texas State Bar No. 01938000 sbaxter@mckoolsmith.com Jennifer L. Truelove Texas State Bar No. 24012906 jtruelove@mckoolsmith.com McKOOL SMITH, P.C. 104 East Houston Street, Suite 300 Marshall, Texas 75670 Telephone: 903-923-9000 Facsimile: 903-923-9099 ATTORNEYS FOR PLAINTIFF, BLITZSAFE TEXAS, LLC Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 8 of 10 PageID #: 543 8 CERTIFICATE OF CONFERENCE Pursuant to Local Rule CV-7(h), Alfred Fabricant, counsel for Blitzsafe Texas, LLC conferred with Matthew Satchwell, counsel for Defenda ts Geely Sweden Holdings AB, Volvo Car AB, and Volvo Car Corporation (collectively, the “Swedish Defendants”) by telephone on March 28, 2018 regarding the motion for alternative service. On April 3, 2018, Mr. Satchwell confirmed via e-mail that the Swedish Defendants oppose the relief sought in this motion. /s/ Joseph M. Mercadante Joseph M. Mercadante Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 9 of 10 PageID #: 544 CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3) on April 4, 2018. /s/ Alfred R. Fabricant Alfred R. Fabricant Case 2:17-cv-00420-JRG Document 69 Filed 04/04/18 Page 10 of 10 PageID #: 545