Case 2:17-cv-00517-JRG Document 78 Filed 07/20/18 Page 1 of 6 PageID #: 1044
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT, LLC,
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`Plaintiff,
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`v.
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`ZTE CORPORATION, ZTE (TX), INC.,
`ZTE (USA) INC.,
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`CIVIL ACTION NO. 2:17-CV-00517-JRG
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`Defendants.
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`ORDER
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`Before the Court is Plaintiff AGIS Software Development, LLC’s (“AGIS”) Motion for
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`Alternative Service of Defendant ZTE Corporation Pursuant To Fed. R. Civ. P. 4(f)(3) (“the
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`Motion”). (Dkt. No. 64). Having considered the Motion and the relevant authorities, the Court is
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`of the opinion that the Motion should be DENIED for the reasons set forth below.
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`I.
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`Background
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`On June 21, 2017, AGIS initiated the present patent infringement action against ZTE Corp.
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`(“ZTE”), and its subsidiary ZTE (TX), Inc. (Dkt. No. 1 ¶¶ 7-10). Following commencement of
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`the action, AGIS began the process of serving ZTE, a Chinese company, through the Hague
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`Convention, a process that AGIS represents “was expected to take three to six months.” (Dkt. No.
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`64 at 2; Dkt. Nos. 64-2, 64-3). Through its process server, AGIS provided copies and translations
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`of the Summons and the Complaint to the Central Authority of China, specifically, the Bureau of
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`International Judicial Assistance, Ministry of Justice of the People’s Republic of China (“Central
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`Authority”), for service on ZTE in China. (Id.) The Central Authority received the Summons and
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`the Complaint on August 24, 2017. (Id. (citing Dkt. No. 64-4)).
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`Case 2:17-cv-00517-JRG Document 78 Filed 07/20/18 Page 2 of 6 PageID #: 1045
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` On October 17, 2017, AGIS amended the initial Complaint under Rule 15(a)(1)(B) to, inter
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`alia, add ZTE (USA), Inc., another wholly-owned subsidiary of ZTE Corp., as a defendant and
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`add allegations of infringement as to another AGIS patent. (Dkt. No. 32 ¶¶ 3, 16). AGIS has not,
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`to date, been served with even the original Complaint. (Dkt. No. 64 at 10 (estimating that the
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`earliest that ZTE will be served is “sometime in August”)). AGIS has identified McDermott Will
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`& Emery LLP as counsel for ZTE in an unrelated case in this District and in proceedings before
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`the PTAB (Id. at 3). AGIS sought a waiver of service from ZTE permitting “informal service of
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`the Summons and the Complaint and the Amended Complaint by electronically serving ZTE
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`Corp.’s U.S. Counsel” on April 21, 2018. (Id.) No response was received, and no indication that
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`ZTE would consent to such service is present in the briefing. (Id.; see generally Dkt. Nos. 64, 68,
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`70, 74).
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`On May 21, 2018, AGIS filed the instant Motion.
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`II.
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`Discussion
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`Pursuant to Fed. R. Civ. P. 4(c)(1), after a case is filed, the Plaintiff must serve upon the
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`named Defendants both a copy of the complaint filed with the Court and a summons. Service of
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`a complaint without the summons is not effective; service of a summons without a copy of a
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`complaint is equally not effective. See Wright & Miller, 4A Fed. Prac. & Proc. Civ. § 1093 (4th
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`ed.). Moreover, service of a superseded complaint with summons also does not satisfy Rule 4,
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`because a superseded complaint is “a mere scrap of paper.” Id. It is clear that an “amended
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`complaint supersedes the original complaint and renders it of no legal effect unless the amended
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`complaint specifically refers to and adopts or incorporates by reference the earlier pleading.” King
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`v. Dogan, 31 F.3d 344, 346 (5th Cir. 1994); see also Boelens v. Redman Homes, Inc., 759 F.2d
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`2
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`504, 508 (5th Cir. 1985); Bosarge v. Mississippi Bureau of Narcotics, 796 F.3d 345, 440 (5th Cir.
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`2015).
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`Service on an entity outside of the United States is governed by Federal Rule of Civil
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`Procedure 4(h)(2), which permits service in any manner permitted by Rule 4(f) for serving an
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`individual in a foreign country. Fed. R. Civ. P. 4(h)(2). Rule 4(f) provides that service in a foreign
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`country may be made “by any internationally agreed means of service that is reasonably calculated
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`to give notice, such as those authorized by the Hague Convention on the Service Abroad of Judicial
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`and Extrajudicial Documents.” Fed. R. Civ. P. 4(f)(1). As an alternative, federal courts have
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`discretionary authority pursuant to Rule 4(f)(3) to direct service “by other means not prohibited by
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`international agreements.” Fed. R. Civ. P. 4(f)(3). A court may order any method of service so
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`long as it is “reasonably calculated, under all the circumstances, to apprise interested parties of the
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`pendency of the action and afford them an opportunity to present their objections.” Mullane v.
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`Cent. Hanover Bank & Trust Co., 339 U.S. 306, 314 (1950).
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`AGIS’s argument in support of its motion is based on three core assertions: (i) that service
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`on ZTE’s counsel or domestic subsidiaries is not prohibited by the Hague Convention; (ii) that
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`service on ZTE’s counsel or domestic subsidiaries comports with due process; and, (iii) that service
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`in such a manner is warranted in the interests of judicial economy. (Dkt. No. 64 at 5–9).
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`However, as this Court recently noted in Blitzsafe Texas LLC v. Geely Sweden Holdings
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`AB, et al., “[t]his is not a case where the Court must consider the relief of alternative service
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`because defendants are hiding, being evasive, or otherwise engaging in trickery and gamesmanship
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`in order to skirt proper summons.” 2:17-cv-420-JRG, Dkt. No. 83, slip copy at 2 (E.D. Tex. June
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`27, 2018); see also id. at 2 n.2 (collecting cases permitting alternative service where subterfuge
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`3
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`was present). To the contrary, service of the original complaint remains ongoing and appears close
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`to completion.
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`AGIS argues that the “unnecessary delay associated with serving a foreign defendant
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`through the Hague Convention” warrants disregarding its availability and relying on the
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`extraordinary measure of alternative service. (Dkt. No. 64 at 9). In support, AGIS points to the
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`Advisory Committee’s Notes to Rule(f)(3) which note the use of alternative methods of service is
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`warranted when “the foreign country’s Central Authority [fails] to effect service within the six-month
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`period provided by the [Hague] Convention.”
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`However, AGIS rendered its Original Complaint non-operative upon filing its Amended
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`Complaint a mere two months after it began service through the Hague Convention. (Dkt. No. 32). It
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`is not disputed that the Amended Complaint adds several new legal theories, a new defendant, and
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`a new asserted patent. The original Complaint has been superseded and rendered of “no legal
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`effect.” King, 31 F.3d at 346.1
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`The Court cannot ignore the procedural posture of the request from Plaintiff. Despite denials
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`to the contrary, AGIS does not come to the Court merely to seek relief from an alleged slow-walk by
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`the Central Authority.2 Rather, AGIS comes to the Court seeking relief from its own procedural
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`1 The present case is even more compelling than Blitzsafe. In that case, the superseded Original Complaint was
`actually served at the time the Motion for Alternative Service was made, unlike here, where the Original Complaint
`has not yet been served. However, there, as here, the superseding of the Original Complaint by the Plaintiff’s action
`in filing an Amended Complaint rendered the Original Complaint of no legal effect prior to its service. Accordingly,
`even when service of the Original Complaint is completed, it is unable to effectuate service in a case; the Plaintiff
`must take into account pending service of Complaints when it seeks to amend, and thus supersede, them.
`2 Although the Court notes the potential for such a slow-walk and will consider taking actions, when appropriate, to
`ensure that conformance with the timelines envisioned by the Hague Convention are adhered to. See 1993 Advisory
`Committee Notes to Rule 4 (“The Hague Convention does not specify a time within which a foreign country’s Central
`Authority must effect service, but Article 15 does provide that alternate methods may be used if a Central Authority
`does not respond within six months. Generally, a Central Authority can be expected to respond much more quickly
`than that limit might permit, but there have been occasions when the signatory state was dilatory or refused to
`cooperate for substantive reasons. In such cases, resort may be had to the provision set forth in subdivision (f)(3).”).
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`4
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`Case 2:17-cv-00517-JRG Document 78 Filed 07/20/18 Page 5 of 6 PageID #: 1048
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`misstep wherein it, by its own action, rendered the currently processing original Complaint against
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`ZTE of no legal effect by virtue of its Amended Complaint. As this Court noted in Blitzsafe:
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`[T]he situation in which Plaintiff finds itself in is entirely of its own making. Had
`it not filed an amended complaint before service under the Hague Convention was
`completed, this Motion would not be necessary and this request for circumvention
`of the Hague Convention would not be before the Court. The Court will not exercise
`its discretion and permit the international framework embodied in the Hague
`Convention to be short-changed for the mere convenience of the Plaintiff. The
`Defendants are not obligated to waive service under the Hague Convention; and,
`while it is commonly done, it is a privilege of the Defendants and one which they
`are entitled to insist upon. Further, requiring litigants to follow the treaties
`governing such issues in international litigation promotes “international comity,
`which is concerned with maintaining amicable working relationships between
`nations and mutual respect for the laws of foreign countries.” C & F Sys., LLC v.
`Limpimax, S.A., No. 1:09-cv-858, 2010 U.S. Dist. LEXIS 973, at *3 (W.D. Mich.
`Jan. 6, 2010) (citing Tucker v. Interarms, 186 F.R.D. 450, 452–53 (N.D. Ohio
`1999)).
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`2:17-cv-420-JRG, Dkt. No. 83, (slip copy at 2–3).
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`The Court finds it deeply concerning that, as of the date of this Order, AGIS has not
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`attempted service of the Amended Complaint, apparently turning first to a request for
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`extraordinary relief, rather than seeking service through conventional channels as an initial move.
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`Even with knowledge that the Amended Complaint has superseded the first and will require
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`service,3 AGIS has, apparently, not attempted such service. Indeed, between the filing of its
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`Amended Complaint on October 17, 2018, and its request for alternative service on May 21, 2018,
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`3 The Court notes AGIS’s odd rationale regarding amended complaints. (Dkt. No. 70 at 4 (“The Complaint is the
`operative pleading as to ZTE Corp. because an initial complaint is only superseded “when the amended complaint is
`properly served, not when it is filed.” Doe v. Unocal Corp., 27 F. Supp. 2d 1174, 1180 (C.D. Cal. 1998), aff’d and
`adopted, 248 F.3d 915 (9th Cir. 2001).”). However, this is not the law of the Fifth Circuit, which appears not to have
`directly addressed the issue. Having considered the question, the Court finds the Fourth Circuit’s position more
`persuasive: “a properly filed amended complaint supersedes the original one and becomes the operative complaint in
`the case, it renders the original complaint ‘of no effect.’” Fawzy v. Wauquiez Boats SNC, 873 F.3d 451, 455 (4th Cir.
`2017) (citing Young v. City of Mt. Ranier, 238 F.3d 567, 573 (4th Cir. 2001)). Indeed, in Fawzy, as here, the Plaintiff
`“filed his amended complaint as a matter of right” and it was that action which “rendered his original complaint ‘of
`no effect.’” Id. Accordingly, the Court rejects the notion that the Original Complaint which has not yet been served
`may effectuate service, as “service of a superseded complaint with the summons does not fulfill the requirements of
`[Rule 4]” as “a superseded complaint is ‘a mere scrap of paper.’” Wright & Miller, 4A Fed. Prac. & Proc. Civ. § 1093
`(4th ed.).
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`Case 2:17-cv-00517-JRG Document 78 Filed 07/20/18 Page 6 of 6 PageID #: 1049
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`AGIS appears to have made no moves regarding service of its Amended Complaint at all. (Dkt.
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`No. 68 at 5). This is unacceptable.
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`III. Conclusion
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`Accordingly, having considered the Motion, the Court DENIES AGIS’s Motion for
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`Alternative Service. (Dkt. No. 64).
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`6
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