Case 1:20-cv-00765-DAE Document 14 Filed 01/14/22 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`BANDSPEED, LLC,
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`Plaintiff,
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`v.
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`REALTEK SEMICONDUCTOR
`CORPORATION,
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`Defendant.
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`Case No. 1:20-cv-00765-LY
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`PLAINTIFF’S MOTION FOR LEAVE TO
`EFFECT ALTERNATIVE SERVICE ON DEFENDANT
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`Plaintiff Bandspeed, LLC (“Plaintiff” or “Bandspeed”) files this Motion and respectfully
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`seeks leave to serve the summons and complaint on Defendant Realtek Semiconductor
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`Corporation (“Realtek”) through its U.S. counsel as follows:
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`I.
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`BACKGROUND
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`Plaintiff Bandspeed, LLC is a Texas limited liability corporation with its principal place of
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`business located in Austin, Texas. (Doc. 1 at 2.) Defendant Realtek Semiconductor Corporation is
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`a corporation organized and existing under the laws of Taiwan, with a place of business located at
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`No. 2, Innovation Road II, Hsinchu Science Park, Hsinchu 300, Taiwan. On information and belief,
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`Defendant, either itself and/or through the activities of its subsidiaries or agents, makes, uses, sells,
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`offers for sale, and/or imports the accused infringing products throughout the United States,
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`including within this District. (Id. at 3.)
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`On July 20, 2020, Plaintiff filed a complaint in this Court alleging claims for patent
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`infringement against Defendant. Id. Plaintiff served Realtek through the Texas Secretary of State
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`on July 24, 2020 and requested Realtek to waive service under Fed. R. Civ. P. 4(d) by letter
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`Case 1:20-cv-00765-DAE Document 14 Filed 01/14/22 Page 2 of 7
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`received on August 31, 2020. (Doc. 8 at 2.) On September 10, 2020, counsel for Realtek, contacted
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`counsel for Bandspeed, and stated that Realtek will only accept service via letters rogatory. (Id.)
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`Plaintiff filed a Motion for Issuance of Request for International Judicial Assistance on September
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`14, 2020 that was later granted by the Court on September 17, 2020. (Docs. 8 and 12.) Plaintiff
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`initiated the process for service via letters rogatory through the United States Department of State
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`on November 2, 2020 and received confirmation that the letters rogatory package had been
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`received by the Department of State on November 6, 2020. Upon information and belief, the
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`process of service by letters rogatory is still underway as of the filing of this motion. (Ex. A, Decl.
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`of Adam Price ¶ 3.)
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`Plaintiff respectfully requests leave to effect service upon Defendant through the
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`alternative means of emailing counsel for Defendant: Claudia Frost, cfrost@orrick.com, Robert
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`Benson, rbenson@orrick.com, and Jeffrey Johnson, jj@orrick.com. Ms. Frost, a member of the
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`Orrick Herrington & Sutcliffe law firm, represented to counsel for Bandspeed via a phone call on
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`September 10, 2020 that she is representing Defendant in this matter. (Ex. A, Price Decl. ¶ 1.)
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`Additionally, Messrs. Benson and Johnson, also members of the Orrick Herrington & Sutcliffe
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`law firm, currently represent Realtek Semiconductor Corporation in another active matter in this
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`same district. (Ex. B, Civil Docket for Future Link Systems, LLC v. Realtek Semiconductor
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`Corporation, Case No. 6:21-cv-363 (W.D. Tex.).)
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`II.
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`EVIDENCE
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`Plaintiff attaches as Exhibit A, a declaration stating Ms. Frost contacted Adam Price via
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`telephone on September 10, 2020 to inform Mr. Price of Defendant’s representation by Ms. Frost
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`in this matter.
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`Case 1:20-cv-00765-DAE Document 14 Filed 01/14/22 Page 3 of 7
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`Plaintiff attaches as Exhibit B the civil docket for Future Link Systems, LLC v. Realtek
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`Semiconductor Corporation, Case No. 6:21-cv-363 (W.D. Tex.), showing representation of
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`Defendant by Messrs. Benson and Johnson.
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`III. LEGAL STANDARD
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`Rule 4(h) of the Federal Rules of Civil Procedure governs service of process on
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`corporations, partnerships, or associations. Fed. R. Civ. P. 4(h). Pursuant to Rule 4(h)(2), serving
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`a domestic or foreign corporation, or a partnership or other unincorporated incorporation “at a
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`place not within any judicial district of the United States” must be done “in any manner prescribed
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`by Rule 4(f) for serving an individual, except personal delivery under (f)(2)(C)(i).” Fed. R. Civ. P.
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`4(h)(2). Rule 4(f)(3) provides that the Court may authorize service on a foreign individual “by
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`other means not prohibited by international agreement.” Fed. R. Civ. P. 4(f)(3). So long as the
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`method of service is not prohibited by international agreement the Court has considerable
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`discretion to authorize an alternative means of service. Rio Properties Inc. v. Rio Int’l Interlink,
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`284 F.3d 1007, 1014 (9th Cir. 2002).
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`A plaintiff does not have to attempt to effect service under Rule 4(f)(1) or Rule 4(f)(2)
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`before requesting authorization of an alternative method of service under Rule 4(f)(3). In re
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`OnePlus Technology (Shenzhen) Co., Ltd., 2021-165, 2021 WL 4130643, at *1, 3 (Fed. Cir. Sept.
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`10, 2021) (“The use of a court-directed means for service of process under Rule 4(f)(3) is not a
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`disfavored process and should not be considered extraordinary relief.”) (quoting 4B Charles Alan
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`Wright et al., Federal Practice & Procedure § 1134, at 274 (2015) (internal quotations omitted));
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`Rio Properties, Inc., 284 F.3d at 1015 (“[E]xamining the language and structure of Rule 4(f) and
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`the accompanying advisory committee notes, we are left with the inevitable conclusion that service
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`of process under Rule 4(f)(3) is neither a ‘last resort’ nor ‘extraordinary relief.’ It is merely one
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`means among several which enables service of process on an international defendant.”). In the end,
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`Case 1:20-cv-00765-DAE Document 14 Filed 01/14/22 Page 4 of 7
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`the Court may authorize any alternative method of service that is “reasonably calculated, under all
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`the circumstances, to apprise interested parties of the pendency of the action and afford an
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`opportunity to present their objections.” Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S.
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`306, 314 (1950). Additionally, district courts have routinely allowed alternative service upon
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`foreign corporations to be accomplished by serving a foreign entity’s U.S. counsel, subsidiary, or
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`affiliate.1
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`IV. ARGUMENT AND AUTHORITIES
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`A.
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`Plaintiff’s proposed alternative service under Rule 4(f)(3).
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`Plaintiff seeks to serve Defendants using the following method: via email on Claudia Frost,
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`cfrost@orrick.com, Robert Benson, rbenson@orrick.com, and Jeffrey Johnson, jj@orrick.com.
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`Ms. Frost, a member of the Orrick Herrington & Sutcliffe law firm, represented to counsel for
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`Bandspeed that she is representing Defendant in this matter. (Ex. A.) Additionally, Messrs. Benson
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`and Johnson, also members of the Orrick Herrington & Sutcliffe law firm, currently represent
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`Realtek Semiconductor Corporation in another active matter in this same district. (Ex. B.)
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`B.
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`Alternative service of process is justified for Defendant.
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`Defendant Realtek Semiconductor Corporation is an entity organized and existing under
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`the laws of Taiwan. (Doc. 1 at 3.) Neither the Hague Convention nor any other international
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`agreement prohibits service on a foreign corporation through its U.S. counsel, in-house counsel,
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`or a wholly-owned U.S. subsidiary. STC.UNM v. Taiwan Semiconductor Mfg. Co. Ltd., No. 6:19-
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`cv-00261, Doc. 13 at 2-3 (W.D. Tex. May 29, 2019) (Ex. C). Further, Taiwan is not a signatory to
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`1 See, e.g., Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1239 (Fed. Cir. 2010) (collecting cases
`allowing service of foreign entities through domestic subsidiaries and counsel); Lisson v. Stream SICAV v. Wang, 989
`F. Supp. 2d 264, 280 (S.D.N.Y. 2013) (service of Chinese corporate executive allowed via corporation’s registered
`agent in US); In re GLG Life Tech Corp. Sec. Litig., 287 F.R.D. 262, 266 (S.D.N.Y. 2012) (authorizing service on
`CEO living in China via service to his company’s registered domestic agent and counsel); In re LDK Solar Secs. Litig.,
`No. C07-05182 WHA, 2008 WL 2415186, at *4 (N.D. Cal. June 12, 2008) (service on six Chinese defendants through
`California subsidiary granted).
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`the Hague Convention or any other treaty related to the international service of process or other
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`judicial documents. West v. Velo Enters., No. 13-cv-00024, 2013 WL 12086781, at *2 (W.D. Tex.
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`Aug. 29, 2013); Tatung v. Hsu, No. 13-CV-1743, 2015 WL 11089492, at *2 (C.D. Cal. May 18,
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`2015). As a result, several district courts have allowed service upon Taiwanese corporations,
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`including Defendant, by serving their U.S. counsel under Federal Rule of Civil Procedure 4(f)(3).
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`Rock Creek Networks v. Realtek Semiconductor, No. 6:21-cv-00081 (W.D. Tex. Mar. 30, 2021)
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`(allowing service of Realtek Semiconductor Corporation by email to its U.S. counsel Robert
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`Benson of Orrick Herrington & Sutcliffe) (Ex. D); STC.UNM , No. 6:19-cv-00261, Doc. 13 at 4
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`(allowing email service on U.S. counsel of Taiwanese corporation); Fourte Int’l Ltd. BVI v. Pin
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`Shine Indus. Co., No. 18-CV-00297-BAS-BGS, 2019 WL 246562, at *3 (S.D. Cal. Jan. 17, 2019)
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`(allowing email service on local counsel of Taiwanese company); In re TFT-LCD (Flat Panel)
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`Antitrust Litig., 270 F.R.D. 535, 536-38 (N.D. Cal. 2010) (allowing service on U.S. counsel of
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`Taiwanese company). See also Alu, Inc. v. Kupo Co., No. 6:06-cv-327-ORL28DAB, 2007 WL
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`177836, at *3-4 (M.D. Fla. Jan. 19, 2007) (allowing email service on a Taiwanese corporation).
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`Further, serving Defendant through alternative means is justified because the proposed
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`method will provide reasonable notice and an opportunity to be heard. Affinity Labs of Texas, LLC
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`v. Nissan North America, Inc., No. 13-CV-369, 2014 WL 11342502, at *3 (W.D. Tex. July 2,
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`2014) (“Due process requires that notice be ‘reasonably calculated, under all circumstances, to
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`apprise interested parties of the pendency of the action and afford them an opportunity to present
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`their objections.’”) (quoting Mullane, 339 U.S. at 314). Several courts, including courts in the
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`Western District, have permitted effecting service of process upon companies via email. For
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`example, in Affinity Labs, the court reasoned that service of the foreign defendant through its U.S.
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`counsel was authorized because “[d]ue process does not require that the individuals served on
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`behalf of foreign defendants have represented them or been authorized to accept [service] on their
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`behalf.” Id. at *3 (quoting Brown v. China Integrated Energy, 285 F.R.D. 560, 565-66 (C.D. Cal.
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`2012)). The court stated “the reasonableness and hence the constitutional validity of any chosen
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`method may be defended on the ground that it is in itself reasonably certain to inform those
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`affected” and found that effecting service of process on defendant’s known U.S. counsel would
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`allow defendant to be reasonably certain to be apprised of the pending actions. Id. at *4 (“[I]t is
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`clear that in all probability, [defendant] is already aware of the pending action and will be
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`represented by [the identified U.S. counsel] in the proceedings.”).
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`The Federal Circuit also recently confirmed “delay and expense are factors that
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`legitimately bear on whether to issue an order for alternative service.” In re OnePlus Technology
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`(Shenzhen) Co., Ltd., 2021-165, 2021 WL 4130643, at *1, 3 (Fed. Cir. Sept. 10, 2021). Plaintiff
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`filed this action almost 18 months ago in July 2020, and immediately thereafter attempted to elicit
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`an appearance by Defendant by (1) requesting waiver of service from Defendant; (2) effecting
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`service through the Texas Secretary of State; and (3) initiating service of process through letters
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`rogatory. Despite these efforts, and Defendant’s apparent awareness of this pending suit,
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`Defendant refuses to appear. In Rock Creek Networks v. Realtek Semiconductor, however,
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`Defendant appeared within three weeks of the Court’s granting plaintiff’s motion for alternative
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`service by email to Defendant’s U.S. counsel Robert Benson of Orrick Herrington & Sutcliffe.
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`(Ex. B (Unopposed Motion for Extension of Time to File Answer filed by defendant Realtek
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`Semiconductor Corp. on April 20, 2021).) Accordingly, alternative service of Defendant by email
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`to its U.S. counsel is appropriate in this case.
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`Email is not only a permissible means of alternative service but has been considered one
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`of the best forms of alternative service because it is “aimed directly and instantly” at the foreign
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`defendant. Rio Properties, Inc., 284 F.3d at 1018. In the present case, Ms. Frost has indicated that
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`she represents Defendant in this matter. Messrs. Benson and Johnson, members of the same law
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`firm as Ms. Frost, currently represent Defendant in another active matter in this same district.
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`Effecting service upon Defendant by email to Ms. Frost and Messrs. Benson and Johnson will thus
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`apprise Defendant of this action—satisfying Rule 4(f)(3). Accordingly, Plaintiff’s requested
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`alternative service of process on Defendant is justified.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Plaintiff respectfully requests the Court to grant this motion and
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`enter an order authorizing alternative service of process on defendant Realtek Semiconductor
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`Corporation through email upon its U.S. counsel.
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`Dated: January 14, 2022
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`Respectfully submitted,
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`By:
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`/s/ Christopher V. Goodpastor
`Adam G. Price
`Texas State Bar No. 24027750
`Christopher V. Goodpastor
`Texas State Bar No. 00791991
`Gabriel Gervey
`Texas State Bar No. 24072112
`DINOVO PRICE LLP
`7000 N. MoPac Expressway
`Suite 350
`Austin, Texas 78731
`Telephone: (512) 539-2626
`Facsimile: (512) 539-2627
`Email: aprice@dinovoprice.com
`cgoodpastor@dinovoprice.com
`ggervey@dinovoprice.com
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`ATTORNEYS FOR PLAINTIFF
`BANDSPEED, LLC
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