Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`CASE NO. 1:20-cv-00765-LY
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`BANDSPEED, LLC,
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`Plaintiff,
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`v.
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`§
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`REALTEK SEMICONDUCTOR
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`CORPORATION,
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`§
`Defendant.
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`BANDSPEED’S RESPONSE TO REALTEK SEMICONDUCTOR CORPORATION’S
`MOTION TO DISMISS UNDER FED. R. CIV. P. 41(B)
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`Plaintiff Bandspeed, LLC (“Bandspeed”) files its Response to Realtek Semiconductor
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`Corporation’s (“Realtek”) Motion to Dismiss Under Fed. R. Civ. P. 41(b) (the “Motion”).1
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`A.
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`BACKGROUND FACTS
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`On July 20, 2020, Bandspeed filed this case. Doc. 1. On July 24, 2020, Bandspeed promptly
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`served Realtek through the Texas Secretary of State. Doc. 6. Bandspeed also requested Realtek
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`waive service by letter to Gina Hung dated August 27, 2020, which was received by Realtek on
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`August 31, 2020. See Ex. 1 (waiver of service); Ex. 2 (proof of international delivery). Despite
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`these efforts, Realtek did not respond to the Complaint.
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`On September 10, 2020, U.S. counsel for Realtek contacted counsel for Bandspeed and
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`stated that Realtek would not respond to Bandspeed’s Complaint until it was served through a
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`Request for Judicial Assistance. See Doc. 14-1.
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`1 Bandspeed’s Response is limited to Section 5 of Realtek’s Motion. On March 13, 2022,
`Bandspeed filed an Amended Complaint. See Doc. 22. The remainder of Realtek’s Motion to
`Dismiss is based on Fed. R. Civ. P. 12 and therefore moot due to the Amended Complaint. See
`WDTX L.R. CV-15.
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`1
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 2 of 9
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`On September 14, 2020, Bandspeed made a Motion for Issuance of Request for
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`International Judicial Assistance. See Doc. 8. After the Motion was granted (Doc. 11), on
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`November 5, 2020, Bandspeed sent the requisite letters rogatory package to the United States State
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`Department. Bandspeed received confirmation that the letters rogatory package was received on
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`November 6, 2020. See Doc. 14-1; 17-2.
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`Bandspeed was advised that the process traditionally takes at least 12-18 months. For
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`example, the State Department’s website states “Execution of letters rogatory may take a year or
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`more. Letters rogatory are customarily transmitted via diplomatic channels, a time-consuming
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`means of transmission.” See Ex. 3. Bandspeed further understood that during the COVID-19
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`pandemic, it could take two-to-three times longer—so potentially three years—for the letters
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`rogatory to be served.
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`After receiving confirmation that the package was delivered to the State Department, in
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`January 2021, a paralegal handling the matter for Bandspeed’s counsel, Natalie Fletcher, called
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`the State Department and left a message with their International Judicial Assistance Division. Mrs.
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`Fletcher was informed that the State Department does not make a practice of providing status
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`updates because once a Request left the State Department it was essentially out of its hands.
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`Bandspeed further understood that the process would require face-to-face meetings in Taiwan and
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`exchange of pertinent documents by hand, a process that would be severely slowed or altogether
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`stopped by the COVID-19 pandemic and closures of judicial buildings within Taiwan.
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`Bandspeed did not receive any information indicating the letters rogatory package was not
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`received by the appropriate authorities in Taiwan until it received Realtek’s Motion.
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`On January 14, 2022, Bandspeed filed a Motion for Leave to Effect Alternative Service.
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`Doc. 14. On January 19, 2022, Bandspeed served the Motion for Leave to Effect Alternative
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`2
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 3 of 9
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`Service. Doc. 15. On February 7, 2022, the Court granted Bandspeed’s Motion and permitted
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`alternative service on Realtek. Doc. 16.
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`B.
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`ARGUMENT
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`Realtek argues that Bandspeed’s Complaint should be dismissed without prejudice for lack
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`of due diligence or with prejudice for failure to prosecute under Rule 41(b).2 Doc. 17 at 18-20.
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`But Realtek is wrong on both counts, as Realtek fails to address key facts relating to service,
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`including the expected delay of service on a Taiwanese company using letters rogatory and the
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`impact of the ongoing global COVID-19 pandemic. Indeed, Bandspeed’s attempts at service and,
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`eventual service pursuant to this Court’s Order Granting Leave to Effect Alternative Service (Doc.
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`16), meet the flexible due diligence standard under Rule 4 and Rule 41(b). These are not grounds
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`for dismissal.
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`1.
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`Bandspeed Exercised Reasonable Diligence in Effecting Service Under
`Fed. R. Civ. P. 4; Dismissal Without Prejudice is Not Warranted
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`As to dismissal without prejudice, the Fifth Circuit has adopted “a relaxed standard with
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`regard to serving a defendant abroad.” A.T.N. Indus., Inc. v. Gross, 4:14-CV-02743, 2016 WL
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`362309, at *8 (S.D. Tex. Jan. 29, 2016). As Realtek acknowledges in its Motion, no fixed deadline
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`governs service of process on foreign defendants. Doc. 17 at 18; Fed. R. Civ. P. 4(f). While “Rule
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`4(f) authorizes a without-prejudice dismissal when the court determines in its discretion that the
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`plaintiff has not demonstrated reasonable diligence in attempting service,” such a dismissal would
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`be inappropriate in this case given Bandspeed’s extreme efforts to serve Realtek. Lozano v. Bosdet,
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`693 F.3d 485, 489 (5th Cir. 2012). Rather the standard is one of “flexible due diligence.” Id. at
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`488. This standard is met when a plaintiff demonstrates reasonable due diligence in attempting
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`2 As a threshold issue, while Realtek never cites to Rule 12(b)(5), Plaintiff understands that
`Realtek’s first argument (Doc. 17 at 18-19) seeks dismissal without prejudice under that Rule due
`to purportedly untimely service under Federal Rule of Civil Procedure 4(f), (h).
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`3
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 4 of 9
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`service after filing, even if the ultimate effectuated service is significantly delayed. In Wapp Tech
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`Ltd. P'ship v. Seattle SpinCo Inc., 4:18-CV-00469, 2020 WL 3791520, at *2 (E.D. Tex. July 7,
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`2020), Plaintiff attempted service within 20 days of filing its complaint but did not effectuate
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`service until 83 days later. Likewise, in A.T.N. Indus., Inc. v. Gross, service was not untimely when
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`plaintiffs initiated service within a week, but service had not yet been completed nearly 11 months
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`after the filing of the relevant complaint. 2016 WL 362309, at *2-3 (denying motion to dismiss
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`and noting “Courts recognize that service pursuant to the Hague Convention may be a time-
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`consuming process.”).
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`Bandspeed sued Realtek in U.S. District Court on July 20, 2020. Doc. 1 at 2. Bandspeed
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`served Realtek through the Texas Secretary of State on July 24, 2020 and requested Realtek to
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`waive service under Fed. R. Civ. P. 4(d) by letter received on August 31, 2020. Doc. 8 at 2. On
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`September 10, 2020, counsel for Realtek contacted counsel for Bandspeed and stated that Realtek
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`would only accept service via letters rogatory. Id. Bandspeed timely filed a Motion for Issuance
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`of Request for International Judicial Assistance four days later on September 14, 2020, that was
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`later granted by the Court on September 17, 2020. Doc. 8 and 12. Within six weeks, on November
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`2, 2020, Bandspeed initiated the process for service via letters rogatory through the United States
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`Department of State and received confirmation that the letters rogatory package had been received
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`by the Department of State on November 6, 2020. On January 14, 2022, Bandspeed further
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`requested permission from the Court for alternative service which the Court granted on February
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`7, 2022. Doc. 14 and Doc. 16.
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`Given Bandspeed’s efforts to serve Realtek through the Secretary of State, a waiver of
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`service request, letters rogatory and finally alternative service, it is apparent that Bandspeed
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`demonstrated reasonable diligence in attempting service. It is equally obvious that Realtek is
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`4
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 5 of 9
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`deliberately evading service to avoid answering for its infringing products in the United States. A
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`dismissal without prejudice, the remedy provided under Rule 4(f), would only further delay the
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`proceeding and require Bandspeed to begin the service process again, rewarding Realtek for its
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`gamesmanship. The Court should not exercise its discretion. The case should continue.
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`2.
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`Realtek Cannot Meet the High Standard for Dismissal With Prejudice
`Under Fed. R. Civ. P. 41(b)
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`Realtek also requests the extreme remedy of dismissal with prejudice—an adjudication on
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`the merits—under Fed. R. Civ. P. 41(b). Dismissal with prejudice under Rule 41 requires an
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`extremely high bar: the Fifth Circuit requires that the defendant show “a clear record of delay or
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`contumacious conduct by the plaintiff.” Coleman v. Sweetin, 745 F.3d 756, 766 (5th Cir. 2014).
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`This lofty standard is not met.3 There simply is no clear record of delay. Bandspeed took numerous
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`steps to serve Realtek, including serving Realtek through the Texas Secretary of State, requesting
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`Realtek to waive service, filing a Motion for Issuance of Request for International Judicial
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`Assistance, initiating the process for service via letters rogatory, and requesting permission from
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`the Court for alternative service. Realtek claims there is no evidence of efforts by Bandspeed to
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`3 Indeed, Realtek’s cited precedent either supports Plaintiff, e.g. Coleman v. Sweetin, 745 F.3d
`756, 766 (reversing effective dismissal with prejudice where no delay or contumacious conduct)
`or is readily distinguishable. In Sealed Appellant v. Sealed Appellee, foreign service was not
`required, and the applicable domestic 120-day deadline for service was exceeded by 600 days—
`nearly two years. 452 F.3d 415, 418-419 (5th Cir. 2006). And in Bullard v. Burlington N. Santa,
`foreign service was also unnecessary, service generally was not an issue, and the Court reversed
`an effective dismissal with prejudice under Rule 8 because there was no delay and an unclear
`record on contumacious conduct (including whether plaintiffs had violated court orders and failed
`to respond to discovery in other litigation). Fe Ry. Co., 368 F. App'x 574, 581–82 (5th Cir. 2010).
`Further, in Lawson v. Aleutian Spray Fisheries, Inc., plaintiff did not even start service on foreign
`defendants under the Hague process until a year after the suit had been filed. No. C11-0061JLR,
`2012 WL 208111, at *1 (W.D. Wash. Jan. 24, 2012). To the contrary, as described above,
`Bandspeed attempted service of Realtek within 4 days of filing its complaint. Finally, in Veazey v.
`Young's Yacht Sale & Serv., Inc., plaintiff provided no actual notice until nearly 21 months after
`the case was filed, and foreign service was not required. 644 F.2d 475, 476 (5th Cir. 1981.)
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`5
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 6 of 9
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`serve for fourteen months, but the evidence is clear that Bandspeed reasonably believed that the
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`letters rogatory process would take at least a year and up to three years because of the COVID-19
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`pandemic—so there was nothing for Bandspeed to do but to let that process go forward. See e.g.,
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`U.S. S.E.C. v. Shehyn, No. 04 CIV. 2003 (LAP), 2008 WL 6150322, at *5 (S.D.N.Y. Nov. 26,
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`2008) (denying motion to dismiss under Rule 41(b) and finding Plaintiff should not be penalized
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`for permitting Spanish Central Authority to review application under Hague process); Blockbuster,
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`LLC v. Grupo Mizbe, S.A., No. 13-62042-CIV, 2015 WL 12712060, at *1 (S.D. Fla. Apr. 8, 2015)
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`(“The Court does not fault Plaintiff for the time it took the Panamanian authorities to respond to
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`Plaintiff's request for service.”).
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`Further, the record is devoid of “contumacious conduct by the plaintiff.” There is no
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`evidence Bandspeed engaged in any conduct that was stubbornly or willfully disobedient to the
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`authority of this Court.
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`Furthermore, the Fifth Circuit generally only affirms a dismissal with prejudice when at
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`least one of the following “aggravating factors” is found: (1) delay caused by the plaintiff
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`personally; (2) actual prejudice to the defendant; or (3) delay caused by intentional conduct.
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`Coleman v. Sweetin, 745 F.3d 766 & n.9 (internal citations omitted). Notably, the vast majority of
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`cases dismissed under this law relate to petitions for writ of habeas corpus. In any event, none of
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`the three aggravating factors are present.
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`Factor 1. Here, the delay was not caused by Bandspeed, but rather the anticipated delays
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`associated by Bandspeed’s lawyers with the letters rogatory process, which was further
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`exacerbated by the pandemic. Thus, the delay was not caused by Bandspeed. See e.g., U.S. S.E.C.,
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`2008 WL 6150322, at *5; Blockbuster, LLC, 2015 WL 12712060, at *1.
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`Factor 2. There is no actual prejudice to Realtek, and Realtek has not shown any prejudice.
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`6
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 7 of 9
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`Realtek was served via the Texas Secretary of State. Further, Realtek knew about the complaint,
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`and could have avoided any purported prejudice when it had the opportunity to accept service but
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`refused to do so. If Realtek was genuinely concerned about prejudice, it would have waived service
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`when asked in 2020. It was Realtek that wanted to delay the case by insisting on service by letters
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`rogatory. There is no prejudice. See e.g., U.S. S.E.C., 2008 WL 6150322, at *5.
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`Factor 3. Any delay was not caused by intentional conduct. Realtek seeks to capitalize on
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`a difficult, time-consuming process—service of letters rogatory in Taiwan—that is known to take
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`over a year. It further seeks to gain advantage because of the difficulties imposed by the COVID-
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`19 pandemic. This factor is not present. Bandspeed has made multiple attempts to effectuate
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`service but Realtek’s evasion and refusal to accept service has been the problem.
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`The extreme remedy of dismissal with prejudice—an adjudication on the merits—under
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`Fed. R. Civ. P. 41 is not warranted.
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`7
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 8 of 9
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`Dated: March 14, 2022
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`Respectfully submitted,
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`By:
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`/s/ Adam G. Price
`Adam G. Price
`Texas State Bar 24027750
`Christopher V. Goodpastor
`Texas State Bar 00791991
`Gabriel Gervey
`Texas State Bar 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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`8
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`Case 1:20-cv-00765-DAE Document 23 Filed 03/14/22 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 14th day of March 2022, I electronically filed the foregoing
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`with the Clerk of the Court using the CM/ECF system, which will send notification of such filing
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`to all counsel of record.
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`/s/ Adam G. Price
`Adam G. Price
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`9
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