Case 6:20-cv-00945-ADA Document 5 Filed 10/26/20 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PARKERVISION, INC.,
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` Plaintiff,
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` v.
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`TCL INDUSTRIES HOLDINGS CO.,
`LTD., TCL ELECTRONICS HOLDINGS
`LTD., SHENZHEN TCL NEW
`TECHNOLOGY CO., LTD., TCL KING
`ELECTRICAL APPLIANCES
`(HUIZHOU) CO., LTD., TCL MOKA
`INT’L LTD., and TCL MOKA
`MANUFACTURING S.A. DE C.V.,
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` Defendants.
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`Case No. 6:20-cv-00945-ADA
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` JURY TRIAL DEMANDED
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`PLAINTIFF’S MOTION FOR LEAVE TO
`EFFECT ALTERNATIVE SERVICE ON DEFENDANTS
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`Plaintiff ParkerVision, Inc. (“Plaintiff”) files this Motion and respectfully seeks
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`leave to serve the summons and complaint on Defendants TCL Industries Holdings Co.,
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`Ltd., TCL Electronics Holdings Ltd. (f/k/a TCL Multimedia Technology Holdings
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`Ltd.), Shenzhen TCL New Technology Co., Ltd., TCL King Electrical Appliances
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`(Huizhou) Co., Ltd., TCL Moka Int’l Ltd., and TCL Moka Manufacturing S.A. De C.V.
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`(“Defendants”) through their U.S. Counsel and/or on their U.S. subsidiary as follows:
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`I.
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`Background.
`Plaintiff is a Florida corporation with its principal place of business at 9446
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`Philips Highway, Jacksonville, Florida 32256. D.I. 1 at 2. Defendant TCL Industries
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`Case 6:20-cv-00945-ADA Document 5 Filed 10/26/20 Page 2 of 9
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`Holdings Co., Ltd. (“TCL Industries”) is a Chinese corporation with a principal place of
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`business located at 22/F, TCL Technology Bldg., 17 Huifeng 3rd Rd., Huizhou,
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`Guangdong, 516006 P.R. China. Id. at 3. Defendant TCL Electronics Holdings Ltd.
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`(f/k/a TCL Multimedia Technology Holdings Ltd.) (“TCL Electronics”) is a limited
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`liability company incorporated in the Cayman Islands with a registered address at P.O.
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`Box 309, Ugland House, Grand Cayman, KY1-1104, Cayman Islands. TCL Electronics
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`has a principal place of business at 7/F, Building 22E, 22 Science Park East Avenue,
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`Hong Kong Science Park, Sha Tin, New Territories, Hong Kong. Id. at 4.
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`Defendant Shenzhen TCL New Technology Co., Ltd. (“TCL New Technology”) is
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`a foreign corporation duly organized under the laws of the People’s Republic of China
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`with a principal place of business located at 9/F, Building D4, TCL International E City,
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`No. 1001, Zhongshan Park Road, Nanshan District, Shenzhen, Guangdong, 518067 P.R.
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`China. Id. at 5. Defendant TCL King Electrical Appliances (Huizhou) Co., Ltd. (“TCL
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`King”) is a foreign corporation duly organized under the laws of the People’s Republic
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`of China with a principal place of business located at No. 78 Zhongkai Development
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`Zone, Huizhou, 516006 P.R. China. Id. at 6. Defendant TCL Moka Int’l Ltd. (“TCL
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`Moka”) is a foreign corporation duly organized under the laws of Hong Kong with a
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`principal place of business located at 7/F, Building 22E, 22 Science Park East Avenue,
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`Hong Kong Science Park, Sha Tin, New Territories, Hong Kong. Id. at 7. Defendant TCL
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`Moka Manufacturing, S.A. de C.V. (“TCL Moka Manufacturing”) is a Mexican
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`corporation with a principal place of business located at Camino Vecinal 2472, colonia,
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`Canon del Padre, Tijuana Baja California. Id. at 8.
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`TCL Industries is a holding company and the ultimate corporate parent of
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`Defendants TCL Electronics, TCL New Technology, TCL King, TCL Moka, and TCL
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`Moka Manufacturing. Id. at 9. TCL Electronics is a parent of TCL’s television business
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`group, comprising subsidiaries that manufacture, market, offer for sale, and sell
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`television products, including the accused infringing products, in the United States, the
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`State of Texas, and this judicial district. Id. at 10. TCL New Technology is a “principal
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`subsidiary” of TCL Electronics with “principal activities” of “[m]anufacture and sale of
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`TV products.” See Ex. 1 to Complaint (D.I. 1-1) at p. 135. TCL King is a “principal
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`subsidiary” of TCL Electronics with “principal activities” of “[m]anufacture and sale of
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`TV products and trading of components.” See id. at p. 136. TCL Moka Manufacturing is
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`a “principal subsidiary” of TCL Electronics with “principal activities” of “manufacture
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`and sale of TV products.” See id. at p. 137. TCL Moka is a “principal subsidiary” of TCL
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`Electronics and, on information and belief, is similarly involved in the manufacture,
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`sale, and trading of TCL television products and components. Id.
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`On October 12, 2020, Plaintiff filed a complaint in this Court alleging claims for
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`patent infringement against Defendants. Id. Plaintiff respectfully requests leave to
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`effect service upon Defendants through the alternative means of emailing U.S. counsel
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`for Defendants: Mr. John P. Schnurer, JSchnurer@perkinscoie.com; Mr. Kevin Patariu,
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`KPatariu@perkscoie.com; and Ms. Yun (Louise) Lu, LLu@perkinscoie.com. Mr.
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`Schnurer, Mr. Patariu, and Ms. Lu represent Defendants in the United States. See
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`Exhibit A, Answer executed on September 17, 2020 in 2:20-cv-01406 CJC-MRW, Central
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`District of California. Plaintiff also respectfully requests, as an additional method, or in
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`the alternative, leave to effect service upon Defendants through TCL’s U.S. subsidiary
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`TCL North America, 1860 Compton Ave., Irvine, CA 92881.
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`II.
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`Evidence.
`Plaintiff attaches as Exhibit A an Answer executed on September 17, 2020, by Mr.
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`Schnurer, Mr. Patariu, and Ms. Lu, attorneys with Perkins Coie LLP, in Koninklijke
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`Philips N.V. and Philips North America LLC v. TTE Technology Inc., TCL Industries Holdings
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`Co., Ltd., TCL Electronics Holdings Ltd., TCL King Electrical Appliances (Huizhou) Co. Ltd.,
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`TCL Moka Int’l Ltd., Shenzhen TCL New Technology Co., Ltd., TCL Smart Device (Vietnam)
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`Co., Ltd., and TCL Moka Manufacturing, S.A., DE C.V., Case No. 2:20-cv-01406 CJC-MRW
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`(WD. TX.).
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`Exhibit B contains website pages showing TCL’s U.S. subsidiary and its location
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`in California. See Exh. B (https://www.tcl.com/us/en/terms-privacy).
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`III.
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`Legal Standard.
`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),
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`serving a domestic or foreign corporation, or a partnership or other unincorporated
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`incorporation “at a place not within any judicial district of the United States” must be
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`done “in any manner prescribed by Rule 4(f) for serving an individual, except personal
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`delivery under (f)(2)(C)(i).” Fed. R. Civ. P. 4(h)(2). Rule 4(f)(3) provides that the Court
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`may authorize service on a foreign individual “by other means not prohibited by
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`international agreement.” Fed. R. Civ. P. 4(f)(3). “Thus, so long as the method of service
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`is not prohibited by international agreement the Court has considerable discretion to
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`authorize an alternative means of service.” Order Granting Plaintiff’s Motion for Leave to
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`Effect Alternative Service on Defendant Taiwan Semiconductor Manufacturing Company
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`Limited at 1, STC.UNM v. Taiwan Semiconductor Mfg. Co. Ltd., No. 6:19-cv-00261-ADA
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`(W.D. Tex. May 29, 2019), ECF No. 13 (citing Rio Properties Inc. v. Rio Int’l Interlink, 284
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`F.3d 1007, 1014 (9th Cir. 2002)). A plaintiff does not have to attempt to effect service
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`under Rule 4(f)(1) or Rule 4(f)(2) before requesting authorization of an alternative
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`method of service under Rule 4(f)(3). Id. at 2 (citing Rio Properties, Inc., 284 F.3d at 1015
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`(“[E]xamining the language and structure of Rule 4(f) and the accompanying advisory
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`committee notes, we are left with the inevitable conclusion that service of process under
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`Rule 4(f)(3) is neither a ‘last resort’ nor ‘extraordinary relief.’ It is merely one means
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`among several which enables service of process on an international defendant.”). In the
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`end, the Court may authorize any alternative method of service that is “reasonably
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`calculated, under all the circumstances, to apprise interested parties of the pendency of
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`the action and afford an opportunity to present their objections.” Mullane v. Cent.
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`Hanover Bank & Trust Co., 339 U.S. 306, 314 (1950). Additionally, district courts have
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`routinely allowed alternative service upon foreign corporations to be accomplished by
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`serving a United States subsidiary or affiliate of a foreign entity.1
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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
`U.S.); 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
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`IV. Argument and authorities.
`A.
`Plaintiff’s proposed alternative service under Rule 4(f)(3).
`Plaintiff seeks to serve Defendants using the following method: via email on Mr.
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`John P. Schnurer, JSchnurer@perkinscoie.com; Mr. Kevin Patariu,
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`KPatariu@perkscoie.com; and Ms. Yun (Louise) Lu, LLu@perkinscoie.com. These
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`individuals are known U.S. counsel for Defendants and are members of the Perkins
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`Coie, LLP law firm.
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`Plaintiff, either in the alternative or as an additional means of service, seeks to
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`serve TCL’s U.S. subsidiary by a known mail delivery provider with signature and
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`return of receipt, such as Federal Express.
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`In the present case, either of Plaintiff’s requested methods of service, on their
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`own, is sufficient to satisfy due process. Together, the methods will be more than
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`sufficient to (more than) reasonably inform TCL of this action and to provide an
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`opportunity to defend against it.
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`Alternative service of process is justified for Defendants.
`B.
`Defendants consist of various entities organized and existing under foreign laws:
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`TCL Industries Holdings Co., Ltd. (China); TCL Electronics Holdings Ltd. (Cayman
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`Islands and Hong Kong); Shenzhen TCL New Technology Co., Ltd. (China); TCL King
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`Electrical Appliances (Huizhou) Co., Ltd. (China); TCL Moka Int’l Ltd. (Hong Kong);
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`TCL Moka Manufacturing, S.A. de C.V. (Mexico). ECF No. 1 at 3-8. The Hague
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`(N.D. Cal. June 12, 2008) (service on six Chinese defendants through California
`subsidiary granted).
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`Convention—nor any other international agreement—does not prohibit service on a
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`foreign corporation through its U.S. counsel, in-house counsel, or a wholly-owned U.S.
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`subsidiary. See Order Granting Plaintiff’s Motion for Leave to Effect Alternative Service on
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`Defendant Taiwan Semiconductor Manufacturing Company Limited at 2-3, STC.UNM v.
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`Taiwan Semiconductor Mfg. Co. Ltd., No. 6:19-cv-00261-ADA (W.D. Tex. May 29, 2019),
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`ECF No. 13.
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`Furthermore, serving Defendants through alterative means is justified because
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`the proposed method “will provide reasonable notice and an opportunity to be heard.”
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`Id. at 3 (citing Affinity Labs of Texas, LLC v. Nissan North America, Inc., No. WA:13-CV-
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`369, 2014 WL 1132502, at *3 (W.D. Tex. July 2, 2014) (“Due process requires that notice
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`be ‘reasonably calculated, under all circumstances, to apprise interested parties of the
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`pendency of the action and afford them an opportunity to present their objections.’”)
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`(quoting Mullane, 339 U.S. at 314)). Several courts, including this Court, have permitted
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`effecting service of process upon companies via email. In Terrestrial Comms LLC v. NEC
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`Corporation, this Court reasoned that email service upon counsel for NEC Corporation
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`was authorized because “[d]istrict courts routinely direct service on an international
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`defendant’s counsel under Rule 4(f)(3) even if the counsel has not been expressly
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`authorized to accept service on the defendant’s behalf.” See Terrestrial Comms LLC v.
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`NEC Corporation, 20-cv-0096 (ADA) (W.D. Tex. June 24, 2020), Dkt. 15 at p. 6. The Court
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`further explained the key analysis to consider was whether the defendant is reasonably
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`certain to be informed of the pending lawsuits so that it can present its objections and
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`found that effecting service of process on defendant’s known U.S. counsel would allow
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`defendant to be reasonably certain to be apprised of the pending actions. Id. at 7-8; see
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`also Fourte Int’l Ltd. BVI v. Pin Shine Indus. Co., No. 18-CV-00297-BAS-BGS, 2019 WL
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`246562, at *3 (S.D. Cal. Jan. 17, 2019) (allowing email service on local counsel of foreign
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`company); In re TFT-LCD (Flat Panel) Antitrust Litig., 270 F.R.D. 535, 536-38 (N.D. Cal.
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`2010) (allowing service on U.S. Counsel of foreign company); Alu, Inc. v. Kupo Co., No.
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`6:06-cv-327-ORL28DAB, 2007 WL 177836, at *3-4 (M.D. Fla. Jan. 19, 2007) (allowing
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`email service on a foreign corporation). Email is not only a permissible means of
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`alternative service, but it has been considered one of the best forms of alternative
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`service because it is “aimed directly and instantly” at the foreign defendant. Rio
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`Properties, Inc., 284 F.3d at 1018.
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`In the present case, Mr. Schnurer, Mr. Patariu, and Ms. Lu currently represent
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`Defendants with respect to cases filed against Defendants in the United States.
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`Emailing Mr. Schnurer, Mr. Patariu, and Ms. Lu will thus apprise Defendants of this
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`action—satisfying Rule 4(f)(3). Accordingly, alternative service of process on
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`Defendants is justified.
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`Further, TCL operates in the United States through a California-based subsidiary
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`named TCL Technology Holdings Limited. See Exhibit B (website for TCL’s U.S.
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`subsidiary and location).2 Because court-ordered service on the foreign defendant may
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`be, and is regularly, made on a Defendant’s domestic subsidiaries, Plaintiff should also
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`2 TCL’s U.S. subsidiary also states that its location is in California in its privacy policies
`listed on the US website. See Exh. B (https://www.tcl.com/us/en/terms-privacy (11.
`Contact Us)).
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`be allowed to serve TCL by effectuating service on TCL’s US subsidiary located in
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`California as it will meet the constitutional threshold of due process and satisfy rule
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`4(f)(3). See Affinity Labs, 2014 WL 11342502, at *4; see also Order Granting Plaintiff’s Motion
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`for Leave to Effect Alternative Service on Defendant Taiwan Semiconductor Manufacturing
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`Company Limited at 2-3, STC.UNM v. Taiwan Semiconductor Mfg. Co. Ltd., No. 6:19-cv-
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`00261-ADA (W.D. Tex. May 29, 2019), ECF No. 13.
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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
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`motion and enter an order authorizing alternative service of process on Defendants TCL
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`Industries Holdings Co., Ltd., TCL Electronics Holdings Ltd. (f/k/a TCL Multimedia
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`Technology Holdings Ltd.), Shenzhen TCL New Technology Co., Ltd., TCL King
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`Electrical Appliances (Huizhou) Co., Ltd., TCL Moka Int’l Ltd., and TCL Moka
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`Manufacturing S.A. De C.V. through (1) e-mail upon U.S. counsel for Defendants
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`and/or (2) through service on TCL’s U.S. subsidiary pursuant to Rule 4(f)(3).
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`Dated: October 26, 2020
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`Respectfully Submitted
`/s/ Raymond W. Mort, III
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Ave, Suite 2200
`Austin, Texas 78701
`Tel/Fax: (512) 865-7950
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`Attorneys for Plaintiff ParkerVision, Inc.
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