Xilinx, Inc. v. Godo Kaisha IP Bridge 1

Filing 30

ORDER RE SERVICE AND MOTION TO DISMISS RE SERVICE. Signed by Judge James Donato on 3/29/2017. (jdlc3S, COURT STAFF) (Filed on 3/29/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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XILINX, INC.,
Plaintiff,

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United States District Court
Northern District of California

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Case No. 3:17-cv-00509-JD
ORDER RE SERVICE AND MOTION
TO DISMISS RE SERVICE

v.
GODO KAISHA IP BRIDGE 1,

Re: Dkt. Nos. 21, 25

Defendant.
In this action for declaratory judgment of patent non-infringement, the parties are at

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loggerheads over service of the complaint on defendant Godo Kaisha IP Bridge 1 (“IPB”), a

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corporation located in Japan. Before resolving this dispute, the Court would like to express its

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concern to counsel about the unprofessional tone and content of some of the filings in the case,

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and in emails and other materials in the record. Counsel for both parties are advised that this

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District requires civility, courtesy and professional integrity from all attorneys admitted to practice

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here, at all times and in all filings and communications related to this case. Conduct below the

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District’s standards will result in monetary or other sanctions, including attorney discipline and

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claim or defense preclusion. All counsel involved in this case for each party are directed to read

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the District’s Guidelines for Professional Conduct located at

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https://www.cand.uscourts.gov/professional_conduct_guidelines and to advise their clients that the

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Court has ordered this measure.

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With respect to the service dispute, IPB’s contention that it is “simply” standing on its

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“right” to service under the Hague Convention is ill-taken. Dkt. No. 29 at 1. The salient and

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undisputed facts show that IPB has sued Xilinx in a federal court in Texas for patent infringement.

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Dkt. No. 24-7. That action was filed on February 1, 2017, and IPB’s complaint and civil cover

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sheet list its principal address as “c/o Sakura Sogo Jimusho, 1-11 Kanda Jimbocho, Chiyoda-ku,

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Tokyo 101-0051 Japan.” Dkt. No. 24-7 (complaint); Dkt. No. 24-9 (cover sheet). IPB has sued

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other companies for patent infringement in other districts, and again represented that it is located

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at this principal address. See, e.g., Dkt. Nos. 24-1, 24-3. This is the same address that Xilinx has

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used for its service efforts.

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Attorney Michael W. Shore of the Shore Chan DePumpo LLP law firm is listed as IPB’s

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“lead attorney” in the lawsuit against Xilinx in Texas. Dkt. No. 24-7 at 9. Xilinx alleges in the

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complaint, without challenge by IPB, that attorney Shore initially contacted Xilinx about IPB’s

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infringement allegations and handled an extended period of pre-suit discussions about a deal to

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avoid litigation. Dkt. No. 1 ¶¶ 13-38. When the discussions broke down, Xilinx advised attorney
Shore in an email that it had filed this declaratory judgment action and asked if he would accept

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United States District Court
Northern District of California

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service on behalf of IPB. Dkt. No. 23-3 at 6. Shore answered, “I suppose you never heard of the

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‘first to file’ rule. We will serve Xilinx directly, and you can do the same with IPB. We will be

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well into the ED Tex case by the time your case is served.” Id. Xilinx’s lawyer followed up with

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“Thank you for your prompt response. I always appreciate your practice tips. In the meantime, to

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make sure I understood you, can you confirm that you are refusing to accept service on behalf of

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IP Bridge?” Id. at 5. Shore responded that “I can’t educate somebody with a closed mind. I have

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no authority to accept service, and since you refused, we will serve Xilinx formally. If you need

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an answer by C.O.B., its ‘No’ and you can start the foreign service process. My client is asleep in

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Japan.” Id. In another email sent shortly after that response, Shore said “I just read the Xilinx

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complaint. IPB will require formal service. IPB will move to dismiss on jurisdictional grounds.

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IPB will go into great detail outlining Xilinx (and your) grossly unprofessional conduct since the

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Xilinx complaint ‘opened the door’ with its out of context misleading email snippets. I appreciate

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you revealing yours and your client’s true character over the last two weeks. It makes my job

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easy.” Id. at 4.

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This exchange is an effective illustration of the conduct that has generated the Court’s

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concerns. It also shows that IPB’s counsel declined to accept service in an apparent fit of pique,

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and the record of events after that indicates that IPB has been unduly difficult to serve in a manner

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reflecting the uncooperative spirit manifested in attorney Shore’s words.
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IPB’s position that it has a “right” to force service through strict compliance with the

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Hague Convention misapprehends governing law. Under Federal Rules of Civil Procedure Rule

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4(h)(2), a corporation in a foreign country may be served in any manner prescribed for an

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individual by Rule 4(f). Under Rule 4(f)(1), an individual may be served at a place outside a

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United States judicial district by an internationally agreed means of service such as the Hague

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Convention. Rule 4(f)(3) permits service “by other means not prohibited by international

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agreement, as the court orders.”
When, as here, the issue to be addressed involves an interpretation of the Federal Rules of

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Civil Procedure, the law of the regional circuit applies even if the subject of the lawsuit is patent-

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related. Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306 (Fed. Cir.

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United States District Court
Northern District of California

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2003). In our circuit, Rule 4(f)(3) allows for service “by other means” so long as it is directed by

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the court and is not prohibited by international agreement. Rio Props., Inc. v. Rio Int’l Interlink,

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284 F.3d 1007, 1014-15 (9th Cir. 2002). There is no hierarchy of procedures, as IPB suggests,

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that requires Xilinx to attempt service through the Hague Convention or other means before

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seeking an order under Rule 4(f)(3). Id. Service under Rule 4(f)(3) is not “a ‘last resort’” or

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“‘extraordinary relief.’” Id. at 1015. “It is merely one means among several which enables

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service of process on an international defendant.” Id. Nor is it barred by a conflict with local law.

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“As long as court-directed and not prohibited by an international agreement, service of process

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ordered under Rule 4(f)(3) may be accomplished in contravention of the laws of the foreign

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country.” Id. at 1014.

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This puts to rest all of IPB’s substantive arguments against alternate service. IPB has been

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uncooperative at every turn in responding to Xilinx’s attempts to serve the complaint. It has not

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shown that service under Rule 4(f)(3) would violate an international agreement, and the Hague

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Convention is certainly no bar. See Richmond Techs., Inc. v. Aumtech Bus. Sols., No. 11-cv-

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02460-LHK, 2011 WL 2607158, at *12 (N.D. Cal. July 1, 2011) (“numerous courts have

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authorized alternative service under Rule 4(f)(3) even where the Hague Convention applies”).

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Consequently, Xilinx’s motion for an order of service under Rule 4(f)(3) is GRANTED.
This order also resolves IPB’s motion to dismiss with respect to service of the complaint, which is
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DENIED on the same grounds. The other part of the motion to dismiss will be addressed in a

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subsequent order.

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The only remaining question is the form of service to be ordered. In situations like this,

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service on a foreign corporation’s counsel in the United States is an effective and reasonable

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method, and is not prohibited by the Hague Convention. See, e.g., Richmond Techs., 2011 WL

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2607158, at *13. Service of the complaint is ordered on IPB’s counsel of record in this case and

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on attorney Shore. Xilinx should email the complaint to these lawyers and send a hard copy by

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registered mail through the United States Postal Service to their law offices.

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The hearing on the remaining portion of the motion to dismiss is VACATED and the
Court will resolve it on the papers. Civil Local Rule 7-1(b). The case management conference is

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United States District Court
Northern District of California

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on calendar for May 18, 2017.

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IT IS SO ORDERED.

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Dated: March 29, 2017

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JAMES DONATO
United States District Judge

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