Two Moms and a Toy, LLC v. International Playthings, LLC

Filing 271

ORDER. Plaintiff Two Moms and a Toy, LLC's claims against defendants Golos Weisman Design, Ltd and Yookidoo, Ltd. are dismissed without prejudice. This case is dismissed in its entirety. By Judge Philip A. Brimmer on 10/29/12. (mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 10-cv-02271-PAB-BNB
TWO MOMS AND A TOY, LLC, a Colorado limited liability company,
Plaintiff,
v.
INTERNATIONAL PLAYTHINGS, LLC, a Delaware limited liability company,
GOLOS WEISMAN DESIGN, LTD., an Israel partnership, and
YOOKIDOO, LTD., an Israel partnership,
Defendants.

ORDER

This matter is before the Court sua sponte upon review of the docket. On
September 16, 2010, plaintiff Two Moms and a Toy, LLC (“Two Moms”)
brought this action against defendants International Playthings, LLC (“IPT”), Golos
Weisman Design, Ltd. (“GWD”), and Yookidoo, Ltd. (“Yookidoo”) because of alleged
infringement of United States Patent No. 6,782,567 (the “’567 Patent”).1
On February 22, 2012, plaintiff purportedly served Yookidoo and GWD, two
Israeli partnerships, Docket No. 164, and, after GWD failed to appear or otherwise
respond to the case, plaintiff secured an entry of default against GWD. Docket No.
168. On March 1, 2012, plaintiff requested an additional 30 days to serve Yookidoo,
Docket No. 171, which was granted by the magistrate judge. Docket No. 173. On April

1

The ’567 patent was applied for by and issued to inventors Linda Austin and
Anne Argent, who assigned the patent to Two Moms. Docket No. 119 at 5-6, ¶¶ 10.

11, 2012, plaintiff served Yookidoo, Docket No. 210, and on August 22, 2012 secured
an entry of default against it. Docket No. 230. However, because plaintiff’s methods of
service were defective, the Court vacated the entries of default against defendants
Yookidoo and GWD. See Docket Nos. 245, 251, 266.
On October 24, 2012, the Court issued an order [Docket No. 270] granting in part
and denying in part IPT’s supplemental motion for summary judgment [Docket No. 167].
In the order, the Court found that, pursuant to 35 U.S.C. § 103, the ’567 patent was
invalid as obvious. In light of the Court’s order, plaintiff’s claims against GWD and
Yookidoo are now moot; however, Yookidoo and GWD remain as unserved parties in
the litigation.
Pursuant to Rule 4(m) of the Federal Rules of Civil Procedure, if proper service
of the summons and complaint is not made within 120 days after the filing of the
complaint, the district court must nonetheless grant an “appropriate” extension of time
upon a showing by the plaintiff of “good cause for the failure.” Fed. R. Civ. P. 4(m); see
also Espinoza v. United States, 52 F.3d 838, 840-41 (10th Cir. 1995). If the plaintiff
fails to show good cause, the district court retains discretion either to: (1) dismiss the
action without prejudice, or (2) direct that service be effected within a specified time.2
Id.; Scott v. Hern, 216 F.3d 897, 912 (10th Cir. 2000).
Rule 4(h) describes the procedures for service of process of foreign
2

“Before a federal court may exercise personal jurisdiction over a defendant, the
procedural requirement of service of summons must be satisfied. ‘Service of summons
is the procedure by which a court having venue and jurisdiction of the subject matter of
the suit asserts jurisdiction over the person of the party served.’” Omni Capital Int'l v.
Rudolf Wolff & Co., 484 U.S. 97, 104 (1987) (quoting Mississippi Publishing Corp. v.
Murphree, 326 U.S. 438, 444-45 (1946)).
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corporations. Fed. R. Civ. P. 4(h). Pursuant to Rule 4, if a foreign corporation is served
outside of a district of the United States, Rule 4(h)(2) directs that service be made
pursuant to Rule 4(f), which allows for service outside of a judicial district of the United
States “by any internationally agreed means of service that is reasonably calculated to
give notice,” such as the Hague Convention. Fed. R. Civ. P. 4(f)(1).3 Because the
United States and Israel are signatories of the Hague Convention, plaintiff was required
to attempt to serve GWD and Yookidoo pursuant to the dictates of the Hague
Convention. See Advanced Aerofoil Technologies, AG v. Todaro, 2012 WL 299959, at
*2 (S.D.N.Y. Jan. 31, 2012) (“[T]he Hague Convention’s procedures for service are
mandatory because Switzerland and Germany, the countries in which Plaintiffs sought
to serve the documents on the foreign defendants, are signatories to that Convention.”).
As noted in the Court’s previous orders, plaintiff has not served Yookidoo and
GWD pursuant to the Hague Convention. See Docket Nos. 245, 266. In addition,
plaintiff has not argued that Rule 4(f)(2)4 applies nor has it requested an order from the
Court for service “by other means not prohibited by international agreement” pursuant

3

Because Rule 4(h)(2) explicitly incorporates the methods of service prescribed
in Rule 4(f), courts have recognized that the 120-day time limit does not apply to service
in foreign countries of individual or corporate defendants. Nylok Corp. v. Fastener
World, Inc., 396 F.3d 805, 806 (7th Cir. 2005); Loral Fairchild Corp. v. Matsushita Elec.
Indus. Co. Ltd., 805 F. Supp. 3, 4-5 (E.D.N.Y. 1992); Maale v. Francis, 258 F.R.D. 533,
535 n.2 (S.D. Fla. 2009); Flock v. Scripto-Tokai Corp., 2001 WL 34111630, at *5 (S.D.
Tex. July 23, 2001).
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Rule 4(f) does allow service by certain other means that are “reasonably
calculated to give notice” “if an international agreement allows but does not specify
other means.” Fed. R. Civ. P. 4(f)(2). However, when Israel ratified the Hague
Convention, it rejected service by other means. See Doe I v. State of Israel, 400 F.
Supp. 2d 86, 103 (D.D.C. 2005).
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to Rule 4(f)(3). See Docket No. 266 at 3-4. Given that plaintiff has failed to comply with
the procedures authorized by Rule 4 for service upon a foreign corporation, the Court
must next determine whether there is good cause to grant plaintiff an extension.
The Court finds that there is no reason to excuse plaintiff’s failure to effectuate
proper service. Plaintiff has had two years to serve GWD and Yookidoo and has not
explained why it could not successfully serve these defendants. After the Court issued
orders vacating the entry of default against Yookidoo and GWD, plaintiff did not file a
motion to effectuate service pursuant to Rule 4(f)(3) or otherwise evince an intent to do
so. In addition, as noted above, plaintiff’s claims for relief are now moot and therefore
service of process on Yookidoo and GWD is not relevant at this juncture in the case.
Accordingly, because plaintiff has failed to show good cause for its failure to serve
Yookidoo and GWD, the Court will dismiss this action without prejudice as to those
defendants pursuant to Rule 4(m).5 Hern, 216 F.3d at 912.
For the foregoing reasons, it is
ORDERED that plaintiff Two Moms and a Toy, LLC’s claims against defendants
Golos Weisman Design, Ltd and Yookidoo, Ltd. are dismissed without prejudice. It is
further
ORDERED that this case is dismissed in its entirety.

5

Because there is no mandatory 120-day time limit to serve foreign defendants,
“courts have used a flexible due diligence standard in determining whether service of
process under Rule 4(f) is timely.” Ambriz Trading Corp. v. URALSIB Fin. Corp., 2011
WL 5844115, at *5 (S.D.N.Y. Nov. 21, 2011) (citation omitted).
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DATED October 29, 2012.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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