SignalQuest, Inc. v. Chou et al

Filing 21

ORDER denying 15 Motion to Dismiss for Insufficient Service of Process. So Ordered by Chief Judge Joseph N. Laplante. Answer Follow Up on 6/5/2012.(jb)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE
SignalQuest, Inc.
v.

Civil No. 11-cv-392-JL
Opinion No. 2012 DNH 090

Tien-Ming Chou and Oncque
Corporation
MEMORANDUM ORDER
When service of process absolutely, positively has to be
effected on a Taiwanese defendant pursuant to Federal Rule of
Civil Procedure 4(f)(2)(C)(ii), is Federal Express enough?
Defendants Tien-Ming Chou and Oncque Corporation, citizens of
Taiwan to whom the clerk of this court sent the summons and
complaint in this action via Federal Express, say no, and have
moved to dismiss for insufficient service of process.
R. Civ. P. 12(b)(5).

See Fed.

Noting that Rule 4(f)(2)(C) does not allow

for service on foreign defendants in a manner “prohibited by the
foreign country’s law,” they argue that enlisting the clerk of
this court to send them process by Federal Express was improper
because that method of service is not prescribed by the Taiwanese
laws governing service of process.

Plaintiff SignalQuest, Inc.

argues in response that the rule merely precludes service using a
method expressly proscribed by the applicable foreign law, and
does not require the plaintiff to make service using a method
expressly prescribed by that law.

Because this is an action for patent infringement, this
court has jurisdiction pursuant to 28 U.S.C. §§ 1331 (federal
question) and 1338 (patent).

After hearing oral argument, the

court denies defendants’ motion.

The plain meaning of the word

“prohibited” favors SignalQuest’s interpretation of Rule
4(f)(2)(C).

Moreover, another provision of Rule 4, subsection

(f)(2)(A), already permits parties to make service on a defendant
in a foreign country “as prescribed by the foreign country’s law
for service in that country.”

If subsection (f)(2)(C) is read in

the manner defendants argue, then it would authorize precisely
the same form of service as subsection (f)(2)(A), making at least
one of those provisions superfluous.

Because it is undisputed

that Taiwanese law does not expressly prohibit the manner of
service employed here, the court concludes that service on
defendants was proper.

I.

Applicable legal standard
When the sufficiency of process is challenged under Rule

12(b)(5), the plaintiff bears “the burden of proving proper
service.”

Rivera-Lopez v. Municip. of Dorado, 979 F.2d 885, 887

(1st Cir. 1992); see also Saez Rivera v. Nissan Mfg. Co., 788
F.2d 819, 821 n.2 (1st Cir. 1986).

“A plaintiff may rely on

specific allegations in the complaint to create a prima facie

2

showing of facts that would dictate the appropriate means of
service.”

C3 Media & Mktg. Grp., LLC v. Firstgate Internet,

Inc., 419 F. Supp. 2d 419, 427 (S.D.N.Y. 2005) (citing Jazini v.
Nissan Motor Co., 148 F.3d 181, 184 (2d Cir. 1998)).

“But in

resolving the motion, the court must look to matters outside the
complaint to determine what steps, if any, the plaintiff took to
effect service.”

Id.

Such matters may include the return of

service, affidavits submitted by the parties, and testimony or
other evidence adduced at an evidentiary hearing.

See generally

Blair v. City of Worcester, 522 F.3d 105 (1st Cir. 2008); see
also 5B Charles Alan Wright et al., Federal Practice and
Procedure § 1353, at 343-45 (3d ed. 2004) (cataloguing evidence
admissible on Rule 12(b)(5) motion).

II.

Background
This action arises out of a patent dispute.

SignalQuest is

a Delaware corporation headquartered in New Hampshire.

Chou is

the CEO of Oncque, a Taiwanese corporation with its principal
place of business in Taiwan.

He is also the original owner of

U.S. Patent No. 6,706,979 (the “‘979 patent”), which teaches a
vibration switch including a housing with an accomodation chamber
for receiving two electric contract bodies, and which SignalQuest
alleges Chou either assigned or licensed to Oncque.

3

In July 2011, Chou sent SignalQuest a cease and desist
letter claiming that certain of its products infringed the ‘979
patent.

That same month, Oncque contacted one of SignalQuest’s

distributors and demanded that the distributor remove
SignalQuest’s products from its website because they infringed
the ‘979 patent.

SignalQuest, believing that legal action by

defendants was imminent, responded by filing this action for a
declaratory judgment that it is not infringing the ‘979 patent.
Before attempting to serve the complaint on defendants,
SignalQuest amended it to add a claim for patent infringement,
which alleges that Chou and Oncque are themselves infringing
SignalQuest’s patents, specifically, U.S. Patents Nos. 7,067,748;
7,326,866; and 7,326,867.
After trying unsuccessfully to persuade defendants’ counsel
to accept service on their behalf, SignalQuest filed an affidavit
with this court requesting that service be made pursuant to
Federal Rule of Civil Procedure 4(f)(2)(C)(ii).1

It also

provided the clerk of this court with copies of the summons,
complaint, and other documents for service on defendants via

1

See Service of Judicial Documents in Foreign Countries, at
www.nhd.uscourts.gov/cp/filing-information/ForeignDefendant.asp
(“[T]his district . . . requires that attorneys seeking service
of process in a foreign country by mail provide an affidavit
setting forth the precise manner of service chosen and the legal
authority to support the selected method of service.”).
4

Federal Express.

Federal Express delivered the service documents

to Oncque at its headquarters in Taichung City, Taiwan on
December 1, 2011.

An individual named “S. Wang”--who, defendants

say, is a sales assistant at Oncque--signed the delivery receipt.
After Federal Express twice attempted delivery on Chou at his
residence in Taiwan and was rebuffed, plaintiffs returned to the
clerk of this court and provided documents to be served on Chou
via Federal Express at his place of employment, Oncque.

On

December 19, 2011, Federal Express delivered the service
documents to Chou at Oncque’s headquarters in Taichung City; “S.
Wang” again signed the delivery receipt.

Oncque and Chou filed

the present motion on January 20, 2012.

III. Analysis
Before a federal court may exercise jurisdiction over a
defendant, the procedural requirements of service of process must
be satisfied.

Omni Capital Int'l Ltd. v. Rudolf Wolff & Co., 484

U.S. 97, 104 (1987).

Those requirements are set out in Federal

Rule of Civil Procedure 4.

Rule 4(f) governs service on an

individual in a foreign country, while Rule 4(h)(2) governs
service on corporations in foreign countries.

The requirements

set forth in those subsections are nearly identical; Rule 4(h)(2)
provides that service on a foreign corporation may be made “in

5

any manner prescribed by Rule 4(f) for serving an individual,”
with one exception not relevant here.
In full, Rule 4(f) provides:
Unless federal law provides otherwise, an individual-other than a minor, an incompetent person, or a person
whose waiver has been filed--may be served at a place
not within any judicial district of the United States:
(1) by any internationally agreed means of service
that is reasonably calculated to give notice, such
as those authorized by the Hague Convention on the
Service Abroad of Judicial and Extrajudicial
Documents;
(2) if there is no internationally agreed means, or
if an international agreement allows but does not
specify other means, by a method that is reasonably
calculated to give notice:
(A) as prescribed by the foreign country's law for
service in that country in an action in its courts
of general jurisdiction;
(B) as the foreign authority directs in response
to a letter rogatory or letter of request; or
(C) unless prohibited by the foreign country's
law, by:
(i) delivering a copy of the summons and of the
complaint to the individual personally; or
(ii) using any form of mail that the clerk
addresses and sends to the individual and that
requires a signed receipt; or
(3) by other means not prohibited by international
agreement, as the court orders.
Here, the parties agree that SignalQuest did not make service on
defendants pursuant to Rules 4(f)(1), (2)(A)-(B), or (3).

6

Taiwan

is not a signatory to the Hague Convention or any other agreement
specifying an appropriate means of service, so service pursuant
to Rule 4(f)(1) is not a possibility, and it is undisputed that
SignalQuest did not follow Taiwan’s law governing service, the
directions given in response to a letter rogatory, or any order
of this court.

As just mentioned, SignalQuest relies solely on

Rule 4(f)(2)(C)(ii), contending that it properly effectuated
service of process under that section by having the clerk of this
court deliver the summons and complaint to defendants by Federal
Express.

Defendants’ disagreement with that contention is

limited to a single issue:

they argue that the method of service

SignalQuest chose in this case is “prohibited by the foreign
country’s law,” and therefore ineffective under Rule 4(f)(2)(C).2

2

The court notes that there are at least two other potential
problems with the method of service SignalQuest chose. First,
Federal Express, as a private courier service, may not constitute
a “form of mail” within the meaning of Rule 4(f)(2)(C)(ii).
Compare NSM Music, Inc. v. Villa Alvarez, No. 02-cv-6482, 2003 WL
685338, *2 (N.D. Ill. Feb. 25, 2003) (holding service under Rule
4(f)(2)(C)(ii) invalid because Federal Express did not constitute
mail “as that term is commonly understood”) with IntelliGender,
LLC v. Soriano, No. 10-cv-125, 2012 WL 215066, *2 (E.D. Tex. Jan.
24, 2012) (“[S]everal courts have implicitly ruled that service
under Rule 4(f)(2)(C)(ii) using signed receipt Federal Express
mail is appropriate.”). Second, it is far from clear that
delivering service documents to Chou at his place of work, where
they were signed for by another individual, is sufficient under
the rule. Compare Intelsat Corp. v. Multivision TV LLC, 736 F.
Supp. 2d 1334, 1341-42 (S.D. Fla. 2010) (where “receipts were
signed by receptionists at [defendant’s] place of work, not by
[defendant] himself,” defendant “was not properly served under
Rule 4(f)(2)(C)(ii)”) with Martinez v. White, No. C 06-1595 CRB,
7

The principal point of disagreement between the parties is
the proper interpretation of the term “prohibited by the foreign
country’s law.”

That matter has occupied a number of courts, and

two clear lines of authority, corresponding to the positions the
parties stake out here, have developed.

“The vast majority of

cases to consider the issue have held that a method of service is
not prohibited under Rule 4(f)(2)(C)(ii) unless it is expressly
prohibited by a foreign country’s laws.”

Fujitsu Ltd. v. Belkin

Int’l, Inc., No. 10-cv-3972, 2011 WL 3903232, *3 (N.D. Cal. Sept.
6, 2011); see also SEC v. Alexander, 248 F.R.D. 108, 111-12
(E.D.N.Y. 2007) (collecting cases).

The only judge of this court

to consider the issue has also taken that view, see Emery v. Wood
Indus., Inc., 2001 DNH 155, 4-5 (McAuliffe, J.), which is the
interpretation SignalQuest urges.

The remaining cases, which

have interpreted the rule in the manner defendants urge, hold
that “unless expressly permitted by foreign law, service by
registered mail should be deemed prohibited under Rule
4(f)(2)(C)(ii).”

TruePosition, 2006 WL 1686635 at *4.

2006 WL 2792874, *2 (N.D. Cal. Sept. 28, 2006) (Rule 4(f)(2)
(C)(ii) “does not require defendant’s signature; it merely
requires a signed receipt.”). Defendants have not raised either
of these issues, though, and in the absence of briefing and the
presence of divergent authority, the court expresses no opinion
on whether either one would render service here inadequate.
8

As between the two interpretations, the court finds the
majority view more persuasive.

To begin, that interpretation

fits more comfortably with the plain language of Rule 4(f)(2)(C)
itself, which, of course, is the “starting point” for
“interpreting a formal rule of procedure.”

Delgado v. Pawtucket

Police Dep’t, 668 F.3d 42, 49 (1st Cir. 2012).
means “to forbid by authority or command:

To “prohibit”

ENJOIN; INTERDICT.”

Webster's Third International Dictionary 1813 (1993); see also
Black’s Law Dictionary 1212 (6th ed. 1990) (defining “prohibit”
as “[t]o forbid by law; to prevent”).3

“A form of service is not

‘forbidden by authority’ merely because it is not a form
explicitly ‘prescribed’ by the laws of a foreign country.”

Dee-K

Enters. Inc. v. Heveafil Sdn. Bhd., 174 F.R.D. 376, 380 (E.D. Va.
1997); see also Wright, supra § 1134 (noting that while the rule
“can be interpreted to bar parties from using any method of
service not explicitly prescribed by the laws of the foreign
country . . . this reading of the rule seems inconsistent with
the text on its face.”).

To be “prohibited” requires something

3

Federal courts, including this one, frequently look to
Webster’s and Black’s when attempting to ascertain the ordinary
or natural meaning of a word or phrase. E.g., Knowles v. N.H.
Dep’t of Corrs. Comm’r, 538 F. Supp. 2d 453, 460 (D.N.H. 2008)
(citing Smith v. United States, 508 U.S. 223, 228-29 (1993)).
Here, the court looks to the editions of each dictionary in print
at the time Rule 4(f)(2)(C) was adopted in 1993. See Perrin v.
United States, 444 U.S. 37, 42-43 (1979).
9

more, akin to a clear command that a course of action cannot be
taken.
To the extent that any ambiguity remains in the text of Rule
4(f)(2)(C) when that provision is considered in isolation,
moreover, that ambiguity disappears when it is viewed in context.
See Delgado, 668 F.3d at 49 (language of a procedural rule must
be interpreted “with due regard to . . . the context in which it
is found”).

To conclude that any method of service not

prescribed by a foreign country’s law is prohibited under
subsection (f)(2)(C) of Rule 4 would appear to render that
provision superfluous.

This is because subsection (f)(2)(A) of

the rule allows service to be effected on a defendant in a
foreign country “as prescribed by the foreign country's law.”

As

one court has explained:
[I]f subsection (f)(2)(C) is inapplicable where a form
of return receipt mail is not prescribed by the law of
a foreign country, then a plaintiff’s failure to
satisfy subsection (f)(2)(A) would preclude the
availability of subsection (f)(2)(C) thereby making the
latter subsection useless. In order to give subsection
(f)(2)(C) operative effect, the subsection should be
interpreted to permit service of process by alternative
forms of service that, while not specifically
prescribed by the laws of a foreign country, are also
not prohibited by such laws.
Res. Ventures, Inc. v. Res. Mgmt. Int’l, Inc., 42 F. Supp. 2d
423, 430 (D. Del. 1999); see also Dee-K, 174 F.R.D. at 380 (“[I]f
all forms of service not ‘prescribed’ are ‘prohibited’, then the

10

failure to satisfy subsection (f)(2)(A) would preclude the
availability of subsection (f)(2)(C) and the latter subsection
would have no effect; it would be useless.”).

“[A] court called

upon to construe a procedural rule should give effect, whenever
possible, to every word and phrase contained in the rule’s text,”
United States v. Ven-Fuel, Inc., 758 F.2d 741, 751-52 (1st Cir.
1985), and defendants proffer no interpretation of Rule
4(f)(2)(C) that would not in essence read that subsection out of
the rule.

Indeed, defendants do not acknowledge the existence of

Rule 4(f)(2)(A), let alone try to reconcile it with their
interpretation of Rule 4(f)(2)(C).4
Instead, defendants appeal to policy, arguing that to
require a method of service “be ‘explicitly prohibited’ under the
law of the foreign country would leave the drafters of civil
procedure rules in foreign countries with the daunting task of
listing every forbidden method of service they could contemplate
at the time.”

Even assuming that such a concern could overcome

the rule’s plain language, defendants overstate their case.

4

As

Nor, for that matter, do any of the cases defendants cite
in support of their interpretation of the rule. See Exp.-Imp.
Bank of U.S. v. Asia Pulp & Paper Co., Ltd., No. 03-cv-8554, 2005
WL 1123755, *2-*3 (S.D.N.Y. May 11, 2005); Jung v. Neschis, No.
01-cv-6993, 2003 WL 1807202, *2-*3 (S.D.N.Y. Apr. 7, 2003);
Procter & Gamble Cellulose Co. v. Viskoza-Loznica, 33 F. Supp. 2d
644, 664-65 (W.D. Tenn. 1998); Graval v. P.T. Bakrie & Bros., 986
F. Supp. 1326, 1329 (C.D. Cal. 1996).
11

SignalQuest notes, Rule 4(f)(2)(C) does not require quite so
daunting a task, because a country could prohibit any means of
service not specifically prescribed by its own laws with a single
sentence, e.g., “process in a case pending in a foreign country
shall not be served upon a citizen of this country except as
specified by the laws of this country.”5
The court therefore concludes that service by Rule
4(f)(2)(C)(ii) is permitted unless the law of the foreign country
in which the defendant is located expressly proscribes service by
the means specified therein.

With the proper interpretation of

the rule thus resolved, the resolution of defendants’ motion
becomes a simple matter.

Defendants themselves admit that

Taiwanese law contains no explicit textual prohibition on service
in the manner undertaken in this case.

See document no. 18 at 1

(“service by Federal Express is not literally prohibited under

5

Furthermore, Rule 4(f)(2)(C) does not permit service by
every method of service that can be contemplated, but permits
only two narrow forms of service (by delivery to an individual
personally or by return-receipt mailing by a federal court
clerk). Those are the only two forms of service that the foreign
country would have to prohibit to prevent service from being made
under the rule. And although it may admittedly seem farfetched
to expect a country to expressly prohibit a means of service-especially since our own rules do not explicitly do so, instead
opting to specify acceptable means of service and let negative
implication do the rest--it is not inconceivable. In fact, at
least one country has expressly prohibited service through one of
the methods set forth in the rule. See Prewitt Enters., Inc. v.
OPEC, 353 F.3d 916, 925 (11th Cir. 2003) (applying Austrian law).
12

[Taiwanese law]”); id. at 2 (Taiwanese law “is silent on whether
service by Fed Ex is prohibited”).

They attempt to argue that

service that “is not articulated in” Taiwanese law “is implicitly
prohibited under Taiwanese law” by “negative implication.”

But

this argument boils down to the proposition that service not
expressly prescribed by a foreign country’s law must be
prohibited--a proposition that fails for the reasons just
discussed.
Accordingly, service as specified by Rule 4(f)(2)(C)(ii) is
not prohibited by Taiwanese law.

In so holding, the court joins

at least five other federal courts to examine this issue.

See

Belkin Int’l, 2011 WL 3903232 at *2-*3; Fujitsu Ltd. v. Nanya
Tech. Corp., No. 06-cv-6613, 2007 WL 484789, *5 (N.D. Cal. Feb.
9, 2007); TruePosition, 2006 WL 1686635 at *4-*6; Power
Integrations, Inc. v. Sys. Gen. Corp., 04-cv-2581, 2004 WL
2806168, *2-*3 (N.D. Cal. Dec. 7, 2004); Emery, 2001 DNH 155, 45.

Because the service in this case was reasonably calculated to

give defendants notice of this action and did, in fact, provide
them such notice, the court concludes that service on defendants
was proper under Rule 4(f)(2)(C)(ii).

13

IV.

Conclusion
For the reasons set forth above, defendants’ motion to

dismiss6 is DENIED.
SO ORDERED.

____________________________
Joseph N. Laplante
United States District Judge
Dated:
cc:

May 22, 2012

Robert R. Lucic, Esq.
Thomas J. Donovan, Esq.
Nicholas F. Casolaro, Esq.
Timothy N. Trop, Esq.

6

Document no. 15.
14