Square One Choices Inc. v. Zhejiang Junhe Trading Co., Ltd.

Filing 11

OPINION AND ORDER re: 10 LETTER MOTION for Leave to File service on Defendant addressed to Judge Jennifer L. Rochon from Leo V. Gureff dated August 9, 2024. filed by Square One Choices Inc. For the foregoing reasons, the Court D ENIES Plaintiffs' motion for alternative service via email. Plaintiff shall proceed to serve Defendant via the Hague Convention. If, after reasonable due diligence, Plaintiff determines that Defendant's address is inaccurate or unknown, t he Hague Convention no longer applies, and Defendant can make a renewed application for alternate service to this Court. See, e.g., Orient Plus, 2024 WL 2317715, at *4, n. 2 ([T]he Hague Convention does not apply wherethe address of the person to be served with the document is not known.") (quotation and citation omitted). SO ORDERED. (Signed by Judge Jennifer L. Rochon on 9/24/2024) (jca)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
SQUARE ONE CHOICES, INC.
Plaintiff,

Case No. 1:24-cv-02766 (JLR)

-against-

OPINION AND ORDER

YIWU BINGWEN TRADING CO., LTD.,
Defendant.
JENNIFER L. ROCHON, United States District Judge:

Plaintiff Square One Choices, Inc. has sued Defendant Yiwu Bingwen Trading Co.,
Ltd. d/b/a iArtker, a company organized under the laws of the Republic of China and located
in China, for patent infringement arising under the Patent Laws of the United States, 35
U.S.C. § 1, et seq. ECF No. 5 (“Am. Compl.”) ¶¶ 1, 3. Plaintiff now moves for leave to serve
Defendant by the alternative means of email pursuant to Federal Rule of Civil Procedure
(“Rule”) 4(f)(3). ECF No. 10 (“Mot.”). For the reasons stated below, the motion is DENIED.
BACKGROUND
On April 11, 2024, Plaintiff filed his initial Complaint, asserting patent infringement in
violation of the Patent Laws of the United States, 35 U.S.C. § 1 et seq. ECF No. 1
(“Compl.”). Plaintiff filed an Amended Complaint on June 21, 2024. ECF No. 5 (“Am.
Compl.”). Plaintiff is a corporation organized under the laws of the State of New York. Am.
Compl. ¶ 2. Plaintiff is the assignee and owner of the right, title, and interest in and to the
’901 patent, titled “DEVICE AND METHOD FOR THE CREATION OF 2D AND 3D
OBJECTS BY USING A 3D DRAWING PEN.” Am. Compl. ¶¶ 20, 21. The ’901 patent is
directed to a device that allows for the creation of two-dimensional and three-dimensional
objects using a 3D drawing pen. Am. Compl. ¶ 14. Defendant is a company organized under
the laws of the Republic of China and lists its address as 6th Floor, Building 10, Beiyuan
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Science and Technology Innovation Park, Beiyuan Street, Yiwu City, Zhejiang Province.
Am. Compl. ¶ 3. Defendant operates an Amazon store titled “BINGWUS” under the assumed
business name “yiwushibingwenshangmaoyouxiangongsi” through which it sells consumer
products to customers. Am. Compl. ¶ 5. Plaintiff alleges that Defendant has and continues to
directly infringe one or more claims of the ’901 patent by selling iArtker’s “Transparent 3d
Pen Mat” as part of the Defendant’s line of products on Amazon marketplace. Am. Compl. ¶
22.
To date, Defendant has not appeared in this action or otherwise moved with respect to
the Complaint. On August 9, 2024, Plaintiff filed a motion for alternative service, seeking
permission to serve Defendant, who is located in China, by email pursuant to Federal Rule of
Civil Procedure 4(f)(3). ECF. No. 10.
DISCUSSION
Rule 4(f) provides three methods of service of an individual in a foreign country:
(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) “a method that is reasonably calculated to give notice,” for
example, “as the foreign authority directs in response to a letter rogatory”; or (3) “by other
means not prohibited by international agreement, as the court orders.” Fed. R. Civ. P. 4(f)(1)(3). Under the third method, Rule 4(f)(3), “a court may fashion means of service on an
individual in a foreign country, so long as the ordered means of service (1) is not prohibited
by international agreement; and (2) comports with constitutional notions of due process.”
Front Row Fund I, L.P. ex rel. ChoiceWORX, Inc. v. Gross, No. 23-cv-02255 (JHR) (JLC),
2023 WL 4441976, at *1 (S.D.N.Y. July 11, 2023) (citation omitted); accord United States v.
Mrvic, 652 F. Supp. 3d 409, 412 (S.D.N.Y. 2023). “The decision whether to allow alternative
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methods of serving process under Rule 4(f)(3) is committed to the sound discretion of the
district court.” Pinkfong Co., Inc. v. Avensy Store, No. 23-cv-09238 (JLR), 2023 WL
8531602, at *1 (S.D.N.Y. Nov. 30, 2023).
China is a signatory to the Convention on the Service Abroad of Judicial and
Extrajudicial Documents in Civil and Commercial Matters (the “Hague Convention”). China
has lodged an unqualified objection to service by postal channels under the Hague
Convention. Smart Study Co. Ltd v. Acuteye-US, 620 F. Supp. 3d 1382, 1394-95 (S.D.N.Y.
July 21, 2022). Smart Study concluded that China’s objection to service by “postal channels”
“necessarily encompass[ed] an objection to service via email.” Id. This Court has adopted
Smart Study’s approach. See, e.g., Pinkfong, 2023 WL 8531602, at *3 (“The Court is
persuaded by the in-depth analysis in Smart Study Co. that, in light of its objections, China
prohibits service by email on defendants located in China”) (citation and quotation omitted);
see also Orient Plus Int’l Ltd.v. Baosheng Media Grp. Hldgs. Ltd., No. 24-cv-00744, 2024
WL 2317715, at *3 (S.D.N.Y. May 22, 2024) (endorsing Smart Study’s holding); Shenzhen
Chengront Tech. Co., Ltd. v. Besign Direct, No. 22-cv-10281, 2022 WL 17741496, at *2
(S.D.N.Y. Dec. 9, 2022) (same).
Plaintiff has not shown that the Hague Convention allows email service on Defendant.
As a result, the Court does not address Plaintiff’s remaining arguments.
CONCLUSION
For the foregoing reasons, the Court DENIES Plaintiffs’ motion for alternative service
via email. Plaintiff shall proceed to serve Defendant via the Hague Convention. If, after
reasonable due diligence, Plaintiff determines that Defendant’s address is inaccurate or
unknown, the Hague Convention no longer applies, and Defendant can make a renewed
application for alternate service to this Court. See, e.g., Orient Plus, 2024 WL 2317715, at
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*4, n. 2 (“[T]he Hague Convention does not apply where…the address of the person to be
served with the document is not known.”) (quotation and citation omitted).
Dated: September 24, 2024
New York, New York

SO ORDERED.

JENNIFER L. ROCHON
United States District Judge

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