Howlink Global LLC v. AT&T Inc. et al

Filing 97

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 11/17/2022. (ch, )

Case 2:22-cv-00040-JRG-RSP Document 97 Filed 11/17/22 Page 1 of 4 PageID #: 1202

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
HOWLINK GLOBAL LLC,
Plaintiff,
v.
AT&T, INC, ET AL.,
Defendants.

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Case No. 2:22-cv-00040-JRG-RSP
(LEAD CASE)

MEMORANDUM ORDER
Before the Court is the Motion for Substitute Service of Subpoenas and
Related Documents filed by Defendants and Intervenors. 1 Dkt. No. 91. Movants request
an order permitting substitute service of subpoenas and related documentation (Dkt. No.
91-1) on the Electronics and Telecommunications Research Institute (“ETRI”), a South
Korean entity registered to do business in California, by personal delivery to California’s
Secretary of State. For the following reasons, the Court GRANTS the motion.
I.

BACKGROUND

Howlink Global LLC filed suit against AT&T 2 and Verizon 3 alleging infringement of
U.S. Patent Nos. 8,630,279 (the “’279 Patent”); RE46,415; and 9,596,576. Ericsson, Inc. and
Nokia of America Corporation later intervened. The ’279 Patent originated from a South Korean
entity named the Electronics and Telecommunications Research Institute (“ETRI”). Howlink
AT&T, Corp., et al. (“AT&T”) and Defendants Cellco partnership d/b/a Verizon Wireless, et al.,
(“Verizon”) (AT&T and Verizon collectively, “Defendants”) and Intervenors Ericsson, Inc.
(“Ericsson”) and Nokia of America Corporation (“Nokia”) (Nokia and Ericsson collectively,
“Intervenors”).
2
AT&T Inc.; AT&T Corp.; AT&T Communications, LLC; AT&T Mobility LLC; and AT&T Services, Inc.
(collectively, “AT&T”).
3
Verizon Communications Inc.; Cellco Partnership d/b/a Verizon Wireless; Verizon Services Corp.; Verizon
Enterprise Solutions, LLC; Verizon Business Global, LLC; Verizon Business Network Services, LLC; Verizon
Corporate Services Group Inc.; Verizon Data Services, LLC; Verizon Media Inc.; and Verizon Online, LLC.
1

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asserts that it does not have any P.R. 3-2(a) or (b) documents, but believes that ETRI has
information regarding licensing, conception, and other critical issues in the case. Dkt. No. 91
at 2. Accordingly, Defendants seek to serve subpoenas for depositions and documents on ETRI,
a non-party corporation. ETRI is registered to do business in the State of California. Dkt. Nos.
91-3, 91-4, 91-7.
II.

LEGAL STANDARD

Rule 45(b) governs the service of subpoenas; however, Rule 45(b) is silent with respect
to service on a corporation. Fed. R. Civ. P. 45(b). For service of subpoenas on a corporation,
courts generally allow the analogous method for service under Rule 4 as long as the entity has
minimum sufficient contacts within the district in which the subpoena is served. See 9 James W.
Moore et al., Moore's Federal Practice: Civil § 45.21 (3d. ed. 2022) (citing decisions from the
4th Circuit, and district court decisions from the 2d, 3d, and 9th Circuits); see also 9A Charles A.
Wright & Arthur R. Miller, Federal Practice and Procedure § 2454 (3d ed. 2022) (citing
decisions from the 2d and 10th Circuits and district court decisions from the 3d and 5th Circuits);
Am. Re Syndicate, Inc. v. Gen. Ins. Corp., No. 1:22-MC-00643-LY-SH, 2022 U.S. Dist. LEXIS
138602, at *7-*8 (W.D. Tex. 2022).
Rule 4 provides that a corporation can be served under the law of the state in which
service was executed. Fed. R. Civ. P. 4(e)(1), (h)(1)(A). Foreign businesses that register in
California are required to obtain a certificate of qualification, which requires designating an
agent and giving “irrevocable consent to service of process directed to it upon the agent
designated and to service of process on the Secretary of State if the agent designated or the
agent's successor is no longer authorized to act or cannot be found at the address given.” Cal.
Corp. Code § 2105(a). Service on a foreign corporation is valid by hand-delivering process to a

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corporate officer or general manager in California, a natural person designated as agent for the
service of process, or a person named in the latest certificate of the corporate agent. Cal. Corp.
Code § 2110. Furthermore, foreign corporations registered in California are subject to substitute
service through the California Secretary of State if the designated agent cannot be found with
due diligence at the designated address. Cal. Corp. Code § 2111 (a); Synnex Corp. v. Ncp, Inc.,
2018 Cal. Super. LEXIS 33433, at *1 (2018) (explaining the “due diligence” requirement is
satisfied by a reasonable search).
Regardless of the method, service must comply with the notice requirements of due
process. Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S. 306, 314 (1950). In addition, the
method of service cannot be prohibited by international agreement. Volkswagenwerk
Aktiengesellschaft v. Schlunk, 486 U.S. 694, 699 (1988).
III.

ANALYSIS

The Court finds that non-party ETRI has sufficient contacts with the state of California
such that California law governs service of the subpoenas. Since ETRI registered to do business
in California, ETRI irrevocably consented to service of process through its registered agent or
the California Secretary of State. Cal. Corp. Code § 2105(a); Dkt. No. 91-4. ETRI also promotes
itself as doing business in California. Dkt. No 91-5, 91-6.
Turning to whether the California Secretary of State is appropriate for substitute service,
the Court finds that it is. The California Secretary of State lists two California-based addresses
for ETRI. Dkt. Nos. 91-4, 91-7. Defendants attempted to serve ETRI through its registered agent,
Jie Hyun Lee, at the address shown on ETRI’s most updated California business records, but the
process server noted there was no listing for ETRI and there was no Suite 338. Dkt. 91-8.
Defendants also attempted to serve ETRI at a previous address and neither the previous agent nor

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ETRI were found at the listed location. Dkt. No. 91-9. In addition, Howlink’s counsel asserts it is
not authorized to accept service on behalf of ETRI. Dkt. No. 92 at 2. Therefore, ETRI’s
designated agent cannot be found after a reasonable search at the designated address. Synnex,
2018 Cal. Super. LEXIS 33433, at *1.
Finally, the Court finds that substitute service on the California Secretary of State would
not violate due process. Mullane, 339 U.S. 306, 314 (1950). ETRI updated its contact
information through the California Secretary of State as recently as September 20, 2022. Dkt.
No. 91-3. Therefore, this method of service is reasonably calculated to give ETRI notice of the
lawsuit and an opportunity to object.
.

IV.

CONCLUSION

Because substitute service on the California Secretary of State is valid and complete
under both state law and the Due Process Clause, the Hague Convention does not apply. Schlunk,
486 U.S. at 707. Accordingly, the Court GRANTS the motion. Defendants are directed to
personally deliver the subpoenas and related documents, for service on ETRI, to the Secretary of
State of the State of California according to the rules and regulations of the Secretary of State of
the State of California, including hand delivering process and a copy of this order to the
Secretary of State’s Office in Sacramento, along with the required fee.
SIGNED this 3rd day of January, 2012.
SIGNED this 17th day of November, 2022.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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