Patent Lawyer Blog
Blue Spike, LLC (“Blue Spike”) filed a patent infringement action against Biolink Solutions LTD. (“Biolink”) and Biometric, LLC. Biolink is a Russian company that has no offices, employees, agents, distributors or related entities in Texas, but does business in Texas according to the complaint. Blue Spike served Biolink with the complaint through the Texas Secretary of State. Biolink moved to quash service of the summons on the ground that it was not served through the procedures set forth in the Hague Convention.
Biolink based its motion on the argument that “[e]ntities located in Hague Convention signatory countries, such as Russia, must follow the procedure set forth in the Hague Convention. To comply with the procedure set forth in the Hague Convention, Blue Spike is required to serve the Central Authority of the State in which process is to be served. Convention of 15 November 1965 on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, Nov. 15, 1965, Art. 3. Defendants contend that notwithstanding that the Texas Secretary of State may be an agent for service of process for a nonresident who engages in business in this state, service must be quashed because there is no indication that the Secretary of State has complied with the requirements to serve Biolink under the Hague Convention.”
Blue Spike asserted that the motion should be denied because it had complied with Fed.R.Civ.P. 4(h)(1)(A) and that compliance with the Hague Convention was not necessary. After reviewing Rule 4(h)(1)(A), the district court concluded that Blue Spike had complied with the Rule because under Texas law, the Secretary of State is the appropriate person to server for an entity that is a nonresident in the state but engages in business within the state.
The district court then turned to the issue of whether the procedure set forth in the Hague Convention had to be used and then concluded it did not. “Although Russia is a signatory to the Hague Convention, the Russian Federation unilaterally suspended all judicial cooperation with the United States in civil and commercial matters in 2003. Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1237 (Fed. Cir. 2010). Therefore, courts have continually held that service in Russia need not comply with the Hague Convention. Id. At 1238; see also In re Cyphermint, Inc., 445 B.R. 11, 14 (D. Mass. 2011); Arista Records LLC v. Media Services LLC, No. 06-15319, 2008 WL 563470 (S.D.N.Y. Feb. 25, 2008).”
Accordingly, the district court concluded that service of process did not have to be completed in accordance with the Hague Convention and that service on the Texas Secretary of State was appropriate.
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.