It is not uncommon for parties to race to file competing patent
suits in their preferred districts once negotiations break down and
litigation appears necessary. In some cases, recognizing that
federal courts generally give priority to cases which are the
"first filed" and procedurally further along, a party may
attempt to delay service of an opposing party's
complaint. That was the apparent strategy of Japan-based Godo
Kaisha IP Bridge 1 ("IPB") in its patent dispute with San
Jose-based Xilinx, Inc. ("Xilinx"). But as IPB
discovered, delay tactics do not always work.
Here, after the parties were unable to resolve their dispute,
IPB filed a two-patent infringement suit in the Eastern District of
Texas on January 31, 2017, and Xilinx filed a non-infringement
declaratory judgment action on twelve different patents the
following day in the Northern District of California. (According to
Xilinx in its pending Motion to Dismiss or Transfer in the Texas
case, Civil Action No. 2:17-cv-00100, IPB violated a Forbearance
Agreement by filing suit a day early.) Even though IPB sued
Xilinx in the U.S., it refused to accept service of Xilinx's
action at its principal address in Tokyo. And after being
contacted to accept service on his client's behalf, IPB's
U.S. trial counsel replied, "I suppose you never heard of the
'first to file' rule. We will serve Xilinx directly,
and you can do the same with IPB. We will be well into the ED
Tex case by the time your case is served." Based on this
and other correspondence regarding service, Judge Donato concluded
that "IPB's counsel declined to accept service in an
apparent fit of pique, and the record of events after that
indicates that IPB has been unduly difficult to serve in a manner
reflecting the uncooperative spirit manifested in [its
Following the refusal of IPB's U.S.-based counsel to accept
service, Xilinx filed a motion for an order of service under
Federal Rule 4(f)(3), which permits service in a foreign country
"by other means not prohibited by international agreement, as
the court orders." IPB responded that it has a
"right" to force service through strict compliance with
the Hague Convention, and that Xilinx was required to attempt
service through the Hague Convention before resorting to other
Judge Donato disagreed. He held that Federal Rule 4 permits
service on a foreign corporation in any manner prescribed for an
individual, including "by other means" (outside the Hague
Convention) so long as it is directed by the court and is not
prohibited by international agreement. He found there is no
hierarchy of procedures requiring that service be attempted through
the Hague Convention before relying on Rule 4(f)(3), which "is
not a last resort or extraordinary relief," but merely
"one means among several which enables service of process on
an international defendant." Judge Donato then found
that service via Rule 4(f)(3) did not violate any international
agreement, and granted Xilinx's motion.
After granting the motion, Judge Donato turned to the question
of the proper form of service to order. He found that because IPB
hired U.S. counsel, and sued Xilinx in the U.S., service on
IPB's U.S. counsel was "an effective and reasonable
method" of service not prohibited by the Hague
Convention. Consequently, Judge Donato ordered service on IPB
through its U.S. counsel via email and U.S. mail to their law
IPB's "unduly difficult" conduct may have delayed
service for a time, but Judge Donato was not impressed by its
"uncooperative spirit"—which may come back to bite
IPB if the case progresses in his court. And this decision is an
important reminder of the need to remain professional and civil in
filings and correspondence, or risk facing a frustrated judge and
possibly even sanctions.
 At the outset of his Order, Judge Donato advised
counsel for both parties that the Northern District requires
civility, courtesy, and professional integrity from all attorneys
admitted to the District, and that conduct falling below the
District's standards will result in monetary or other
sanctions. He then required both parties to read the District's
"Guidelines for Professional Conduct"— which we
discussed on this Blog—and to inform their clients that
he ordered them to do so.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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