The opinion of the court was delivered by: Joseph N. Laplante United States District Judge
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. See Fed. R. Civ. P. 12(b)(5). 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 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).
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.
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).*fn1 It also provided the clerk of this court with copies of the summons, complaint, and other documents for service on defendants via 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.
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 ...