Case: 21-165 Document: 20 Page: 1 Filed: 09/10/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: ONEPLUS TECHNOLOGY (SHENZHEN) CO.,
LTD.,
Petitioner
______________________
2021-165
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in Nos.
6:20-cv-00952-ADA, 6:20-cv-00953-ADA, 6:20-cv-00956-
ADA, 6:20-cv-00957-ADA, and 6:20-cv-00958-ADA, Judge
Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
Before LOURIE, BRYSON, and TARANTO, Circuit Judges.
PER CURIAM.
ORDER
OnePlus Technology (Shenzhen) Co., Ltd. (“OnePlus”)
petitions for a writ of mandamus directing the United
States District Court for the Western District of Texas to
dismiss the five underlying patent infringement actions for
insufficient service of process and lack of personal jurisdic-
tion. WSOU Investments LLC d/b/a Brazos Licensing and
Development (referred to here as “Brazos”) opposes.
Case: 21-165 Document: 20 Page: 2 Filed: 09/10/2021
2 IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.
OnePlus also moves for oral argument. TP-Link Technolo-
gies Co., Ltd. (“TP-Link”) moves with opposition for leave
to file an out-of-time brief amicus curiae in support of
OnePlus.
We begin with the familiar proposition that mandamus
is an exceptional remedy that is granted only if the right at
issue is “clear and indisputable.” See Cheney v. U.S. Dist.
Ct. for D.C.,
542 U.S. 367, 381 (2004); In re TS Tech USA
Corp.,
551 F.3d 1315, 1318–19 (Fed. Cir. 2008). After stud-
ying the complex interaction of rules of state and federal
civil procedure implicated by this case, we are not per-
suaded that the petitioner’s right is clear and indisputable.
We therefore deny the petition.
1. In September 2020, Brazos filed five related patent
infringement actions in the United States District Court
for the Western District of Texas against OnePlus, a Chi-
nese company. Brazos alleged that OnePlus has no place
of business or employees in the United States.
Although the People’s Republic of China is a signatory
to the Hague Service Convention on the Service Abroad of
Judicial and Extrajudicial Documents in Civil and Com-
mercial Matters, 20 U.S.T. 361 (Nov. 15, 1965) (“the Hague
Convention”), Brazos elected not to attempt service on
OnePlus by invoking the Hague Convention. Instead, cit-
ing the burdens involved in effecting service through
Hague Convention procedures, Brazos requested that the
district court grant it leave under Fed. R. Civ. P. 4(f)(3) to
use alternative methods to effect service. The court
granted the motion, and Brazos served the complaint and
summons on attorneys who had represented OnePlus in
the past and on OnePlus’s authorized agent for service in
Hayward, California.
OnePlus made a special appearance in the case to chal-
lenge the sufficiency of the service and the court’s jurisdic-
tion over it. The district court rejected the challenge,
holding that Rule 4(f)(3) gave it discretion to order service
Case: 21-165 Document: 20 Page: 3 Filed: 09/10/2021
IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD. 3
of a foreign defendant by means other than those pre-
scribed by the Hague Convention, and that the service was
effective to grant the court in personam jurisdiction over
OnePlus. OnePlus now seeks a writ of mandamus compel-
ling the district court to vacate its order authorizing alter-
native service and requiring that Brazos effect service
pursuant to Hague Convention procedures.
2. Rule 4(k)(1)(A) of the Federal Rules of Civil Proce-
dure provides that serving a summons establishes personal
jurisdiction over a defendant “who is subject to the juris-
diction of a court of general jurisdiction in the state where
the district court is located.” Rule 4(h)(1) in turn provides
for service of a corporation in a judicial district of the
United States “in the manner prescribed by Rule 4(e)(1) for
serving an individual” or by delivering a copy of the sum-
mons and complaint to an officer or agent of the corpora-
tion. Rule 4(h)(2) provides for serving a corporation “at a
place not within any judicial district of the United States,
in any manner provided by Rule 4(f) for serving an individ-
ual except personal delivery.” Rule 4(e)(1), which is di-
rected to “serving an individual within a judicial district of
the United States,” provides that an individual may be
served, among other ways, by following state law for serv-
ing a summons in an action brought in the courts of general
jurisdiction in the state where the district court is located.
Rule 4(f), which is directed to “serving an individual in a
foreign country,” provides that an individual “may be
served at a place not within any judicial district of the
United States” in one of three ways:
(1) by any internationally agreed means of ser-
vice that is reasonably calculated to give notice,
such as the Hague Convention on the Service
Abroad of Judicial and Extrajudicial Documents;
(2) if there is no internationally agreed means,
or if an international agreement allows but does
Case: 21-165 Document: 20 Page: 4 Filed: 09/10/2021
4 IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.
not specify other means, by a method that is rea-
sonably calculated to give notice:
(A) as prescribed by the foreign country’s
law for service in that country in an action
in its courts of general jurisdiction;
(B) as the foreign authority directs in re-
sponse to a letter rogatory or letter of re-
quest; or
(C) unless prohibited by the foreign coun-
try’s law; or
(i) delivering a copy of the summons
and of the complaint to the individual
personally; or
(ii) using any form of mail that the
clerk addresses and sends to the indi-
vidual and that requires a signed re-
ceipt; or
(3) by other means not prohibited by interna-
tional agreement, as the court orders.
The Hague Convention applies in civil or commercial
cases in which judicial or extrajudicial documents are
transmitted for service abroad. Under the Convention, to
which both China and the United States are signatories,
each member state provides a “central authority” that is
responsible for receiving and effecting service from abroad
consistent with the member state’s domestic policies.
3. The petition seeks mandamus on three related
grounds: first, that the service in this case was ineffective;
second, that as a result of the ineffective service, the dis-
trict court lacked in personam jurisdiction over OnePlus;
and third, that it was an abuse of discretion for the district
court to authorize alternative service in this case in the ab-
sence of a showing of a need to do so.
Case: 21-165 Document: 20 Page: 5 Filed: 09/10/2021
IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD. 5
a. The jurisdictional argument is as follows: Article 1
of the Hague Convention provides that the Convention
“shall apply” to all cases in which “there is occasion to
transmit a judicial or extrajudicial document for service
abroad.” To determine whether a case creates an occasion
to transfer a judicial document abroad, courts are required
“to look to the method of service prescribed by the internal
law of the forum state.” Sheets v. Yamaha Motors Corp.,
U.S.A.,
891 F.2d 533, 536–37 (5th Cir. 1990). Because un-
der Rule 4(k)(1)(A), service of a summons establishes juris-
diction over a defendant who is subject to the jurisdiction
of a court of general jurisdiction in the state where the dis-
trict court is located, OnePlus argues that the district court
has jurisdiction only if OnePlus is subject to jurisdiction in
Texas under the Texas long-arm statute. OnePlus further
argues that the Texas long-arm statute requires the trans-
mittal of documents abroad to a foreign defendant. See
Tex. Civ. Prac. & Rem. Code Ann. § 17.045. Because valid
service under Texas law requires the transmittal of docu-
ments abroad and triggers the Hague Convention, OnePlus
contends that there was no valid service in this case and
that the district court therefore lacked jurisdiction over
OnePlus.
The problem with OnePlus’s jurisdictional argument is
that it runs up against this court’s decision in Nuance Com-
munications, Inc. v. Abbyy Software House,
626 F.3d 1222
(Fed. Cir. 2010). In that case, we rejected the defendants’
argument that service authorized by a court under Rule
4(f)(3) did not establish personal jurisdiction over the de-
fendants because it did not satisfy the service provisions of
the forum state’s long-arm statute. We wrote that the de-
fendants’ argument “confuses service of process under Rule
4(f)(3), which provides for court-directed service ‘by any
means not prohibited by international agreement,’ with
service under Rule 4(e)(1), which does not require a court-
order and provides for service by ‘following state law.’”
Id.
at 1240. The restrictions on service under California law,
Case: 21-165 Document: 20 Page: 6 Filed: 09/10/2021
6 IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.
we held, did not “foreclose substituted service on others un-
der Rule 4(f)(3).”
Id. OnePlus’s reliance on the service re-
quirements of the Texas long-arm statute appears contrary
to this court’s analysis in Nuance Communications. 1
b. OnePlus’s second argument is that Rule 4(f) by its
terms applies only to service of process effected abroad, and
that the district court’s order authorizing service in this
country was therefore invalid. Once again, the Nuance
Communications case presents an obstacle for OnePlus.
The court in that case rejected the argument that Rule
4(f)(3) cannot be used to authorize alternative service that
is effected within the United States. See
626 F.3d at 1239.
OnePlus again argues that the court in Nuance Communi-
cations was merely following Ninth Circuit law in that re-
gard. However, OnePlus points to no contrary Fifth Circuit
precedent on that issue, and the fact that the Ninth Circuit
and a number of district courts have construed Rule 4(f)(3)
in that manner is sufficient to show that the construction
for which OnePlus advocates is not “clear and indisputa-
ble.” We therefore decline to issue mandamus based on
that argument.
c. OnePlus’s final argument is that the district court
committed a clear abuse of discretion by authorizing alter-
native service under Rule 4(f)(3) even though Brazos made
no showing that service under the Hague Convention had
been tried and failed, would have been unlikely to succeed,
or was otherwise impracticable. The district court
1 OnePlus dismisses Nuance Communications on the
ground that it was applying Ninth Circuit law, and that
Fifth Circuit law applies to this case. But OnePlus does
not point to any Fifth Circuit authority that is contrary to
Nuance Communications on this issue. The Sheets case, on
which OnePlus relies, did not involve court-authorized ser-
vice under Rule 4(f)(3) and is therefore inapposite.
Case: 21-165 Document: 20 Page: 7 Filed: 09/10/2021
IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD. 7
authorized alternative service because it regarded the
Hague Convention procedure as slow and expensive.
We have concerns about the district court’s invocation
of alternative means of service under Rule 4(f)(3) based
solely on the fact that service under the Hague Convention
is more cumbersome than more informal means of service
on representatives of a foreign entity. Rule 4(f)(3) was not
meant to displace the other rules for service in every in-
stance in which alternative means of service are seen as
more convenient. By the same token, however, Rule 4(f)(3)
is not a “last resort” or a type of “extraordinary relief” for a
plaintiff seeking to serve process on a foreign defendant.
See Rio Props., Inc. v. Rio Int’l Interlink,
284 F.3d 1007,
1015 (9th Cir. 2002). To the contrary, “Rule 4(f)(3) is not
subsumed within or in any way dominated by Rule 4(f)’s
other subsections; it stands independently, on equal foot-
ing.” Nuance Communications,
626 F.3d at 1239 (quoting
Rio Props.,
284 F.3d at 1015)); see 4B Charles Alan Wright
et al., Federal Practice & Procedure § 1134, at 274 (2015)
(“The use of a court-directed means for service of process
under Rule 4(f)(3) is not a disfavored process and should
not be considered extraordinary relief.”).
Moreover, courts have recognized that delay and ex-
pense are factors that legitimately bear on whether to issue
an order for alternative service. See SIMO Holdings, Inc. v.
Hong Kong uCloudlink Network Tech. Ltd., No. 2:20-CV-
3,
2020 WL 6578411 (E.D. Tex. June 15, 2020); WorldVen-
tures Holdings, LLC v. Mavie, No. 4:18-CV-393,
2018 WL
6523306, at *14 (E.D. Tex. Dec. 12, 2018); Fundamental In-
novation Sys. Int’l, LLC v. ZTE Corp., No. 3:17-CV-1827,
2018 WL 3330022, at *15 (N.D. Tex. Mar. 16, 2018); Affin-
ity Labs of Tex., LLC v. Nissan N. Am. Inc., No. WA:13-CV-
369,
2014 WL 11342502, at *3 (W.D. Tex. July 2, 2014);
Baker Hughes, Inc. v. Homa, Civ. A. H-11-3757,
2012 WL
1551727, at *16–17 (S.D. Tex. Apr. 30, 2012).
Case: 21-165 Document: 20 Page: 8 Filed: 09/10/2021
8 IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.
To be sure, courts have typically invoked Rule 4(f)(3)
only when special circumstances have justified departure
from the more conventional means of service. Nonetheless,
while some courts, in the exercise of their discretion, have
looked to whether there has been a showing that the plain-
tiff has reasonably attempted to effectuate service on the
defendant by conventional means and have required a
showing that the circumstances render the court’s inter-
vention necessary, “those considerations guide the exercise
of discretion, and are not akin to an exhaustion require-
ment.” In re BRF S.A. Sec. Litig., No. 18-cv-2213,
2019 WL
257971, at *2 (S.D.N.Y. Jan. 18, 2019) (citing cases).
Given the broad discretion accorded to district courts
in determining whether to grant relief under Rule 4(f)(3),
we conclude that issuing the extraordinary writ of manda-
mus is not called for in this case. The district court has not
announced that it intends to order alternative service in
every case in which more conventional means of service
would be merely inconvenient, and in fact the record re-
flects that the district court has not granted relief under
Rule 4(f)(3) in all such cases. On the present record, we
decline to find a clear abuse of discretion that would justify
the issuance of a writ of mandamus. 2
Accordingly,
IT IS ORDERED THAT:
(1) TP-Link’s motion is granted. ECF No. 7-2 is ac-
cepted for filing.
(2) The petition is denied.
(3) The motion for oral argument is denied.
2 Our order denying mandamus does not foreclose
OnePlus from raising its arguments on appeal from a final
judgment against it.
Case: 21-165 Document: 20 Page: 9 Filed: 09/10/2021
IN RE: ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD. 9
FOR THE COURT
September 10, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s29
