One advantage of filing a patent infringement complaint at the U.S. International Trade Commission (“ITC”) instead of in U.S. District Court is that a Complainant does not need to use the Hague Service Convention process or other treaty to serve the complaint on foreign entities. As explained here, recent ITC decisions expand the methods through which service can be effected to include service via a Respondent’s Amazon.com seller profile page contact links.
Under normal circumstances (outside of the temporary COVID-19 amendments to its procedural rules, as discussed in a previous blog), the ITC itself is responsible for service of the complaint on each Respondent, typically utilizing FedEx or U.S. Mail.
In the event that service by the ITC is unsuccessful (or if proof of service cannot be obtained) a Complainant may, with leave from the presiding Administrative Law Judge (“ALJ”), attempt to effect personal service of the complaint on a Respondent. The ITC rules allow a Complainant to serve the complaint by: (1) mail or delivery to the Respondent, or (2) leaving a copy at a principal office of the Respondent. If neither of these methods is effective, the ALJ may allow a Complainant to utilize additional methods. For example, ALJ’s have often authorized service via email and an FTP link with read receipt. Recent decisions explain how ALJ’s have taken this a step further.
In In re Certain Toner Supply Containers and Components thereof (I), Inv. No. 337-TA-1259 and In re Certain Toner Supply Containers and Components thereof (II), Inv. No. 337-TA-1260, ALJ Cheney authorized Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively, “Canon”) to serve five Chinese Respondents electronically, through their Amazon.com seller profile page contact links. Canon requested, and was granted permission, to effect service by attaching PDFs of the complaint and related documents to, and providing a unique download link in, the electronic communication to each Respondent.
The ALJ authorized this method of service after Canon first attempted, but was unsuccessful at, serving the Chinese Respondents at their known physical addresses. Canon could not ascertain additional physical address information, nor could Canon locate reliable, direct email addresses for these Respondents. In support of its request for service by alternative means, Canon argued that these online merchants depend on electronic communication for their livelihood and thus, when other methods fail, service through Amazon’s message system is reasonably calculated to provide notice of the ITC investigation to Respondents who operate virtual storefronts. The ALJ agreed.
- For patent owners considering whether to assert patents in U.S. District Court or at the ITC, this decision and others like it reinforce an important feature of Section 337 investigations at the ITC, namely, the ability to avoid the drawn-out, tedious process of effecting service of the complaint on foreign companies under The Hague Convention.
- For foreign entities named as Respondents in Section 337 complaints, this decision makes it more difficult to avoid service and more important to engage U.S. counsel early in the process to make sure that all required deadlines are met.