ITC authorizes service through respondents’ Amazon.com seller profile pages
One of the advantages of filing a patent infringement complaint with the United States International Trade Commission (“ITC”) rather than in a United States district court is that a plaintiff does not have to. no need to use the Hague Service Convention or other treaty process to serve the complaint on foreign entities. As explained here, recent ITC decisions extend the methods by which service can be performed to include service through the contact links on a respondent’s Amazon.com seller profile page.
Under normal circumstances (aside from temporary COVID-19 changes to its rules of procedure, as discussed in a previous blog), the ITC itself is responsible for serving the complaint on each defendant, typically using FedEx or US Mail.
If service by the ITC fails (or proof of service cannot be obtained), a complainant may, with leave of the Administrative Law Judge (ALJ), attempt to personally serve the complaint. to a defendant. The ITC rules allow a complainant to serve the complaint by: (1) post or delivery to the respondent, or (2) leaving a copy at the respondent’s main office. If neither of these methods is effective, the ALJ may authorize a complainant to use additional methods. For example, ALJs often have an authorized service by e-mail and an FTP link with acknowledgment of receipt. Recent decisions explain how the ALJ have gone further.
In Regarding certain toner supply containers and their components (I), Inv. n ° 337-TA-1259 and Regarding certain toner supply containers and their components (II), Inv. No. 337-TA-1260, ALJ Cheney authorized the plaintiffs Canon Inc., Canon USA, Inc. and Canon Virginia, Inc. (collectively, “Canon”) to serve five Chinese defendants electronically, through their profile Amazon.com seller’s contact links page. Canon has requested and obtained permission to effect service by attaching PDF files of the complaint and related documents and providing a unique download link in the electronic communication to each Respondent.
The ALJ authorized this method of service after Canon’s first unsuccessful attempt to serve the Chinese defendants at their known physical addresses. Canon was unable to obtain additional information on the physical address, nor to find direct and reliable e-mail addresses for these respondents. In support of its request for service by other means, Canon argued that these online merchants depend on electronic communications for their livelihood and that, therefore, when other methods fail, service through the system of Amazon’s messaging is reasonably calculated to notify respondents of the ITC investigation that operate virtual storefronts. The ALJ accepted.
Take away food
For patentees who are considering asserting patents in a United States district court or before the ITC, this decision and others like it reinforce an important feature of ITC Section 337 investigations, namely the ability to avoid the long and tedious process of performing complaint service on foreign companies under the Hague Convention.
For foreign entities named as respondents in Section 337 complaints, this ruling makes it more difficult to avoid service and more important to hire a U.S. lawyer early in the process to ensure that all the required deadlines are respected.
© Copyright 2021 Squire Patton Boggs (US) LLPRevue nationale de droit, volume XI, number 155