One
of
the
fun
things
about
having
a
long-running
column
is
that
every
so
often
a
new
decision
sparks
my
memory
about
an
issue
I
have
addressed
in
the
past.
In
the
latest
example,
a
decision
out
of
the
Western
District
of
Texas
—
penned
by
Judge
Garcia,
for
those
expecting
yet
another
Judge
Albright-related
discussion
on
these
pages
—
dealt
with
three
of
my
favorite
topics,
namely,
China,
Amazon,
and
the
fun
that
can
be
had
serving
foreign
defendants.
It
was
the
latter
point
that
sparked
my
memory,
as
I
had
a
vague
recollection
of
addressing
service
issues
against
Chinese
defendants
at
some
point
in
this
column’s
lifetime.
Lo
and
behold,
a
quick
search
for
“kroub
China”
(sic)
in
the
trusty
ATL
search
bar
unearthed
a
2020
column
helpfully
titled
“China
At
Your
Service”
by
your
humble
columnist.
Finding
the
column
was
easy,
at
least
compared
to
the
next
step,
whereby
I
needed
to
read
what
I
wrote
to
see
what
I
had
previously
said
on
the
topic.
I
did
so,
only
to
find
myself
transported
back
to
the
terrifying
pre-pandemic
period,
when
travel
to
China
had
already
been
disrupted,
but
the
idea
of
lockdowns
on
American
soil
still
seemed
an
impossibility.
The
travails
of
recent
history
aside,
reviewing
the
column
reminded
me
that
even
as
far
back
as
four
years
ago
it
was
well-known
that
“challenges
serving
domestic
Chinese
companies
in
IP
disputes
filed
in
the
U.S.”
were
prevalent.
As
a
consequence,
there
was
“a
deterrent
effect
on
IP
owners
hoping
to
bring
suit
against
those
companies
for
infringement,”
leading
to
“more
litigation
against
U.S.
customers
of
those
Chinese
companies.”
But
even
at
that
point,
the
tide
had
started
to
turn,
as
that
same
column
highlighted
a
then-recent
ND
Ohio
decision
allowing
an
experienced
patent
plaintiff
to
serve
a
Chinese
defendant
“through
that
defendant’s
registered
email
address
on
Amazon,
Ebay,
and
Facebook”
—
the
same
sales
channels
used
by
the
defendant
to
sell
the
accused
products
to
American
customers.
In
that
court’s
view,
service
by
email
was
“a
viable
alternative
where
the
plaintiff
had
demonstrated
diligent
and
exhaustive
attempts
to
contact
the
defendant
without
success.”
I
commented
that
the
decision
was
an
indication
that
Chinese
defendants
could
no
longer
expect
insulation
from
“reasonably
quick
service
of
process
in
the
context
of
an
IP
dispute,
just
because
they
are
based
overseas
in
a
country
where
service
has
traditionally
been
conducted
under
the
Hague
Convention.”
Garcia’s
April
29,
2024,
order
in
Sportspower
Ltd.
v.
Zhejiang
Hongcheng
Information
Tech
Co.
Ltd.
provides
an
illustrative
example
of
how
the
tide
has
turned
against
Chinese
defendants
on
the
service
issue
even
more
strongly
since
2020.
In
that
case,
a
Hong
Kong-based
owner
of
a
U.S.
design
patent
brought
suit
in
the
WDTX
against
a
China-based
competitor
selling
on
Amazon
under
the
moniker
Blanketown.
At
issue?
Trampolines
with
safety
enclosure
nets,
even
as
I
had
to
admit
I
was
expecting
some
type
of
linens
as
the
accused
products
considering
the
seller’s
name.
The
case
was
filed
in
2023,
with
the
plaintiff
immediately
moving
for
allowance
to
effectuate
alternative
service.
But
Garcia
demurred
at
that
point,
denying
the
motion
without
prejudice
until
the
plaintiff
tried
to
serve
the
defendant
under
the
Hague
Convention.
As
an
alternative,
the
court
afforded
the
patent
owner
an
opportunity
to
refile
if
it
obtained
“additional
evidence
about
the
relationship
between
Blanketown
and
the
attorney
registered
as
its
representative
on
its
United
States
wordmark
registration.”
About
10
months
after
that
decision,
the
plaintiff
refiled
its
motion
for
alternative
service.
This
time,
it
was
successful
in
getting
its
motion
granted,
even
as
its
attempts
to
serve
under
the
Hague
Convention
failed,
as
the
China
Ministry
of
Justice
apparently
couldn’t
find
the
defendant’s
actual
office
in
China.
In
light
of
that,
Garcia
allowed
alternative
service
under
two
distinct
approaches.
First,
he
allowed
email
service
by
the
plaintiff
on
the
defendant’s
trademark
prosecution
attorney
—
in
part
because
the
PTO
requires
foreign
holders
of
U.S.
marks
to
have
representation
by
a
U.S.-based
attorney.
Second,
service
was
also
proper
on
the
defendant
through
“Blanketown’s
Amazon
message
interface,”
based
on
case
law
from
previous
courts
that
have
authorized
such
service.
(Including,
of
course,
the
NDOH
decision
that
I
first
wrote
about
four
years
ago.)
Here,
it
was
enough
for
Garcia
that
the
defendant
was
selling
on
Amazon
to
give
comfort
that
notice
“through
Amazon’s
messaging
center
will
be
reasonably
effective”
at
giving
notice
of
the
lawsuit
to
the
defendant.
While
it
took
a
while,
it
seems
likely
that
Blanketop
will
no
longer
be
able
to
avoid
confronting
the
plaintiff’s
claims
on
the
merits.
Ultimately,
it
is
great
to
see
how
the
law
is
developing
around
such
a
fundamental
issue
in
every
IP
litigation.
Even
better,
it
is
heartening
to
see
courts
around
the
country
take
a
pragmatic
view
of
this
issue,
by
recognizing
both
the
way
technology
has
erased
borders
in
terms
of
communication
as
well
as
the
realities
of
sales
on
online
marketplaces
by
companies
overseas
targeting
American
customers.
Even
though
the
need
to
first
attempt
service
under
the
Hague
Convention
can
introduce
an
element
of
delay
to
getting
a
case
heard
on
the
merits,
at
least
there
is
some
hope
for
plaintiffs
that
they
will
be
able
to
get
a
defendant
served
using
alternative
means
if
the
Hague
route
fails.
Here,
the
plaintiff
had
to
jump
through
some
hoops
to
get
to
a
favorable
ruling.
But
it
will
likely
be
worth
it,
once
the
defendant
is
blanketed
with
service
from
two
different
angles.
Please
feel
free
to
send
comments
or
questions
to
me
at
gkroub@kskiplaw.com
or
via
Twitter:
@gkroub.
Any
topic
suggestions
or
thoughts
are
most
welcome.
Gaston
Kroub
lives
in
Brooklyn
and
is
a
founding
partner
of
Kroub,
Silbersher
&
Kolmykov
PLLC,
an
intellectual
property
litigation
boutique,
and Markman
Advisors
LLC,
a
leading
consultancy
on
patent
issues
for
the
investment
community.
Gaston’s
practice
focuses
on
intellectual
property
litigation
and
related
counseling,
with
a
strong
focus
on
patent
matters.
You
can
reach
him
at gkroub@kskiplaw.com or
follow
him
on
Twitter: @gkroub.