IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

TEXARKANA DIVISION

MONUMENT PEAK VENTURES, LLC,

Plaintiff,

v. 

TCL ELECTRONICS HOLDINGS LTD., ET 

AL.,

Defendants.

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CIVIL ACTION NO. 5:24-CV-11-RWS-JBB

ORDER

Before the Court is the Magistrate Judge’s Report and Recommendation, recommending 

that Defendants TCL’s1 Motion to Dismiss for Improper Service and Failure to State a Claim 

(Docket No. 12) be denied. Docket No. 41. TCL filed an objection to the Magistrate Judge’s Report 

(Docket No. 45), to which Plaintiff Monument Peak Ventures, LLC responded (Docket No. 46). 

For the reasons set forth below, TCL’s objections (Docket No. 45) are OVERRULED and TCL’s 

motion to dismiss (Docket No. 12) is DENIED. 

BACKGROUND

Plaintiff filed the above-captioned patent infringement action alleging that certain TCLbranded smartphones infringed two patents: U.S. Patent No. 7,092,573 (the “ ’573 Patent”) and 

U.S. Patent No. 7,683,962 (the “ ’962 Patent”). Docket No. 1. TCL filed a motion to dismiss the 

complaint for (1) failure to serve, alleging that Plaintiff did not adequately serve the Defendants 

1 “TCL” or “Defendants” refers to TCL Electronics Holdings Ltd. f/k/a TCL Multimedia 

Technology Holdings, Ltd.; TCL Technology Group Corporation; TCL Industries Holdings Co., 

Ltd.; TCL Communication Technology Holdings Limited; TCT Mobile Worldwide Ltd.; TCT 

Mobile International Ltd.; Huizhou TCL Mobile Communication Co. Ltd.; and TCL 

Communication Ltd, collectively. 

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in China (“PRC”) and Hong Kong—which have objected to service by mail—and for (2) failure 

to state a claim, arguing that Plaintiff’s insufficiently pleaded their indirect infringement claim.

Docket No. 12. The motion was fully briefed, and the Magistrate Judge held a hearing. Docket 

Nos. 15, 17, 27, 38. 

The Magistrate Judge entered a Report recommending that Defendant’s motion be denied.

Docket No. 41. The Magistrate Judge first considered whether the Defendants in this case were 

served correctly. Id. at 5–13. The Magistrate Judge determined that Plaintiff was permitted to send 

judicial documents to the Hong Kong Defendants2through the Texas Secretary of State—but 

determined that the process was not complete. Id. at 8. The Magistrate Judge explained that 

Plaintiff received a certificate from the Texas Secretary of State for TCT Mobile Worldwide Ltd. 

and TCT Mobile International Ltd. detailing the forwarding process. Id. A return of service was 

received for TCT Mobile Worldwide Ltd., bearing the notation “Return to Sender, Incomplete 

Address.” Id. A return of service was also received for TCT Mobile International Ltd., indicating

that the judicial documents were sent back to the Secretary of State because that Defendant had 

“Moved.” Id. Since these documents clearly stated that they were not sent to these Defendants and 

no return of service or certificate was issued for TCL Electronics Holdings Ltd, the Magistrate 

Judge determined that the process of service as to the Hong Kong Defendants was not completed. 

Id. The Magistrate Judge, however, concluded that there was good cause to allow Plaintiff 

additional time to properly serve the Hong Kong Defendants through the Texas Secretary of State

as Plaintiff made a good faith effort to serve the Hong Kong Defendants. Id. at 8–9. 

2 The “Hong Kong Defendants” refer to TCL Electronics Holdings Ltd., TCT Mobile Worldwide 

Ltd., and TCT Mobile International Ltd. 

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The Magistrate Judge then moved to the PRC Defendants3and granted Plaintiff’s request 

for alternative service. Id. at 10–13. The Magistrate Judge explained that, first, cost and delay 

weighed in favor of granting this motion because the cost of English-to-Chinese translation would 

likely delay service by six months. Id. at 10. Second, the Magistrate Judge determined that this 

case presented “special circumstances.” Id. The Magistrate Judge noted Plaintiff’s multiple 

attempts to put the PRC Defendants on notice of the lawsuit also weighed in favor of granting their 

request. Id. at 11–12. Further, Plaintiffs alleged, and Defendants did not contest, that the Hong 

Kong and PRC Defendants were related entities, represented by the same U.S.-based counsel. Id. 

at 12–13. The Magistrate Judge determined that to require Plaintiff to serve PRC Defendants 

through the Hague while the case proceeds against the Hong Kong Defendants would delay one 

part of this litigation without any proffered benefit. Id. at 13. 

As to the 12(b)(6) motion, the Magistrate Judge concluded that Plaintiff had adequately 

stated a claim for indirect infringement, as Plaintiff specifically pleaded that “TCL had knowledge 

of the [Asserted] Patent and its indirect infringement since at least the filing of this lawsuit.”

Docket No. 41 at 14–15. The Magistrate Judge explained that TCL had failed to provide any 

authority that presuit knowledge can only be accomplished through proper service. Id. The 

Magistrate Judge further concluded that if service was not proper or there if the “truth regarding 

service seems doubtful” such that there is no presuit or time-of-filing suit knowledge of the patents 

as required for indirect infringement, then “dismissal for failure to state a claim is not correct 

vehicle for determining this issue” as “conflicting evidence” is best weighed “at summary 

judgment or trial.” Id. 

3 The “PRC Defendants” refer to TCL Technology Group Corporation, TCL Industries Holdings 

Co., Ltd., Huizhou TCL Mobile Communication Co. Ltd., and TCL Communication Ltd.

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LEGAL STANDARD

The Court must conduct a de novo review of all portions of the Magistrate Judge’s report 

that a party has properly objected to. See 28 U.S.C. § 636(b)(1)(C) (The district judge shall “make 

a de novo determination of those portions of the report or specified proposed findings or 

recommendations to which objection is made.”). For the unobjected-to portions of the Magistrate 

Judge’s report, however, parties are barred from de novo review by the District Judge of the 

Magistrate Judge’s proposed findings, conclusions, and recommendations and, except upon 

grounds of plain error, from appellate review of the unobjected-to factual findings and legal 

conclusions accepted and adopted by the District Court. See Duarte v. City of Lewisville, Texas,

858 F.3d 348, 352 (5th Cir. 2017); Arriaga v. Laxminarayan, Case No. 4:21-CV-00203-RAS, 2021 

WL 3287683, at *1 (E.D. Tex. July 31, 2021). Where no objections to a Magistrate Judge’s Report 

are filed, the standard of review is “clearly erroneous, abuse of discretion and contrary to law.”

United States v. Wilson, 864 F.2d 1219, 1221 (5th Cir. 1989).

ANALYSIS

TCL only objects to the portion of the Magistrate Judge’s Report granting alternative 

service for the PRC Defendants. Docket No. 45 at 5. According to TCL, the report “fails to realize 

that Plaintiff’s ‘efforts’ to obtain a waiver of service for the PRC Defendants are not ‘special 

circumstances’ sufficient to warrant alternative service under Fed. R. Civ. P. 4(f)(3).” Id. TCL 

argues that the Report did not address how Plaintiff failed to attempt conventional service under 

the Hague before seeking alternative service. Id. at 6. TCL also argues that Plaintiff’s “faulty 

attempts” to obtain a waiver of service could not have put the PRC Defendants on notice of the 

lawsuit. Id. TCL asserts that because Plaintiff did not seek the service of the PRC Defendants 

through conventional means or the Hague, its efforts did not amount to “ ‘significant steps’ 

justifying the ‘special circumstances’ required to institute alternative service.” Id. at 7. Finally, 

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TCL argues that, according to MyChoice, Plaintiff must reasonably attempt to effectuate service 

on Defendant by conventional means before a Court can grant a request for alternative service. Id.

(citing MyChoice, LLC v. Taiv, Inc., No. 2:23-CV-507-JRG-RSP, 2024 WL 69063, *3 (E.D. Tex. 

Jan. 4, 2024)). 

Contrary to TCL’s assertions, Plaintiff was not required to effectuate service on the 

Defendants by conventional means for the Court to recommend alternative service. As explained 

by the Federal Circuit in In re OnePlus Technology (Shenzhen) Co., Ltd.: 

[W]hile some courts, in the exercise of their discretion, have looked to whether 

there has been a showing that the plaintiff has reasonably attempted to effectuate 

service on the defendant by conventional means and have required a showing that 

the circumstances render the court’s intervention necessary, “those considerations 

guide the exercise of discretion, and are not akin to an exhaustion requirement.”

No. 2021-165, 2021 WL 4130643, at *3 (Fed. Cir. Sept. 10, 2021) (quoting In re BRF S.A. Sec. 

Litig., No. 18-cv-2213, 2019 WL 257971, at *2 (S.D.N.Y. Jan. 18, 2019)). Indeed, even MyChoice 

contemplates that Rule 4(f)(3) may be proper before conventional service occurs. See 2024 WL 

69063, at *3 (noting Rule 4(f)(3) may be proper “due to delay and expense of conventional means 

of service in conjunction with other special circumstances” (emphasis added)). However, “a 

showing of more than mere convenience is necessary” before a court may order alternative service. 

Id. 

Here, the Magistrate Judge correctly considered the “special circumstances” as well as 

Plaintiff’s attempts to effectuate service. For example, Plaintiff “attempted to send summons, 

copies of the Complaint, and requests for waiver of service via FedEx to the PRC Defendants.” 

Docket No. 41 at 10. Despite Plaintiff being unsuccessful in obtaining a waiver of service from 

the Defendants, the Report acknowledged similar cases found such efforts weighed in favor of 

granting alternative service “when considered with the cost and delay of service through the 

Hague.” Id. The Magistrate Judge specifically referenced the (1) delay due to service through 

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Hague, (2) the cost of Chinese to English translations, as well as (3) China’s objection to service 

by mail. Id. The Magistrate Judge also explained that “[t]o require Plaintiff to serve PRC 

Defendants through the Hague while the case proceeds against the Hong Kong Defendants would 

delay one part of this litigation without any proffered benefit”—concluding that the Court’s 

intervention is necessary. Id. at 13. The Magistrate Judge not only correctly exercised discretion 

granted under Rule 4(f)(3) and OnePlus, but also correctly identified the special circumstances in 

this case that render alternative service appropriate. 

The Court has conducted a careful de novo review of those portions of the Magistrate 

Judge’s proposed findings and recommendations to which the Defendants objected (see 28 U.S.C. 

§ 636(b)(1)(C)) and a clear error review of the unobjected-to portions of the Magistrate Judge’s 

Report, and the Court has determined that the Report of the Magistrate Judge is correct. 

Accordingly, it is 

ORDERED that Defendants’ objection (Docket No. 45) is OVERRULED. It is further 

ORDERED that the Report of the Magistrate Judge (Docket No. 41) is ADOPTED as the 

opinion of the District Court. It is further

ORDERED that Defendants’ Motion to Dismiss for Improper Service Under Fed. R. Civ. 

P. 12(b)(5) and for Failure to State a Claim Under Fed. R. Civ. P. 12(b)(6) (Docket No. 12) is 

DENIED. 

.

 

____________________________________

ROBERT W. SCHROEDER III

UNITED STATES DISTRICT JUDGE

So ORDERED and SIGNED this 19th day of August, 2024.

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