When Knockoffs Arrive Overnight But Justice Takes Years

• Published date: 12 February 2026
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: YMF Law Tokyo
• Author: Mr York M. Faulkner

I. The Discovery Every Patent Holder Dreads

For a moment, place yourself in the position of Spin Master, Ltd., a Canadian toy company that spent over a decade developing, patenting, and marketing its Zero Gravity' toy cars; vehicles that, through a carefully engineered venturi duct exploiting Bernoulli's Principle, can drive up walls and race across ceilings. The technology earned industry awards, commercial success, and a portfolio of patents. Then, in 2022, Spin Master discovered a growing number of sellers on Amazon, most of them based in The People's Republic of China with names designed to frustrate identification, offering near-identical wall-climbing cars at a fraction of Spin Master's price.

Spin Master's efforts to stop the flood of knockoffs would consume more than two and a half years just to obtain preliminary relief, not because its patents were weak or its case lacked merit, but because serving Chinese defendants in compliance with international treaty obligations proved far more difficult and contested than Spin Master, or the court, initially anticipated. The resulting decisions from the Southern District of New York, read alongside a recent Second Circuit ruling and the Federal Circuit's contrasting approach, expose one of the most consequential procedural fault lines in modern patent litigation.

When a patent holder sues an infringer located in the People's Republic of China, must it endure the slow, expensive, and often opaque procedures of the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents? Or can it pursue a faster approach through court-ordered alternative service under Federal Rule of Civil Procedure 4(f)(3)? The answer, it turns out, depends on which court you ask, and the gap between those answers can mean the difference between obtaining a preliminary injunction in months and waiting years.

II. First Instincts: The Preliminary Injunction and Amazon's APEX Program

When a patent holder discovers infringing products flooding the market, the instinct is to move fast. The traditional judicial tool is the preliminary injunction; a court order that stops the infringing sales while the case proceeds. But before a court can enter any order, it must have jurisdiction over the defendants, which is effectuated by proper service of process. For defendants located in China, that procedural prerequisite has become the central battlefield.

After discovering the accused products in 2022, Spin Master attempted to avoid the procedural delays of that battlefield altogether. Rather than filing suit, Spin Master participated in Amazon's Patent Evaluation Express ("APEX") program, an internal dispute-resolution mechanism through which Amazon evaluates patent infringement claims against sellers on its platform. See Spin Master, Ltd. v. Aomore-US, No. 23 Civ. 7099 (DEH), slip op. at 4-5 (S.D.N.Y. Jan. 27, 2026) ("Spin Master PI"). The APEX program, however, proved unhelpful. Amazon's informal review declined to remove the accused products; the program "did not retain an expert, nor consider court rulings that were favorable to Spin Master." Id. In other words, Amazon's internal process afforded none of the procedural safeguards that a patent holder would expect from a meaningful evaluation of its infringement claims: independent expert analysis and consideration of relevant judicial precedent. Spin Master appealed and engaged in negotiations with Amazon's legal department, but the platform-based remedy was a dead end. Id.

Having exhausted the Amazon alternative, Spin Master filed suit in August 2023 in the Southern District of New York against seven China-based defendants. See Spin Master, Ltd. v. Aomore-US, No. 23 Civ. 7099 (DEH), slip op. at 2 (S.D.N.Y. June 17, 2024) ("Spin Master Service"). What followed was a costly and prolonged procedural odyssey.

III. The Hague Convention Problem

The Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters, 20 U.S.T. 361 (Nov. 15, 1965), is a multilateral treaty intended "to simplify, standardize, and generally improve the process of serving documents abroad." Water Splash, Inc. v. Menon, 581 U.S. 271, 273 (2017). Both the United States and the People's Republic of China are signatories. Under the Convention, each member state designates a "Central Authority" responsible for receiving service requests from abroad and effecting service under domestic law. "Compliance with the Convention is mandatory in all cases to which it applies." Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694, 705 (1988).

Importantly, the Convention does not impose a uniform set of service methods across all signatories. Articles 8 through 10 provide alternative channels, including service through diplomatic or consular agents and service by postal channels, but member states may object to any or all of these alternatives. China has done so. China objects to service under Articles 8, 10(b), and 10(c), and has objected to service by 'postal channels' under Article 10(a). As a result, the only Convention-compliant method of serving a defendant in China is through China's Central Authority, the Ministry of Justice, which processes the request through Chinese courts under Chinese domestic law.

In practice, serving a defendant in China through the Hague Convention's Central Authority is slow, expensive, and opaque. Spin Master's consultant estimated the process would take 18 to 24 months. Spin Master Service, slip op. at 18. Courts have acknowledged that "there is little ability to monitor the progress of a request for service to the [Chinese] Ministry of Justice." Smart Study Co. v. Acuteye-US, 620 F. Supp. 3d 1382, 1402 (S.D.N.Y. 2022). For a patent holder watching infringing products erode its market share in real time, 18 months of procedural limbo can feel indistinguishable from a denial of justice.

Federal Rule of Civil Procedure 4(f) offers a potential escape hatch. The Rule governs service on defendants "in a foreign country" and provides three paths: (1) service by internationally agreed means such as the Hague Convention; (2) if no such means exists or the agreement allows other methods, service by means reasonably calculated to give notice; and (3) "by other means not prohibited by international agreement, as the court orders." Fed. R. Civ. P. 4(f)(3). It is this third subsection, the court-ordered alternative, that has become the focal point of an escalating conflict among the circuits.

IV. In re OnePlus: The Apparent Breakthrough

In September 2021, the Federal Circuit appeared to chart a more accessible path for patent plaintiffs in In re OnePlus Technology (Shenzhen) Co., Ltd., No. 2021-165, 2021 WL 4130643 (Fed. Cir. Sept. 10, 2021). There, WSOU Investments (doing business as Brazos Licensing and Development) had filed five patent infringement actions against OnePlus, a Chinese company with no place of business or employees in the United States. Rather than attempting Hague Convention service, Brazos sought and obtained leave under Rule 4(f)(3) to serve OnePlus through attorneys in the United States who had previously represented the company and through OnePlus's authorized agent for service in Hayward, California. Id. at *1.

OnePlus sought a writ of mandamus, arguing that the service was ineffective, that the court lacked jurisdiction, and that the district court had abused its discretion by authorizing alternative service without any showing that Hague Convention service had been attempted or was impracticable. Id. at 2. The Federal Circuit denied the petition. Relying on its earlier decision in Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222 (Fed. Cir. 2010), the court held that 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 footing.'" In re OnePlus, 2021 WL 4130643, at 3 (quoting Nuance, 626 F.3d at 1239). The court also rejected OnePlus's argument that Rule 4(f)(3) could not authorize service effected solely within the United States, again citing Nuance as foreclosing that position. Id. at *2.

On the critical question of whether a plaintiff must first attempt Hague Convention service before resorting to Rule 4(f)(3), the Federal Circuit expressed "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." Id. at 3. The court cautioned that "Rule 4(f)(3) was not meant to displace the other rules for service in every instance in which alternative means of service are seen as more convenient." Id. But it stopped short of requiring prior conventional attempts, holding that while "courts have typically invoked Rule 4(f)(3) only when special circumstances have justified departure from the more conventional means of service . . . 'those considerations guide the exercise of discretion, and are not akin to an exhaustion requirement.'" Id. (quoting In re BRF S.A. Sec. Litig., No. 18-cv-2213, 2019 WL 257971, at 2 (S.D.N.Y. Jan. 18, 2019)).

Although the OnePlus order was designated nonprecedential, its practical impact was substantial. The Federal Circuit itself cited it with approval two years later in In re Realtek Semiconductor Corp., No. 23-132 (Fed. Cir. Aug. 16, 2023) (per curiam) (citing OnePlus for the proposition that prior conventional-service attempts are not an exhaustion requirement under Rule 4(f)(3)). District courts, particularly in the Western District of Texas, viewed it as a viable path. See, e.g., WSOU Invs. LLC v. OnePlus Tech. (Shenzhen) Co., No. 6:22-cv-00135 (W.D. Tex. Aug. 19, 2022) (Albright, J.) (acknowledging OnePlus while declining to grant alternative service on the facts presented). For patent plaintiffs suing Chinese defendants, OnePlus appeared to offer a workable shortcut around the Hague Convention's...