The Noco Company v Hong Kong Haowei Technology Co., Ltd.

Introduction 1 This is an application for substituted service, or deemed service, in respect of respondents that reside outside of Australia. 2 The applicant, The Noco Company, commenced this proceeding by originating application and statement of claim on 1 March 2023. The respondents are: (a) Hong Kong Haowei Technology Co., Ltd.; (b) Shenzhen Gooloo E-Commerce Co., Ltd.; (c) Shenzhenshi Dianjia Technology Co., Ltd.; and (d) Shenzhen Carku Technology Co., Ltd. 3 The first respondent is a company registered in Hong Kong. The second, third and fourth respondents are companies registered in China. The material presently before the Court indicates that the respondents are related to, or associated with, each other. 4 The proceeding is a claim for patent infringement. The applicant is the registered proprietor of three Australian patents (the Patents), namely: (a) Australian Patent No. 2020201223, titled "Portable vehicle battery jump start apparatus with safety protection"; (b) Australian Patent No. 2021258059, titled "Portable vehicle battery jump start apparatus with safety protection"; and (c) Australian Patent No. 2018243593, titled "Portable or hand held vehicle battery jump starting apparatus with battery cell equalization circuit". 5 Broadly, the applicant alleges that the respondents have infringed the Patents, in particular by the importation, promotion, offering for sale and supply in Australia of jump starter apparatus referred to as the "Gooloo Jump Starters" (in the case of the first and second respondents) and the "Yesper Jump Starters" (in the case of the first and third respondents). Allegations are also made against the fourth respondent: see paragraphs 17-18 and 25-26 of the statement of claim. 6 The applicant alleges that each of the respondents is infringing the Patents and that they will continue to do so unless restrained by this Court. The relief sought by the applicant in the originating application includes a declaration that the respondents have infringed certain claims of the Patents, and an injunction to restrain the respondents from infringing the patents, including by taking the steps set out in the originating application. 7 The applicant has filed an interlocutory application dated 4 May 2023 and an amended interlocutory application dated 22 May 2023. By that document, the applicant seeks orders for substituted service pursuant to r 10.24 of the Federal Court Rules 2011 (the Rules). In the alternative, the applicant seeks an order for deemed service pursuant to r 10.48 of the Rules. 8 In support of the amended interlocutory application, the applicant relies on three affidavits of Gavin James Adkins, a legal practitioner, registered patent attorney and principal of Griffith Hack Lawyers, dated 4 May 2023, 8 May 2023 and 19 May 2023.

Service out of the jurisdiction 9 Division 10.4 of the Rules, relating to service out of Australia, was substantially amended with effect from 13 January 2023. The main change was to remove the requirement for leave before service of an originating application outside of Australia in specified categories of cases. These categories are set out in r 10.42. There is no doubt that the present proceeding falls within several of the paragraphs in r 10.42. In particular, this is a case where the proceeding arises under a law of the Commonwealth and any act or omission to which the proceeding relates was done or occurred in Australia (see r 10.42(j)(i)). Further, this is a case where the proceeding is for an injunction to restrain the performance of any act in Australia (see r 10.42(d)(i)). 10 Therefore, the originating application can be served outside Australia without leave. Insofar as the ancillary documents (such as the statement of claim, the amended interlocutory application and the affidavits in support) are concerned, it is appropriate to grant leave pursuant to r 10.44 for the service of these documents outside Australia. This follows naturally from the position that the originating application can be served outside Australia.

Substituted service 11 The applicant seeks an order for substituted service pursuant to r 10.24, which provides: 10.24 Substituted service If it is not practicable to serve a document on a person in a way required by these Rules, a party may apply to the Court without notice for an order: (a) substituting another method of service; or (b) specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or (c) specifying that the document is taken to have been served: (i) on the happening of a specified event; or (ii) at the end of a specified time. Note: Without notice is defined in the Dictionary. 12 Although the applicant does not seek an order under r 10.49, which also concerns the topic of substituted service and is located in Div 10.4 (Service outside Australia), I note that this rule provides: 10.49 Substituted service If service on a person outside Australia, in accordance with a convention, the Hague Convention or the law of a foreign country, was not successful, a party may apply to the Court without notice for an order: (a) substituting another method of service; or (b) specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or (c) specifying that the document is taken to have been served: (i) on the happening of a specified event; or (ii) at the end of a specified time. Note: Without notice is defined in the Dictionary. 13 Rule 10.49 is premised on service by one of the three methods referred to in the rule having been unsuccessful, which implies that some attempt has already been made. The applicant does not seek to rely on that rule in the present case, as the applicant contends that it is not practicable to serve the originating application under the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, done at The Hague on 15 November 1965 (Hague Convention) (this being the method of service that would otherwise be appropriate in the circumstances of this case). 14 An issue arises whether, by reason of the presence of a specific rule for substituted service in Div 10.4 (namely, r 10.49) the general rule regarding substituted service (namely, r 10.24) is available in a case involving service out of the jurisdiction. 15 This issue was considered (in the context of the Rules as they stood before the amendments to Div 10.4 described above) in Australian Information Commission v Facebook Inc [2020] FCA 531; 144 ACSR 88 (Facebook). In that case, Thawley J concluded that, having regard to r 10.45 (application of other rules), the general substituted service rule (r 10.24) was available notwithstanding the presence of r 10.49: see Facebook at [62]-[66]. In particular, Thawley J stated at [66]: This Court has held, in circumstances analogous to the present, that an order for substituted service may be made under either r 10.24 or r 10.49: Commissioner of Taxation v Zeitouni (2013) 306 ALR 603 at [60] (Katzmann J); see also: Australian Competition and Consumer Commission v Kokos International Pty Ltd [2007] FCA 2035 at [18] (French J); Commissioner of Taxation v Oswal [2012] FCA 1507 at [32] (Gilmour J). Even if that position is incorrect, I would have ordered substituted service under r 10.49, with a dispensation from the implicit requirement to attempt service under r 1.34, for equivalent reasons to those for which I will order substituted service under r 10.24, explained next. 16 In my view, the reasoning in Facebook is equally applicable under the current provisions. While wording changes have been made to rr 10.45 and 10.49, they remain in substantially the same terms as before the amendments. The current form of r 10.49 has been set out above. The current form of r 10.45 is as follows: 10.45 Application of other rules The other provisions of this Part apply to service of a document on a person outside Australia in the same way as the provisions apply to service on a person in Australia, to the extent that the provisions are: (a) relevant and consistent with this Division; and (b) consistent with: (i) if a convention applies - the convention; or (ii) if the Hague Convention applies - the Hague Convention; or (iii) in any other case - the law of the country in which service is to be effected. 17 In my view, the removal of the requirement of leave for service out of the jurisdiction (this being the main change to Div 10.4) does not affect the applicability of the reasoning in Facebook. Accordingly, I consider that the general substituted service rule (r 10.24) is available in a case involving service out of the jurisdiction. Further, consistently with the approach taken in Facebook at [66], if that were not the position, I would have ordered substituted service under r 10.49, with a dispensation from the implicit requirement to attempt service, for equivalent reasons to those set out below for making the order for substituted service under r 10.24. 18 The principles relating to the making of an order for substituted service under r 10.24 were referred to in Facebook at [67]-[68]. Further, Thawley J made observations about the relevance of principles of comity in the context of service out of the jurisdiction: at [72]. I adopt those statements of principle and observations. 19 Applying those principles to the facts and circumstances of this case, I am satisfied that it would not be practicable to serve the originating application (and ancillary documents) pursuant to the Hague Convention given the time that this is likely to take and having regard to the nature of the claims and the relief sought in respect of those claims. The first affidavit of Mr Adkins details the likely time to serve the documents in Hong Kong and China, namely around four months for Hong Kong and around six months for China. I accept that this is not practicable in circumstances where the alleged infringing conduct is ongoing and the applicant seeks injunctive relief to restrain that conduct from continuing. 20 I am satisfied that the proposed methods of substituted service - namely, emailing the documents to certain specified email addresses - are likely to bring the documents to the attention of the respondents, having regard to the evidence in Mr Adkins's affidavits. Indeed, based on the evidence of Mr Adkins (in particular, his third affidavit) it is likely they are already aware of the proceedings. 21 I will therefore make orders for substituted service as sought by the applicant. I will discuss the precise form of the orders with counsel. 22 In light of this conclusion, it is not necessary to consider the application for an order for deemed service under r 10.48 of the Rules. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Moshinsky.

SCHEDULE OF PARTIES VID 122 of 2023 Respondents Fourth Respondent: SHENZHEN CARKU TECHNOLOGY CO., LTD.