On December 29, 2017, United States Magistrate Judge David L. Horan issued an order transferring the Motion to this district. (Dkt. No. 90.) On February 6, 2018, the Honorable John A. Kronstadt referred the Motion to United States Magistrate Judge Karen L. Stevenson for determination. (Dkt. No. 102.)

The Texas District Court having granted Zhejiang Yankon's request for transfer of the Motion to this district, the only remaining issue for this Court's determination is the non-party's request to quash the subpoena duces tecum issued by Epistar. The Court finds the Motion suitable for determination without oral argument pursuant to Civil Local Rule 7-15. For the reasons, discussed below, the Motion is GRANTED.

INTRODUCTION

This dispute arises from a subpoena issued to non-party Zhejiang Yankon in connection with the underlying patent infringement action pending in this District, Epistar Corporation v. Lowe's Companies, Inc. et al. (the “Epistar Action”). In the Epistar Action, Plaintiff alleges that defendants Lowe's Companies, Inc. and Lowe's Home Centers, LLC (together, “Defendants”) import, market, and sell LED lighting products that infringe Plaintiff's patents. (Complaint at ¶¶ 3-4, 20.)

On or about November 28, 2017, Plaintiff purportedly served a subpoena duces tecum issued by the Central District of California pursuant to Federal Rule of Civil Procedure 45 upon non-party Zhejiang Yankon (the “Subpoena”). (Motion, Exhibit 1.) The Subpoena demands that Zhejiang Yankon produce documents and electronically stored information concerning, inter alia, LED filament bulbs that it sold to Defendants and certain affiliated entities since 2011, including documents related to any indemnification agreements, offer for indemnification or request for indemnification relating to the patents asserted in the Epistar Action or any LED filament bulbs Zhejiang Yankon sold to Defendants or specified affiliates. (Id. at 6-8.)

THE MOTION

Zhejiang Yankon seeks an order quashing the Subpoena on the grounds that Zhejiang Yankon as not properly served with the Subpoena. (Motion at 2.) Specifically, Zhejiang Yankon asserts that it is incorporated and has its principal place of business in the People's Republic of China. (Id.) The Subpoena was served upon an employee at the offices of Yankon Lighting Inc. (“Yankon Lighting”), a Texas Corporation with a principal place of business in Richardson, Texas. (Id.) Yankon Lighting is a subsidiary of Zhejiang Yankon, but Zhejiang Yankon argues that Yankon Lighting is not authorized to accept service of process on behalf of Zhejiang Yankon. (Id.)

*2 In the Opposition, Plaintiff argues that the Subpoena was properly served on Zhejiang Yankon when the Subpoena was delivered by a process server to an assistant to Hongzhi Chen at Yankon Lighting's offices in Richardson, Texas. (Opposition at 3.)[2] Further, Plaintiff argues that Hongzhi Chen is the registered agent of Yankon Lighting, Zhejiang Yankon's subsidiary. (Id.) Plaintiff further argues that Yankon Lighting is a representative of Zhejiang Yankon here in the United States and because Zhejiang Yankon purportedly does business in the United States through its subsidiary, Yankon Lighting is “an alter ego that conducts Zhejiang Yankon's business in the United States; therefore service on its subsidiary's registered agent was proper” to effect service on Zhejiang Yankon. (Opposition at 5.)

LEGAL STANDARD

Rule 45 governs discovery of non-parties by subpoena. The scope of discovery that can be obtained by a subpoena under Rule 45 is the same as the scope under Rule 26(b). See Fed. R. Civ. P. 45 Advisory Comm.'s Note (1970). The Court must quash or modify a subpoena that requires a person to comply beyond the geographical limits specified in Rule 45(c); or subjects a person to undue burden. Fed. R. Civ. P. 45(3)(A). The geographical limits provided in Rule 45 provide that a subpoena may command the production of documents, electronically stored information, or tangible things at a place within 100 miles of where the person resides, is employed, or regularly transacts business.” Fed. R. Civ. P. 45 (c)(2).

Further, Rule 45(b)(1) provides, in relevant part, that “[s]ervice of a subpoena upon a person named therein shall be made by delivering a copy thereof to such person[.]” A majority of courts recognize the rule to require personal service of the subpoena. See Wright & Miller, 9A Fed. Practice & Proc. § 2454 (3d ed. 2015) (“The longstanding interpretation of Rule 45 has been that personal service of the subpoena is required.”).

The party seeking to quash a subpoena has the burden of persuasion” under Rule 45 (d)(3). See, e.g., Travelers Indem. Co v. Metropolitan Life Insur. Co., 228 F.R.D. 111, 113, (D.Conn. 2005); 392 F.3d 812, 818 (5th Cir. 2004).

DISCUSSION

Here, Plaintiff does not dispute that the Subpoena was delivered to the offices of Yankon Lighting in Richardson, Texas. Nor does Plaintiff dispute that the Subpoena was not personally delivered to Hongzhi Chen, who is identified as a registered agent for Yankon Lighting. Plaintiff's argument rests on the assertion that service was proper because the subsidiary is an alter ego of Zhejiang Yankon, service on Zhejiang Yankon through the registered agent for its subsidiary, was proper. (Opposition at 5.) Plaintiff's argument fails for several reasons.

It is well settled both in this circuit and the Fifth Circuit, where compliance would be required, that service on a subsidiary corporation does not automatically effect service on a parent corporation, unless the subsidiary is either an alter ego of the parent or functions as the parent's agent. See e.g., Wells Fargo & Co. v. Wells Fargo Exp. Co, 556 F.2d 406, 420 (9th Cir. 1977); Alpine View Co. Ltd. v. Atlas Copco AB, 205 F.3d 208, 218 (5th Cir. 2000). First, the Court is not persuaded by the record before it that it should ignore the corporate formalities to find Yankon Lighting to be an alter ego of its parent company, Zhejiang Yankon. Although authority that Plaintiff cites suggests that the alter ego test for “attribution no contacts, i.e., personal jurisdiction, is less stringent than that for liability,” the test nonetheless requires a multi-factored assessment based on the totality of the circumstances. See Opposition at 4, (citing In re Chinese-Manufactured Drywall Prod. Liab. Litig., 753 F.3d 521, 546 (5th Cir. 2014). There is insufficient evidence presented here, beyond the similarity of the names and co-ownership of a trademark, to establish the unity of interest necessary for the Court to find Yankon Lighting to be an alter ego of Zhejiang Yankon. (SeeOpposition at 5.) Plaintiff asserts that Yankon Lighting's website “represents to the public that they are a single enterprise with Zhejiang Yankon.” (Id.) But the Court can find no such representation in the screenshot included with the Opposition, rather, the web content simply indicates that Yankon Lighting is part of the Yankon Group Co., Ltd. and is headquartered in China. (Id.) Zhejiang Yankon is not mentioned. Accordingly, the record is also insufficient to support Plaintiff's assertion that Yankon Lighting is the authorized agent of process in the United States for Zhejiang Yankon.

*3 Further, even assuming for the sake of argument, that Yankon Lighting was an appropriate agent for service of process for Zhejiang Yankon, Yankon Lighting was not personally served with the Subpoena. The record suggests that Ms. Hongzhi Chen, the registered agent of process for Yankon Lighting, was not personally served. Rather, the Subpoena was given to an assistant, who asserts under penalty of perjury that he was never asked if he was authorized to accept the document on Ms. Chen's behalf, although this fact is disputed by the alleged statements of the process server. (Opposition at 3, Ex. B.) The inclusion of the unauthenticated picture showing that the Subpoena was served at a building identified as the location of “Yankon Lighting” does not establish either that Yankon Lighting is an agent or manager for Zhejiang Yankon or that Ms. Chen was personally served in any capacity.

Accordingly, the Court concludes that the Subpoena must be quashed for insufficient service and the Motion is GRANTED.

Because the Court finds that Plaintiff failed to make personal service of the Subpoena, the Court declines to reach Plaintiff's other arguments in opposition to the Motion.

IT IS SO ORDERED.

On December 22, 2017, Epistar filed under seal the unredacted Opposition, (Case no. 3:17-mc-00107-D-BN, Dkt. No. 8.)

There is a factual dispute in the moving papers concerning whether the assistant to Hongzhi Chen represented that he was authorized by Ms. Chen to accept service on behalf of Zhejiang Yankon. Plaintiff contends that the assistant made such a statement. (See Opposition at 3; Ex. B.) Zhejiang Yankon contends: (1) that Yankon Lighting is not authorized to accept service of process on behalf of Zhejiang Yankon (Motion at 3, Ex. 3, Declaration of Robin Wang, at ¶ 6); and (2) the assistant, Xin Lin, provided a declaration stating that he is not employed by Zhejiang Yankon, has never been authorized to accept service on Zhejiang Yankon's behalf, and the person who handed him the subpoena at Yankon Lighting's offices on November 28, 2017, “did not ask if [he] had authorization to accept service of the subpoena.” (Motion at 3, Ex. 5, Declaration of Xin Lin, at ¶¶ 2-7).