When Knockoffs Arrive Overnight but Justice Takes Years

Serving Chinese Patent Infringers After Spin Master and the Second Circuit’s Smart Study Decision

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 delays.

V. The SDNY Pushback: Smart Study, Spin Master, and the “You Can’t Have It Both Ways” Problem

While the Federal Circuit was endorsing flexibility, a very different line of authority was developing in the Southern District of New York. The pivotal decision came in Smart Study, 620 F. Supp. 3d at 1382, a trademark and copyright case involving counterfeit “Baby Shark” merchandise sold by Chinese companies on Amazon. Judge Gregory Woods had initially granted the plaintiff’s ex parte request for alternative service by email under Rule 4(f)(3), just as district courts routinely did. But when two defendants actually appeared and challenged the service, Judge Woods undertook a thorough reexamination and concluded that his earlier order was “in error.” Id. at 1391-92 n.5.

Judge Woods’s analysis rested on a fundamental premise: the methods of service set forth in the Hague Convention are exclusive, not merely illustrative. “[B]inding Supreme Court precedent indicates that the Hague Convention outlines specific methods of service, and that methods of service that are not specifically authorized are impermissible under the Convention.” Id. at 1393 (emphasis added). Because China has objected to service by “postal channels” under Article 10 of the Convention, and because Chinese authorities have stated that this objection encompasses service by email, the court held that “service via email on litigants located in China is not permitted by the Hague Convention.” Id. at 1393.

When Spin Master filed suit in August 2023, however, Judge Dale E. Ho initially reached a different conclusion. Spin Master moved promptly for alternative service under Rule 4(f)(3). On September 12, 2023, one day after the motion was filed and without opposition, Judge Ho granted the request, authorizing service on some defendants through their U.S.-based attorney, Michael Feigin, and on others via email. Spin Master Service, slip op. at 3. At the time, Spin Master represented to the court that defendants' addresses were unknown, and the court had no adversarial briefing to suggest otherwise. Id. at 10 n.4. Notably, Judge Woods in Smart Study had described this as a systemic problem: courts routinely authorize alternative service on Chinese defendants in ex parte proceedings where “courts are unlikely to be alerted to authority that casts doubt on the propriety of their request for email service.” Smart Study, 620 F. Supp. 3d at 1401-02.

It was not until defendants appeared and challenged the service order, and the court had the benefit of full briefing and oral argument, that Judge Ho reconsidered. In June 2024, the court vacated its own alternative service order, acknowledging that it had been issued “in a vacuum” and was “in error.” Spin Master Service, slip op. at 10 n.4. The court then joined the Smart Study line on email service and extended its logic to address the separate question of whether service through U.S.-based counsel could avoid the Hague Convention's requirements.

The facts presented the issue squarely. Spin Master had obtained an order authorizing service on some defendants through their U.S.-based attorney, Michael Feigin, under Rule 4(f)(3). Spin Master Service, slip op. at 3. Spin Master argued that this service did not implicate the Hague Convention because documents were delivered to counsel in the United States, not transmitted abroad. Id. at 14–15. But Spin Master had invoked Rule 4(f), the rule governing service “in a foreign country,” as the basis for the alternative service order. Judge Ho identified the fatal contradiction:

Plaintiff cannot have it both ways: service cannot be both completed in China for purposes of invoking Rule 4(f), while at the same time also completed in the United States for purposes of avoiding the requirements of the Hague Convention.

Id. at 14.

This framing, elegant in its simplicity, exposed a logical gap that had persisted through years of lower court decisions permitting service through U.S.-based counsel as a Hague Convention workaround. As Judge Ho explained, Rule 4(f) by its express terms “authorizes service ‘not within any judicial district’—i.e., abroad.” Id. at 17 quoting Fed. R. Civ. P. 4(f). In other words, service through U.S. counsel under Rule 4(f) is ultimately completed abroad, and because it is completed abroad, it must comply with the Hague Convention. Id.

VI. Reinterpreting Volkswagenwerk: Correcting a Widespread Misreading?

The prior line of SDNY cases that had permitted service through U.S.-based counsel while avoiding the Hague Convention relied principally on the Supreme Court’s decision in Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694 (1988), and on In re GLG Life Tech Corp. Securities Litigation, 287 F.R.D. 262 (S.D.N.Y. 2012), which itself relied on Volkswagenwerk. See Spin Master Service, slip op. at 15–16 & n.6 (collecting cases). The reasoning, distilled, was that service on a U.S.-based agent “would not run afoul of the Hague Convention since . . . no documents would be transmitted abroad.” GLG Life Tech, 287 F.R.D. at 267.

Judge Ho’s treatment of Volkswagenwerk is among the most analytically significant aspects of the Spin Master service decision. Rather than simply distinguishing the Supreme Court’s holding, Judge Ho reasoned that it had been systematically misapplied by intermediate courts, including GLG Life Tech, and that, properly understood, Volkswagenwerk actually supports the conclusion that service under any subparagraph of Rule 4(f) must comply with the Hague Convention.

The analysis proceeded in careful steps. First, Judge Ho narrowed Volkswagenwerk to its facts. In that case, service was authorized on a foreign corporation’s U.S.-based affiliate, “which, under [Illinois] state law, is the foreign corporation’s involuntary agent for service of process.” Volkswagenwerk, 486 U.S. at 696. The Illinois appellate court held that service was proper as a matter of Illinois law. The Supreme Court explained that “[w]here service on a domestic agent is valid and complete under both state law and the Due Process Clause, our inquiry ends and the [Hague] Convention has no further implications.” Id. at 707. In that specific scenario, a domestic subsidiary designated as an involuntary agent under state law, with service completed entirely within the United States under state-law authority, the Hague Convention simply was not triggered.

Second, and critically, Judge Ho relied on an overlooked aspect of the Supreme Court’s own analysis to support his conclusion. Volkswagenwerk itself had cautioned that “[i]f the internal law of the forum state defines the applicable method of serving process as requiring transmittal of documents abroad, then the Hague Service Convention applies.” Id. at 700 (emphasis added). Judge Ho reasoned that when a plaintiff invokes Rule 4(f), which by its express terms authorizes service “not within any judicial district of the United States,” the plaintiff has defined its method of service as one requiring transmittal of documents abroad, and “[a]ccordingly, the Hague Convention applies.” Spin Master Service, slip op. at 17. Therefore, under Volkswagenwerk’s own logic, Spin Master’s service of process must comply with the Hague Convention.

The result is a clean doctrinal framework: if a plaintiff effects service under state-law authority (Rule 4(e)) on a domestic agent designated by state statute, the precise Volkswagenwerk scenario, the Hague Convention does not apply because service is completed domestically. But if a plaintiff invokes Rule 4(f), which by definition governs service abroad, the Hague Convention is triggered regardless of whether documents are routed through a U.S.-based intermediary. Id. at 17 n.7. The GLG Life Tech line of cases, Judge Ho concluded, committed a fundamental error by transplanting Volkswagenwerk’s narrow, fact-specific holding into a context the Supreme Court never addressed.

As Judge Ho put it with characteristic precision:

Service was either completed abroad in China, in which case the method requested by Plaintiff is prohibited by the Hague Convention; or it was completed in the United States, in which case it is not authorized under Rule 4(f).

Spin Master Service, slip op. at 17 (citing Convergen Energy LLC v. Brooks, No. 20 Civ. 3746, 2020 WL 4038353, at *9 (S.D.N.Y. July 17, 2020) (“The language of [Rule 4(f)] is clear, and that language does not permit the Court to order alternative service at a place outside any judicial district of the United States when the service would be made in a judicial district of the United States.”)).

It bears emphasis that Volkswagenwerk itself remains good law and fully available where its specific facts are present: a domestic subsidiary or affiliate of a foreign defendant designated as an involuntary agent for service under state statute, with service completed entirely within the United States under state-law authority. See Volkswagenwerk, 486 U.S. at 706–07. But those circumstances are likely to be rare in patent infringement actions against Chinese manufacturers and online sellers, who typically lack the sort of U.S.-based subsidiary that would trigger such a designation.

VII. The Second Circuit Weighs In

On December 18, 2025, approximately five weeks before Judge Ho issued his Spin Master preliminary injunction ruling and months after his Rule 4(f) ruling, the Second Circuit affirmed the Smart Study district court decision that had anchored Judge Ho’s earlier service analysis. In Smart Study Co., Ltd. v. Shenzhenshixindajixieyouxiangongsi, No. 24-313 (2d Cir. Dec. 18, 2025) (“Smart Study, slip op.”), a unanimous panel held, as a matter of first impression in the Second Circuit, that the Hague Convention does not permit email service on China-based defendants. The court described the Convention as establishing “a closed universe of ‘simple and certain means’ of serving parties in foreign countries.” Smart Study, slip op. at 15 (citing Volkswagenwerk, 486 U.S. at 705-06). The court, therefore, rejected arguments that Rule 4(f)(3) or Article 15 of the Convention allow courts to bypass treaty-compliant service methods.

The Second Circuit’s decision elevated what had been a district-level split into a genuine circuit-level conflict with the Federal Circuit’s approach. In Nuance Communications and OnePlus, the Federal Circuit treated Rule 4(f)(3) as standing on “equal footing” with the other subsections of Rule 4(f) and endorsed alternative service effected domestically on U.S. counsel of foreign entities without requiring compliance with the Hague Convention. See Nuance, 626 F.3d at 1239–40; In re OnePlus, 2021 WL 4130643, at *2–3. The Second Circuit, by contrast, now holds that the Convention’s methods are exclusive where the Convention applies, a position that significantly restricts the use of Rule 4(f)(3) as a workaround.

This tension has immediate practical significance. The Federal Circuit has exclusive appellate jurisdiction over patent cases, which means its procedural rulings on service of process in patent actions carry particular weight. But district courts apply the procedural law of their regional circuits on many issues, and service of process has traditionally been a matter of regional circuit law. A patent plaintiff filing in the Southern District of New York will face the strict Smart Study/Spin Master framework; the same plaintiff filing in the Western District of Texas, for example, may benefit from the more permissive precedent in OnePlus. The resulting forum-selection implications are significant and unresolved.

VIII. The “Address Unknown” Escape Valve and the Reasonable Diligence Requirement

Even under the strict SDNY framework, one escape valve remains: “the Hague Convention does not apply where the defendant’s address is not known.” Pinkfong Co. v. Avensy Store, No. 23 Civ. 9238, 2023 WL 8531602, at *2 (S.D.N.Y. Nov. 30, 2023). If a plaintiff can establish that it exercised “reasonable diligence” in attempting to discover a physical address and was unsuccessful, then the Hague Convention is inapplicable and Rule 4(f)(3) service may proceed unconstrained by treaty obligations. Id.

The Spin Master service decision provides a cautionary illustration of what reasonable diligence requires, and, equally important, what falls short. Spin Master had retained a consulting firm, Viking Advocates, which advised that the defendants’ Amazon-listed addresses “appeared inaccurate.” Spin Master Service, slip op. at 3. But Spin Master could not explain the basis for that assessment, and its counsel acknowledged being “not aware” of what steps Viking had actually taken. Id. at 11. The court found this insufficient, noting that “[c]ourts in this District have consistently held that multiple modes of attempted contact typically are required,” Kyjen Co., 2023 WL 2330429, at 3, including measures such as “attempting to send mail to Defendants’ addresses listed on Amazon” or “dispatch[ing] a private investigator to conduct in-person visits.” Spin Master Service, slip op. at 10-11 (citing Cawthon v. Yaoyage, No. 22 Civ. 7279, 2024 WL 95055, at 2 (S.D.N.Y. Jan. 9, 2024)); cf. Zuru (Sing.) Pte., Ltd. v. Individuals Identified on Schedule A, No. 22 Civ. 2483, 2022 WL 14872617, at *2 (S.D.N.Y. Oct. 26, 2022) (finding reasonable diligence where plaintiffs and local counsel conducted “further online research, sent mail to the addresses, and conducted in-person visits”).

The lesson for practitioners is clear: if you intend to argue that a Chinese defendant’s address is unknown, you must document reasonable diligence to discover it. Hiring a consultant and accepting its conclusory assessment is insufficient; the record must reflect specific, verifiable steps that demonstrate genuine diligence, such as mail sent to listed addresses, in-person visits through local counsel, and independent corporate registry research.

IX. The Preliminary Injunction: Irreparable Harm Survives the Court’s Own Error

With its alternative service order vacated in June 2024, Spin Master was forced to begin the Hague Convention process from scratch. Service was eventually completed, and in November 2024 Spin Master renewed its motion for a preliminary injunction. But a further complication intervened: U.S. Patent No. 9,675,897, the patent on which Spin Master had originally sought injunctive relief, expired before the court ruled on the renewed motion. See Spin Master PI, slip op. at 2. Spin Master sought leave to substitute Claims 1, 6, and 21 of the remaining asserted patent, U.S. Patent No. 7,753,755, which covered substantially similar wall-climbing technology. The court permitted the substitution, ordered supplemental briefing, and held a hearing on December 18, 2025. Id.

On January 27, 2026, approximately two and a half years after Spin Master filed suit, the court granted the preliminary injunction. Id. at 18. The decision is notable for its treatment of irreparable harm in the face of significant delay.

Defendants pressed the delay argument hard, pointing to multiple gaps in the case’s timeline. Id. at 16–17. Judge Ho addressed each period methodically. The pre-suit delay was attributable to Spin Master’s good-faith pursuit of alternative resolution through Amazon’s APEX program and direct negotiations. Id. at 16. The gap between filing and the initial TRO motion was excused by active settlement negotiations. The court reasoned that “‘diligent pursuit of settlement negotiations can justify delay’” in seeking preliminary relief. Id. at 17 (quoting Marks Org., Inc. v. Joles, 784 F. Supp. 2d 322, 333 (S.D.N.Y. 2011)).

Most significantly, the court addressed the delay caused by the service quashing with notable generosity. Judge Ho found that Spin Master “had previously been, understandably, relying on a prior order authorizing service by alternative means,” and that “any short delay between the Court’s ruling vacating that prior order and initiating service pursuant to the Hague Convention was attributable to the time that it took to verify Defendants’ addresses in China.” Spin Master PI, slip op. at 17.

The word “understandably” carries significant weight in context. The court does not say explicitly that it bears responsibility for a substantial portion of the delay, but the inference is inescapable. Judge Ho issued the alternative service order in September 2023. Spin Master operated in reliance on that order for approximately nine months. When the court vacated it in June 2024, the entire Hague Convention re-service period, likely another six to eight months, flowed directly from the court’s own correction. It would be difficult, to say the least, for the court to penalize Spin Master for delay that the court’s own erroneous order substantially caused. The leniency on the delay issue, while doctrinally sound, may also reflect a practical recognition that the court’s initial error forced the very timeline that defendants sought to weaponize.

On the merits, the court found likelihood of success on infringement of Claims 1, 6, and 21 of the ’755 Patent. The central claim-construction dispute concerned the term “underbody venturi duct.” The court largely adopted defendants’ construction, requiring three distinct areas—an entry portion, a transition portion, and an exit portion—of various distances from the driving surface, consistent with the prosecution history’s emphasis on a venturi shape that produces differential pressure through free-flowing air rather than vacuum suction. Spin Master PI, slip op. at 12–13. But the court rejected defendants’ further argument that the duct required “radiused” portions or could not include “sharp angles,” finding “nothing in the Claims specifically define the shape of each of those three distinct areas.” Id. at 13 (emphasis in original). The court then found, based on physical examination of the accused products, that their chassis, though largely flat, exhibited sufficient flaring at the entry and exit portions to satisfy the venturi duct requirement. Id. at 14. The court also rejected defendants’ invalidity defense based on the asserted prior art reference, which “does not include a venturi duct.” Id. at 15.

X. A Cautionary Tale: The TKD Sanctions

A brief sidebar on the Spin Master service decision’s sanctions analysis warrants mention. Attorneys from the law firm Tarter Krinsky & Drogin LLP (“TKD”) filed appearances on behalf of all seven defendants on September 29, 2023. Spin Master Service, slip op. at 4. For approximately one month, TKD attorneys filed corporate disclosure statements, emailed opposing counsel, appeared before the court, argued the significance of evidence, represented that they could provide addresses for certain defendants, filed requests for expedited discovery, and issued subpoenas—all purportedly on behalf of defendants whom, it later emerged, TKD had never been retained to represent. Id. at 31–32. On November 1, 2023, TKD moved to withdraw as counsel for three defendants, acknowledging the representation was “in error.” Id. at 5.

Judge Ho found TKD’s conduct sanctionable, but the analytical path is noteworthy. Because TKD was not acting “on behalf of a client,” since the relevant defendants had never actually engaged the firm, a bad-faith finding was not required. Id. at 34 (citing United States v. Seltzer, 227 F.3d 36, 41–42 (2d Cir. 2000) (granting sanctions “absent a finding of bad faith” given “a lawyer’s negligent or reckless failure to perform his or her responsibility as an officer of the court”)). The court found that TKD’s failure to obtain engagement letters, communicate with the purported clients, or heed obvious warning signs, such as prior counsel’s explicit statement that he did not represent those defendants, constituted “negligen[t] or reckless[]” failure of officer-of-the-court obligations. Spin Master Service, slip op. at 31–32. However, because Spin Master could not demonstrate that the misrepresentations caused its motions to be denied (the court denied those motions for improper service, not because of TKD’s conduct) the court limited the sanction to a nominal $500. Id. at 33–34.

XI. Practical Implications and the Road Ahead

The Spin Master decisions, read alongside the Second Circuit’s Smart Study affirmance and the Federal Circuit’s OnePlus line, present patent practitioners with a landscape that is fractured, evolving, and consequential. Several practical lessons emerge.

It is clear that forum selection matters more than ever. A patent plaintiff suing Chinese defendants faces materially different service-of-process regimes depending on where it files. In the Western District of Texas, the OnePlus framework permits Rule 4(f)(3) alternative service without exhaustion of Hague Convention procedures, potentially saving a year or more. In the Southern District of New York, the strict Smart Study/Spin Master framework requires either Hague Convention compliance or a robust showing that the defendant’s address is genuinely unknown. This divergence may influence where counsel files suit and should be factored into any pre-filing strategic analysis.

The better practice is to initiate Hague Convention service immediately and in parallel. Even in jurisdictions that may permit alternative service, the prudent course is to begin the Hague Convention process upon filing while simultaneously seeking Rule 4(f)(3) relief. If the alternative service is later challenged and quashed, as happened in Spin Master, having Hague Convention service already underway avoids the devastating reset that cost Spin Master months.

Care should be taken to document reasonable diligence exhaustively. The “address unknown” exception to the Hague Convention remains available in the SDNY, but the diligence bar is high. Practitioners should retain local counsel in China to conduct in-person visits to listed addresses, send test mailings, perform corporate registry searches, and document every step. Hiring a consultant and accepting its conclusory opinion is not enough. See Spin Master Service, slip op. at 10–12.

Counsel is well advised to preserve irreparable-harm arguments despite procedural delay. The Spin Master PI decision demonstrates that irreparable harm can survive extended procedural timelines if each period of delay is explained by reasonable conduct. Pre-suit platform-based dispute resolution, settlement negotiations, and compliance with court orders (including erroneous ones) can all excuse delay. Practitioners should maintain a contemporaneous record of efforts to resolve the dispute at every stage and should brief the delay issue proactively rather than waiting for defendants to raise it.

The Volkswagenwerk path remains open but narrow. Where a Chinese defendant maintains a U.S. subsidiary or affiliate that qualifies as an involuntary agent for service under the relevant state’s long-arm statute, with service completed entirely domestically under state-law authority, Volkswagenwerk permits service without Hague Convention compliance. But this scenario requires the specific combination of a domestic subsidiary and a state statute that does not require transmittal of documents abroad, a factual confluence that will be rare in cases against Chinese online sellers and manufacturers.

The Supreme Court may need to intervene. The tension between the Federal Circuit’s permissive treatment of Rule 4(f)(3) and the Second Circuit’s strict Hague Convention framework presents a conflict that is both mature and consequential. Patent cases uniquely straddle this divide because they fall within the Federal Circuit’s exclusive appellate jurisdiction on substantive issues but may be governed by regional circuit law on procedural questions including service of process. Until the Supreme Court addresses whether the Hague Convention’s methods are truly exclusive and whether Rule 4(f)(3) can authorize service methods not specifically permitted by the Convention, the law will remain unsettled and the practical burden will fall on litigants and their counsel.

XII. Conclusion

The Spin Master saga illustrates, with painful clarity, the gap between the speed of global e-commerce and the lumbering pace of procedural law. Knockoff products appear on Amazon overnight but obtaining meaningful judicial relief against their Chinese manufacturers can take years. Judge Ho’s decisions, the meticulous service-of-process analysis in June 2024 and the preliminary injunction in January 2026, are analytically rigorous and doctrinally sound. His “you can’t have it both ways” framing of the Rule 4(f)/Hague Convention interaction and his careful reinterpretation of Volkswagenwerk expose logical gaps that had persisted for years in the caselaw. And the Second Circuit’s December 2025 affirmance of Smart Study gives these positions the weight of binding circuit authority.

But intellectual rigor does not eliminate practical hardship. The patent holder who discovers a flood of infringing imports and faces an 18-to-24-month service timeline is not easily consoled by doctrinal elegance. The OnePlus approach, whatever its analytical vulnerabilities, reflects a judicial recognition that the Hague Convention’s procedures were not designed for an era in which anonymous sellers can reach U.S. consumers from Shenzhen with a few clicks.

For now, the law remains fractured, and practitioners must navigate the divide with care. The Spin Master decisions offer both a cautionary tale and a roadmap: the procedural path is longer and harder than it should be, but with proper planning, diligent documentation, and persistence, meaningful preliminary relief remains achievable, even if it arrives two and a half years late.