By Eric Schweibenz
On February 15, 2013, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 25 (dated January 22, 2013) and Order No. 35 (dated January 25, 2013) in Certain Digital Models, Digital Data, and Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).

According to Order No. 25, Complainant Align Technology, Inc. (“Align”) filed a motion to compel respondent ClearCorrect Operating, LLC (“ClearCorrect”) to provide supplemental responses to certain interrogatories and produce documents and source code responsive to certain Requests for Production.  Align argued that ClearCorrect changed the software and equipment it uses in its processes and, therefore, must supplement its interrogatory responses and document production.  Further, Align asserted that ClearCorrect failed to produce all responsive documents because it failed to produce all the software documentation, software manuals, and source code.  Lastly, Align averred that ClearCorrect failed to respond Align’s interrogatory requesting the basis for ClearCorrect’s non-infringement positions.

In opposition, ClearCorrect argued that supplemental responses are unnecessary because the software and equipment changes did not materially change the detailed interrogatory responses already provided to Align.  ClearCorrect stated that Align’s depositions of ClearCorrect’s employees already provided Align with the information ClearCorrect would supply to Align via any supplemental interrogatory responses. Regarding the software documentation and manuals, ClearCorrect asserted that the documents and manuals are “works-in-progress” and, therefore, should not be subject to production requests.  As to Align’s request for all source code, ClearCorrect averred that it could not be compelled to produce the source code because Align never discussed the topic in any discovery committee meetings.  Lastly, ClearCorrect argued that it provided a detailed basis for its non-infringement contentions in other interrogatory responses, which made repeating those details in the enumerated interrogatory unnecessary.

ALJ Rogers granted-in-part Align’s motion.  ALJ Rogers held that ClearCorrect must supplement its interrogatory responses to reflect changes to ClearCorrect’s software and equipment.  ALJ Rogers determined that ClearCorrect must produce all responsive software documents and manuals because their status as “works-in-progress” is irrelevant.  Further, ALJ Rogers held that ClearCorrect must supplement its interrogatory responses relating to its non-infringement contentions because merely citing to the facts cumulatively gathered in other interrogatory responses was unresponsive.  Lastly, ALJ Rogers determined that Align’s request for production of all source code must be denied because Align failed to raise the topic in any discovery committee meeting prior to filing the motion to compel and, hence, violated Ground Rule 4.1.1.  As to all other issues raised by Align, ALJ Rogers denied Align’s motion.

According to Order No. 35, respondents ClearCorrect and ClearCorrect Pakistan (Private), Ltd. (collectively, “Respondents”) filed a motion to quash Align’s hearing subpoena to Mr. Paul Dinh.  Respondents argued that Mr. Dinh’s testimony would be “irrelevant or duplicative of testimony of others and is outweighed by the burden of travel.”  Specifically, Respondents asserted that Align’s Pre-Hearing Statement demonstrates that Mr. Dinh’s testimony will be identical to that of Dr. Willis Pumphrey and Mr. Jarrett Pumphrey.  Further, Respondents argued that Mr. Dinh’s travel from Houston, Texas to Washington D.C. would impose an unnecessary burden given the duplicative nature of his testimony.

In opposition, the Commission Investigative Staff and Align argued that merely pointing to the fact that the brief summary of Mr. Dinh’s testimony, as outlined in Align’s Pre-Hearing Statement, is identical to that of Dr. Pumphrey and Mr. Pumphrey did not demonstrate that his testimony would be duplicative.  Align asserted that both Dr. Pumphrey and Mr. Pumphrey deferred to Mr. Dinh’s expertise as ClearCorrect’s Chief technology Officer.  Additionally, Align agreed to pay for Mr. Dinh’s reasonable travel expenses.

ALJ Rogers determined that Mr. Dinh’s potential testimony outweighs any burden imposed by the subpoena.  Specifically, ALJ Rogers noted Mr. Dinh’s deposition statement that he was “the person most knowledgeable at ClearCorrect.”  ALJ Rogers found that there was no evidence that it would be an “unnecessary burden” for Mr. Dinh to travel from Houston, Texas to Washington D.C.  Accordingly, ALJ Rogers denied Respondents’ motion.