ALJ Rogers Rules On Motions In Certain Digital Models, Digital Data, And Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances (337-TA-833)
On February 15, 2013, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 34 (dated January 25, 2013) and Order No. 40 (dated January 30, 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. 34, Respondents ClearCorrect and ClearCorrect Pakistan (Private), Ltd. (collectively, “Respondents”) filed a motion to quash Complainant Align Technology, Inc.’s (“Align”) hearing subpoena to Mr. Eric Guenterberg. Respondents argued that Mr. Guenterberg’s testimony would be “irrelevant or duplicative of testimony of others and is outweighed by the burden of travel.” Specifically, Respondents asserted that Mr. Guenterberg testified at his deposition that he did not have any expertise in the use of the accused products. Further, Respondents argued that Mr. Guenterberg’s travel from Houston, Texas to Washington D.C. would impose an unnecessary burden given the duplicative nature of his testimony.
In opposition, Align argued that Mr. Guenterberg’s testimony is relevant and necessary. Specifically, Align asserted that Mr. Guenterberg, ClearCorrect USA’s Chief Information Officer, has detailed knowledge related to issues relevant to the investigation. Further, Align agreed to pay for Mr. Guenterberg’s reasonable travel expenses. The Commission Investigative Staff (“OUII”) also opposed the motion. OUII argued that Respondents failed to point to any testimony from any other witness that Mr. Guenterberg would duplicate. Additionally, OUII asserted that Respondents failed to state why Mr. Guenterberg’s travel from Houston, Texas to Washington D.C. would be an undue burden.
ALJ Rogers determined that Mr. Guenterberg’s potential testimony outweighs any burden imposed by the subpoena. Specifically, ALJ Rogers noted that Mr. Guenterberg possesses detailed knowledge relating to the relationship between the Respondents and of the processes Respondents use. ALJ Rogers found that there was no evidence supporting Respondents’ position that it would be an “unnecessary burden” for Mr. Guenterberg to travel from Houston, Texas to Washington D.C. Accordingly, ALJ Rogers denied Respondents’ motion.
According to Order No. 40, Respondents filed a motion to “Exclude Third-Party Witnesses for Whom No Witness Statement Was Provided.” Specifically, Respondents argued that ALJ Shaw should exclude Mr. Wisenewski from testifying because Align did not provide a witness statement from Mr. Wisenewski before the deadline. Further, Respondents asserted that Align did not list Mr. Wisenewski as an adverse witness in its pre-hearing statement and, therefore, Mr. Wisenewski cannot testify under the exception for adverse witnesses enumerated in Ground Rule 9.3.
In opposition, Align argued that it has good cause to call Mr. Wisenewski without having requested a witness statement prior to the deadline because he is needed to refute new non-infringement positions taken by Respondents on the day of the deadline for filing witness statements. OUII supported Align’s position to the extent that ALJ Shaw was going to allow Respondents to assert their new non-infringement position.
ALJ Shaw agreed with Respondents’ position that Align failed to submit a witness statement in violation of Ground Rule 9.3. Further, ALJ Shaw held that Align failed to show good cause that would overcome the failure to timely submit the witness statement because Align had been aware of the relevance and importance of Mr. Wisenewski’s testimony well before the deadline for submitting witness statements. Additionally, ALJ Shaw stated that Respondents “new non-infringement position” was simply an argument made in an opposition to summary determination, which cited supporting facts from depositions taken well before the deadline for filing the witness statements. ALJ Shaw denied Respondents’ motion as to all third-party witnesses, except the witness discussed, Mr. Wisenewski. Accordingly, ALJ Shaw granted-in-part Respondents’ motion and excluded Mr. Wisenewski from testifying.