By Eric Schweibenz and Tom Yebernetsky
On March 26, 2015, ALJ David P. Shaw issued Order Nos. 16 and 17 in Certain Dental Implants (Inv. No. 337-TA-934).

By way of background, this investigation is based on a September 25, 2014 complaint filed by Nobel Biocare Services AG and Nobel Biocare USA, LLC (collectively, "Nobel") alleging that Respondents Instradent USA, Inc., formerly known as Neodent USA, Inc., and JJGC Industria e Comercio de Materiais Dentarios S/A (collectively, "Neodent") violated Section 337 in the importation into the U.S. and sale of certain dental implants that infringe one or more claims of U.S. Patent Nos. 8,714,977 (the '977 patent) and 8,764,443.  See our September 29, 2014 and October 22, 2014 posts for more details on the complaint and the notice of investigation, respectively.

According to Order No. 16, non-party Tony Susino filed a motion seeking to quash the subpoena ad testificandum issued upon application by Nobel.  In support of the motion, Mr. Susino argued that he possesses no discoverable information that is not otherwise possessed by Neodent.  Specifically, Mr. Susino asserted that "Respondents are the best source of the information [sought] and have already produced such information and designated a corporate witness to cover each topic in the deposition subpoena...."  In opposition, Nobel argued that Mr. Susino may be the most knowledgeable witness with respect many issues relevant to the investigation.  Nobel further asserted that "the deposition witnesses designated by Neodent to testify as to these topics were unable to answer relevant questions and instead 'pointed to Mr. Susino as the knowledgeable witness.'"  ALJ Shaw determined that Mr. Susino is likely to have substantial knowledge with respect to deposition topics identified in the subpoena at issue in the pending motion to quash.  ALJ Shaw specifically noted the fact that Neodent's own corporate witnesses identified Mr. Susino as the knowledgeable witness with respect to certain topics.  Accordingly, ALJ Shaw denied the motion to quash.

According to Order No. 17, Neodent filed a motion to compel Nobel to produce Nitzan Bichacho and Yuval Jacoby for deposition.  In support of the motion, Neodent argued that Prof. Bichacho and Dr. Jacoby are two of the four named inventors of the '977 patent and are likely to have knowledge relevant to this Investigation about conception, reduction to practice, and the prosecution of the patent.  Neodent further asserted that Nobel is the only party to this Investigation that has the power to produce Prof. Bichacho and Dr. Jacoby, who reside outside of the United States.  In opposition to the motion to compel, Nobel argued that Prof. Bichacho and Dr. Jacoby do not possess any discoverable materials not already encompassed by the discovery that Nobel has already produced in this investigation.  Nobel further asserted that it does not have the power to produce Prof. Biehacho and Dr. Jacoby for deposition because "Nobel does not currently employ, nor has it ever employed, Prof. Bichacho or Dr. Jacoby" and because "Respondents have not sufficiently established that Prof. Bichacho and Dr. Jacoby are under Nobel's control because of a contractual arrangement."  ALJ Shaw determined that Prof. Bichaco and Dr. Jacoby "unquestionably possess information relevant to issues raised in this Investigation" because they are the named inventors of the asserted '977 patent.  Accordingly, ALJ Shaw granted the motion to compel.