Simon and Simon, PC v. Align Technology, Inc.

Background

The plaintiffs, Simon and Simon, PC doing business as City Smiles and VIP Dental Spas, alleged that Align Technology, Inc. had monopolies in the markets for dental aligners and scanners used to produce aligners. They alleged, among other things, that Align designed its iTero scanner to be used only to order Invisalign and terminated an interoperability agreement that had allowed dentists to use 3Shape scanner scans to order Invisalign.

The plaintiffs asked the court to issue three Letters of Request under the Hague Evidence Convention. These letters are requests from a United States court to judicial authorities in another country to obtain evidence. The requested letters concerned depositions of Raphael Pascaud in England, Allan Hyldal in Denmark, and Nikolaj Deichmann in Sweden.

Requested Testimony

Pascaud was a former Align executive who held positions involving the iTero business, marketing, business development, and strategy. The plaintiffs sought to question him about the interoperability agreement with 3Shape, Align’s scanner and aligner businesses, and Align’s contractual programs and pricing policies. Align stated that Pascaud would waive objections to the letter subject to conditions including a seven-hour limit on questioning, a deposition time and place of his choosing, and limits to the topics identified in the letter. The seven hours would include questioning by plaintiffs in a related case and appropriate questioning by Align’s attorneys as permitted by law.

Hyldal was identified as a former Senior Vice President of Orthodontics at 3Shape, and Deichmann as a co-founder and co-vice chairman of 3Shape. The plaintiffs said both had relevant knowledge about the creation, operation, and termination of the interoperability agreement, its use outside the United States, the scanner and aligner markets, and related sales, output, economic, and patent issues. Align did not oppose the request for these two depositions and requested no additional conditions.

Legal Standard

Under Federal Rule of Civil Procedure 28(b)(1)(B), parties may take depositions in a foreign country after a federal court issues a letter of request. The court explained that applications for such letters are generally granted under a liberal standard unless the opposing party shows a good reason for denial. The requested discovery also had to satisfy Rule 26(b), which permits discovery of relevant, nonprivileged information that could reasonably lead to admissible evidence.

Court’s Analysis

The court found that the plaintiffs met their burden. It concluded that Pascaud, Hyldal, and Deichmann were involved in the creation, operation, or termination of the interoperability agreement and related activities, making their testimony relevant. The court also found that the depositions would impose minimal burden and expense because each deponent would appear for one day with a maximum of seven hours of questioning.

The court noted that the plaintiffs had retained local counsel to help ensure compliance with the laws of the countries where the depositions would occur. It also rejected concerns that the testimony would duplicate information already produced, explaining that third-party witnesses could provide different perspectives and that a third party need not have unique information to be deposed.

Disposition

Judge Thomas S. Hixson granted the plaintiffs’ motions for issuance of the Letters of Request. The court adopted the proposed letters attached to the declarations and directed the Clerk of Court to file the executed letters as attachments to the order.