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. used a multifaceted scheme to limit competition in markets for dental aligners and scanners. The discovery requests at issue concerned Align’s interoperability agreement with 3Shape, which had allowed dentists to use 3Shape scanner scans to order Invisalign products before Align terminated the agreement.

The plaintiffs asked the court to issue three Letters of Request under the Hague Evidence Convention. These letters ask courts or other authorities in foreign countries to assist with obtaining evidence. The requested depositions were:

- Raphael Pascaud in England, a former Align executive who allegedly was involved in the interoperability agreement, scanner and aligner business, discount programs, and contracts with dental support organizations; - Allan Hyldal in Denmark, a former Senior Vice President of Orthodontics at 3Shape; and - Nikolaj Deichmann in Sweden, a co-founder and co-vice chairman of 3Shape.

The plaintiffs sought testimony about the creation, operation, and termination of the Align–3Shape interoperability agreement; Align’s approach to interoperability; sales and economic effects of ending the agreement; scanner and aligner markets; and related business and patent matters. Align did not oppose the requests. For Pascaud, Align stated that he would waive objections and accept service subject to conditions including a deposition at a time and place of his choosing, questioning limited to the listed subjects, and no more than seven hours of questioning shared with plaintiffs in a related case. Align requested no additional conditions for Hyldal and Deichmann.

Legal standard

Federal Rule of Civil Procedure 28(b)(1)(B) permits depositions in foreign countries when the federal court issues a letter of request. The court explained that requests for such letters generally should be granted under the district’s liberal standard unless the opposing party shows good reason to deny them. The discovery also had to satisfy Rule 26(b), which permits discovery of nonprivileged information relevant to a claim or defense. Information need not itself be admissible at trial if it could reasonably lead to admissible evidence.

Court’s analysis

The court found that the plaintiffs met their burden. It determined that Pascaud, Hyldal, and Deichmann had involvement or knowledge concerning the interoperability agreement, its operation outside the United States, its termination, and related actions by Align. Their testimony was therefore relevant to the case.

The court also found that the burden and expense would be minimal because the depositions would involve one day and a maximum of seven hours of questioning. The plaintiffs had retained local counsel to help ensure that the proceedings complied with the laws of the relevant countries. The court further concluded that the depositions would allow the plaintiffs to question witnesses with personal knowledge and would not necessarily duplicate information already produced by Align. A third-party witness need not provide information that is entirely unique to be deposed.

Disposition

The court granted the plaintiffs’ motions for issuance of the Letters of Request. It adopted the letter for Pascaud attached to the declaration of John Radice and the letters for Hyldal and Deichmann attached to the declaration of Timothy Lacomb. The Clerk of Court was directed to file the executed letters as attachments to the order.