On January 15, 2015, ALJ David P. Shaw issued two Orders (Nos. 7 and 8) 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 violation of 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 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. 7, Respondents Instradent USA, Inc. (formerly Neodent USA, Inc.) and JJGC Indústria e Comércio de Materiais Dentários S/A (collectively, "Neodent") filed a motion to compel the production of documents by Nobel.
Neodent sought an order compelling Nobel to conduct a reasonable search of Nobel Biocare AB of Sweden and Alpha Bio Tec Ltd. for documents concerning the conception, development, and reduction to practice of the alleged invention of the patents in suit. Neodent argued that Nobel had failed to perform a reasonable search for such records and had misrepresented to the U.S. District Court for the Central District of California that it had done so.
Nobel argued that the motion was moot because it was already conducting a diligent search of the two companies at issue. Nobel explained that it had completed most of its search, had already produced some of the documents, and would be producing the remainder within the following week. Nobel further argued that the only searching to be completed was an ongoing electronic search of archival standalone drives at Alpha Bio Tec.
After considering the arguments, ALJ Shaw granted the motion in part ordering Nobel to file a statement no later than January 23, 2015 certifying that it has completed the production of documents and information in response to the discovery requests at issue. ALJ Shaw further stated that if Nobel cannot certify completion it should provide a date certain by which it will complete production.
According to Order No. 8, ALJ Shaw granted a motion to compel filed by Nobel for the production of documents by Neodent.
Nobel sought an order compelling Neodent to "(l) produce all relevant documents regarding the design, development, advertising, and promotion of the accused Drive CM dental implant; (2) identify and produce witnesses for depositions who are most knowledgeable about those topics; and (3) search for and produce responsive documents from Respondents' parent and sister entities in the Straumann corporate family."
Neodent argued the motion should be denied with respect to items (1) and (2) because it would promptly collect and produce design and development products for the Brazilian products and would honor its assurances to provide Nobel with the names of the people most knowledgeable and the design and development of the non-accused Brazilian products. Neodent argued that it would be premature for ALJ Shaw to consider item number (3) because the Straumann entities have agreed, subject to their objections, to produce responsive, relevant, non-privileged documents.
After considering the arguments, ALJ Shaw granted the motion in part, ordering Neodent to file a statement no later than January 23, 2015 certifying that it has completed the production of documents and information responsive to items (1) and (2). ALJ Shaw further stated that if Neodent cannot certify completion it should provide a date certain by which it will complete production. ALJ Shaw also ordered Neodent to file weekly statements describing the steps taken by the Straumann entities to provide discovery in the investigation.