On August 16, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 43 in Certain Incremental Dental Positioning Adjustment Appliances and Methods of Producing Same (Inv. No. 337-TA-562).  This Order was also styled as Order No. 13 in Certain Digital Models, Digital Data, and Treatment Plans for Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making Same (Inv. No. 337-TA-833).  In the Order, ALJ Rogers denied Respondents ClearCorrect Operating, LLC (“ClearCorrect USA”) and ClearCorrect Pakistan (Private), Ltd.’s (“ClearCorrect Pakistan”) (collectively, “ClearCorrect”) motion to consolidate the 562 enforcement proceeding with the 833 investigation.

According to the Order, ClearCorrect argued that the 562 enforcement proceeding and the 833 investigation should be consolidated because (1) Align Technology, Inc. (“Align”) is the Complainant in both proceedings; (2) ClearCorrect USA and ClearCorrect Pakistan are Respondents in both proceedings; (3) the same technology and products are at issue in both proceedings; (4) the same patents and claims asserted in the 562 proceeding are also asserted in the 833 investigation; (5) both proceedings are on substantially the same schedule; (6) the parties are already proceeding with consolidated discovery in both proceedings; (7) consolidation would avoid the possibility of inconsistent decisions; and (8) consolidation would conserve the resources of the parties and the Commission.

Align opposed the motion, arguing that (1) it would be improper to consolidate an enforcement proceeding with a traditional investigation; (2) the investigations were pending before two different ALJs (although they are now both pending before ALJ Rogers); (3) the Commission has not suggested that the two actions be consolidated; (4) there are significant, investigation-specific issues that must be considered, and no conservation of resources would result from considering these issues in one investigation as opposed to two; and (5) there are different Respondents in the two cases.  Align also argued that consolidation would result in delay and confusion and would prejudice Align by effectively extinguishing the enforcement action.

The Commission Investigative Staff (“OUII”) stated that it supported consolidation “to the extent the Administrative Law Judge determines that the proceedings can be consolidated within an acceptable timetable for their initial determinations and target dates.”  However, OUII noted that there are several issues specific to each proceeding that are not involved in the other proceeding. 

After considering the arguments, ALJ Rogers determined to deny ClearCorrect’s motion to consolidate the proceedings.  The ALJ found that consolidation would likely cause unnecessary delay in the resolution of the enforcement proceeding and would thus prejudice Align in that proceeding.  ALJ Rogers further found that this prejudice to Align far outweighed any economy to be gained by consolidation, which, in any event, was “dubious.”  According to the Order, “[t]he only issue that appears likely to be in common is claim construction, and that issue can be consistently treated without consolidation, since there is now only one Administrative Law Judge presiding at both investigations.”  Accordingly, ALJ Rogers denied the motion to consolidate.