AbCellera Biologics Inc. v. Berkeley Lights, Inc.

Background

AbCellera Biologics, Inc. and The University of British Columbia were the plaintiffs, and Bruker Cellular Analysis, Inc. was the defendant. The opinion refers to Bruker Cellular as formerly known as Berkeley Lights, Inc. AbCellera alleges that Bruker Cellular infringes patents concerning microfluidic devices used for assays related to antibody discovery and methods for isolating antibody sequences. Bruker Cellular denies infringement and contends that the asserted patents are invalid.

The parties asked the court to resolve a dispute about AbCellera’s response to Interrogatory No. 1. The interrogatory requested detailed information about the dates and circumstances of conception and actual or constructive reduction to practice for inventions claimed or disclosed in the asserted patents. It also requested documents, materials, and witnesses that corroborate or contradict those dates and circumstances.

AbCellera organized its response by patent family and described the inventors’ work in narrative form, linked to multiple dates. It also cited numerous documents. Bruker Cellular argued that the response did not identify which dates applied to each asserted claim and that some document citations covered broad ranges, including documents hundreds of pages long, without identifying the relevant pages.

Claim-specific information

The court explained that prior-art invalidity and inventorship issues generally must be considered on a claim-by-claim basis. Because Bruker Cellular clarified that it understood “inventions claimed” to mean the invention claimed in each asserted claim, the court found it unreasonable for AbCellera to maintain a different interpretation.

The court concluded that AbCellera’s response made it difficult to determine which conception and reduction-to-practice dates applied to particular asserted claims. AbCellera therefore had to amend its response to identify, as specifically as possible, a single conception date and a single reduction-to-practice date for each asserted claim. The court also ruled that AbCellera did not need to prepare a separate answer for every claim if multiple claims or patents shared the same dates and circumstances; it could group them. AbCellera did not need to describe inventions that were disclosed but not claimed in an asserted patent or were not asserted against Bruker Cellular.

Corroborating evidence

Federal Rule of Civil Procedure 33(d) permits a party to answer an interrogatory by referring to documents only when the burden of finding the answer is substantially the same for both parties and the responding party identifies the records in enough detail for the requesting party to locate them as readily as the responding party could.

The court found that some of AbCellera’s citations were not sufficiently precise. Although a 20-page range might sometimes be adequate, the court stated that citing an entire 200-page or longer laboratory notebook or thesis would not satisfy Rule 33(d) for this interrogatory. AbCellera had to review its document references and amend its response so that the citations identified where the supporting evidence could be found.

Disposition

The court required AbCellera to amend its response to Interrogatory No. 1 as directed. The amended response had to be served by August 15, 2024, unless the parties agreed otherwise. The order resolves a discovery dispute; it does not decide the parties’ patent-infringement or patent-validity claims.