AbCellera Biologics Inc. v. Berkeley Lights, Inc.

Background

The opinion’s caption identifies the plaintiffs as AbCellera Biologics Inc. and The University of British Columbia, collectively called AbCellera, and the defendant as Bruker Cellular Analysis, Inc. The consolidated actions involve allegations that Bruker Cellular infringed patents concerning microfluidic devices and methods for isolating antibody sequences. Bruker Cellular denies infringement and contends that the asserted claims are invalid.

AbCellera moved to strike portions of Bruker Cellular’s amended invalidity contentions served on February 2, 2024. Invalidity contentions are the disclosures in which a patent defendant identifies the reasons it claims the asserted patents are invalid, including prior art and specific invalidity theories. AbCellera argued that Bruker Cellular failed to provide enough detail for the ’408, ’936, and ’270 patents, improperly added the Love reference for several other patents, and relied on references that statutory estoppel barred it from using against the ’408 patent.

Court’s analysis and rulings

Charts for the ’408, ’936, and ’270 patents

The court agreed that Bruker Cellular’s charts did not comply with Patent Local Rule 3-3(b) and (c). The charts did not specifically identify where and how each limitation of each asserted claim appeared in each prior-art reference. Instead of striking the contentions, the court permitted Bruker Cellular to amend them. The amended charts must state whether each prior-art reference anticipates each asserted claim or makes it obvious and must identify specifically where and how each claim limitation appears in each reference.

Obviousness-type double patenting

The court declined to strike Bruker Cellular’s obviousness-type double-patenting contentions for the ’408 patent. Bruker Cellular identified specific ’408 patent claims that it contended were not patentably distinct from specific claims of the ’018 patent. The court found that disclosure sufficient under the circumstances and stated that AbCellera could seek additional detail through discovery.

Prior-art systems and products

The court denied the request to strike Bruker Cellular’s disclosure of prior-art systems and products concerning the ’962, ’933, ’376, and ’378 patents. Bruker Cellular represented that it was not relying on those systems in its current invalidity contentions and had disclosed them only for informational purposes because of limits on the number of prior-art combinations it could assert. The court therefore found no need to strike the disclosures or require additional disclosures under Patent Local Rule 3-3(b) and (c).

References subject to statutory estoppel

The parties agreed that statutory estoppel currently prevented Bruker Cellular from relying against the ’408 patent on several references that it had raised or reasonably could have raised in its unsuccessful inter partes review petition. Inter partes review is a proceeding before the Patent Trial and Appeal Board to challenge patent claims. Bruker Cellular argued that the issue was premature because its appeal of the review decision was still pending.

The court rejected that argument but did not definitively resolve every aspect of the motion to strike. Instead, it ruled that Bruker Cellular could not seek discovery concerning those references in connection with the asserted ’408 patent claims. Bruker Cellular could use one or more of them as placeholder prior-art references or combinations, but doing so would count toward the limit of 10 prior-art combinations per asserted claim. The order did not bar Bruker Cellular from relying on the same references against other asserted patent claims or obtaining discovery about them for those other claims.

The Love reference

The court granted the motion to strike to the extent Bruker Cellular’s invalidity contentions for the ’962, ’933, ’376, and ’378 patents relied on U.S. Patent No. 7,776,553, referred to as the Love reference. The court concluded that the parties’ stipulation and the court’s order did not give Bruker Cellular an unlimited right to amend without notice, agreement, or court permission. The court also found that Bruker Cellular had not shown good cause for adding the reference.

Disposition

The court granted in part and denied in part AbCellera’s motion to strike. Specifically, it denied the request to strike the charts for the ’408, ’936, and ’270 patents but required amendments; denied the request to strike the obviousness-type double-patenting contentions for the ’408 patent; denied the request to strike the prior-art systems and products disclosed for the ’962, ’933, ’376, and ’378 patents; denied the request to strike the references subject to estoppel against the ’408 patent while restricting related discovery; and granted the request to strike the contentions relying on the Love reference for the ’962, ’933, ’376, and ’378 patents. Bruker Cellular’s amended invalidity contentions were due by December 6, 2024.