AbCellera Biologics Inc. v. Berkeley Lights, Inc.

Background

AbCellera Biologics Inc. and The University of British Columbia brought three patent-infringement lawsuits against Berkeley Lights, Inc. The cases were transferred from the District of Delaware, related, and then consolidated in the Northern District of California. UBC owned the patents, and AbCellera was their exclusive licensee.

Berkeley Lights asked to file a second amended answer and counterclaims. The proposed counterclaims alleged that AbCellera sent letters to Berkeley Lights customers that made false statements about 12 patents and about Berkeley Lights’ Beacon product. One proposed counterclaim arose under Section 43(a) of the federal Lanham Act, and the other arose under California’s Unfair Competition Law.

AbCellera and UBC had already moved to dismiss and strike certain counterclaims and affirmative defenses. Berkeley Lights separately moved for permission to amend its pleadings.

Reasons for Allowing Amendment

Under Rule 15(a) of the Federal Rules of Civil Procedure, courts generally allow amendments when justice requires. The court explained that permission is ordinarily denied only for reasons such as undue prejudice, undue delay, bad faith, or legal futility—the inability of the proposed pleading to support a viable claim.

The plaintiffs argued that the court lacked personal jurisdiction over the proposed counterclaims. The court rejected that argument, concluding that AbCellera and UBC had invoked the court’s jurisdiction by continuing to litigate the transferred and consolidated cases. The court also rejected the claim-splitting argument because Berkeley Lights represented that it would bring the related unfair-competition claims together in this case rather than maintain two separate actions involving the same claims.

The plaintiffs further argued that amendment would be futile. They contended that the federal Noerr-Pennington doctrine protected their pre-lawsuit communications about alleged patent infringement and that Berkeley Lights could not adequately plead a California Unfair Competition Law claim. The court did not decide the ultimate merits of those counterclaims. Instead, it concluded that the proposed allegations—including allegations that the asserted patents did not cover capabilities of the Beacon product—were sufficient to prevent a finding of futility at the amendment stage. The court also stated that challenges to the merits are generally considered after an amended pleading is filed.

Disposition

The court granted Berkeley Lights’ motion for leave to amend its answer and counterclaims. Berkeley Lights had 21 days to file the second amended pleadings if it chose to do so, and it could not add new defenses, counterclaims, or parties without a stipulation or further permission from the court.

Because Berkeley Lights could amend its pleadings, the court denied as moot AbCellera and UBC’s motions to dismiss and strike certain counterclaims and affirmative defenses. The court stated that the plaintiffs could file another motion to dismiss after the amended pleadings were filed or the amendment deadline passed. The court also cautioned that deficient counterclaims and defenses could later be dismissed with prejudice if the amended pleadings failed to cure identified deficiencies.