AbCellera Biologics Inc. v. Berkeley Lights, Inc.
- Jon Tigar
- 4:20-cv-08624
- U.S. District Court · Northern District of California
- 5
In AbCellera Biologics v. Berkeley Lights, Judge Demarchi denied a request to compel documents about when plaintiffs learned of Berkeley Lights’s system.
AbCellera Biologics Inc. and The University of British Columbia were not required to produce the documents sought in Berkeley Lights’s Request No. 12; Berkeley Lights’s motion to compel was denied.
What happened
In AbCellera Biologics Inc. v. Berkeley Lights, Inc., the plaintiffs sued Berkeley Lights over patents involving microfluidic devices and antibody discovery. Berkeley Lights denied infringement and claimed the patents were invalid and unenforceable.
Berkeley Lights asked the court to require the plaintiffs to produce documents showing when and how they first learned about Berkeley Lights’s Beacon system. It argued that the documents could relate to willful infringement, the exceptional-case issue for attorney fees, and inequitable conduct. The plaintiffs argued that the request was not relevant.
The court denied Berkeley Lights’s request to compel discovery because Berkeley Lights had not shown that the documents were relevant to any claim or defense. The court did not decide the plaintiffs’ privilege objections. The order was issued by Judge Virginia K. Demarchi.
The detailed version
- AbCellera Biologics Inc. v. Berkeley Lights, Inc. · No. 4:20-cv-08624
- Jon Tigar
- July 30, 2021
Background
The opinion concerns a discovery dispute in consolidated patent-infringement actions. AbCellera Biologics Inc. and The University of British Columbia alleged that Berkeley Lights, Inc. infringed patents concerning microfluidic devices used in antibody-discovery assays and methods for isolating antibody sequences. The plaintiffs identified Berkeley Lights’s Beacon system as the accused instrumentality and alleged willful infringement. Berkeley Lights denied infringement and alleged that the asserted patents were invalid and unenforceable because of inequitable conduct.
Berkeley Lights’s Request No. 12 sought documents concerning when and under what circumstances the plaintiffs first became aware of the Beacon system, as well as documents such as scientific articles or patent applications concerning that system. The plaintiffs principally objected that the requested discovery was irrelevant.
Court’s Analysis
Under Federal Rule of Civil Procedure 26(b)(1), discovery must concern a matter relevant to a claim or defense and be proportional to the needs of the case.
The court rejected Berkeley Lights’s argument that the plaintiffs’ early awareness of the Beacon system was relevant to Berkeley Lights’s alleged willfulness. The court explained that the timing of the defendant’s knowledge of a patent or the patent’s issuance might bear on willfulness, but it did not understand how the plaintiff’s knowledge of the accused product before the patent’s filing or issuance would bear on that issue.
The court also rejected Berkeley Lights’s arguments that the requested information could support inferences about infringement, the value of the patents, or the plaintiffs’ litigation conduct. Berkeley Lights did not explain how the plaintiffs’ knowledge of the Beacon system would support those inferences on the record presented. The court further rejected the suggestion that the information was automatically discoverable because Berkeley Lights invoked the exceptional-case provision, 35 U.S.C. § 285. Berkeley Lights needed to explain why the discovery was relevant to the plaintiffs’ litigation position or conduct.
As to inequitable conduct, the court noted that such a claim based on failure to disclose prior art requires clear and convincing evidence of a deliberate decision to withhold a known material reference. Berkeley Lights did not say that the Beacon system was prior art, and the plaintiffs asserted without contradiction that the asserted patents claimed priority to applications filed in 2010, six years before the Beacon system. The court therefore did not understand how the plaintiffs’ knowledge of the system could support a failure-to-disclose theory. The court also noted that knowledge of a competitor’s product, standing alone, would not establish inequitable conduct.
Disposition
Because Berkeley Lights did not demonstrate that documents responsive to Request No. 12 were relevant to any claim or defense, the court would not require the plaintiffs to produce them. The court did not reach the plaintiffs’ privilege objections. Berkeley Lights’s request for an order compelling production was denied.
The opinion is a procedural discovery ruling; it did not decide the underlying patent-infringement, patent-validity, or inequitable-conduct claims.
Read the full 5-page opinion on CourtListener, the free public archive maintained by the Free Law Project.