AbCellera Biologics Inc. v. Berkeley Lights, Inc.

Background

AbCellera Biologics Inc. and The University of British Columbia sued Berkeley Lights, Inc., alleging infringement of patents concerning microfluidic devices used in antibody-discovery assays and methods for isolating antibody sequences. The plaintiffs asked the court to compel Berkeley Lights to produce documents responsive to several requests for production.

The dispute covered four categories: documents about the operation and use of accused products; documents related to non-infringement, invalidity, unenforceability, and claim interpretation defenses; one document concerning an unaccused product; and damages-related documents. The court applied Federal Rule of Civil Procedure 26(b)(1), which permits discovery that is relevant to a claim or defense and proportional to the needs of the case.

Rulings on the Discovery Requests

For Requests for Production Nos. 9, 10, 13–17, and 20, the court held that Berkeley Lights could not limit its production to documents that were final when prepared. It had to produce responsive technical documents even if they were later superseded or updated. But the court did not require Berkeley Lights to produce all interim drafts because plaintiffs had not sufficiently explained why those drafts were needed. The court also said the parties would need to confer further before seeking more specific relief because their submission described the dispute at a high level of generality.

For Requests Nos. 25, 32, and 34, Berkeley Lights had to produce non-privileged documents supporting or contradicting its positions concerning infringement, validity, enforceability, or claim construction. The court did not require production based only on broad phrases such as documents that “affect,” “limit,” “bear on,” “concern,” or are “otherwise related to” the subject matter, because those phrases required unclear subjective judgments about responsiveness.

For Request No. 33, Berkeley Lights had to produce without delay non-privileged documents describing or reflecting the level of ordinary skill in the relevant field or the characteristics of a person having ordinary skill in that field.

The court denied the request for the OptoSelect 20k Chip Product Insert. The plaintiffs had not identified that chip as an accused product and had not explained why they believed it infringed one or more claims of a patent at issue.

For Requests Nos. 68 and 70, concerning licensing and patent valuation, Berkeley Lights had to produce responsive documents in its possession without delay and without regard to the schedule for damages-contention disclosures. For Requests Nos. 74–76, concerning documents supporting Berkeley Lights’s damages contentions, Berkeley Lights had to produce supporting documents within 14 days after disclosing its responsive contentions and any additional documents it intended to rely on by November 12, 2021, the date set for substantial completion of document discovery.

For Request No. 47, concerning Berkeley Lights’s communications with stock analysts, investors, or potential investors about the Beacon, Berkeley Lights had to identify and search the central repository most likely to contain responsive documents and produce the documents found there. It did not have to search custodial email at that time and could wait to conduct that search during the parties’ later-scheduled email discovery.

Disposition

Judge Virginia K. Demarch granted in part and denied in part the plaintiffs’ request to compel Berkeley Lights to produce documents responsive to Requests Nos. 9, 10, 13–17, 20, 25, 32, 34, 47, and 74–76. The court granted the request to compel production responsive to Requests Nos. 68 and 70, and denied the request to compel production of the OptoSelect 20k Chip Product Insert.