AbCellera Biologics Inc. v. Berkeley Lights, Inc.
- Jon Tigar
- 4:20-cv-08624
- U.S. District Court · Northern District of California
- 3
In AbCellera Biologics v. Berkeley Lights, Judge Koh granted a stay while patent reviews proceed before the Patent Trial and Appeal Board.
AbCellera Biologics Inc. and Berkeley Lights, Inc.; the patent lawsuit is paused while the PTAB considers the three inter partes review petitions.
What happened
AbCellera Biologics Inc. sued Berkeley Lights, Inc., asserting seven patents. Berkeley Lights asked the court to pause the case while the Patent Trial and Appeal Board considers three challenges to the validity of nearly all claims from three patents.
The court found that the case was still at an early stage because the parties had not filed claim-construction briefs and fact discovery had just begun. The reviews could eliminate all claims from one related group of patents, potentially simplifying the lawsuit. The court also found no evidence that pausing the case would unfairly harm AbCellera or give Berkeley Lights an improper tactical advantage.
The court granted Berkeley Lights’s motion and stayed the case until the court orders otherwise, while requiring the parties to report when the three reviews are completed. Judge Lucy H. Koh also directed the clerk to administratively close the case, explaining that this procedure does not affect the parties’ rights.
The detailed version
- AbCellera Biologics Inc. v. Berkeley Lights, Inc. · No. 4:20-cv-08624
- Jon Tigar
- Aug. 26, 2021
Background
Berkeley Lights moved to stay, or pause, the patent lawsuit while the Patent Trial and Appeal Board (PTAB) considers three inter partes review (IPR) petitions. Inter partes review is a proceeding before the PTAB that can determine whether patent claims are invalid. Berkeley Lights said the petitions challenged nearly all asserted claims of three patents. AbCellera opposed the motion.
Court’s analysis
The court considered three factors commonly used when deciding whether to stay a case pending inter partes review.
First, the court examined how far the lawsuit had progressed. It found that the case was still in its early stages because the parties had not filed claim-construction briefs, and fact discovery had only recently begun. Claim construction is the process of determining the meaning and scope of patent claims.
Second, the court considered whether a stay could simplify the lawsuit. AbCellera had asserted seven patents, including U.S. Patent No. 10,087,408 and two related patents referred to as the “’408 family.” The court found that the pending IPRs could invalidate all asserted claims of that patent family, which weighed in favor of a stay. The court noted that the PTAB had not yet decided whether to institute the IPRs but stated that courts routinely stay cases while awaiting those decisions.
Third, the court considered whether a stay would prejudice AbCellera or give Berkeley Lights a clear tactical advantage. The court concluded that this factor did not weigh against a stay because the case was at an early stage, Berkeley Lights filed its motion two weeks after filing the IPR petitions, and there was no evidence of gamesmanship.
Disposition
The court granted Berkeley Lights’s motion and stayed the case until the court orders otherwise. The parties must notify the court within two business days after the PTAB completes the three IPRs. The clerk was directed to administratively close the file, which the court explained is a purely administrative procedure that does not affect the parties’ rights.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.