AbCellera Biologics Inc. v. Berkeley Lights, Inc.

Background

AbCellera Biologics Inc. and the University of British Columbia asserted fifteen patents against Bruker Cellular Analysis, formerly known as Berkeley Lights, Inc., in three consolidated patent-infringement cases. The patents concern microfluidic or optofluidic systems and methods involving antibody discovery, cellular binding assays, and microfluidic cell culture. UBC owns the asserted patents, and AbCellera is its exclusive licensee.

Before the patent suits, AbCellera sent correspondence to Berkeley Lights and at least one of its customers describing AbCellera’s patent portfolio and suggesting that some patents might apply to Berkeley Lights products. The letters invited discussions about possible licensing. Berkeley Lights asserted counterclaims under the Lanham Act and California’s unfair-competition law, alleging that the correspondence was unfair competition. It also asserted counterclaims and affirmative defenses alleging inequitable conduct—intentional withholding or misrepresentation of material information during patent examination.

The plaintiffs moved under Federal Rule of Civil Procedure 12(b)(6) to dismiss the counterclaims and under Rule 12(f) to strike certain affirmative defenses and counterclaim allegations. Rule 12(b)(6) tests whether the pleading states a legally sufficient claim, while Rule 12(f) permits a court to strike an insufficient, redundant, immaterial, impertinent, or scandalous matter.

Unfair-Competition Counterclaims

The court dismissed both unfair-competition counterclaims. It applied the Noerr-Pennington doctrine, which generally protects efforts to use courts and government agencies to pursue legal and economic interests. The protection can be lost for sham litigation, but the court held that Berkeley Lights had not adequately alleged that AbCellera’s pre-suit correspondence was objectively baseless or concealed an improper attempt to interfere directly with a competitor’s business relationships.

The court reasoned that the correspondence referred both to patents for which AbCellera ultimately asserted infringement claims and to patents that were not asserted. The inclusion of some allegedly baseless patent references did not make the entire effort objectively baseless. The court also found that the letters suggested licensing discussions rather than threatening the customers with infringement suits. Because the court found the counterclaims barred by Noerr-Pennington, it did not decide the plaintiffs’ alternative arguments concerning federal preemption or the sufficiency of the California claim under the three parts of California’s unfair-competition statute.

Inequitable-Conduct Allegations Concerning the ’812 Patent Family

For inequitable conduct, Federal Rule of Civil Procedure 9(b) required Berkeley Lights to plead the circumstances of the alleged misconduct with particularity. Applying the Federal Circuit’s requirements, the court said the pleading had to identify the specific person involved, what information was withheld or misrepresented, when and where the conduct occurred, why the information mattered, how a patent examiner would have used it, and facts supporting a plausible inference of specific intent to deceive the Patent and Trademark Office.

The court found the pleading adequately identified the relevant individuals and the allegedly withheld information for the ’812 patent family. It also found sufficient allegations explaining why the references were material and how they could have affected patentability. The court rejected, however, a broader theory based on the patent prosecution firm’s alleged concurrent representation of the parties, because Berkeley Lights did not identify an attorney who represented both parties in patent prosecution or allege facts showing that an attorney obtained confidential information and that the inventors intended to deceive the Patent and Trademark Office.

As to intent, the court found sufficient allegations concerning Carl Hansen and Michael Rubin’s alleged failure to disclose Yasuda and Nassef. The court found other intent allegations insufficient, including allegations concerning Carol Francis and Thomas Cawley, Jr. regarding Daridon; Cawley’s alleged knowledge of Yasuda and Nassef based on an assumption that he read earlier prosecution histories; and allegations involving Love, Gómez-Sjöberg, and Lee based mainly on references appearing in papers, theses, or information-disclosure statements.

Inequitable-Conduct Allegations Concerning the ’408 Patent Family

The court dismissed the ’408 patent family inequitable-conduct allegations. It found that the allegations concerning Balagadde did not identify which patent claims or limitations the reference allegedly affected and did not adequately explain why the reference was material or how an examiner would have used it. The court also found the allegations concerning Daridon insufficient to support a plausible inference that Michael Rubin intended to deceive the examiner, rather than simply failing to qualify an argument about the scope of Daridon.

The court likewise found insufficient the allegations that the ’812 patent family and Hansen 2010 should have been disclosed during prosecution of the ’408 patent family. Berkeley Lights alleged that those materials were prior art, but it did not adequately explain why they were material and noncumulative or how an examiner would have used them in assessing patentability.

Motion to Strike and Disposition

The plaintiffs asked the court to strike two grounds that Berkeley Lights added to its inequitable-conduct pleading. The court declined to strike them because motions to strike are disfavored and the plaintiffs had not shown that the allegations were redundant, immaterial, impertinent, or scandalous. Even so, the court dismissed those allegations with prejudice because it found them inadequately pleaded under Rule 9(b) and the governing pleading standard.

Judge Jon S. Tigar’s final disposition was to grant in part and deny in part the plaintiffs’ motions. The court denied the motion to dismiss the inequitable-conduct counterclaims and affirmative defenses based on Carl Hansen and Michael Rubin’s alleged failure to disclose Yasuda and Nassef during prosecution of the ’812 patent family. It granted the motion to dismiss all other counterclaims. The opinion also states that the dismissals were with prejudice, consistent with the court’s earlier warning that deficiencies not cured in the amended pleadings would be dismissed with prejudice.