AbCellera Biologics Inc. v. Berkeley Lights, Inc.

Background

AbCellera Biologics Inc. and The University of British Columbia alleged that Bruker Cellular Analysis infringed 15 patents generally directed to methods using microfluidics in cell analyses. AbCellera initially identified seven accused instrumentalities in disclosures required by Patent Local Rule 3-1(b). Those disclosures included the Beacon Optofluidic System, the Culture Station instrument, several OptoSelect chips, and the Opto Plasma B Discovery Workflow.

Bruker produced technical documents between April 8, 2021, and August 19, 2021. The case was then stayed while the court addressed inter partes review petitions involving three asserted patents. After the stay ended, the parties’ joint case-management statement referred to two additional systems—the Beacon Select and Beacon Quest—and related services and workflows. The scheduling order adopted October 20, 2023, as the deadline for AbCellera to supplement its disclosures with new accused products. AbCellera served amended disclosures on November 2, 2023, without first seeking leave to amend.

The amended disclosures added the Beacon Quest and Beacon Select systems and numerous chips, workflows, software, instruments, kits, components, consumables, and reagents. Bruker did not object to four additions: the Beacon Quest, the Beacon Select, the Opto Memory B Discovery Rabbit Workflow, and the Opto Memory B Discovery Human Workflow. Bruker objected to the remaining additions.

Legal standard

Patent Local Rule 3-1(b) requires a party claiming patent infringement to identify each accused apparatus, product, device, process, method, act, or other instrumentality of which it is aware, as specifically as possible. The disclosure must give the defendant reasonable notice of why the plaintiff believes it has a reasonable chance of proving infringement, but it need not prove the infringement case.

Under Patent Local Rule 3-6, a party may amend its disclosures only by court order after a timely showing of good cause. Good cause requires diligence in discovering the basis for amendment and seeking leave, as well as an absence of prejudice to the opposing party. If the party was not diligent, the court need not consider prejudice.

Court’s analysis

The court rejected AbCellera’s argument that the September 5, 2023, scheduling order broadly permitted any amendments. Reading that order together with the parties’ joint case-management statement, the court concluded that the order addressed the two new optofluidic systems and new services and workflows for those systems and the original Beacon system. The order did not permit all possible amendments or grant leave for the particular amendments AbCellera made.

The court nevertheless considered whether AbCellera had shown good cause. AbCellera acknowledged that it identified grounds for amendment as early as April 2021 and that the amended disclosures relied on information produced or publicly available by May 31, 2021. Although AbCellera told Bruker that it intended to amend, it did not identify the additional instrumentalities it intended to accuse, provide proposed amendments, or seek leave to amend before the case was stayed. The court found that these actions did not demonstrate diligence.

Because AbCellera failed to establish diligence, the court did not consider whether the amendments would prejudice Bruker. Separately, the court found that AbCellera’s identification of “other antibody discovery workflows, B cell antibody discovery workflows, and/or antibody therapeutics workflows” lacked the specificity required by Patent Local Rule 3-1(b). AbCellera acknowledged that it had no knowledge of those unnamed workflows or information that they infringed. The court therefore concluded that this category had to be removed for that reason as well.

Disposition

The court granted Bruker Cellular Analysis’s motion to strike AbCellera’s amended Patent Local Rule 3-1(b) disclosures. The four uncontested additions were permitted, while the disputed amendments were struck. AbCellera was ordered to serve amended disclosures complying with the order by April 8, 2024. The ruling concerned patent-disclosure procedure and did not decide the underlying patent-infringement allegations.