ABCELLERA BIOLOGICS INC, et al., Case No. 20-cv-08624-LHK (VKD) 20-cv-08626-LHK (VKD) Plaintiffs, 20-cv-08627-LHK (VKD)
v. ORDER RE JULY 21, 2021 DISCOVERY DISPUTE Re: Dkt. No. 105 Defendant.
Plaintiffs AbCellera Biologics, Inc. and The University of British Columbia (collectively, “Plaintiffs”) and defendant Berkeley Lights, Inc. (“Berkeley Lights”) ask the Court to resolve their dispute concerning Plaintiffs’ document requests to Berkeley Lights. Dkt. No. 105.1 The Court finds this dispute suitable for resolution without oral argument. Civil L.R. 7-1(b). For the reasons explained below, the Court grants in part and denies in part Plaintiffs’ request for an order compelling Berkeley Lights to produce responsive documents. In these consolidated actions, Plaintiffs contend that Berkeley Lights infringes several patents relating to the use of microfluidic devices for assays in the discovery of antibodies for the treatment of disease, and methods for isolating antibody sequences of interest. See Dkt. No. 98 at 2. This dispute concerns Plaintiffs’ requests for production of documents to Berkeley Lights. The parties’ joint submission addresses four categories of documents requests: (1) documents concerning the operation and use of the accused products, (2) documents related to Berkeley Lights’ non-infringement, invalidity, and unenforceability defenses, (3) a single document concerning a product that is not accused, and (4) documents relating to damages. A party may obtain discovery of any matter that is relevant to a claim or defense and that is “proportional to the needs of case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). The parties dispute whether the document discovery Plaintiffs seek is relevant and/or proportional to the needs of the case. A. Plaintiffs’ Requests for Production Nos. 9, 10, 13-17, and 20 Plaintiffs’ Requests for Production Nos. 9, 10, 13-17, and 20 are generally directed to technical documents describing the operations, functions, and uses of the accused products. Berkeley Lights objects to the production of technical documents that are non-final drafts or that exceed the requirements of Patent Local Rule 3-4(a). As an initial matter, Patent Local Rule 3-4(a) does not require (as Plaintiffs contend) that an accused infringer produce “any and all documents” that describe the operation of the accused products, but only documents “sufficient to show” such operation. See N.D. Cal. Patent L.R. 3- 4(a). However, this rule sets requirements for early disclosure of information in a patent case. It does not limit or preclude the discovery of additional documents concerning the operation of the accused products. See N.D. Cal. Patent L.R. 2-5. Further, while nothing in the Patent Local Rules or the Federal Rules of Civil Procedure bars the discovery of draft technical documents, it is not self-evident that discovery of all drafts of all technical documents that describe the operation, function, and use of an accused product is relevant and proportional to the needs of these cases. Absent further explanation regarding the need for discovery of interim drafts, the Court will not require Berkeley Lights to produce such drafts. Berkeley Lights may not limit its production to at the time they were prepared (whether marked “final” or not), even if they were later superseded or updated. The parties have chosen to submit their dispute regarding these document requests at a high level of generality. The Court is unable to discern if there is some particular documentation or further detail that Plaintiffs require in order to understand that operations, functions, and uses of the accused products. If the parties require more specific relief from the Court, they will need to confer further before seeking additional relief and must explain their dispute in more detail. B. Plaintiffs’ Requests for Production Nos. 25 and 32-34 Plaintiffs’ Requests for Production Nos. 25, 32, and 34, collectively, ask for documents that “support,” “contradict,” “refute,” “affect,” “limit,” “bear on,” “concern,” or “are otherwise related to” infringement, validity, enforceability, or interpretation of the asserted claims. Berkeley Lights objects that these requests are overly broad and ambiguous because they require Berkeley Lights to determine, for example, whether a document “supports” or “contradicts” or merely “concerns” Plaintiffs’ or its own positions on infringement, validity, enforceability, or claim construction. While Plaintiffs are correct that Berkeley Lights may not limit its production to documents favorable to its own positions, the Court agrees with Berkeley Lights that it is difficult to discern and comply with the “full scope” of a request that asks for documents that “affect,” “concern,” “bear on,” or “are otherwise related to” the subject matter of the request. Berkeley Lights should be able to identify non-privileged documents in its possession that, for example, discuss the accused products or the prior art, and it must produce those documents that support its positions on infringement or validity, as well as those that tend to contradict those positions. However, to the extent these requests require subjective judgments about which documents are responsive—i.e., those that “affect,” “limit,” “bear on,” “concern,” or “are otherwise related to” particular subject matter—the Court agrees that they are ambiguous. Accordingly, Berkeley Lights must produce documents responsive to Requests for Production Nos. 25, 32, and 34 that support or contradict its positions with respect to the subject matter Lights to produce documents that relate in some unspecified way to that subject matter. Plaintiffs’ Request for Production No. 33 asks for documents “concerning the level of ordinary skill in the art, or a person of ordinary skill in the art, for each of the Patents-in-Suit.” Defining the level of ordinary skill in the art of the field(s) of the claimed invention(s) is necessary for purposes of claim construction, Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc), and the Court expects both sides will brief the issue to the Court. To the extent Berkeley Lights has in its possession non-privileged documents that describe or reflect the level of ordinary skill in the relevant art or the characteristics of a person having ordinary in skill in the art, it must produce those documents without delay. C. Plaintiffs’ Request for Production No. 13: OptoSelect 20k Chip Product Insert Plaintiffs ask the Court to order Berkeley Lights to produce a single document, the OptoSelect 20k Chip Product Insert, which they contend is responsive to at least Request for Production No. 13. Plaintiffs have not identified this chip as an accused product, but they ask for this document “so that they can evaluate the information to determine the extent of any amendments to their [infringement contentions].” Dkt. No. 105 at 3. Berkeley Lights objects to producing discovery regarding products that are not accused of infringement. Id. at 6. The Court denies Plaintiffs’ request for this discovery. Not only is the 20k chip product not accused, but Plaintiffs also articulate no basis for their belief that the product infringes one or more claims of a patent-in-suit. See, e.g., Monolithic Power Sys. v. Silergy Corp., No. 14-01745- VC (KAW), 2015 WL 5897719
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ABCELLERA BIOLOGICS INC, et al., Case No. 20-cv-08624-LHK (VKD) 20-cv-08626-LHK (VKD) Plaintiffs, 20-cv-08627-LHK (VKD)
v. ORDER RE JULY 21, 2021 DISCOVERY DISPUTE Re: Dkt. No. 105 Defendant.
Plaintiffs AbCellera Biologics, Inc. and The University of British Columbia (collectively, “Plaintiffs”) and defendant Berkeley Lights, Inc. (“Berkeley Lights”) ask the Court to resolve their dispute concerning Plaintiffs’ document requests to Berkeley Lights. Dkt. No. 105.1 The Court finds this dispute suitable for resolution without oral argument. Civil L.R. 7-1(b). For the reasons explained below, the Court grants in part and denies in part Plaintiffs’ request for an order compelling Berkeley Lights to produce responsive documents. In these consolidated actions, Plaintiffs contend that Berkeley Lights infringes several patents relating to the use of microfluidic devices for assays in the discovery of antibodies for the treatment of disease, and methods for isolating antibody sequences of interest. See Dkt. No. 98 at 2. This dispute concerns Plaintiffs’ requests for production of documents to Berkeley Lights. The parties’ joint submission addresses four categories of documents requests: (1) documents concerning the operation and use of the accused products, (2) documents related to Berkeley Lights’ non-infringement, invalidity, and unenforceability defenses, (3) a single document concerning a product that is not accused, and (4) documents relating to damages. A party may obtain discovery of any matter that is relevant to a claim or defense and that is “proportional to the needs of case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). The parties dispute whether the document discovery Plaintiffs seek is relevant and/or proportional to the needs of the case. A. Plaintiffs’ Requests for Production Nos. 9, 10, 13-17, and 20 Plaintiffs’ Requests for Production Nos. 9, 10, 13-17, and 20 are generally directed to technical documents describing the operations, functions, and uses of the accused products. Berkeley Lights objects to the production of technical documents that are non-final drafts or that exceed the requirements of Patent Local Rule 3-4(a). As an initial matter, Patent Local Rule 3-4(a) does not require (as Plaintiffs contend) that an accused infringer produce “any and all documents” that describe the operation of the accused products, but only documents “sufficient to show” such operation. See N.D. Cal. Patent L.R. 3- 4(a). However, this rule sets requirements for early disclosure of information in a patent case. It does not limit or preclude the discovery of additional documents concerning the operation of the accused products. See N.D. Cal. Patent L.R. 2-5. Further, while nothing in the Patent Local Rules or the Federal Rules of Civil Procedure bars the discovery of draft technical documents, it is not self-evident that discovery of all drafts of all technical documents that describe the operation, function, and use of an accused product is relevant and proportional to the needs of these cases. Absent further explanation regarding the need for discovery of interim drafts, the Court will not require Berkeley Lights to produce such drafts. Berkeley Lights may not limit its production to at the time they were prepared (whether marked “final” or not), even if they were later superseded or updated. The parties have chosen to submit their dispute regarding these document requests at a high level of generality. The Court is unable to discern if there is some particular documentation or further detail that Plaintiffs require in order to understand that operations, functions, and uses of the accused products. If the parties require more specific relief from the Court, they will need to confer further before seeking additional relief and must explain their dispute in more detail. B. Plaintiffs’ Requests for Production Nos. 25 and 32-34 Plaintiffs’ Requests for Production Nos. 25, 32, and 34, collectively, ask for documents that “support,” “contradict,” “refute,” “affect,” “limit,” “bear on,” “concern,” or “are otherwise related to” infringement, validity, enforceability, or interpretation of the asserted claims. Berkeley Lights objects that these requests are overly broad and ambiguous because they require Berkeley Lights to determine, for example, whether a document “supports” or “contradicts” or merely “concerns” Plaintiffs’ or its own positions on infringement, validity, enforceability, or claim construction. While Plaintiffs are correct that Berkeley Lights may not limit its production to documents favorable to its own positions, the Court agrees with Berkeley Lights that it is difficult to discern and comply with the “full scope” of a request that asks for documents that “affect,” “concern,” “bear on,” or “are otherwise related to” the subject matter of the request. Berkeley Lights should be able to identify non-privileged documents in its possession that, for example, discuss the accused products or the prior art, and it must produce those documents that support its positions on infringement or validity, as well as those that tend to contradict those positions. However, to the extent these requests require subjective judgments about which documents are responsive—i.e., those that “affect,” “limit,” “bear on,” “concern,” or “are otherwise related to” particular subject matter—the Court agrees that they are ambiguous. Accordingly, Berkeley Lights must produce documents responsive to Requests for Production Nos. 25, 32, and 34 that support or contradict its positions with respect to the subject matter Lights to produce documents that relate in some unspecified way to that subject matter. Plaintiffs’ Request for Production No. 33 asks for documents “concerning the level of ordinary skill in the art, or a person of ordinary skill in the art, for each of the Patents-in-Suit.” Defining the level of ordinary skill in the art of the field(s) of the claimed invention(s) is necessary for purposes of claim construction, Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc), and the Court expects both sides will brief the issue to the Court. To the extent Berkeley Lights has in its possession non-privileged documents that describe or reflect the level of ordinary skill in the relevant art or the characteristics of a person having ordinary in skill in the art, it must produce those documents without delay. C. Plaintiffs’ Request for Production No. 13: OptoSelect 20k Chip Product Insert Plaintiffs ask the Court to order Berkeley Lights to produce a single document, the OptoSelect 20k Chip Product Insert, which they contend is responsive to at least Request for Production No. 13. Plaintiffs have not identified this chip as an accused product, but they ask for this document “so that they can evaluate the information to determine the extent of any amendments to their [infringement contentions].” Dkt. No. 105 at 3. Berkeley Lights objects to producing discovery regarding products that are not accused of infringement. Id. at 6. The Court denies Plaintiffs’ request for this discovery. Not only is the 20k chip product not accused, but Plaintiffs also articulate no basis for their belief that the product infringes one or more claims of a patent-in-suit. See, e.g., Monolithic Power Sys. v. Silergy Corp., No. 14-01745- VC (KAW), 2015 WL 5897719, at *3 (N.D. Cal. Oct. 9, 2015) (requiring plaintiff to explain why it believes the unaccused product infringes as a condition for obtaining discovery) (citing Infineon Techs. AG v. Volterra Semiconductor Corp., No. C 11-6239 MMC (DMR), 2012 WL 6184394, at *3 (N.D. Cal. Dec. 11, 2012). D. Plaintiffs’ Requests for Production Nos. 47, 68, 70, and 74-76 Plaintiffs’ Requests for Production Nos. 68, 70, and 74-76 ask for documents relevant to damages, such as licenses for technology used in the accused products, valuations of the patents- in-suit, and Berkeley Lights’s calculation of damages. Berkeley Lights does not object to discovery.” Dkt. No. 105 at 6. Berkeley Lights does not say when it plans to produce responsive documents. With respect to Requests for Production Nos. 68 (licensing) and 70 (valuation), Berkeley Lights must produce responsive documents in its possession without delay and without regard to the schedule for disclosure of damages contentions. Requests for Production Nos. 74-76 refer to documents supporting Berkeley Lights’s damages contentions. Once Berkeley Lights has disclosed its responsive contentions, as required by Patent Local Rule 3-9, it shall produce all documents supporting those responsive contentions within 14 days. The presiding judge has set November 12, 2021 as the date for substantial completion of document discovery. Dkt. No. 70 at 3. Berkeley Lights must produce any additional documents on which it intends to rely in support of its damages case by that date. Request for Production No. 47 asks for documents “relating to Berkeley’s communications with any stock analyst, investor or potential investor concerning the Beacon.” Berkeley Lights does not dispute that these documents are relevant, but objects to the timing of production based on its contention that responsive documents will be included in later-scheduled email discovery. Plaintiffs argue that responsive documents are likely to be found in transcripts of investor or analyst calls, slide presentations, and call notes that are likely maintained in central files, not custodial email. With respect to Request for Production No. 47, Berkeley Lights must identify the central repository most likely to contain responsive documents and search it for communications, which it shall then produce to Plaintiffs. Berkeley Lights need not search custodial email for responsive documents at this time but may delay that search and production until the parties’ later-scheduled email discovery. The Court grants in part and denies in part Plaintiffs’ request for an order compelling Berkeley Lights to produce documents responsive to Plaintiffs’ Requests for Production Nos. 9, 10, 13-17, 20, 25, 32, 34, 47, and 74-76; grants Plaintiffs’ request for an order compelling 1 68, and 70; and denies Plaintiffs’ request for an order compelling Berkeley Lights to produce the 2 OptoSelect 20k Chip Product Insert. 4 Dated: August 2, 2021 5
VIRGINIA K. DEMARCH 7 United States Magistrate Judge 8 9 10 11 a 12
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