1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ABCELLERA BIOLOGICS INC, et al., Case No. 20-cv-08624-JST
8 Plaintiffs, ORDER DENYING DEFENDANT’S 9 v. MOTION TO MODIFY SCHEDULING ORDER AND FOR LEAVE TO FILE 10 BRUKER CELLULAR ANALYSIS, INC., AMENDED PLEADING 11 Defendant. Re: ECF No. 358
12 13 Pending before the Court is Defendant Bruker Cellular Analysis, Inc.’s motion to modify 14 scheduling order and for leave to file amended pleading. ECF No. 358. The Court will deny the 15 motion. 16 I. BACKGROUND 17 The present case is a consolidated action incorporating three patent infringement cases 18 brought by Plaintiffs AbCellera Biologics, Inc. and The University of British Columbia in the 19 United States District Court for the District of Delaware in the summer of 2020, which were 20 transferred to this District and consolidated into the instant action. See ECF Nos. 26, 70. 21 Plaintiffs accuse Bruker Cellular of infringing seven patents: U.S. Patent Nos. 10,087,408 (the 22 “’408 Patent”); 10,421,936 (the “’936 Patent”); 10,738,270 (the “’270 Patent”); 10,775,376 (the 23 “’376 Patent”); 10,697,962 (the “’962 Patent”); 10,775,377 (the “’377 Patent”); and 10,775,378 24 (the “’378 Patent”).1 25 Pursuant to the Court’s scheduling order, the deadline to amend pleadings was October 20, 26
27 1 Plaintiffs initially asserted fifteen patents but “reduced the number of asserted claims and 1 2023, ECF No. 154, and the deadline for fact discovery was April 21, 2025, ECF No. 313. Expert 2 discovery is set to close on July 23, 2025, summary judgment and Daubert motions are due on 3 August 21, 2025, and trial is set to begin on January 26, 2026. ECF No. 313 at 7–8. 4 II. LEGAL STANDARD 5 Requests to modify a scheduling order made after the Court has set a timetable for 6 amending the pleadings are governed by Federal Rule of Civil Procedure 16. Coleman v. Quaker 7 Oats Co., 232 F.3d 1271, 1294 (9th Cir. 2000). Rule 16(b)(4) requires “good cause” and the 8 consent of the Court to amend a scheduling order. Fed. R. Civ. P. 16(b)(4). “A court’s evaluation 9 of good cause is not coextensive with an inquiry into the propriety of the amendment under [] Rule 10 15.” Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992) (citation omitted). 11 “Unlike Rule 15(a)’s liberal amendment policy which focuses on the bad faith of the party seeking 12 to interpose an amendment and the prejudice to the opposing party, Rule 16(b)’s ‘good cause’ 13 standard primarily considers the diligence of the party seeking the amendment.” Id.; see also 14 Zivkovic v. S. Cal. Edison Co., 302 F.3d 1080, 1088 (9th Cir. 2002) (“The pretrial schedule may 15 be modified if it cannot reasonably be met despite the diligence of the party seeking the 16 extension.”) (quotation and citation omitted). “Although the existence or degree of prejudice to 17 the party opposing the modification might supply additional reasons to deny a motion, the focus of 18 the inquiry is upon the moving party’s reasons for seeking modification.” Johnson, 975 F.2d at 19 609. “If that party was not diligent, the inquiry should end.” Id. 20 If the moving party demonstrates good cause to modify the scheduling order, the Court 21 must then determine whether to grant leave to amend the complaint under Federal Rule of Civil 22 Procedure 15(a)(2). See Oracle Am., Inc. v. Hewlett Packard Enter. Co., No. 16-CV-01393-JST, 23 2017 WL 3149297, at *3 (N.D. Cal. July 25, 2017). Rule 15(a)(2) instructs that a “court should 24 freely give leave [to amend] when justice so requires.” Fed. R. Civ. P. 15(a)(2). “The Supreme 25 Court [has] identified four factors relevant to whether a motion for leave to amend pleadings 26 should be denied: undue delay, bad faith or dilatory motive, futility of amendment, and prejudice 27 to the opposing party.” United States v. Webb, 655 F.2d 977, 980 (9th Cir. 1981) (citing Foman v. 1 Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003) (quoting Owens v. Kaiser 2 Found. Health Plan, Inc., 244 F.3d 708, 712 (9th Cir. 2001)). Generally, a court should determine 3 whether to grant leave indulging “all inferences in favor of granting the motion.” Griggs v. Pace 4 Am. Grp., Inc., 170 F.3d 877, 880 (9th Cir. 1999). 5 III. DISCUSSION 6 Defendant seeks to amend its answer to add an affirmative defense and counterclaim of 7 inequitable conduct with respect to U.S. Patent No. 10,704,018 (the “’018 Patent”) and the ’408, 8 ’936, and ’270 Patents (collectively, the “’408 Patent Family”).2 Defendant alleges that “named 9 inventors Véronique Lecault, Carl Hansen, and James Piret intentionally withheld from the Patent 10 Office two presentations that Dr. Lecault [] made to an organization called the Stem Cell Network, 11 a Canadian government-supported non-profit whose members include research groups at 12 universities and laboratories all over Canada.” Mot. at 6. More specifically, Defendant alleges 13 that (1) at the November 7, 2008 Stem Cell Network Annual General Meeting, Dr. Lecault 14 presented “a slide deck titled ‘Assessment of Hematopoietic Stem Cell Population Heterogeneity 15 by High-throughput Clonal Expansion in Microfluidic Devices[,]’” (the “SCN Annual General 16 Meeting Presentation”) and (2) at the June 28, 2009 Stem Cell Network Cord Blood Meeting, Dr. 17 Lecault presented “a slide deck titled ‘High-throughput Culture of Hematopoietic Cells in 18 Microfluidic Devices’” (the “SCN Cord Blood Meeting Presentation”) (collectively, “SCN 19 Presentations”). Id. at 2. Defendant alleges that the SCN Presentations “disclose[d] claimed 20 inventions in the ’408 [P]atent [F]amily and were presented on a non-confidential basis more than 21 one year before July 7, 2010 (the earliest claimed priority date in the ’408 [P]atent [F]amily),” and 22 it was therefore “inequitable conduct not to disclose the [SCN] Presentations to the Patent Office.” 23 Id. at 6. 24 A. “Good Cause” Under Rule 16 25 The deadline to amend pleadings has passed, and Defendant’s motion is therefore 26 governed by Rule 16. See Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 607–08 (9th Cir. 27 1 1992) (“Once the district court had filed a pretrial scheduling order pursuant to Federal Rule of 2 Civil Procedure 16 which established a timetable for amending pleadings that rule’s standards 3 controlled.”). “The initial question under Rule 16 is whether [Defendant] has established ‘good 4 cause’ for modifying the scheduling order.” TV Interactive Data Corp. v. Sony Corp., No. C 10- 5 0475 PJH, 2012 WL 3791414, at *3 (N.D. Cal. Aug. 31, 2012). “In making that determination, 6 the court should focus on the reasonable diligence of the moving party.” Id.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ABCELLERA BIOLOGICS INC, et al., Case No. 20-cv-08624-JST
8 Plaintiffs, ORDER DENYING DEFENDANT’S 9 v. MOTION TO MODIFY SCHEDULING ORDER AND FOR LEAVE TO FILE 10 BRUKER CELLULAR ANALYSIS, INC., AMENDED PLEADING 11 Defendant. Re: ECF No. 358
12 13 Pending before the Court is Defendant Bruker Cellular Analysis, Inc.’s motion to modify 14 scheduling order and for leave to file amended pleading. ECF No. 358. The Court will deny the 15 motion. 16 I. BACKGROUND 17 The present case is a consolidated action incorporating three patent infringement cases 18 brought by Plaintiffs AbCellera Biologics, Inc. and The University of British Columbia in the 19 United States District Court for the District of Delaware in the summer of 2020, which were 20 transferred to this District and consolidated into the instant action. See ECF Nos. 26, 70. 21 Plaintiffs accuse Bruker Cellular of infringing seven patents: U.S. Patent Nos. 10,087,408 (the 22 “’408 Patent”); 10,421,936 (the “’936 Patent”); 10,738,270 (the “’270 Patent”); 10,775,376 (the 23 “’376 Patent”); 10,697,962 (the “’962 Patent”); 10,775,377 (the “’377 Patent”); and 10,775,378 24 (the “’378 Patent”).1 25 Pursuant to the Court’s scheduling order, the deadline to amend pleadings was October 20, 26
27 1 Plaintiffs initially asserted fifteen patents but “reduced the number of asserted claims and 1 2023, ECF No. 154, and the deadline for fact discovery was April 21, 2025, ECF No. 313. Expert 2 discovery is set to close on July 23, 2025, summary judgment and Daubert motions are due on 3 August 21, 2025, and trial is set to begin on January 26, 2026. ECF No. 313 at 7–8. 4 II. LEGAL STANDARD 5 Requests to modify a scheduling order made after the Court has set a timetable for 6 amending the pleadings are governed by Federal Rule of Civil Procedure 16. Coleman v. Quaker 7 Oats Co., 232 F.3d 1271, 1294 (9th Cir. 2000). Rule 16(b)(4) requires “good cause” and the 8 consent of the Court to amend a scheduling order. Fed. R. Civ. P. 16(b)(4). “A court’s evaluation 9 of good cause is not coextensive with an inquiry into the propriety of the amendment under [] Rule 10 15.” Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992) (citation omitted). 11 “Unlike Rule 15(a)’s liberal amendment policy which focuses on the bad faith of the party seeking 12 to interpose an amendment and the prejudice to the opposing party, Rule 16(b)’s ‘good cause’ 13 standard primarily considers the diligence of the party seeking the amendment.” Id.; see also 14 Zivkovic v. S. Cal. Edison Co., 302 F.3d 1080, 1088 (9th Cir. 2002) (“The pretrial schedule may 15 be modified if it cannot reasonably be met despite the diligence of the party seeking the 16 extension.”) (quotation and citation omitted). “Although the existence or degree of prejudice to 17 the party opposing the modification might supply additional reasons to deny a motion, the focus of 18 the inquiry is upon the moving party’s reasons for seeking modification.” Johnson, 975 F.2d at 19 609. “If that party was not diligent, the inquiry should end.” Id. 20 If the moving party demonstrates good cause to modify the scheduling order, the Court 21 must then determine whether to grant leave to amend the complaint under Federal Rule of Civil 22 Procedure 15(a)(2). See Oracle Am., Inc. v. Hewlett Packard Enter. Co., No. 16-CV-01393-JST, 23 2017 WL 3149297, at *3 (N.D. Cal. July 25, 2017). Rule 15(a)(2) instructs that a “court should 24 freely give leave [to amend] when justice so requires.” Fed. R. Civ. P. 15(a)(2). “The Supreme 25 Court [has] identified four factors relevant to whether a motion for leave to amend pleadings 26 should be denied: undue delay, bad faith or dilatory motive, futility of amendment, and prejudice 27 to the opposing party.” United States v. Webb, 655 F.2d 977, 980 (9th Cir. 1981) (citing Foman v. 1 Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003) (quoting Owens v. Kaiser 2 Found. Health Plan, Inc., 244 F.3d 708, 712 (9th Cir. 2001)). Generally, a court should determine 3 whether to grant leave indulging “all inferences in favor of granting the motion.” Griggs v. Pace 4 Am. Grp., Inc., 170 F.3d 877, 880 (9th Cir. 1999). 5 III. DISCUSSION 6 Defendant seeks to amend its answer to add an affirmative defense and counterclaim of 7 inequitable conduct with respect to U.S. Patent No. 10,704,018 (the “’018 Patent”) and the ’408, 8 ’936, and ’270 Patents (collectively, the “’408 Patent Family”).2 Defendant alleges that “named 9 inventors Véronique Lecault, Carl Hansen, and James Piret intentionally withheld from the Patent 10 Office two presentations that Dr. Lecault [] made to an organization called the Stem Cell Network, 11 a Canadian government-supported non-profit whose members include research groups at 12 universities and laboratories all over Canada.” Mot. at 6. More specifically, Defendant alleges 13 that (1) at the November 7, 2008 Stem Cell Network Annual General Meeting, Dr. Lecault 14 presented “a slide deck titled ‘Assessment of Hematopoietic Stem Cell Population Heterogeneity 15 by High-throughput Clonal Expansion in Microfluidic Devices[,]’” (the “SCN Annual General 16 Meeting Presentation”) and (2) at the June 28, 2009 Stem Cell Network Cord Blood Meeting, Dr. 17 Lecault presented “a slide deck titled ‘High-throughput Culture of Hematopoietic Cells in 18 Microfluidic Devices’” (the “SCN Cord Blood Meeting Presentation”) (collectively, “SCN 19 Presentations”). Id. at 2. Defendant alleges that the SCN Presentations “disclose[d] claimed 20 inventions in the ’408 [P]atent [F]amily and were presented on a non-confidential basis more than 21 one year before July 7, 2010 (the earliest claimed priority date in the ’408 [P]atent [F]amily),” and 22 it was therefore “inequitable conduct not to disclose the [SCN] Presentations to the Patent Office.” 23 Id. at 6. 24 A. “Good Cause” Under Rule 16 25 The deadline to amend pleadings has passed, and Defendant’s motion is therefore 26 governed by Rule 16. See Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 607–08 (9th Cir. 27 1 1992) (“Once the district court had filed a pretrial scheduling order pursuant to Federal Rule of 2 Civil Procedure 16 which established a timetable for amending pleadings that rule’s standards 3 controlled.”). “The initial question under Rule 16 is whether [Defendant] has established ‘good 4 cause’ for modifying the scheduling order.” TV Interactive Data Corp. v. Sony Corp., No. C 10- 5 0475 PJH, 2012 WL 3791414, at *3 (N.D. Cal. Aug. 31, 2012). “In making that determination, 6 the court should focus on the reasonable diligence of the moving party.” Id. “In evaluating 7 diligence for the purposes of Rule 16(b), [] courts generally consider both when the relevant facts 8 were learned and whether the moving party was diligent in seeking discovery of those facts.” 9 Entangled Media, LLC v. Dropbox Inc., 348 F.R.D. 649, 654 (N.D. Cal. 2025). 10 Plaintiffs produced the SCN Presentations on August 15, 2024, but Defendant argues it 11 “did not discover and could not have discovered the factual basis for the amendment until April 12 21, 2025 . . . .” Mot. at 10. Defendant argues that because “Plaintiffs designated the presentations 13 [] ‘CONFIDENTIAL’ under the protective order . . . [Defendant] had no reason to believe the 14 presentations were not confidential . . . .” Id. at 11. According to Defendant, it was only after Dr. 15 Lecault’s April 7, 2025 deposition, during which she was unable to confirm the confidential status 16 of the presentations, that it “ha[d] reason to question whether the [SCN] Presentations . . . were not 17 actually confidential[] and might form a basis for alleging inequitable conduct.” Id.3 On April 13, 18 2025, Defendant challenged Plaintiffs’ confidentiality designation of the SCN Presentations. Id. at 19 15. In response to Defendant’s challenge, Plaintiffs produced “Stem Cell Network agreements 20 that included confidentiality provisions” on April 21, 2025.4 Id. at 12. Defendant argues that the 21 Stem Cell Network agreements “confirm[ed] that the [SCN] Presentations were not confidential.” 22 Id. at 13. In essence, Defendant argues it could not have discovered the factual basis for its 23 amendment until Plaintiffs produced the Stem Cell Network agreements on April 21, 2025, and it 24 acted diligently in seeking amendment after April 21, 2025. See id. at 15 (“[Defendant] only had 25 3 According to Defendant, Dr. Lecault “testified [] she could not remember whether the Stem Cell 26 Network imposed confidentiality obligations on the attendees of its annual general meetings, the audience for Dr. Lecault’s November 2008 Presentation.” Id. 27 4 Plaintiffs produced three agreements: (1) 2001 Stem Cell Network NCE Network Agreement, 1 reason to suspect that the [SCN] Presentations were not in fact confidential after the April 7, 2025 2 || deposition of their author and presenter, followed that up with a challenge to Plaintiffs’ 3 ‘CONFIDENTIAL’ designations on April 13, received Plaintiffs’ production of Stem Cell 4 || Network agreements on April 21 and discovered they confirmed the Stem Cell Network 5 Presentations were not in fact confidential, first approached Plaintiffs on May 3 for their consent 6 to amend... and now files the instant motion on May 15, a little over a month after the factual 7 || basis for inequitable conduct was discovered.”’). 8 The Court finds Defendant was not diligent in seeking discovery of the facts underlying its 9 amendment. It is undisputed that Plaintiffs produced the SCN Presentations on August 15, 2024. 10 || Jd. at 6. Yet Defendant did not make further inquiry or seek additional discovery related to the 11 SCN Presentations until Dr. Lecault’s April 7, 2025 deposition. Mot. at 11. The only explanation 12 || Defendant offers for its eight-month delay is that Plaintiffs designated the presentations
13. || “CONFIDENTIAL” under the protective order. /d. But it is unclear to the Court why Plaintiffs’
14 || confidentiality designation prevented Defendant from seeking additional discovery, particularly 15 when the face of the presentations clearly name the presenter—Dr. Lecault—and the date of the a 16 presentation—November 7, 2008 and June 28, 2009.°
Be es | | Stem Cell Network Annual General Meeting S 18 | | Yel ete: ilefels Wi =taralat4 Assessment of Hematopoietic Stem Cell | 19 Population Heterogeneity by High-throughput Clonal Expansion in High-throughput Culture of Hematopoietic Cells in 20 Microfluidic Devices | Microfluidic Devices 21 Véronique Lecault Véronique Lecault 22 Connershra: Connie. Even, □□ Duurerion ae Olimar Gane. BA: ans eae November 7™, 2008 as 23 | | Eee) whe | June 28", 2009 24 . . . . Dkt. No. 357-3 at 135, 159. Defendant’s proffered justification is further undermined by the fact 25 that “neither presentation was natively marked ‘confidential.’” ECF No. 370-3 (“Opp.”) at 5. 26 27 28 > Defendant itself recognizes that the SCN Presentations ‘on their face, were presented more than one year before the provisional application for the °408 [Patent] [FJamily.” Mot. at 11.
1 Defendant argues that it had no reason to question the confidentiality of the SCN 2 Presentations until Dr. Lecault’s deposition. But the fact that Defendant did not depose Dr. 3 Lecault until April 7, 2025 further exemplifies Defendant’s lack of diligence. Although Plaintiffs 4 requested Dr. Lecault be deposed on April 7, Mot. at 11, Defendant agreed to that request. 5 Defendant could have sought to depose Dr. Lecault sooner but chose not to. Additionally, even if 6 the parties were unable to accommodate an earlier deposition for Dr. Lecault, Defendant could 7 have sought to confirm the confidentiality of the SCN Presentations through other means of 8 discovery. In fact, as Plaintiffs note, in the eight months that elapsed between the production of 9 the SCN Presentations and the close of fact discovery, Defendant “served numerous discovery 10 requests for additional production and interrogatories, including on October 2, 2024, October 8, 11 2024, December 2, 2024 and March 22, 2025.” Opp. at 6. Defendant also “served its 30(b)(6) 12 notice on January 28, 2025,” sought “new third party discovery as late as April 15, 2025[,]” and 13 “amended its invalidity contentions on December 12, 2024 . . . .” Id. But at no point during these 14 eight months did Defendant seek additional discovery regarding the SCN Presentations. The 15 record suggests that Defendant “did little—if anything—to ensure that the discovery it needed to 16 support the proposed counterclaims would be completed in a timely manner.” Tessera, Inc. v. 17 Sony Corp., No. 5:11-CV-04399 EJD, 2013 WL 97794, at *3 (N.D. Cal. Jan. 7, 2013). Courts 18 considering similar facts have denied leave to amend based on the moving party’s lack of 19 diligence in seeking discovery. See Hayward Prop., LLC v. Commonwealth Land Title Ins. Co., 20 No. 17-CV-06177 SBA, 2021 WL 4927012, at *5 (N.D. Cal. Sept. 28, 2021) (“However, the 21 motion for leave to amend does not show (or attempt to show) that [p]laintiff acted with diligence 22 in pursuing discovery regarding [defendant’s] alleged bad faith.”); TV Interactive Data Corp. v. 23 Sony Corp., No. C 10-0475 PJH, 2012 WL 3791414, at *4 (N.D. Cal. Aug. 31, 2012) (denying 24 defendant’s motion to for leave to add an inequitable conduct defense as defendant’s “papers 25 ma[d]e clear that [defendant] had been aware of the[] prior art reference for some time”). 26 Accordingly, the Court finds Defendant was not diligent in seeking discovery of the facts 27 underlying its amendment. Defendant has not established good cause under Rule 16, and as such, 1 (“If th[e] [moving] party was not diligent, the inquiry should end.”’). 2 CONCLUSION 3 For the foregoing reasons, the Court denies Defendant’s motion to modify scheduling 4 || order and for leave to file amended pleading. 5 IT IS SO ORDERED.
6 || Dated: July 18, 2025 7 JON S. TIGA g United States District Judge 9 10 11 a 12
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