AbCellera Biologics Inc. v. Berkeley Lights, Inc.

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

(Consolidated)

8 Plaintiffs,

ORDER GRANTING-IN-PART AND

9 v. DENYING-IN-PART PLAINTIFFS'

MOTIONS TO DISMISS AND STRIKE

10 BRUKER CELLULAR ANALYSIS. F/K/A CERTAIN AFFIRMATIVE DEFENSES

BERKELEY LIGHTS, INC., AND COUNTERCLAIMS FROM

11 DEFENDANT'S ANSWER AND

Defendant. SECOND AMENDED

12 COUNTERCLAIMS

13 Re: ECF No. 115

14 Pending before the Court are three motions by Plaintiffs AbCellera Biologics, Inc.

15 (“AbCellera”) and the University of British Columbia’s (“UBC”) (collectively, “Plaintiffs”) to

16 dismiss and strike certain affirmative defenses and counterclaims from Defendant Bruker Cellular

17 Analysis, formerly known as Berkeley Lights, Inc.’s (“Defendant” or “Berkeley Lights”) Answer

18 and Second Amended Counterclaims in this case, Case No. 3:20-CV-08626 (the “8626 Case”),

19 and Case No. 3:20-CV-08627 (the “8627 Case). As the three cases are now consolidated, the

20 Court considers the three motions to dismiss together. The Court will grant Plaintiffs’ motions to

21 dismiss in part and deny them in part.

22 I. BACKGROUND

23 AbCellera is a biotechnology company that discovers antibodies for the prevention and

24 treatment of disease. ECF No. 164 ¶ 18. Together with UBC, AbCellera patented the use of

25 microfluidic devices for high-throughput single-cell secretion assays that can be applied to

26 antibody discovery and cell clone selection. Id. ¶ 19. In these three consolidated cases, Plaintiffs

27 assert that certain of Defendant’s optofluidic systems and services infringe fifteen of their patents

1 U.S. Patent No. 10,274,494 (“the ’494 patent”), 10,466,241 (“the ’241 patent”), 10,578,618 (“the

2 ’618 patent”), 10,697,962 (“the ’962 patent”), 10,775,376 (“the ’376 patent”), 10,775,377 (“the

3 ’377 patent”), 10,775,378 (“the ’378 patent”), 10,718,768 (“the ’768 patent”), 10,746,737 (“the

4 ’737 patent”), and 10,753,933 (“the ’933 patent”) (collectively, the “’812 patent family”), which

5 all relate to methods of assaying cellular binding interactions. ECF No. 164 ¶¶ 20-24, 28-31, 33-

6 35. Each of the patents in the ’812 patent family are direct or indirect continuations of the ’812

7 patent, and each is terminally disclaimed over the other patents in the family. ECF No. 106 ¶ 160.

8 Additionally, Plaintiffs have also asserted United States Patent Nos. 10,087,408 (“the ’408

9 patent”), 10,421,936 (“the ’936 patent”), 10,704,018 (“the ’018 patent”), and 10,738,270 (“the

10 ’270 patent”) (collectively, the “’408 patent family”), which are directed to a system and method

11 for microfluidic cell culture. ECF No. 164 ¶¶ 25-27, 32. As relevant here, AbCellera’s CEO, Carl

12 L.G. Hansen, is a named inventor on all of the Asserted Patents, while Daniel J. Da Costa is a

13 named inventor of all the patents in the ’812 patent family. Id. ¶¶ 20-35. UBC owns the Asserted

14 Patents, and AbCellera is its exclusive licensee. Id.

15 In addition to the Asserted Patents, Plaintiffs also hold United States Patent Nos. 9,188,593

16 (the “’593 patent”), 9,234,240 (the “’240 patent”), 9,290,811 (the “’811 patent”), 10,196,689 (the

17 “’689 patent”), 9,909,180 (the “’180 patent”), and 10,058,839 (the “’839 patent”) (collectively, the

18 “Non-Asserted Patents”). Beginning in late 2019, AbCellera contacted Berkeley Lights and at

19 least one of Berkeley Lights’ customers, “inviting” the recipients to review AbCellera’s “patent

20 portfolio,” which included the six Non-Asserted Patents as well as six of the Asserted Patents.

21 ECF No. 106 ¶¶ 17-29. In this correspondence, AbCellera stated that its patent portfolio

22 “cover[ed] single cell discovery that may be embodied in the Berkeley Lights Beacon™

23 Instrument” and that AbCellera “is willing to discuss potential licensing options.” ECF No. 106-8.

24 II. PROCEDURAL HISTORY

25 This is a consolidated action incorporating three patent infringement cases brought by

26 Plaintiffs in the United States District Court for the District of Delaware. As relevant here, in the

27 summer of 2020, AbCellera filed three patent litigation suits in the District of Delaware: this case,

1 alleging inequitable conduct, and moved to transfer all three cases to this District. ECF Nos. 10,

2 12. On December 7, 2020, the District of Delaware transferred all three cases to this District.

3 ECF No. 26. On December 23, 2020, Plaintiffs filed a motion to relate the three cases, ECF No.

4 38, which the Court granted on February 8, 2021. ECF No. 51. On March 11, 2021, the Court

5 consolidated the three cases, with this case designated as the lead case. ECF No. 70.

6 Before the cases were related, Plaintiffs filed three “substantively identical” motions to

7 dismiss and to strike certain counterclaims and affirmative defenses. E.g., ECF No. 40 at 1 (filed

8 on Dec. 28, 2020) (noting “substantively identical versions of this motion”). On February 22,

9 2021, Defendant filed a motion to amend its answer and counterclaims, seeking leave to amend its

10 inequitable conduct counterclaim and assert two new unfair competition counterclaims under

11 Lanham Act § 43(a) and California Business and Professions Code §§ 17200, et seq. ECF No. 53.

12 On July 1, 2021, the Court granted Defendant’s motion to amend and denied as moot Plaintiff’s

13 motions to dismiss and to strike certain counterclaims and affirmative defenses. ECF No. 98 (the

14 “July 1, 2021 Order”). In its order, the Court cautioned that “Defendant may not add new

15 affirmative defenses, counterclaims, or parties without a stipulation or leave of the Court” and that

16 “deficient counterclaims and affirmative defenses will be dismissed with prejudice if, on review of

17 the merits, the Court finds that Defendant’s second amended pleadings have failed to cure the

18 deficiencies identified in this Order and in Plaintiff’s instant motion to dismiss[].” Id. at 12.

19 Consistent with the Court’s order, Defendant filed its Answer and Second Amended

20 Counterclaims on July 22, 2021. ECF No. 106; see also 8626 Case ECF No. 73, 8627 Case ECF

21 No. 75. In this case, Defendant asserted two new unfair competition counterclaims under Lanham

22 Act § 43(a) and California Business and Professions Code §§ 17200, et seq. In all three cases,

23 Defendant also amended its inequitable conduct counterclaims as to the ’812 patent family, on

24 grounds that during prosecution of the ’812 patent family, the inventors and/or patent prosecution

25 counsel intentionally withheld from the PTO (1) U.S. Published Patent Application 2004/0229349

26 (“Daridon”), (2) U.S. Published Patent Application 2011/0281764 (“Love”) and associated patents

27 and articles, (3) U.S. Published Patent Application 2004/0067482 (“Yasuda”), (4) U.S. Published

1 automated, microfluidic cell culture system,” Anal. Chem. 79, 8557-8563 (2007) (“Gómez-

2 Sjöberg”), and (6) Lee et al., “Nanoliter scale microbioreactor array for quantitative cell biology,”

3 Biotechnol. Bioeng. 94, 5-14 (2005) (“Lee”). See ECF No. 106; see also 8626 Case ECF No. 73,

4 8627 Case ECF No. 75. Additionally, in the 8626 Case and 8627 Case, Defendant alleged

5 inequitable conduct as to the ’408 patent family, on grounds that during prosecution of the ’812

6 patent family, the inventors and/or patent prosecution counsel (1) intentionally withheld from the

7 PTO PCT Application WO 2005/069980 (“Balagadde”), (2) made intentional misrepresentations

8 regarding Daridon, and (3) intentionally withheld from the PTO the ’812 patent family and

9 Hansen, C., “Microfluidic Measurement of Antibody-Antigen Binding Kinetics from Low-

10 Abundance Samples from Single Cells,” Anal. Chem. 82, 8671-8679 (2010) (“Hansen 2010”).

11 Plaintiffs then filed motions to dismiss Defendant’s counter-claims in all three cases. ECF

12 No. 115, see also 8626 Case ECF No. 74, 8627 Case ECF No. 76. Plaintiff’s motions in the 8626

13 Case and 8627 Case are substantively identical. As these cases have been consolidated, the Court

14 will rule as to all three motions in this order.1

15 III. LEGAL STANDARD

16 A. Motion to Dismiss

17 Federal Rule of Civil Procedure 8(a)(2) requires that a complaint contain “a short and plain

18 statement of the claim showing that the pleader is entitled to relief.” While a complaint need not

19 contain detailed factual allegations, facts pleaded by a plaintiff must be “enough to raise a right to

20 relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). To

21 survive a Rule 12(b)(6) motion to dismiss, a complaint must contain sufficient factual matter that,

22 when accepted as true, states a claim that is plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662,

23 678 (2009). “A claim has facial plausibility when the plaintiff pleads factual content that allows

24 the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”

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1 Plaintiffs subsequently filed an Amended Complaint in this lead case, consolidating all three

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complaints into one. Because “an amended complaint does not moot the counterclaims filed in the

answer to the original complaint,” Williams & Cochrane, LLP v. Rosette, No. 17-CV-01436-GPC-

27

MSB, 2020 WL 1939065, at *3 (S.D. Cal. Apr. 22, 2020), Defendant’s Second Amended

1 Id. While this standard is not a probability requirement, “where a complaint pleads facts that are

2 merely consistent with a defendant's liability, it stops short of the line between possibility and

3 plausibility of entitlement to relief.” Id. (internal quotation marks omitted). In determining

4 whether a plaintiff has met this plausibility standard, the Court must accept all factual allegations

5 in the complaint as true and construe the pleadings in the light most favorable to the plaintiff.

6 Knievel v. ESPN, 393 F.3d 1068, 1072 (9th Cir. 2005). The Court applies these same standards on

7 a motion to dismiss a defendant’s counter-claims, construing the pleadings in the light most

8 favorable to the pleading party. E.g., Tori Belle Cosms., LLC v. Meek, No. C-21-0066-RSL, 2023

9 WL 1991887, at *1 (W.D. Wash. Feb. 14, 2023); Conte v. Jakks Pac., Inc., No. 1:12-CV-00006-

10 LJO, 2012 WL 6115632, at *5 (E.D. Cal. Dec. 10, 2012).

11 Allegations of inequitable conduct sound in fraud, and thus a party pleading inequitable

12 conduct must plead the “circumstances constituting” the inequitable conduct with particularity

13 under Federal Rule of Civil Procedure 9(b). Exergen Corp. v. Wal-Mart Stores, 575 F.3d 1312,

14 1328 (Fed. Cir. 2009). “[T]o plead the ‘circumstances' of inequitable conduct with the requisite

15 ‘particularity’ under Rule 9(b), the pleading must identify the specific who, what, when, where,

16 and how of the material misrepresentation or omission committed before the PTO.” Id.; see also

17 Breville Pty Ltd. v. Storebound LLC, No. 12-CV-01783-JST, 2013 WL 1758742, at *3 (N.D. Cal.

18 Apr. 24, 2013). In contrast, “‘knowledge’ and ‘intent’ may be averred generally.” Exergen, 575

19 F.3d at 1328. However, “a pleading of inequitable conduct under Rule 9(b) must include

20 sufficient allegations of underlying facts from which a court may reasonably infer that a specific

21 individual (1) knew of the withheld material information or of the falsity of the material

22 misrepresentation, and (2) withheld or misrepresented this information with a specific intent to

23 deceive the PTO.” Id. at 1328–29.

24 B. Motion to Strike

25 Under Federal Rule of Civil Procedure 12(f), the Court “may strike from a pleading an

26 insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” Fed. R.

27 Civ. Proc. 12(f). The function of a motion to strike pursuant to Rule 12(f) is “to avoid the

1 those issues prior to trial.” Whittlestone, Inc. v. Handi–Craft Co., 618 F.3d 970, 973 (9th Cir.

2 2010) (citation omitted). Motions to strike “are generally disfavored because they are often used

3 as delaying tactics and because of the limited importance of pleadings in federal practice.” Rosales

4 v. Citibank, 133 F. Supp. 2d 1177, 1180 (N.D. Cal. 2001). In most cases, the Court should not

5 grant a motion to strike unless “the matter to be stricken clearly could have no possible bearing on

6 the subject of the litigation.” Platte Anchor Bolt, Inc. v. IHI, Inc., 352 F. Supp. 2d 1048, 1057

7 (N.D. Cal. April 19, 2004).

8 IV. ANALYSIS

9 A. Unfair Competition Counterclaims (Counterclaims IV & V)

10 Plaintiffs move to dismiss Defendant’s unfair competition counterclaims under Lanham

11 Act § 43(a) and California Business and Professions Code §§ 17200, et seq., on the grounds that

12 they are barred by the Noerr-Pennington doctrine. ECF No. 115 at 7-11. Plaintiffs additionally

13 move to dismiss Defendant’s state law unfair competition counterclaim as preempted by federal

14 law, and insufficiently pled under all three prongs of Section 17200. Id. at 11-14.

15 Plaintiffs first argue that Defendant’s unfair competition counterclaims, which are

16 predicated upon Plaintiffs’ pre-suit correspondence with Defendant and Defendant’s customers,

17 are barred under the Noerr-Pennington doctrine.2

18 The Noerr-Pennington doctrine shields entities from liability for actions that “use the

19 channels and procedures of state and federal agencies and courts to advocate their causes and

20 points of view respecting resolution of their business and economic interests vis-à-vis their

21 competitors.” Cal. Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508, 511 (1972); see also

22 Breville, 2013 WL 1758742, at *7 (“Noerr–Pennington immunity applies when an entity seeks

23 redress to the courts by pursuing litigation.”). The doctrine specifically “exempts bringing a

24 lawsuit . . . from antitrust liability.” Freeman v. Lasky, Haas & Cohler, 410 F.3d 1180, 1183 (9th

25 Cir. 2005) (citing Cal. Motor Transp. Co., 404 U.S. at 510). This immunity applies to common

26 law and statutory claims under state and federal law, including unfair competition claims under the

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1 Lanham Act and California’s Unfair Competition Law. See UCP Int'l Co. Ltd. v. Balsam Brands

2 Inc., 420 F. Supp. 3d 966, 984 (N.D. Cal. 2019) (dismissing claims under UCL and Lanham Act

3 as being barred by the Noerr-Pennington doctrine); Santana Prods., Inc. v. Bobrick Washroom

4 Equip., Inc., 249 F. Supp. 2d 463, 493 (M.D. Pa. 2003), aff’d in relevant part, 401 F.3d 123 (3d

5 Cir. 2005) (applying Noerr-Pennington doctrine to Lanham Act § 43(a) claims). “Conduct

6 incidental to a lawsuit, including a pre-suit demand letter, falls within the protection of the Noerr–

7 Pennington doctrine.” Theme Promotions, Inc. v. News Am. Mktg. FSI, 546 F.3d 991, 1007 (9th

8 Cir. 2008); see also Globetrotter Software, Inc. v. Elan Computer Grp., Inc., 362 F.3d 1367, 1377

9 (Fed. Cir. 2004) (Noerr-Pennington immunity applies to pre-suit communications alleging patent

10 infringement).

11 To avoid the application of Noerr-Pennington immunity, a claimant must demonstrate that

12 the lawsuit in question is a “sham” litigation. The Supreme Court has set forth the following two-

13 part definition of whether a litigation is a “sham”: (1) the lawsuit must be objectively meritless

14 such that “no reasonable litigant could realistically expect success on the merits” and (2) it must be

15 found that “the baseless lawsuit conceals ‘an attempt to interfere directly with the business

16 relationships of a competitor.’” Prof’l Real Estate Inv’rs, Inc. v. Columbia Pictures Indus., Inc.,

17 508 U.S. 49, 60-61 (1993). “Where a claim involves the right to petition governmental bodies

18 under Noerr–Pennington . . . we apply a heightened pleading standard.” Oregon Natural Res.

19 Council v. Mohla, 944 F.2d 531, 533 (9th Cir. 1991). “[I]n order to state a claim for relief . . . a

20 complaint must include allegations of the specific activities” defendant has engaged in that deprive

21 it of Noerr-Pennington’s protection. Franchise Realty Interstate Corp. v. San Francisco Local

22 Joint Executive Bd. of Culinary Workers, 542 F.2d 1076, 1082 (9th Cir. 1976).

23 Here, Defendant alleges that AbCellera engaged in unfair competition under state and

24 federal law through its pre-suit correspondence with Defendant and its customers. Specifically,

25 Defendant alleges that AbCellera sent letters asserting its “patent portfolio,” which included the

26 Non-Asserted Patents, for which AbCellera knew (or should have known) it had no colorable

27 claim of infringement as to any of Defendant’s products or services. Defendant further alleges

1 relationships. See, e.g., ECF No. 106 ¶¶ 241, 243, 253, 257. Thus, the question before the Court

2 is whether AbCellera’s act of sending pre-suit correspondence drawing attention to its patent

3 portfolio, which included patents for which no colorable claim of infringement could exist (1) was

4 sufficient to render the lawsuit objectively baseless such that no reasonable litigant could

5 realistically expect success on the merits and (2) concealed an attempt to interfere directly with

6 Defendant’s business relationships.

7 1. Objectively Baseless

8 The objective part of the definition of “sham” requires the Court to determine whether the

9 assertion of some baseless claims together with some that are potentially meritorious renders a

10 lawsuit based on those claims “objectively baseless.” The Court finds that it does not.

11 This is not the first time the Court has confronted this question. In Breville, this Court held

12 that, in a patent infringement case involving two asserted patents, the fact that one of the two

13 infringement claims was baseless did not render the lawsuit objectively baseless such that the

14 sham litigation exception to Noerr-Pennington applied. 2013 WL 1758742, at *8. As the Court

15 noted there, to fit within the sham litigation exception, “the lawsuit must be objectively baseless.”

16 Id. (quoting Pro. Real Est. Invs.v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60 (1993))

17 (emphasis in Breville). A single baseless claim does not sink an entire lawsuit when the remaining

18 claims have some merit. As in Breville, Defendant’s allegations here fall short of the requirement

19 in Professional Real Estate Investors that the lawsuit, and not merely some of the claims asserted

20 in the complaint—or, as here, the pre-suit correspondence—be objectively baseless.

21 Meridian Project Sys., Inc. v. Hardin Const. Co., LLC, is instructive. 404 F. Supp. 2d

22 1214 (E.D. Cal. 2005). In that case, the court held that the plaintiff’s filing of a lawsuit that

23 included a baseless copyright infringement claim was not objectively baseless as a whole. Id. at

24 1221. Nonetheless, the Meridien court declined to extend Noerr-Pennington protection to the

25 plaintiff’s communications to Defendant’s customers because those communications related

26 specifically to the allegedly baseless copyright infringement claim and threatened those customers

27 with suit. Id. at 1219-20. Here, in contrast, AbCellera’s correspondence with Defendant’s

1 reference to patents for which it ultimately asserted colorable claims of infringement. And,

2 instead of threatening Defendant’s customers with infringement suits, AbCellera merely suggested

3 that some of its patents might be practiced by Defendant’s products and requested to open

4 licensing discussions. Accordingly, the Court concludes AbCellera’s correspondence with

5 Defendant’s customers were more “good faith acts attendant to effective litigation,” and not

6 objectively baseless. Meridien, 404 F. Supp. 2d at 1223.

7 2. Intent to Interfere with Defendant’s Business

8 Turning to the second prong of the sham litigation definition, Defendant must show that

9 AbCellera’s pre-suit correspondence constitutes a concealed “attempt to interfere directly with the

10 business relationships of a competitor.” Pro. Real Est. Invs., 508 U.S. at 60–61 (emphasis

11 omitted) (quoting Noerr, 365 U.S. at 144). This prong specifically “focus[es] on whether the

12 baseless suit conceals an attempt to interfere directly with a competitor’s business relationships

13 through the use of the governmental process—as opposed to the outcome of that process—as an

14 anticompetitive weapon.” Pro. Real Est. Invs., 508 U.S. at 60-61 (emphasis in original, internal

15 quotations omitted). “To determine whether the exception applies, [the Court] ask[s]: ‘Were the

16 legal filings made, not out of a genuine interest in redressing grievances, but as part of a pattern or

17 practice of successive filings undertaken essentially for purposes of harassment?’” B&G Foods N.

18 Am., Inc. v. Embry, 29 F.4th 527, 539 (9th Cir.) (internal quotation and citation omitted), cert.

19 denied, 143 S. Ct. 212, 214 L. Ed. 2d 83 (2022).

20 Here, Defendant alleges that AbCellera interfered with its business relationships by

21 pressuring Defendant and its customers to enter into licensing negotiations. As with its attempt to

22 satisfy the “objectively baseless” prong, Defendant bases this claim on AbCellera’s having

23 included references to both patents for which it had a good claim and those it did not. See ECF

24 No. 119 at 11-12.3 As with the “objectively baseless” prong, the Court again concludes that

25

3 AbCellera next argues that BLI’s allegation that three of the patents

26

listed in AbCellera’s letters “do not even disclose, mention, or claim

(i) a microfluidic system, (ii) single cell antibody discovery, or (iii)

27

clone selection, as AbCellera represented to Berkeley Lights and its

1 because at least some of the claims AbCellera asserted in its communications with Defendant’s

2 customers were potentially meritorious, the communications expressed a “genuine interest in

3 redressing grievances,” B&G Foods N. Am., Inc., 29 F.4th at 539, rather than an improper attempt

4 to interfere directly with a competitor’s business relationships. The letters are therefore subject to

5 Noerr-Pennington immunity.4

6 B. Inequitable Conduct

7 Plaintiffs move to dismiss Defendant’s inequitable conduct counterclaims and affirmative

8 defenses on the grounds that they are insufficiently pled under Federal Rule of Civil Procedure

9 9(b) and Exergen. Under Exergen, Defendant must allege specific facts “to identify the specific

10 who, what, when, where, and how of the material misrepresentation or omission committed before

11 the PTO.” Exergen, 575 F.3d at 1328. Defendant must also allege sufficient “underlying facts

12 from which a court may reasonably infer that a specific individual (1) knew of the withheld

13 material information or of the falsity of the material misrepresentation, and (2) withheld or

14 misrepresented this *1329 information with a specific intent to deceive the PTO.” Id.

15 1. ’812 Patent Family Inequitable Conduct Counterclaims5

16 a. The “Who”

17

expect to assert an infringement claim.” See Mot. at 9-10 (citing

18 Dkt. 106, ¶ 34). But this allegation does indeed demonstrate that

AbCellera’s statements were objectively baseless because they

19 misrepresent the scope of certain patents . . . .

20 In addition, the Second Amended Counterclaims alleged that

AbCellera’s false and misleading infringement claims in its letters to

21 BLI and its customers were intended to deceive BLI’s customers by

falsely claiming that a license to AbCellera’s patents was required,

22 thereby pressuring BLI or its customers to negotiate an unnecessary

license or cease purchasing and using BLI’s products. Dkt. 106, ¶

23 44. Thus, AbCellera’s objectively baseless infringement claims

“conceal[ ] ‘an attempt to interfere directly with [BLI’s] business

24 relationships.’”

25

Id.

4 Because the Court finds that both of Defendant’s unfair competition counterclaims are barred by

26

the Noerr-Pennington doctrine, it does not need to reach Plaintiffs’ other arguments as to federal

preemption or the sufficiency of Defendant’s state law unfair competition counterclaim.

27

5 For the purposes of the ’812 patent family inequitable conduct counterclaims, Defendant’s

1 Plaintiffs argue that Defendant has inadequately alleged the “who” of its inequitable

2 conduct counterclaims as to each reference. An adequately pled inequitable conduct claim must

3 “name the specific individual associated with the filing or prosecution of the application . . . who

4 both knew of the material information and deliberately withheld or misrepresented it.” Exergen,

5 575 F.3d. at 1329. Here, Defendant has identified the following individuals in its pleading:

6 Daridon: Defendant alleges that Carl Hansen, Michael Rubin, and Thomas Cawley, Jr.

7 knew about Daridon. ECF No. 106 ¶ 68. Defendant further alleges that Carl Hansen, Michael

8 Rubin, Carol Francis, and Thomas Cawley, Jr. withheld Daridon from the examiner during

9 prosecution of the ’812 patent family. Id. ¶¶ 94–108. Because Defendant fails to allege that Carol

10 Francis knew about Daridon, the Court finds that Defendant has inadequately alleged the “who” of

11 its inequitable conduct counterclaim as to Carol Francis’s failure to disclose Daridon. As for Dr.

12 Hansen, Mr. Rubin, and Dr. Cawley, the Court finds that these allegations are sufficient to name

13 the specific individuals associated with the filing or prosecution of the application who both knew

14 of the material information and deliberately withheld or misrepresented it.

15 Love: Defendant alleges that Carl Hansen, Michael Rubin, Carol Francis, and Thomas

16 Cawley, Jr. knew about Love. Id. ¶¶ 113–114. Defendant further alleges that Carl Hansen,

17 Michael Rubin, Carol Francis, and Thomas Cawley, Jr withheld Daridon from the examiner

18 during prosecution of the ’812 patent family. Id. ¶¶ 113, 159–161. The Court finds that these

19 allegations are sufficient to name the specific individuals associated with the filing or prosecution

20 of the application who both knew of the material information and deliberately withheld or

21 misrepresented it.

22 Yasuda: Defendant alleges Michael Rubin and Thomas Cawley, Jr. knew about Yasuda.

23 Id. ¶¶ 165, 173–174. Defendant further alleges that Michael Rubin and Thomas Cawley, Jr.

24 withheld Yasuda from the examiner during prosecution of the ’812 patent family. Id. ¶¶ 176–178.

25 The Court finds that these allegations are sufficient to name the specific individuals associated

26 with the filing or prosecution of the application who both knew of the material information and

27 deliberately withheld or misrepresented it.

1 ¶¶ 183, 193-195. Defendant further alleges that Michael Rubin and Thomas Cawley, Jr. withheld

2 Nassef from the examiner during prosecution of the ’812 patent family. Id. ¶¶ 197–199. The

3 Court finds that these allegations are sufficient to name the specific individuals associated with the

4 filing or prosecution of the application who both knew of the material information and deliberately

5 withheld or misrepresented it.

6 Gómez-Sjöberg: Defendant alleges Carl Hansen, Daniel Da Costa, Michael Rubin, Carol

7 Francis, and Thomas Cawley, Jr. knew about Gómez-Sjöberg. Id. ¶¶ 203, 209–212. Defendant

8 further alleges that Carl Hansen, Daniel Da Costa, Michael Rubin, Carol Francis, and Thomas

9 Cawley, Jr. withheld Gómez-Sjöberg from the examiner during prosecution of the ’812 patent

10 family. Id. ¶¶ 213–217. The Court finds that these allegations are sufficient to name the specific

11 individuals associated with the filing or prosecution of the application who both knew of the

12 material information and deliberately withheld or misrepresented it.

13 Lee: Defendant alleges Carl Hansen, Michael Rubin, Carol Francis, and Thomas Cawley,

14 Jr. knew about Lee. Id. ¶¶ 221, 229–232. Defendant further alleges that Carl Hansen, Michael

15 Rubin, Carol Francis, and Thomas Cawley, Jr. withheld Lee from the examiner during prosecution

16 of the ’812 patent family. Id. ¶¶ 234–236. The Court finds that these allegations are sufficient to

17 name the specific individuals associated with the filing or prosecution of the application who both

18 knew of the material information and deliberately withheld or misrepresented it.

19 b. The “What” and “Where”

20 To plead the ‘what’ and ‘where’ of inequitable conduct, the claimant must “identify which

21 claims, and which limitations in those claims, the withheld references are relevant to.” Exergen,

22 575 F.3d at 1329. Plaintiffs do not challenge the ’812 Patent Family inequitable conduct

23 counterclaim on this ground, and as such, the Court finds that Defendant has adequately pled the

24 “what” and “where” of its inequitable conduct counterclaim.

25 c. The “Why” and “How”

26 An inequitable conduct claimant must also plead the “particular claim limitations, or

27 combination of claim limitations, that are supposedly absent from the information of record,”

1 and not cumulative, and ‘how’ an examiner would have used this information in assessing the

2 patentability of the claims.” Exergen, 575 F.3d at 1329–30. Plaintiffs argue that Defendant’s

3 allegations as to Daridon, Yasuda, Nassef, Gómez-Sjöberg, and Lee are deficient in this regard,

4 and the Defendant has made “identical conclusory pleadings” as to the “why” these references are

5 material and “how” the examiner would have used them in assessing the patentability of the ’812

6 patent family. ECF No. 115 at 18–19, 22. Notably, Plaintiffs do not challenge Defendant’s

7 allegations as to Love.

8 The Court finds that Defendant’s pleadings are sufficient to identify the particular claim

9 limitation that was absent from the record before the PTO. Specifically, Defendant alleges that

10 during the prosecution of the ’812 patent, “[t]he language ‘wherein the volume of the chamber is

11 from 100 pL to 100 nL’ was added to the claim in a May 8, 2018 Amendment filed by Applicant’s

12 counsel Michael Rubin in order to overcome a rejection for anticipation by U.S. Published Patent

13 Application 2009/0068170 (Weitz).” ECF No. 106 ¶ 79. Defendant further alleges that “Mr.

14 Rubin stated that the claims were ‘amended herein to recite that the volume of the chamber is from

15 100 pL to 100 nL’ and that ‘Weitz fails to disclose or suggest such a feature.’” Id.

16 Defendant’s pleadings are also sufficient to identify “why” the withheld information is

17 material and not cumulative, and “how” the examiner would have used the information to assess

18 the patentability of the ’812 patent. For each reference, Defendant pleads specific facts showing

19 that it discloses “retaining a cell within a chamber having an inlet, and outlet, and a solid wall

20 defining the chamber, wherein the volume of the chamber is from 100 pL to 100 nL” that was

21 represented as absent from the prior art during prosecution of the ’812 patent. See id. ¶¶ 74-85

22 (Daridon), 116-121 (Love), 167-170 (Yasuda), 185-192 (Nassef), 205-208 (Gómez-Sjöberg) and

23 223-228 (Lee). While Plaintiffs may dispute whether these references in fact disclose the alleged

24 limitation, at this stage of the proceedings the Court takes these well-pled allegations as true and

25 concludes that Defendants have identified with specificity the “why” and the “how” of its

26 inequitable conduct counterclaims.

27 Plaintiffs argue that in order to satisfy the “how” requirement, an inequitable conduct

1 references with other art of record, and how the examiner would have found a reasonable

2 expectation of success in view of the disclosure.” ECF No. 158 at 9. The Court finds no support

3 for such a high standard at this stage in the proceedings. The cases Plaintiffs rely upon do not

4 stand for this proposition. In Wisconsin Alumni Rsch. Found. v. Apple Inc., No. 14-CV-062-

5 WMC, 2014 WL 7217770, at *4 (W.D. Wis. Dec. 17, 2014), the defendant merely alleged

6 generally that the undisclosed reference “discloses the same ‘subject matter’ as the [patent-in-

7 suit]” and that the reference “in combination with other prior art . . . invalidates the [patent-in-

8 suit].” 2014 WL 7217770, at *4. The court there found such allegations insufficient, as the

9 allegations did not make any attempt to plead “(1) the particular claim limitations, or combination

10 of limitations, that are supposedly absent from the record before the Examiner, and (2) the specific

11 material, noncumulative disclosures in the [reference].” Id. Similarly, in ConAgra Foods Food

12 Ingredients Co. v. Archer-Daniels-Midland Co., No. 12-CV-2171-EFM-KGS, 2014 WL 359566,

13 at *5 (D. Kan. Feb. 3, 2014), the Court found that the defendant had sufficiently alleged the “but-

14 for” materiality of two allegedly withheld references but had failed to adequately plead “how” an

15 examiner would have used those references to invalidate the patent-in-suit. Here, in contrast,

16 Defendant’s counterclaim sufficiently alleges that each of Daridon, Yasuda, Nassef, Gómez-

17 Sjöberg, and Lee disclose a specific limitation that was represented as absent in the prior art

18 during prosecution of the ’812 patent, and that in combination with Weitz, the examiner would

19 have invalidated the ’812 patent.

20 d. Knowledge of Materiality and Intent

21 In addition to pleading the circumstances of inequitable conduct with specificity, an

22 inequitable conduct claimant must plead “sufficient allegations of underlying facts from which a

23 court may reasonably infer that a specific individual (1) knew of the withheld material information

24 or of the falsity of the material representations, and (2) withheld or misrepresented this

25 information with intent to deceive the PTO.” Exergen, 575 F.3d at 1328–29. A “reasonable

26 inference is one that is plausible and that flows logically from the facts alleged, including any

27 objective indications of candor and good faith.” Id. at 1329, n.5. This stands in contrast to the

1 most reasonable inference that can be drawn from the facts. At the pleading stage, a claimant

2 “need only plead ‘sufficient allegations of underlying facts from which a court may reasonably

3 infer’ that specific individuals had intent to deceive.” Cypress Semiconductor Corp. v. GSI Tech.,

4 Inc., No. 13-CV-02013-JST, 2014 WL 988915, at *7 (N.D. Cal. Mar. 10, 2014) (quoting Exergen,

5 575 F.3d at 1328-29); see also Cave Consulting Grp., Inc. v. OptumInsight, Inc., No. 15-CV-

6 03424-JCS, 2016 WL 4744165, at *10 (N.D. Cal. Sept. 12, 2016) (at the pleading stage, specific

7 intent to deceive need not be the single most reasonable inference drawn from the evidence).

8 As a preliminary matter, Defendant alleges that intent to deceive can be inferred generally from

9 the fact that Plaintiff’s patent prosecution counsel, Bozicevic, Field & Francis, LLP, also

10 concurrently represented Berkeley Lights in patent prosecution matters from March 2015 through

11 October 2017. See ECF No. 106, ¶¶ 61-63. Defendant argues that these allegations of concurrent

12 representation by Bozicevic, Field & Francis, LLP support an inference that Plaintiff’s patent

13 prosecution counsel obtained and misused Defendant’s confidential information, with the intent to

14 deceive the PTO, in a “years-long effort to try and obtain claims intended to read on pre-existing

15 BLI technology.” ECF No. 119 at 21.

16 The Court does not find these allegations plausible. While the Court takes as true the

17 factual allegation that the Bozicevic firm concurrently represented Plaintiffs and Defendant during

18 the years 2015 through 2017, and even assuming the existence of a conflict of interest, Defendant

19 fails to plead that any individual attorney at the Bozicevic firm represented both Plaintiffs and

20 Defendant in patent prosecution, or that any attorney involved in Plaintiffs’ patent prosecution

21 actually obtained any confidential information from Defendant. At least as importantly,

22 Defendant fails “to allege any facts from which a reasonable inference could be drawn that the

23 inventors had a specific intent to mislead the Patent Office.” Impinj, Inc. v. NXP USA, Inc., No.

24 19-CV-03161-YGR, 2022 WL 20508654, at *3 (N.D. Cal. June 24, 2022) (citing Roche Palo Alto

25 LLC v. Ranbaxy Lab’ys Ltd., No. CV 06-2003 (FLW), 2008 WL 11383743, at *1 (D.N.J. Apr. 18,

26 2008)). Absent such factual allegations, Defendant’s argument that the Bozicevic firm misused its

27 confidential information in a conspiracy to benefit Plaintiffs is speculative. Accordingly, the

1 deceive on the part of Plaintiffs or their counsel. See Nova Biomedical Corp. v. Mallinckrodt

2 Sensor Sys., Inc., 997 F.Supp. 187, 191–92 (D. Mass. 1998) (finding that suspicious circumstances

3 were insufficient to support an inequitable conduct defense where defendant had presented only

4 speculation and conjecture regarding patentee’s knowledge and intent). Instead, the Court turns to

5 the Defendant’s specific allegations as to each reference.

6 Daridon: Defendants allege that Carl Hansen and Michael Rubin were aware of the

7 Daridon reference because Daridon was discussed in the prosecution of the ’408 patent. ECF No.

8 106 ¶¶ 69, 70, 88-91. Specifically, Defendants allege that “in a July 29, 2016 final rejection of the

9 pending ’408 patent claims, the Examiner rejected then pending claims 76 and 79 for obviousness

10 over U.S. Published Patent Application 2011/0262906 (Dimov) . . . in view of Daridon” and that

11 “Michael Rubin filed the response to that rejection, confirming his knowledge of Daridon and its

12 content.” Id. ¶ 69. Defendants further allege that Daridon was specifically discussed in the July

13 29, 2016 rejection, during which the examiner wrote:

14 DARIDON discloses a microfluidic particle analysis system

comprising loading cells into chambers from a fluid flow (Figure 96a)

15 in which flow rate of the fluid is regulated by valves and that either

the inlet or outlet is gated by a valve (0124,0145-146, 0198, 0216).

16

17 Id. ¶ 88.

18 Defendants allege that Mr. Rubin was aware of Daridon, and the specific material

19 information disclosed in Daridon, because he had, on multiple occasions, filed responses

20 discussing Daridon in response to the July 29, 2016 rejection of the ’408 patent. See id. ¶¶ 70, 89-

21 91. As for Carl Hansen, Defendants allege that Dr. Hansen was involved in a telephonic interview

22 with the patent examiner regarding the July 29, 2016 rejection of the ’408 patent, during which

23 Daridon (along with other prior art references) was discussed. Id. ¶ 91. As alleged, during the

24 interview the “[a]pplicants further compared the claimed method to the prior art cited and

25 discussed the differences regarding how cells are recovered.” Id. These allegations, together with

26 the fact that the ’936 patent is closely related to the ’812 patent family, support a plausible

27 inference that Mr. Rubin and Dr. Hansen were aware of the specific material information

1 ’812 patent family. See iLife Techs. Inc v. AliphCom, No. 14-CV-03345-WHO, 2015 WL 890347,

2 at *9 (N.D. Cal. Feb. 19, 2015) (finding a plausible inference of specific intent to deceive where

3 prosecuting attorney “disclosed the EPO report in his prosecution of another patent before the

4 PTO, but allegedly withheld this same report from the PTO in his prosecution of the [asserted]

5 patents,” because “the facts in the light most favorable to [the non-moving party], establish a clear

6 relationship between the European patent applications and the [asserted patents]”).

7 However, the Court finds that Defendant’s pleadings are deficient as to Carol Francis and

8 Thomas Cawley, Jr. As the Court discusses above, Defendant has failed to allege that Mr. Francis

9 was even aware of Daridon. As for Dr. Cawley, Defendant merely alleges that Dr. Cawley was

10 aware of Daridon because he “filed an Information Disclosure Statement listing Daridon in the

11 ’270 prosecution on April 1, 2020.” ECF No. 106 ¶ 69. This allegation is insufficient to support

12 an inference that Dr. Cawley was aware of the specific material information disclosed by Daridon,

13 or that he intentionally withheld Daridon during the examination of the ’812 patent family. See

14 Exergen, 575 F.3d at 1330 (“one cannot assume that an individual, who generally knew that a

15 reference existed, also knew of the specific material information contained in that reference.”).

16 Yasuda and Nassef: Defendant alleges that Michael Rubin was aware of the specific

17 material information disclosed in Yasuda and Nassef, because both the Yasuda and Nassef

18 references were raised by the patent examiner during prosecution of the ’936 patent. ECF No. 106

19 ¶¶ 165, 171-172, 182-183, 193-194. Specifically, Defendant alleges that “[o]n May 30, 2018,

20 during the prosecution of the ’936 patent, the Examiner rejected then-pending claims 30-59 for

21 obviousness over Yasuda in view of U.S. Published Patent Application 2011/0262906 (Dimov)”

22 and that “Michael Rubin filed the response to that rejection, confirming his knowledge of Yasuda

23 and its content.” Id. ¶ 165, see also ¶¶ 171-172. Similarly, Defendant alleges that “[o]n

24 December 14, 2018, during the prosecution of the ’936 patent, the Examiner rejected then-pending

25 claims 30-37 and 39-59 for obviousness over Yasuda in view of U.S. Published Patent Application

26 2011/0262906 (Dimov) and further in view of Nassef” and that “Michael Rubin filed the response

27 to that rejection, confirming his knowledge of Nassef and its content.” Id. ¶¶ 182-183, see also id.

1 ’812 patent family, support a plausible inference that Rubin was aware of the specific material

2 information contained in Yasuda and Nassef, and intentionally withheld this information during

3 the prosecution of the ’812 patent family.

4 However, with regards to Thomas Cawley, Jr., Defendant’s only allegation as to

5 knowledge is that “[o]n information and belief, Dr. Cawley read the prosecution histories of the

6 prior applications in the ’408 patent family, as any prudent patent prosecutor would do when

7 taking over prosecution of whole families of patents.” ECF No. 106 ¶¶ 174, 195. These

8 allegations are insufficient to support a plausible inference that Dr. Cawley knew of the specific

9 material information contained within Yasuda and Nassef, much less that he intentionally withheld

10 the Yasuda and Nassef references from the PTO during prosecution of the ’812 patent family.

11 Even if, as a patent prosecutor, Dr. Cawley should have read the references cited in the prior ’408

12 patent family applications, his failure to do so does not support an inference of intent, without

13 more. See Abaxis, Inc. v. Cepheid, No. 10-CV-02840-LHK, 2011 WL 3741501, at *6 (N.D. Cal.

14 Aug. 25, 2011) (dismissing inequitable conduct counterclaim because “[p]roving that the applicant

15 knew of a reference, should have known of its materiality, and decided not to submit it to the PTO

16 does not prove specific intent to deceive.” (internal quotations omitted)).

17 Gómez-Sjöberg, Lee, and Love: The Court concludes that Defendant has failed to allege

18 facts sufficient to support a plausible inference of intent to deceive as to Gómez-Sjöberg, Lee, or

19 Love. Specifically, as to Michael Rubin, Carol Francis, or Thomas Cawley, Jr., Defendants only

20 allege that these individuals were aware of Gómez-Sjöberg, Lee, or Love by virtue of having listed

21 these on Information Disclosure Statements made during the prosecution of the ’408 patent

22 family. See ECF No. 106 ¶¶ 114 (Love), 203 (Gómez-Sjöberg), 221 (Lee). As with Dr. Cawley’s

23 knowledge of Daridon, the mere inclusion of a reference on an information disclosure statement is

24 insufficient to infer knowledge of the specific material information disclosed by the reference,

25 much less an intent to deceive the PTO in withholding the reference.

26 Defendant’s remaining allegations relate to Carl Hansen and Daniel Da Costa’s knowledge

27 of Gómez-Sjöberg, Lee, and Love. Specifically, Defendant alleges that Dr. Hansen was aware of

1 citing to Gómez-Sjöberg in two papers he co-authored, ECF No. 106 ¶¶ 209-212, aware of Lee

2 through citing to Lee in the ’408 patent specification and one paper he co-authored, id. ¶¶ 229-

3 232, and aware of Love because one of his Ph.D. students cited to Love (and specifically, a

4 material figure in Love) in his Ph.D. thesis. Id. ¶¶ 129-132. Similarly, Defendant allege that Dr.

5 Da Costa was aware of Gómez-Sjöberg through citing to Gómez-Sjöberg in one paper he co-

6 authored. Id. ¶ 212. The Court finds that none of these allegations support a plausible inference

7 of specific intent.6 Defendant’s allegations ask the Court to infer specific intent from the fact that

8 Dr. Hansen and Dr. Da Costa cited to Gómez-Sjöberg and Lee in a few papers, which they were

9 two of many authors. Similarly, Defendants ask the Court to infer intent from the fact that Dr.

10 Hansen’s Ph.D. student cited to Love in his thesis, but it is implausible to suggest that Dr. Hansen

11 read every citation in each of his students’ theses. At best, Defendant’s allegations support Dr.

12 Hansen and Dr. Da Costa’s awareness of these references, but not the knowledge of the specific

13 material information disclosed within. Without more, the Court is unable to infer specific intent to

14 deceive from these allegations. See Exergen, 575 F.3d at 1330; Abaxis, 2011 WL 3741501, at *6.

15 2. ’408 Patent Family Inequitable Conduct Counterclaims7

16 The Court next turns to Plaintiffs’ motions to dismiss Defendant’s inequitable conduct

17 counterclaims as to the ’408 Patent Family, as alleged in the 8626 Case and 8627 Case.

18 a. The “Who”

19 Balagadde: Defendant alleges that Carl Hansen, Michael Rubin, Carol Francis, and

20 Thomas Cawley, Jr. knew about Balagadde. 8626 Case ECF No. 73 ¶¶ 39-40. Defendant further

21

22 6 The Court does not credit Defendant’s allegations as to Plaintiffs’ conduct in litigation or before

the PTO after the filing of Defendant’s counterclaims. At best, these allegations show that

23 Plaintiffs, once on notice of Defendant’s allegations of inequitable conduct, amended their patent

applications to disclose certain of those references. That Plaintiffs allegedly delayed in their

24

substantive responses or in producing the relevant file histories also has no probative value as to

25 whether Carl Hansen, Michael Rubin, Carol Francis, and Thomas Cawley, Jr. intentionally

withheld Love from the examiner during the prosecution of the ’812 patent family.

26

7 For the purposes of the ’408 patent family inequitable conduct counterclaims, Defendant’s

27 Second Amended Counterclaims in the 8626 Case and 8627 Case are substantively identical.

1 alleges that Carl Hansen, Michael Rubin, Carol Francis, and Thomas Cawley, Jr. withheld

2 Balagadde from the examiner during prosecution of the ’408 patent family. Id. ¶ 51. The Court

3 finds that these allegations are sufficient to name the specific individuals associated with the filing

4 or prosecution of the application who both knew of the material information and deliberately

5 withheld or misrepresented it.

6 Daridon: Defendant alleges that Michael Rubin made “demonstrably false”

7 representations regarding Daridon during prosecution of the ’408 patent. 8626 Case ECF No. 73

8 ¶¶ 58-59, 65-72. The Court finds this sufficient to identify the “who” for the purposes of this

9 ground.

10 The ’812 Patent Family and Hansen 2010: Defendant alleges that Carl Hansen, Carol

11 Francis, Michael Rubin, and Thomas Cawley, Jr. were aware of the ’812 patent family and failed

12 to disclose the ’812 patent family during prosecution of the ’936 and ’018 patents. 8626 Case

13 ECF No. 73 at ¶¶ 126-127, 130. Defendant further alleges that Carl Hansen was aware of, and

14 failed to disclose Hansen 2010 during prosecution of the ’936 and ’018 patents. Id. at ¶¶ 124, 137.

15 The Court finds that these allegations are sufficient to name the specific individuals associated

16 with the filing or prosecution of the application who both knew of the material information and

17 deliberately withheld or misrepresented it.

18 b. The “What” and “Where”

19 Plaintiffs argue that Defendant’s allegations as to Balagadde fail to “identify which claims,

20 and which limitations in those claims, the withheld references are relevant to.” Exergen, 575 F.3d

21 at 1329. Here, the Court agrees. Defendant argues that it has sufficiently identified the particular

22 limitations Balagadde is relevant to in the following paragraph:

23 The Examiner’s stated reason for allowance of the independent claim

was that “the prior art does not teach or fairly disclose a method of

24 culturing a cell comprising retaining a cell at a retaining position

within an individual chamber of a microfabricated device, perfusing

25 the cell with a perfusion fluid … out of the chamber through an outlet,

wherein the outlet is positioned such that gravitational forces acting

26 on the cell to keep it at or near the retaining position exceed

hydrodynamic forces acting on the cell to move it toward the outlet;

27 and selectively recovering the cell or a clonal population thereof from

Allowance at 2-3.)

1

8626 Case ECF No. 73 at ¶ 79. However, this paragraph does not discuss or identify which

2

limitations in Balagadde are relevant to the ’408 patent. Indeed, this paragraph does not discuss

3

Balagadde at all, and is instead referencing the alleged misrepresentations made about Daridon

4

during the prosecution of the ’408 patent family. As such, because the Second Amended

5

Counterclaims fail to “identify which claims, and which limitations” in the ’408 patent family

6

Balagadde is relevant to, the Court finds that Defendant has failed to plead the “what” of its

7

inequitable conduct counterclaim here.

8

c. The “Why” and “How”

9

Balagadde: The Court finds that Defendant has also failed to plead the “why” and “how”

10

as to Balagadde. In its Second Amended Counterclaims, Defendant merely alleges that

11

“Balagadde discloses or suggests the step of that claim that the Examiner stated was absent from

12

the prior art when stating the reason for allowance of the claim” and that “[h]ad the Examiner been

13

aware of Balagadde, none of the claims in the asserted patents of the ’408 patent family (including

14

the ’408, ’936, ’018, and ’270 patents) would have been allowed.” 8626 Case ECF No. 73 at ¶¶

15

50-61. Such conclusory allegations, without more, are insufficient “to explain both ‘why’ the

16

withheld information is material and not cumulative, and ‘how’ an examiner would have used this

17

information in assessing the patentability of the claims.” Exergen, 575 F.3d at 1329–30.

18

Daridon: The Court finds that Defendant has adequately plead the “why” and “how” as to

19

Mr. Rubin’s alleged misrepresentation of Daridon. “Although an attorney is free to argue

20

vigorously in favor of patentability without being subject to allegations of inequitable conduct,

21

‘the law prohibits genuine misrepresentations of material fact.’” Ring Plus, Inc. v. Cingular

22

Wireless Corp., 614 F.3d 1354, 1360 (Fed. Cir. 2010) (quoting Rothman v. Target Corp., 556 F.3d

23

1310, 1328 (Fed. Cir. 2009)). The parties dispute whether Mr. Rubin’s statements regarding

24

Daridon were vigorous attorney argument or genuine misrepresentations of material fact, but the

25

Court cannot decide that factual dispute at this stage in the proceedings. Defendant’s allegations

26

here are well-pled, and taken as true, are sufficient to satisfy Rule 9(b).

27

’812 Patent Family and Hansen 2010: The Court finds that Defendants have failed to

1 adequately plead the “why” and “how” as to the alleged failure to disclose the ’812 patent family

2 and Hansen 2010 during prosecution of the ’936 and ’018 patents. Defendant’s allegations boil

3 down to the fact that at least one claim of the ’936 and ’018 patents are not entitled to priority to

4 the ’408 patent (or the provisional application to which it claims priority to) because the ’936 and

5 ’018 patents are continuations of an application that contained new matter that was not disclosed

6 in the ’408 patent (or the provisional application to which it claims priority to). Accordingly, the

7 ’812 patent family and Hansen 2010 are prior art to at least one claim of the ’936 and ’018 patents

8 and should have been disclosed during prosecution of those patents. However, even taking all of

9 these allegations as true, Defendant has not pled facts “to explain both ‘why’ the withheld

10 information is material and not cumulative, and ‘how’ an examiner would have used this

11 information in assessing the patentability of the claims.” Exergen, 575 F.3d at 1329–30. Instead,

12 Defendant pleads only conclusory allegations that “had the Examiner been aware of the ’812

13 patent family [or Hansen 2010], at least some of the claims in the asserted patents of the ’408

14 patent family . . . would not have been allowed.” 8626 Case ECF No. 73 at ¶¶ 133, 134. The

15 Court disregards such conclusory allegations and finds that Defendant’s allegations as to this

16 inequitable conduct ground fail under Rule 9(b).

17 d. Knowledge of Materiality and Intent

18 Balagadde: Defendant alleges that Carl Hansen was aware of the specific material

19 information disclosed in Balagadde because Dr. Hansen is a named inventor of Balagadde.

20 However, because Defendant has failed to plead facts sufficient to establish that Balagadde was

21 material to the ’408 patent family, and not cumulative of the prior art before the examiner, the

22 Court is also unable to draw an inference that Dr. Hansen had the specific intent to deceive in

23 failing to disclose Balagadde to the PTO. Moreover, Defendant’s allegations that Mr. Rubin, Mr.

24 Francis, and Dr. Cawley were aware of Balagadde because they disclosed Balagadde on

25 Information Disclosure Statements during prosecution of the ’408 patent family are insufficient.

26 As the Court has stated previously, the mere inclusion of a reference on an information disclosure

27 statement is insufficient to infer knowledge of the specific material information disclosed by the

1 Daridon: The Court does not find Defendant’s allegations sufficient to support a

2 reasonable inference of intent to deceive as to Mr. Rubin’s statements to the PTO. To summarize,

3 Defendant’s allegations as to Daridon are that (1) Mr. Rubin was aware of Daridon, (2) Mr. Rubin

4 made an allegedly false representation about Daridon’s disclosures that gave the impression he

5 had read all of Daridon, (3) Mr. Rubin avoided discussing Daridon in detail during prosecution of

6 the ’408 patent, and (4) Mr. Rubin cancelled two dependent claims that the examiner rejected over

7 Daridon. 8626 Case ECF No. 73 at ¶¶ 57-59, 65-79. These allegations, even taken as true, do not

8 support a reasonable inference that Mr. Rubin intended to deceive the examiner by making

9 deliberately false representations about Daridon. Instead, the most these allegations support is a

10 reasonable inference that Mr. Rubin did not read all of Daridon, only those portions cited by the

11 examiner – his alleged misrepresentation was therefore a failure to qualify his statement as to the

12 scope of Daridon’s disclosure. Indeed, Defendant even seems to suggest this possibility in its

13 counterclaims. See 8626 Case ECF No. 73 at ¶ 65 (“Had Mr. Rubin read only the portions of

14 Daridon cited by the examiner, he would have stated that ‘the portions of Daridon cited by the

15 examiner are silent regarding a method of recovering a cell form an individual chamber of

16 microfabricated device.’”). While it is true that at the pleading stage, intent to deceive need not be

17 the single most reasonable inference drawn, Defendants would have this court infer that Mr. Rubin

18 intended to deceive the examiner about the scope of a reference that the examiner was already

19 familiar with, on the mere hope that the examiner did not read that reference in more detail in

20 response. The Court finds such an inference implausible in light of the facts alleged.

21 ’812 Patent Family and Hansen 2010: Because Defendant has failed to plead facts

22 sufficient to establish that the ’812 patent family and Hansen 2010 were material to the ’408 patent

23 family, and not cumulative of the prior art before the examiner, the Court is also unable to draw an

24 inference that any individual involved had the specific intent to deceive in failing to disclose these

25 references to the PTO.

26 C. Leave to Amend

27 In its July 1, 2021 Order, the Court cautioned that dismissal would be with prejudice “if,

1 cure the deficiencies identified in [that] Order and in Plaintiffs’ instant motion to dismiss, ECF

2 No. 40.” ECF No. 98 at 12. Accordingly, to the extent the Court grants Plaintiff’s motion to

3 dismiss here, such dismissal is with prejudice.

4 D. Motion to Strike

5 Finally, Plaintiffs move to strike from Defendant’s inequitable conduct counterclaim and

6 affirmative defense two new grounds that were not previously asserted by Defendants: (1)

7 inequitable conduct as to the ’812 patent family based on failure to disclose U.S. Patent No.

8 7,776,553 (“Love 2”); Love, J. C. et al., Nature Biotechnology 24(6), 703-707 (2006) (“Love 3”);

9 Love, K. R. et al., Biotechnology and Bioengineering 106(2), 319-325 (2010) (“Love 4”); and the

10 ’936 patent specification and (2) inequitable conduct as to the ’408 patent family out of the failure

11 to disclose the ’812 patent family and Hansen 2010. Plaintiffs argue that Defendant’s addition of

12 these references to its counterclaim effectively asserts new grounds for inequitable conduct and

13 are therefore new counterclaims in violation of the Court’s July 1, 2021 Order. Id. Defendant

14 argues that its addition of these references are not new counterclaims because they “relate to the

15 same ‘transaction or occurrence’ that was pled in BLI’s original pleading, and thus belong to the

16 same claim” ECF No. 119 at 9. Alternatively, Defendant argues that even if these are new

17 counterclaims, the Court should not strike them in light of the policy of extreme liberality in

18 granting leave to amend. Id.

19 Because motions to strike are disfavored and Plaintiffs have made no argument that the

20 sections it seeks to strike are “redundant, immaterial, impertinent, or scandalous matter,” Fed. R.

21 Civ. Proc. 12(f), the Court declines to strike these allegations. See Molica v. Synchrony Bank, No.

22 21-CV-01549-JST, 2021 WL 9315272, at *2 (N.D. Cal. Sept. 14, 2021). However, as the Court

23 finds these allegations insufficiently pled under Rule 9(b) and Exergen (see Section IV(B), supra),

24 the Court will dismiss these allegations with prejudice.

25 V. CONCLUSION

26 For the foregoing reasons, the Court denies Plaintiff’s motion to dismiss Defendant’s

27 inequitable conduct counterclaim and affirmative defenses on the grounds of (1) Carl Hansen and

1 (2) Michael Rubin’s failure to disclose Yasuda and Nassef during the prosecution of the °812

2 || patent family, and grants Plaintiff's motion to dismiss as to all other counterclaims.

3 IT ISSO ORDERED.

4 || Dated: January 2, 2024 .

° JON S. TIGA

6 nited States District Judge

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