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 (VKD)

8 Plaintiffs, REDACTED

9 v. ORDER RE APRIL 28, 2025

DISCOVERY DISPUTE RE FOX

10 BRUKER CELLULAR ANALYSIS, INC., PRESENTATION 11 Defendants. Re: Dkt. No. 342

12 13 AbCellera Biologics, Inc. (“AbCellera”) and The University of British Columbia (“UBC”) 14 (collectively, “AbCellera”) and defendant Bruker Cellular Analysis, Inc. (“Bruker Cellular”) ask 15 the Court to resolve their dispute regarding a presentation prepared by PhenomeX’s then-in-house 16 counsel. Dkt. No. 342. The Court finds this dispute suitable for resolution without oral argument. 17 Civil L.R. 7-1(b). For the reasons explained below, the Court denies AbCellera’s requests for 18 relief. 19 I. BACKGROUND 20 As AbCellera explains, the original defendant in this action, Berkeley Lights, Inc., 21 acquired another company and then changed its corporate name to PhenomeX during the 22 pendency of the litigation. Dkt. No. 342 at 1. Between March and October 2023, PhenomeX 23 sought to be acquired. Id. During that time, Dr. George Fox, PhenomeX’s then-in-house counsel, 24 prepared a written presentation regarding the litigation and shared the presentation with 25 potential acquirers, one of whom was Bruker Corporation. Id. at 1, 4. Bruker Corporation later 26 acquired PhenomeX, and the surviving corporation became current defendant Bruker Cellular. 27 See id. at 1; Dkt. No. 335 at 1. 1 update provided during due diligence by PhenomeX to potential acquirers.” Dkt. No. 342 at 2 4. Bruker Cellular claims that the presentation is protected by the attorney-client privilege and the 3 work product doctrine, and that those protections have not been waived by disclosure to the 4 potential acquirers. Id. At the Court’s direction, Bruker Cellular submitted the presentation for in 5 camera review. Dkt. No. 351. 6 II. LEGAL STANDARD 7 A. Attorney-Client Privilege 8 The attorney-client privilege protects from discovery communications concerning legal 9 advice sought from an attorney in his or her capacity as a professional legal advisor, where the 10 communication is made in confidence, is intended to be maintained in confidence by the client, 11 and is not disclosed to a third party. United States v. Martin, 278 F.3d 988, 999-1000 (9th Cir. 12 2002) (citing 8 John H. Wigmore, Evidence § 2292, at 554 (McNaughton rev. 1961)). The 13 privilege extends to confidential disclosures made by a client to an attorney in order to obtain legal 14 advice, as well as an attorney’s advice in response to such disclosures. United States v. Ruehle, 15 583 F.3d 600, 607 (9th Cir. 2009) (citations and quotations omitted). 16 B. Work Product Protection 17 The attorney work product doctrine protects from discovery documents and tangible things 18 prepared by a party or his representative in anticipation of litigation or for trial. Fed. R. Civ. P. 19 26(b)(3); United States v. Sanmina Corp., 968 F.3d 1107, 1119 (9th Cir. 2020) (citation omitted). 20 “To qualify for work-product protection, documents must: (1) be prepared in anticipation of 21 litigation or for trial and (2) be prepared by or for another party or by or for that other party’s 22 representative.” United States v. Richey, 632 F.3d 559, 567 (9th Cir. 2011) (internal quotes 23 omitted). A document is considered prepared “in anticipation of litigation” if it “can be fairly said 24 to have been prepared or obtained because of the prospect of litigation.” ACLU of N. California v. 25 United States DOJ, 880 F.3d 473, 485 (9th Cir. 2018). The doctrine protects both “material 26 prepared by agents for the attorney as well as those prepared by the attorney himself,” Sanmina 27 Corp., 968 F.3d at 1119, and its primary purpose is to “prevent exploitation of a party’s efforts in 1 See Fed. R. Civ. P. 26(b)(3)(A) (work product may be discoverable if the party seeking production 2 shows a “substantial need for the materials to prepare its case and cannot, without undue hardship, 3 obtain their substantial equivalent by other means.”). 4 C. Waiver of Privilege or Protection 5 As a general matter, the attorney-client privilege is waived when a party discloses 6 privileged information to a third party who is not bound by the privilege, or otherwise shows 7 disregard for the privilege. Bittaker v. Woodford, 331 F.3d 715, 719 (9th Cir. 2003); AdTrader, 8 Inc. v. Google LLC, 405 F. Supp. 3d 862, 866-67 (N.D. Cal. 2019). 9 By contrast, a voluntary disclosure of work product to a third party does not always waive 10 work product protection. Such a disclosure waives the protection where it is made to an adversary 11 in litigation or where it is made in a manner that substantially increases the opportunities for 12 potential adversaries to obtain the work product. Sanmina, 968 F.3d at 1121 (citing 8 Charles 13 Alan Wright & Arthur R. Miller, Federal Practice & Procedure § 2024 (3d ed. 2020)); see, e.g., 14 Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 578 (N.D. Cal. 2007) (“[T]he work-product 15 privilege may be waived by disclosure to third parties which results in disclosure to an adversary 16 party.”); Gross v. Scottsdale Ins. Co., No. 24-cv-02069-EJD (VKD), 2025 WL 885853, at *4 17 (N.D. Cal. Mar. 21, 2025) (finding waiver where proponent of protection knew work product had 18 been disclosed to third party as well as in a public filing and took no action for more than a year). 19 In addition, even if the protection is not waived, work product may be discoverable if the 20 party seeking production shows a “substantial need for the materials to prepare its case and cannot, 21 without undue hardship, obtain their substantial equivalent by other means.” Fed. R. Civ. P. 22 26(b)(3)(A). Upon such a showing, a court must nevertheless “protect against disclosure of the 23 mental impressions, conclusions, opinions, or legal theories of a party’s attorney or other 24 representative concerning the litigation.” Fed. R. Civ. P. 26(b)(3)(B). 25 III. DISCUSSION 26 Bruker Cellular argues that Dr. Fox’s presentation qualifies as attorney work product 27 because it reflects his assessment for PhenomeX’s acquisition team of the ongoing litigation 1 business purpose, and that in any event, it could not have been prepared “in anticipation of 2 litigation” because it was prepared “well after the complaint was filed.” Id. at 3. 3 Having reviewed Dr. Fox’s presentation in camera, the Court finds that the document is 4 consistent with Bruker Cellular’s characterization of it and is also consistent with Dr. Fox’s own 5 description of the presentation in his deposition—namely, the presentation was prepared for 6 PhenomeX, describes the status of the litigation, and reflects Dr. Fox’s assessments of various 7 aspects of the litigation. See Dkt. No. 341-4 (Fox dep. 33:19-25, 35:6-36:10). While the 8 presentation also had a business purpose to the extent it was intended to be shared with potential 9 acquirers, that additional purpose does not defeat work product protection. See In re Grand Jury, 10 23 F.4th 1088, 1091-92 (9th Cir. 2021) (distinguishing between the “because of” test for work 11 product protection and “primary purpose” test for attorney-client privilege, and observing that a 12 court “considers the totality of the circumstances and affords [work product] protection when it 13 can fairly be said that the document was created because of anticipated litigation, and would not 14 have been created in substantially similar form but for the prospect of that litigation”). Finally, the 15 Court is not persuaded that Dr. Fox’s presentation fails to qualify as work product merely because 16 the litigation was filed before the presentation was made. AbCellera cites no support for its 17 contrary argument. Rule 26(b)(3) expressly applies to materials prepared by or for a party or its 18 representative in anticipation of litigation or trial, see Fed. R. Civ. P. 26(b)(3), and work product 19 generated during litigation is certainly within the scope of protection contemplated by the work 20 product doctrine. See, e.g, United States v. Nobles, 422 U.S. 225, 238 (1975) (“At its core, the 21 work-product doctrine shelters the mental processes of the attorney, providing a privileged area 22 within which he can analyze and prepare his client’s case. But the doctrine is an intensely 23 practical one, grounded in the realities of litigation in our adversary system.”); Boston Ret. Sys. v. 24 Uber Techs., Inc., No. 19-cv-06361-RS (DMR), 2024 WL 665647, at *4 (N.D. Cal. Feb. 16, 2024) 25 (finding work product protection for counsel’s assessments of both pending and prospective 26 litigation). In sum, Bruker Cellular has shown that Dr. Fox’s presentation qualifies for protection 27 as attorney work product. 1 presentation to potential acquirers. Dkt. No. 342 at 3. However, as noted above, disclosure of 2 work product material to third parties does not necessarily waive work product protection. 3 According to Bruker Cellular, PhenomeX made Dr. Fox’s presentation available to 4 potential acquirers’ counsel in a diligence “data room,” and Dr. Fox later presented the 5 information to the diligence teams for the potential acquirers. Id. at 4. Dr. Fox testified that 6 7 Dkt. 8 No. 341-4 (Fox dep. 36:11-37:25). AbCellera identifies no circumstances indicating that the 9 presentation was disclosed in a manner that substantially increased the likelihood that potential 10 adversaries could obtain its contents. For these reasons, the Court finds no basis to conclude that 11 PhenomeX waived work product protection by disclosing the presentation to potential 12 acquirers during diligence discussions. 13 AbCellera argues, in a footnote, that if the Court finds no waiver of work product 14 protection “[AbCellera] should at least receive a version of the presentation with just attorney 15 mental impressions redacted.” Dkt. No. 342 at 3 n.2. It offers no justification for this demand. 16 As noted above, in the absence of waiver, an opposing party’s work product may be discoverable 17 if the party seeking production shows a “substantial need for the materials to prepare its case and 18 cannot, without undue hardship, obtain their substantial equivalent by other means.” Fed. R. Civ. 19 P. 26(b)(3)(A). AbCellera has made no such showing. 20 Because the Court concludes that the presentation at issue is protected from disclosure by 21 the work product doctrine and that the protection has not been waived, the Court does not reach 22 the questions of whether the presentation is also protected by the attorney-client privilege or 23 whether any such privilege has been waived. 24 IV. CONCLUSION 25 The Court denies AbCellera’s motion to compel production of Dr. Fox’s presentation and 26 /// 27 /// 1 its request for a further deposition of Dr. Fox on that subject. 2 IT IS SO ORDERED. 3 Dated: May 8, 2025 4 <8 5 Virginia K. DeMarchi 6 United States Magistrate Judge 4 8 9 10 11 12

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