Case 1:22-cv-00311-WCB Document 176 Filed 08/15/23 Page 1 of 22 PageID #: 15192
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 22-311-WCB
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`FILED UNDER SEAL
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`IMPOSSIBLE FOODS INC.,
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`Plaintiff,
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`MOTIF FOODWORKS, INC., and
`GINKGO BIOWORKS, INC.,
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`v.
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`Defendants.
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`CLAIM CONSTRUCTION ORDER
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`In this patent case, plaintiff Impossible Foods Inc. has asserted numerous claims from five
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`patents against defendant Motif Foodworks, Inc.: U.S. Patent Nos. 9,943,096 (“the ’096 patent”);
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`10,039,306 (“the ’306 patent”); 10,863,761 (“the ’761 patent”); 11,013,250 (“the ’250 patent”);
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`and 11,224,241 (“the ’241 patent”). The asserted patents are generally directed to food products
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`that are designed to mimic the taste of meat.1
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`The parties disagree about the proper construction of a number of claim terms from the
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`asserted patents.2 They have filed competing briefs outlining their positions with respect to each
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`1 In this action, Impossible has also asserted claims from U.S. Patent Nos. 10,273,492
`(“the ’492 patent”) and 10,689,656 (“the ’656 patent”), which are directed to species of yeast used
`in the production of food products, against Motif and defendant Ginkgo Bioworks, Inc. On July
`24, 2023, I severed the portion of the case involving Impossible’s claims of infringement of the
`food product patents from the portion of the case involving Impossible’s claims of infringement
`of the yeast patents. Dkt. No. 161 at 1. Accordingly, in this order I have not addressed the claim
`construction issues relating to the yeast patents. See id. at 2.
`2 In the parties’ joint claim construction statement, Dkt. No. 94-1, the parties provided
`competing approaches for numbering the disputed claim terms. For simplicity, I have adopted
`Impossible’s system of numbering the claim terms in the joint claim construction statement and
`the parties’ briefing.
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`1
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`Case 1:22-cv-00311-WCB Document 176 Filed 08/15/23 Page 2 of 22 PageID #: 15193
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`disputed term. Dkt. Nos. 106, 120, 142, 148. On August 9, 2023, I held a claim construction
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`hearing. I address below each of the disputes identified in the parties’ briefing and at the hearing.
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`A. “non-animal” / “free of animal” (Terms 1–4); “heme-containing protein” (Terms
`5–6)
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`The first terms disputed by the parties (“non-animal” and “free of animal”) relate to the
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`provenance of the proteins contained in the claimed food products. Claims 14 and 27 of the ’306
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`patent and claims 1 and 13 of the ’250 patent recite “a non-animal heme-containing protein.”
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`Claims 1 and 22 of the ’241 patent recite a food product that is “free of animal heme-containing
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`protein.” Claim 23 of the ’241 patent recites a food product that is “free of animal products.”
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`Claim 1 of the ’096 patent and claim 12 of the ’761 patent recite products or compositions that
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`“contain[] no animal products.” The parties agree that the claim construction dispute regarding
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`those terms should be resolved consistently across all the asserted patents.
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`The second term disputed by the parties (“heme-containing protein”) is found in certain
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`dependent claims that cover proteins having sequences identical to proteins that occur naturally in
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`animals. Motif asserts that those dependent claims are indefinite because they are inconsistent
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`with the proper construction of the term “non-animal,” which is recited in the independent claims
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`from which those claims depend.
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`The dispute regarding the “non-animal” and “free of animal” terms was previously raised
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`to the court as the basis for a motion to dismiss filed by Motif. Motif argued that Impossible had
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`failed to state a claim for infringement of the Food Product Patents3 because Motif’s products use
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`a protein called “bovine myoglobin,” which occurs naturally in cows but is produced by Motif
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`using yeast. Dkt. No. 31 at 2. Impossible argued that the claims require merely that the protein
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`be derived from a non-animal source, and therefore that Motif’s products fell within the scope of
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`3 The “Food Product Patents” are the ’096, ’306, ’761, ’250, and ’241 patents.
`2
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`Case 1:22-cv-00311-WCB Document 176 Filed 08/15/23 Page 3 of 22 PageID #: 15194
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`the Food Product Patents’ claims. Id. at 2, 4. I denied Motif’s motion because the parties’ positions
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`presented a claim construction dispute not suitable for resolution at the pleading stage. Id. at 4.
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`The parties’ positions in their claim construction briefs largely mirror the positions taken
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`at the motion to dismiss stage of the case. At that stage, Motif argued that the terms at issue “cover
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`only proteins that are not naturally present in animals.” Id. Impossible argued that the terms at
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`issue “cover any proteins that are not derived from an animal source, regardless of whether such
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`proteins are chemically identical to those that are naturally present in animals.” Id.
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`In its claim construction brief, Motif argues that the term “non-animal heme-containing
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`protein” means “a heme-containing protein that does not have the amino acid sequence of any
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`animal heme-containing protein,” and that the term “free of animal heme-containing protein”
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`means “free of any protein that has the amino acid sequence of any animal heme-containing
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`protein.” Dkt. No. 120 at 2. Impossible argues that those terms “cover any proteins that are not
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`derived from an animal source, regardless of whether such proteins are chemically identical to
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`those that are naturally present in animals.” Dkt. No. 106 at 3.
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`Impossible’s position is more persuasive, for three reasons.
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`First, the disclosures in the specifications of the Food Product Patents refer exclusively to
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`the sources from which the ingredients in the claimed food products and compositions are derived,
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`rather than whether the ingredients are chemically distinct from ingredients that occur naturally in
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`animals. See, e.g., ’096 patent, at col. 2, ll. 43–50 (describing a “plant-derived heme
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`protein”); ’306 patent at col. 9, ll. 50–53 (disclosing compositions that “are principally or entirely
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`derived from non-animal sources” as well as those that are “substantially derived from animal
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`sources . . . that are supplemented” with replicas “derived substantially or entirely from non-
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`animal sources”); id. at col. 18, ll. 4–6 (“[I]solated and purified proteins can be derived from non-
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`3
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`animal sources such as plants, algae, fungi (e.g., yeast or filamentous fungi), bacteria, or
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`Archaea.”); ’761 patent, at col. 4, ll. 32–35 (“In some embodiments, said one or more isolated and
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`purified iron-containing proteins are not isolated from an animal. In some embodiments
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`compositions of the invention do not contain any proteins from an animal.”); id. at col. 4, ll. 47–51
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`(comparing “said one or more isolated and purified iron carrying proteins” to “a myoglobin protein
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`derived from an animal source”). Motif has pointed to no disclosure in any of the Food Product
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`Patents that suggests that the claims exclude compositions that are derived from non-animal
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`sources but are nonetheless chemically identical to compositions that are naturally present in
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`animals.4
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`Second, the dependent claims of the ’096 and ’241 patents strongly suggest that the asserted
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`claims are intended to cover proteins that are naturally present in animals but were not derived
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`from animals. For example, claim 2 of the ’096 patent recites a composition in which “the heme-
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`containing protein is selected from the group consisting of” several proteins, including “a
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`myoglobin.” As Impossible points out, several of the proteins recited in claim 2 are present in
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`both plants and animals, including hemoglobin and myoglobin.5 Dkt. No. 142 at 2–3. Moreover,
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`4 At the claim construction hearing, Motif pointed to the following statement in the
`specification of the ’306 patent: “Without being bound by theory, it is believed that by isolating
`and purifying non-animal proteins (e.g., plant proteins), consumables can be made with greater
`consistency and greater control over the properties of the consumable.” ’306 patent, col. 20, ll.
`20–24. That statement does not mean, as Motif contends, that “non-animal proteins” are
`chemically equivalent to “plant proteins.” In the following paragraph, the specification explains
`that “[t]he isolated and purified proteins can be isolated from one or more other components of a
`non-animal source.” Id. at col. 20, ll. 32–33. And the specification adds that the proteins can be
`“recombinantly produced,” by using, for example, “yeast cells.” Id. at col. 20, ll. 64–67. As is the
`case throughout the asserted patents, the discussion in column 20 of the ’306 patent focuses on the
`source of the protein, not its chemical makeup.
`5 Motif asserts in its briefing that myoglobin is “intrinsically an animal muscle protein.”
`Dkt. No. 120 at 3 (emphasis omitted). However, the materials cited by Impossible make clear that
`myoglobin is not found exclusively in animals but may also be found in bacteria, plants, and fungi.
`4
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`claim 3 of the ’096 patent recites a composition “wherein the heme-containing protein comprises
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`[an] amino acid sequence having at least 80% sequence identity to a polypeptide set forth in SEQ
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`ID Nos: 1-26.” Dependent claim 7 of the ’241 patent includes an identical limitation. The
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`specification of the ’096 patent provides that a “heme-containing protein[]” can have at least 70%
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`and up to 100% “sequence identity” with a number of proteins, including “Bos taurus (SEQ ID
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`NO:18) myoglobin,” i.e., myoglobin that naturally occurs in cattle. ’096 patent, col. 10, ll. 7–41.
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`That is, claim 3 of the ’096 patent and claim 7 of the ’241 patent cover a protein that has “at least
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`80% sequence identity” with Bos taurus myoglobin. The presence of those limitations in the
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`dependent claims is a strong indication that the asserted claims are intended to cover proteins that
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`have the same sequences as proteins that occur naturally in animals, as long as the subject proteins
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`are not derived from an animal source.
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`Rather than looking to the dependent claims to inform the proper construction of the “non-
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`animal” terms, Motif asserts that the dependent claims are indefinite because they cannot be
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`reconciled with Motif’s proposed construction of the independent claims. That is, Motif argues
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`that it is impossible for the claimed proteins to have “no animal products,” as Motif construes that
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`term, but also to cover a protein that is chemically identical to one occurring in animals, e.g., Bos
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`taurus myoglobin.
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`The problem with Motif’s position regarding the dependent claims is that it assumes its
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`conclusion. That is, Motif starts with the proposition that claim 1 of the ’096 patent should be
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`construed to exclude proteins identical to those naturally occurring in animals but having no animal
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`provenance. Based on that assumption, Motif argues that the dependent claims, which include
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`Dkt. No. 142-1, Exh. 14, at IF_0014526; see also ’761 patent, col. 3, ll. 10–15 (referring to “ciliate
`myoglobins,” i.e., myoglobins present in single-celled organisms).
`5
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`proteins that are identical to proteins that occur naturally in animals, are inconsistent with the
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`independent claim and therefore are indefinite. But if one does not begin with Motif’s construction
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`of claim 1, the anomaly goes away, and claims 2 and 3, rather than being indefinite, provide
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`“powerful and direct support” for the proposition that claim 1 covers a protein that has no animal
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`provenance but is identical to a protein that occurs naturally in animals. See FG SRC LLC v. Xilinx,
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`Inc., No. 20-601, Dkt. No. 104 at 6 (D. Del. Feb. 7, 2022).6
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`Third, in its internal documents and submissions to the U.S. Food and Drug Administration,
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`Motif has described its own products, which include bovine myoglobin, as being “non-animal”
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`and as containing “animal-free food ingredients.” Dkt. No. 106-1, Exh. 3, at 8 (Motif presentation
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`describing its “food ingredients” as “animal-free”); Dkt. No. 22-2, Exh. 8, at 3 (FDA submission
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`describing Motif’s products as containing “[y]east-derived heme protein (non-animal)”). That
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`extrinsic evidence lends further support to the conclusion that a skilled artisan would understand
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`terms such as “non-animal” and “free of animal products” as referring to the provenance of the
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`composition rather than its chemical makeup.
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`To support its position regarding the “non-animal” terms, Motif points to the prosecution
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`history of the ’306 patent. In the course of prosecuting that patent, Impossible agreed to amend
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`the claims to require that the “heme-containing protein” recited in the claims be “non-animal.”
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`6 In its briefing and at the claim construction hearing, Motif relied on the Federal Circuit’s
`decision in TVnGO Ltd. (BVI) v. LG Electronics Inc., 861 F. App’x 453 (Fed. Cir. 2021). In that
`case, the Federal Circuit held that the asserted claims were invalid as indefinite because the
`dependent claims were “irreconcilably inconsistent” with the independent claims. Id. at 459. The
`court acknowledged, however, that dependent claims can be “valuable sources of enlightenment
`as to the meaning of a claim term.” Id. at 460 (quoting Phillips v. AWH Corp., 415 F.3d 1303,
`1323 (Fed. Cir. 2005) (en banc)). In this case, the dependent claims are inconsistent with the
`independent claims only under Motif’s proposed construction of the disputed terms. If Motif’s
`proposed construction is not assumed to be correct, the dependent claims are strong evidence that
`Impossible’s proposed construction is the better construction.
`6
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`Dkt. No. 120-1, Exh. 6, at 3. At the same time, Impossible removed references to certain specific
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`compounds, including myoglobin, from one of the dependent claims. Id. In Motif’s view, the
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`amendment is an admission that the deleted proteins are not “non-animal” proteins. Dkt. No. 120
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`at 7. It follows, according to Motif, that proteins occurring naturally in animals are outside the
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`scope of the claims regardless of their source. As Impossible points out, however, the amendment
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`deleted proteins that are found in both plants and animals (e.g., myoglobin and peroxidase) and
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`retained proteins that are found in both plants and animals (e.g., hemoglobin). See Dkt. No. 120-
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`1, Exh. 6, at 3. The amendment made during prosecution of the ’306 patent thus does not support
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`Motif’s contention that the amendment amounted to an admission that “non-animal” proteins are
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`those that are chemically distinct from proteins found in animals.
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`For the above reasons, I will adopt Impossible’s proposed constructions of the terms
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`labeled 1–4 in the joint claim construction statement. Those terms will be construed to cover all
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`proteins that were not synthesized inside an animal, with no limitation as to the similarity of those
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`proteins to those naturally occurring in animals. It follows that the terms labeled 5 and 6 in the
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`joint claim construction statement are not indefinite.
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`B. Limitations Specifying Compounds (Terms 7–14)
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`Each of the asserted patents includes claims reciting certain compounds as limitations; the
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`parties dispute the scope of those limitations. Claim 1 of the ’250 patent is generally representative
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`for purposes of the parties’ dispute. That claim recites as follows:
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`1. A meat replica matrix comprising:
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`one or more plant proteins;
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`a sugar selected from glucose, ribose, sucrose, fructose, xylose, maltodextrin, and
`combinations thereof;
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`at least one sulfur compound selected from methionine, cysteine, and thiamine; and
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`7
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`0.01%-5% (by weight of the meat replica matrix) of a non-animal heme-containing
`protein,
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`wherein, upon cooking of the meat replica matrix, at least two volatile compounds
`are generated that are associated with a beef-like aroma.
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`’250 patent, cl. 1.7 The parties’ dispute centers on the “sugar” and “sulfur compound” limitations.
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`In particular, the parties disagree about (1) whether the “sulfur compound” limitation may be
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`satisfied by a large molecule (e.g., a protein) containing, for example, a sulfur-containing amino
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`acid such as cysteine; and (2) whether the compounds must be added to the meat replica matrix
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`“as a flavor precursor.”
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`With respect to the first point, Impossible asserts in its infringement contentions that the
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`“sulfur compound” element of the claim is satisfied because a sulfur compound is included in the
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`proteins that Impossible identifies as representing the “plant proteins” limitation of the claim. Dkt.
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`No. 120-1, Exh. 20, at 30, 32.8 That is, Impossible argues that the plant proteins contain amino
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`acids such as cysteine, and therefore the proteins satisfy the “sulfur compound” limitation of the
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`claim. Motif argues that Impossible’s contention reflects an improper interpretation of the claim
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`language. Instead, Motif asserts, the “compound” terms should not be interpreted to “read on
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`much larger compositions that comprise [sulfur-containing] compounds as part of their building
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`blocks.” Dkt. No. 120 at 18.
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`The problem for Impossible is that both the claims and the patent specifications draw a
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`distinction between “proteins” and “sulfur compounds.” For example, claim 1 of the ’250 patent
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`7 Other asserted claims, such as claim 1 of the ’761 patent, recite sugar and sulfur
`compounds without limiting the particular compounds that may be selected. ’761 patent, cl. 1
`(reciting, inter alia, “a muscle replica comprising . . . at least one sugar compound and at least one
`sulfur compound”). That difference in the claim language does not impact my construction of the
`disputed claim limitations.
`8 The infringement contentions refer to claim 14 of the ’306 patent, but the limitations of
`that claim are equivalent, for purposes of the present dispute, to the limitations of claim 1 of the
`’250 patent.
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`8
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`recites “plant proteins” and a “sulfur compound” as separate elements of the claim. And in
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`discussing the makeup of skeletal muscle, the specification of the ’761 patent explains that skeletal
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`muscle typically consists of, inter alia, 19 percent protein and “2.3 percent other soluble non-
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`protein substances,” such as “sulfur compounds.” ’761 patent, col. 34, ll. 19–27 (emphasis added).
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`It is clear in view of those disclosures that a protein, which is itself a complex organic compound,
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`is not a “sulfur compound” as that term is used in the asserted claims. Accordingly, the “sulfur
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`compound” limitation must be satisfied by a compound that is present separately from a protein.9
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`With respect to the second point, Motif argues that the language “as a flavor precursor”
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`should be added to the court’s constructions of the “compound” terms because the patents’
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`specifications “consistently explain that ‘compounds’ are flavorants added to foodstuffs to
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`replicate natural meat’s flavor/aroma.” Dkt. No. 120 at 19. It is true that the specifications of the
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`asserted patents disclose using sugar and sulfur compounds for the purpose of creating a meat-like
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`flavor in the final food product. See, e.g., ’096 patent, col. 15, ll. 26–27 (identifying “cysteine and
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`glucose” as flavor precursors); ’306 patent, col. 80, ll. 10–50 (identifying compounds present in a
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`“flavor precursor mix”). However, the Federal Circuit has repeatedly cautioned against importing
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`limitations from the specification into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323
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`(Fed. Cir. 2005) (en banc); Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 969 (Fed. Cir. 2022); Hill-
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`Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371–73 (Fed. Cir. 2014). To adopt Motif’s
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`construction would be to do exactly that.
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`9 I note that Impossible’s infringement contentions identify the “plant protein” limitation
`of the claim being satisfied by a protein powder that is used in the production of Motif’s food
`products. Dkt. No. 120-1, Exh. 20, at 5. If, for example, that protein powder were to also contain
`sulfur compounds that exist separately from the protein molecules themselves, those compounds
`could plausibly serve as a basis for satisfying the “sulfur compound” limitation.
`9
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`Motif also argues that an amendment made by Impossible during prosecution amounts to
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`a disclaimer of compounds that are not used as flavor precursors. In the application that resulted
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`in the ’306 patent, Impossible originally sought claims that covered any sugar and any sulfur
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`compound, rather than a limited subset of such compounds. Dkt. No. 120-1, Exh. 21, at 3. The
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`examiner rejected those claims as not satisfying the written description requirement of 35 U.S.C.
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`§ 112. The examiner noted that there was insufficient support in the patent for claiming “any
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`combination of sugars and sulfur compounds.” Id. She added, however, that there was support
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`for claiming “sugars including monosaccharides, sugar alcohols,” and other categories of sugar
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`compounds, as well as “sulfur compounds including methionine, cysteine and thiamine, when used
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`in combination as part of a flavor precursor mix.” Id. Impossible then amended the claims to
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`recite specific categories of sugar and sulfur compounds. Dkt. No. 120-1, Exh. 22, at 10.
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`Motif argues that Impossible’s amendment had the effect of disclaiming compounds that
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`were not “used in combination as part of a flavor precursor mix.” Dkt. No. 120 at 20. Contrary
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`to Motif’s argument, however, it is clear upon reading the file history of the ’306 patent that the
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`examiner’s section 112 rejection was based on the breadth of the “compound” limitations. That
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`is, the examiner did not believe that the specification supported a claim to any possible sugar or
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`sulfur compound, but agreed that the specification could support a claim reciting certain
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`compounds expressly identified in the specification. See Dkt. No. 120-1, Exh. 21, at 3. It is true
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`that the examiner recognized that such compounds were described in the specification as being
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`“part of a flavor precursor,” id., but Impossible did not incorporate that use limitation into its
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`amended claims, Dkt. No. 120-1, Exh. 22, at 10. Presumably, if the examiner had felt that a use
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`limitation were necessary to satisfy the written description requirement, she would have rejected
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`Impossible’s proposed amended claims on that ground, but she did not. Accordingly, I do not
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`10
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`interpret Impossible’s amendment as a disclaimer of compounds not used as a flavor precursor.10
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`The ”compound” terms will therefore not be construed as being limited to compounds used as
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`flavor precursors.
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`C. “replica” (Terms 15–17)
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`Claim 1 of the ’761 patent, the only independent claim of that patent, requires, inter alia,
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`a “muscle replica” and a “fat tissue replica,” wherein the muscle and fat replicas “are assembled
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`in a manner that approximates the physical organization of meat.” The parties have three disputes
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`regarding the “replica” terms: (1) whether the requirement that the replicas be assembled “in a
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`manner that approximates the physical organization of meat” renders the claim indefinite; (2)
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`whether the muscle replica and fat tissue replica must be “separate”; and (3) whether the replica
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`may contain any of the actual material being replicated.
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`1. “approximates the physical organization of meat”
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`Motif argues that the claims of the ’761 patent are invalid due to indefiniteness because a
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`skilled artisan would not understand the “metes and bounds” of the claim limitation requiring the
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`replicas to “approximate the physical organization of meat.” Dkt. No. 120 at 11. Impossible
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`argues that the specification provides sufficient guidance as to the scope of that limitation.
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`10 For the first time in its sur-reply brief, and again at the claim construction hearing, Motif
`asserted that a declaration filed during prosecution of the application that became the ’306 patent,
`the “Davis Declaration,” amounted to a disclaimer of “trace sugars/sulfurs in plant material.” Dkt.
`No. 148 at 6. Impossible relied on the Davis Declaration to show that a prior art food product
`contained “no more than 0.15 mM of sulfur-containing free amino acids,” Dkt. No. 120-1, Exh.
`22, at 18. At the same time, Impossible amended claims 1, 7, and 47 of the application to require
`a “sulfur compound.” Id. at 10. The discussion of the Davis Declaration in conjunction with that
`amendment amounts to, at most, a disclaimer of food products containing only trace amounts of a
`sulfur compound. It does not bear on the intended use of the sulfur compound. Accordingly, the
`Davis Declaration does not support reading a “flavor precursor” limitation into the “compound
`terms.”
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`11
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`The Supreme Court has explained that a patent is invalid for indefiniteness “if its claims,
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`read in light of the specification delineating the patent, fail to inform, with reasonable certainty,
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`those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc.,
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`572 U.S. 898, 901 (2014). The Court has recognized that the definiteness requirement “mandates
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`clarity, while recognizing that absolute precision is unattainable.” Id. at 910. In applying that
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`standard, the Federal Circuit has instructed courts to examine whether the patent provides
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`“objective boundaries” to a skilled artisan regarding the scope of the claims. Niazi Licensing Corp.
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`v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022)
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`The specification of the ’761 patent alludes to the “physical organization” of meat at
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`various points in the “Summary of the Invention” section, and then includes a single paragraph
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`that provides more detail about the meaning of that term. That paragraph recites as follows:
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`The physical organization of the meat substitute product can be manipulated by
`controlling the localization, organization, assembly, or orientation of the muscle,
`fat, and/or connective tissue replicas described herein. In some embodiments the
`product is designed in such a way that the replicas described herein are associated
`with one another as in meat. In some embodiments the consumable is designed so
`that after cooking the replicas described herein are associated with one another as
`in cooked meat. In some embodiments, one or more of the muscle, fat, and/or
`connective tissue replicas are combined in a manner that recapitulate the physical
`organization of different cuts or preparations of meat. In an example embodiment,
`the replicas are combined in a manner that approximates the physical organization
`of natural ground meat. In other embodiments, the replicas are combined in a
`manner that approximates different cuts of beef, such as, e.g., ribeye, filet mignon,
`London broil, among others.
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`’761 patent, col. 23, ll. 24–41.
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`Essentially, that paragraph informs a skilled artisan that the “physical organization” of the
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`meat refers to some combination of the “localization, organization, assembly, or orientation of the
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`muscle, fat, and/or connective tissue replicas described herein,” id. at col. 23, ll. 25–27, so as to
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`approximate the physical form of “different cuts or preparations of meat,” id. at col. 23, ll. 34–36.
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`What is missing, however, is a disclosure of how the replicas could be combined for that purpose,
`12
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`Case 1:22-cv-00311-WCB Document 176 Filed 08/15/23 Page 13 of 22 PageID #: 15204
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`as well as an objective indication of how closely the replicas must approximate the physical
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`organization of a particular cut of meat.11
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`
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`Impossible argues that Figures 15 and 16 of the ’761 patent provide that guidance to a
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`skilled artisan. Those figures depict examples of meat products that were produced in accordance
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`with the disclosures of the ’761 patent specification. A colorized version of Figure 15 of the ’761
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`patent is reproduced below.
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`
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`Dkt. No. 106 at 8.
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`
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`The problem for Impossible is that although Figures 15 and 16 provide examples of
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`products that approximate the physical organization of meat, there is no objective boundary
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`
`11 In fact, the specification of the ’761 patent suggests that such a boundary exists without
`explaining what that boundary is. For example, the specification notes that prior art meat
`substitutes “fail[ed] to replicate the experience of cooking and eating meat,” in part because those
`products had “a texture and mouthfeel that are more homogenous than that of equivalent meat
`products.” ’761 patent, col. 1, ll. 41–48. In other words, the inventors sought to develop a food
`product that better approximated the physical organization of meat. But there is no indication
`whether the physical organization of the prior art food products would resemble meat sufficiently
`to fall within the scope of the claims of the ’761 patent.
`13
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`Case 1:22-cv-00311-WCB Document 176 Filed 08/15/23 Page 14 of 22 PageID #: 15205
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`defining how closely a particular product must mimic the physical organization of meat to fall
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`within the scope of the claims.12 For example, a wiffle ball or a white foam ball with stitches
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`printed on it may be said to “approximate the physical organization” of a baseball, but so too might
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`a sheet of paper that has been crumpled into a rough sphere. And as Motif’s expert, Dr. Jerrad
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`Legako, pointed out in his declaration, “the phrase ‘physical organization of meat’ is not a term of
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`art with any specific or recognized meaning in the field of food science.” Dkt. No. 122 ¶ 116. To
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`be sure, the ’761 patent specification explains that the replicas can be “manipulated” to mimic the
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`physical organization of meat, but it contains no indication of what level of manipulation would
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`be required to sufficiently approximate that physical organization to fall within the scope of the
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`claims.13 ’761 patent, col. 23, ll. 24–41.
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`Accordingly, the claims of the ’761 patent “fail to inform, with reasonable certainty, those
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`skilled in the art about the scope of the invention,” and those claims are therefore invalid for
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`indefiniteness. See Nautilus, 572 U.S. at 901. Because the claims of the ’761 patent are invalid
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`for indefiniteness, I need not address the remaining disputes regarding the “replica” terms.
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`12 An objective boundary could be established by, for example, evidence that a skilled
`artisan would understand what it means to “approximate” the physical organization of meat. As
`discussed with respect to the “aroma” terms below, in responding to Motif’s indefiniteness
`arguments regarding the aroma limitations Impossible cited an expert declaration and various
`pieces of literature to support its contention that a skilled artisan could objectively determine
`whether a particular compound is “associated” with a beefy or meaty aroma. Impossible has made
`no such showing with respect to whether a particular composition “approximates the physical
`organization of meat.”
`13 The only other evidence cited by Impossible in support of its position that the limitation
`is not indefinite is Motif’s petition for inter partes review (“IPR”) of the ’761 patent. Impossible
`argues that the petition shows that “Motif and its expert were able to understand the scope of [the
`term] with reasonable certainty for purposes of Motif’s unsuccessful IPR petition.” Dkt. No. 106
`at 10. Of course, in an IPR proceeding, the Patent Trial and Appeal Board is not permitted to
`invalidate claims for indefiniteness, so it is unsurprising that Motif did not c