Case 1:22-cv-00311-WCB Document 204 Filed 09/14/23 Page 1 of 5 PageID #: 15806
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 22-311 (WCB)
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`IMPOSSIBLE FOODS INC.,
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`Plaintiff,
`
`v.
`
`MOTIF FOODWORKS, INC. and
`GINKGO BIOWORKS, INC.,
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`Defendants.
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`DEFENDANT’S REQUEST FOR LEAVE TO SUPPLEMENT INVALIDITY
`CONTENTIONS AND RESPONSE TO PLAINTIFF’S MOTION TO STRIKE
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jeremy A. Tigan (#5239)
`Lucinda C. Cucuzzella (#3491)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jtigan@morrisnichols.com
`ccucuzzella@morrisnichols.com
`
`Geoffrey A. Kirsner
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor,
`New York, NY 10010
`(212) 849-7000
`
`Sandy Shen
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`1300 I Street, NW, Suite 900
`Washington, D.C. 20005
`(202) 538-8000
`
`Attorneys for Defendant Motif FoodWorks, Inc.
`
`OF COUNSEL:
`
`Joseph M. Paunovich
`Ryan Landes
`Sandra L. Haberny
`Sarah Cork
`Razmig Messerian
`Patrick T. Schmidt
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`865 South Figueroa Street
`10th Floor
`Los Angeles, CA 90017
`(213) 443-3000
`
`Stephen Q. Wood
`Trevor J. Quist
`Derek Huish
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`2755 E. Cottonwood Parkway
`Suite 430
`Salt Lake City, UT 84121
`(801) 515-7300
`
`September 14, 2023
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`

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`Case 1:22-cv-00311-WCB Document 204 Filed 09/14/23 Page 2 of 5 PageID #: 15807
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`Motif respectfully asks the Court to decline Impossible’s request to strike Motif’s disclosure of
`four (not twelve) additional asserted invalidity references that form the basis of Motif’s grounds
`for invalidity.1 Motif’s disclosure does not exceed the number of references the Court permitted
`to be disclosed as of September 1, 2023—Motif is asserting less than the allowed number of
`references—and Impossible is not prejudiced by the disclosure. Indeed, until yesterday,
`Impossible took the position that the Court’s claim construction order alone provided good cause
`to amend its election of asserted claims to assert four additional claims. D.I. 197, 2-3. While
`Impossible withdrew that motion shortly after Motif proposed that the parties stipulate to
`symmetric amendments in an effort to resolve the dispute (see Ex. 1), the lack of prejudice
`Impossible emphasized in its motion is as true today as it was yesterday and there is ample good
`cause for Motif’s amendment as explained below. For these reasons, the Court should deny
`Impossible’s motion and grant Motif leave to supplement its asserted prior art as requested herein.
`
`Good Cause Exists to Supplement Motif’s Asserted Prior Art
`I.
`The “key factor” in a good cause showing is whether the movant has shown diligence in
`discovering amendment was needed and moving thereafter to amend. Brit. Telecomm’ns PLC v.
`IAC/InterActiveCorp, No. CV 18-366-WCB, 2020 WL 3047989, at *2 (D. Del. June 8, 2020).
`Once diligence is established, other pertinent considerations include the new information’s
`importance, evident gamesmanship, and potential prejudice to the opponent. Id.
`
`Motif Acted Diligently to Supplement Its Invalidity References
`A.
`The Court issued its Claim Construction Order less than a month ago. D.I. 176, dated August 15,
`2023. Motif amended its list of asserted prior art two weeks later, on Sept. 1, and now formally
`moves for leave. As Impossible recognizes in its Sept. 8 motion to amend its asserted claims
`following invalidation of the asserted ’761 patent, a motion “within a few weeks of the Claim
`Construction Order” constitutes moving with diligence under the circumstances. D.I. 197, 2, 6.
`
`The Court’s Claim Construction Order Supports Good Cause
`B.
`As Impossible acknowledged, the Scheduling Order permits amendment upon a showing of good
`cause, and expressly identifies the Claim Construction Order as a basis therefor. D.I. 161, 2; D.I.
`197, 3. Good cause exists here for Motif’s supplementation of invalidity references.2
`
`In the August 15, 2023 Claim Construction Order, the Court interpreted the meaning of the
`“animal” terms in Impossible’s asserted claims to “cover all proteins that were not synthesized
`inside an animal, with no limitation as to the similarity of those proteins to those naturally
`occurring in animals.” D.I. 176, 7. This construction necessitated the modest amendment of
`
`1 Motif formally withdrew eight prior art references Impossible objected to. Ex. 2 (attaching
`formal withdrawal notice). Also, Motif has served Impossible with thirty exemplary charts
`concerning the four references at issue here. Ex. 3 (appending excerpted first pages of each chart).
`The Scheduling Order did not require Motif to amend or supplement its contentions on September
`1, 2023, but to narrow the number of references asserted to 27 or fewer. D.I. 161, 1. As Motif has
`never asserted more than 27 references, Motif has always complied with the Scheduling Order.
`2 Notably, Impossible amended its theories in its Final Infringement Contentions after the Claim
`Construction Order, without seeking leave. Motif reserves all rights thereto.
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`Case 1:22-cv-00311-WCB Document 204 Filed 09/14/23 Page 3 of 5 PageID #: 15808
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`Motif’s identification of prior art to add four additional references. First, under the Court’s
`interpretation, a “non-animal” protein does not mean a protein that has the same sequence as one
`found in the genome of plants, microbes, or other non-animal species, as Motif had argued.
`Rather, the Court defined “non-animal” protein purely by how it is made. Second, leaving aside
`the methods of protein production, the proteins that fall within the boundaries of as-construed
`“non-animal” proteins may in fact be identical to proteins that naturally occur in animals.
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`Consequently, the Court’s interpretation of “non-animal” elevates methods of heme-protein
`manufacture to prominence as those methods now essentially define the “non-animal” invention.
`For this reason, Motif has identified four additional prior art references that form the basis of its
`invalidity grounds that teach heme-proteins sourced from non-animal organisms, the use of
`artificial systems to make heme-proteins, and proteins that are chemically identical to natural
`animal-made proteins, all of which embrace the Court’s recent claim construction. Good cause
`thus supports Motif’s request because the supplemented art contains important teachings relevant
`to the as-construed “animal” terms. See 2020 WL 3047989, at *2.
`
`Good cause also exists because Motif’s preliminary invalidity contentions were served on May 5,
`and Impossible did not disclose the basis for any claim construction positions until briefing began
`on June 14. Impossible also did not even produce a single non-public document until July 19.
`These facts individually, and collectively, provide additional good cause for Motif’s amendment.
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`No Prejudice From Motif’s Amendment to Elected Prior Art
`C.
`Even though Motif’s final invalidity contentions are not due for multiple weeks, after Impossible
`objected to the four references, Motif provided Impossible with thirty claim charts setting forth
`Motif’s invalidity theories. Ex. 3. And Motif will comply with the Court’s scheduling order
`requiring final invalidity contentions no later than October 6, 2023. D.I. 37, ¶5.
`
`There is no prejudice—actual or potential—to Impossible. Under the current case schedule,
`Impossible is weeks away from its final claim selection, several months remain in fact discovery,
`neither side has taken a single deposition, and expert reports are not due for nearly six months.
`
`Notably, Impossible identifies no specific difference in infringement or claim construction strategy
`that it would have pursued had the prior art at issue somehow been identified earlier, and thus it
`fails to identify any concrete prejudice that would justify striking Motif’s four references. See
`Huber Engineered Woods LLC v. Louisiana-Pacific Corp., 2022 WL 18707841, at *12 (D. Del.
`Nov. 17, 2022) (recommending denial of motion to strike new prior art references based in part on
`failure to articulate specific prejudice). Impossible claims that it is “faced with the prospect of
`[selecting its final claims] with no knowledge of Motif’s invalidity theories . . . ,” but that is not
`true—as set forth above, Motif has provided element-by-element charts for the four references,
`and Impossible has ample notice to accomplish its final claim narrowing by October 1, 2023.
`
`To find a lack of prejudice associated with Motif’s proposed amendment the Court need to look
`no further than Impossible’s own September 8 motion to amend its asserted claims. D.I. 197.
`There, Impossible noted how an objecting party “must do more than merely claim prejudice; it
`must show that it was unfairly disadvantaged or deprived of the opportunity to present facts or
`evidence which it would have offered, had the . . . amendments been timely.” Id. at 8, quoting
`Bechtel v. Robinson, 886 F.2d 644, 652 (3d Cir. 1989). Impossible cited the case schedule and
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`2
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`Case 1:22-cv-00311-WCB Document 204 Filed 09/14/23 Page 4 of 5 PageID #: 15809
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`status of discovery as being amenable to amendment to contentions. Id. at 2. And, Impossible
`argued that its proposed amendment was not prejudicial because it still left Motif “nearly a month”
`to prepare its final invalidity contentions. Id. at 9. Although Impossible has now withdrawn its
`request to amend its claims, these arguments regarding the lack of prejudice associated with
`Impossible’s proposed amendment apply equally—if not with greater strength—to Motif’s
`proposed amendment of its invalidity references.
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`British Telecomm’ns Is Consistent with Motif’s Supplementation
`D.
`British Telecomm’ns does not address the present situation as, in that case, the defendant had
`served (and revised) its final invalidity contentions before the challenged activity occurred. 2020
`WL 3047989, at *1. In contrast, Motif’s final invalidity contentions are not due for three weeks.
`Nor did British Telecomm’ns turn on prejudice or gamesmanship concerns. Rather, “the court’s
`ultimate denial of the motion for leave to amend the [final] invalidity contentions was based on a
`lengthy discussion of” a “reference’s lack of importance to the case, in addition to the lack of
`diligence.” Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung e.V. v. Sirus
`XM Radio Inc., No. CV 17-184-JFB-SRF, 2022 WL 608143, at *2 (D. Del. Jan. 27, 2022). British
`Telecomm’ns should not govern here as final contentions are not yet due, the references are
`important, and Motif acted transparently and diligently in disclosing references to Impossible.
`
`
`Supplementation Is Warranted Under Delaware Law
`II.
`Supplementation is also warranted here under the Delaware Default Standard, which expressly
`permits parties to supplement their initial contentions. E.g., Sun Pharm. Indus. Ltd. v. Saptalis
`Pharms., LLC, No. CV 18-648-WCB, 2019 WL 2549267, at *2 (D. Del. June 19, 2019) (Bryson,
`J.) (Dist. of Del., Default Standard for Discovery § 4(c), n.3 (“As these [initial claim chart]
`disclosures are ‘initial,’ each party shall be permitted to supplement.”). Impossible’s reliance on
`Taction Tech., Inc. v. Apple Inc. is not be persuasive because it applies another district’s Patent
`Local Rules, which are irrelevant here. 2023 WL 2977728, at *3 (S.D. Cal. Apr. 17, 2023).
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`Moreover, in the District of Delaware, “[t]o determine whether a failure to disclose was harmless,
`courts in the Third Circuit consider the Pennypack factors: (1) the prejudice or surprise to the party
`against whom the evidence is offered; (2) the possibility of curing the prejudice; (3) the potential
`disruption of an orderly and efficient trial; (4) the presence of bad faith or willfulness in failing to
`disclose the evidence; and (5) the importance of the information withheld.” In re ChanBond, LLC
`Pat. Litig., No. 15-CV-842-RGA, 2019 WL 2098316, at *3 (D. Del. May 14, 2019) (addressing
`both good cause and Pennypack to permit reliance on invalidity theory). Following Pennypack,
`exclusion of evidence “is an ‘extreme’ sanction, not normally to be imposed absent a showing of
`willful deception or ‘flagrant disregard’ of a court order.” Id. Here, prejudice, if any, has already
`been mitigated and will be further cured as explained above when Motif serves its final invalidity
`contentions in accordance with the Court’s scheduling order. Motif’s four additional references
`are important and have been provided weeks before final invalidity contentions are due.
`Pennypack likewise supports supplementation here.
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`Conclusion
`III.
`Accordingly, Motif respectfully requests that the Court deny Impossible’s motion and grant
`Motif’s request for leave to supplement its identified invalidity references.
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`Case 1:22-cv-00311-WCB Document 204 Filed 09/14/23 Page 5 of 5 PageID #: 15810
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`Respectfully,
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`/s/ Jeremy A. Tigan
`
`Jeremy A. Tigan (#5239)
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`JAT:lo
`Attachments
`cc:
`All Counsel of Record (via CM/ECF and e-mail)
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