Case 1:22-cv-00311-WCB Document 289 Filed 12/04/23 Page 1 of 5 PageID #: 17946
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 22-311-WCB
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`))))))))))
`
`IMPOSSIBLE FOODS INC.,
`
`Plaintiff,
`
`v.
`
`MOTIF FOODWORKS, INC. and
`GINKGO BIOWORKS, INC.,
`
`Defendants.
`
`OPENING DISCOVERY DISPUTE LETTER TO
`THE HONORABLE WILLIAM C. BRYSON FROM BINDU A. PALAPURA
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew M. Moshos (#6685)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`amoshos@potteranderson.com
`
`Attorneys for Plaintiff Impossible Foods Inc.
`
`OF COUNSEL:
`
`Wendy L. Devine
`Kristina M. Hanson
`Shannon P. Gillespie McComb
`Jessica Ramsey
`Susannah M. L. Gagnon
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, CA 94105
`Tel: (415) 947-2000
`
`Matthew R. Reed
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lori P. Westin
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`12235 El Camino Real
`San Diego, CA 92130
`Tel: (858) 350-2300
`
`Dated: November 16, 2023
`Public Version Dated: December 4, 2023
` 1167588 / 20200.00002
`
`PUBLIC VERSION
`
`

`

`Case 1:22-cv-00311-WCB Document 289 Filed 12/04/23 Page 2 of 5 PageID #: 17947
`
`Dear Judge Bryson:
`
`Plaintiff (“Impossible”) respectfully requests that the Court order Defendant (“Motif”) to
`supplement its response to Interrogatory No. 18 and produce samples of its products.
`
`I.
`
`March 2023—Motif Represents It Has
`
` Heme-Containing Products
`
`Impossible brought suit after Motif announced that it was selling plant-based meat replica
`products containing heme (“Hemami”), specifically three products—a beef burger product, a
`chicken product, and a pork product. D.I. 19, ¶¶ 23-28; Ex. 1. Pursuant to the Scheduling Order
`(D.I. 37, ¶ 2), on January 2, 2023, Impossible identified the accused products as “
`
`extent made, used, sold, and/or offered for sale in the United States.” Ex. 2 at 2.
`
`, to the
`
`On the March 3, 2023 deadline for Motif’s production of “core technical documents related to
`the accused product(s), including but not limited to operation manuals, product literature,
`schematics, and specifications,” Motif produced documents identifying
` food products. Ex. 3.
`Based on Motif’s identification and the limited information in those core technical documents
`(“CTDs”), Impossible exerted substantial efforts preparing initial infringement contentions on
`April 7, 2023 for all
`products.
`
`II.
`
`Discovery Regarding the Composition of the
`
` Products
`
` products—information not
`Thereafter, Impossible diligently sought information about Motif’s
`provided with Motif’s CTDs—including their precise content, how they are made, and the
`circumstances of making, using, selling, and offering to sell each product. That effort included
`requests for samples of each of the
` products—something that Motif resisted for months with
`various excuses (Ex. 4 at 3; Ex. 5 at 3; Ex. 6 at 2-3; Ex. 7 at 1-2) until, on May 22, 2023, the
`Court told the parties that samples of all
` products should be produced. D.I. 88 at 22:20-23:3.
`
` of its own products. On May 24, 2023,
` out of
`May 2023—Motif claims not to possess
`Motif represented for the first time that it did not have possession of any of the food products
`. Ex. 8 at 2.
` of its own products
`When Impossible asked how it is possible that Motif does not possess
`(Ex. 9), Motif responded that, “Motif does not store or maintain samples of the
` accused
`foodstuff product formulations.” Ex. 10 at 1. Motif did not state in May 2023 that any of those
` products (let alone all of them) (1) are “prototypes;” (2) were “not under development” (and
`Motif has yet to explain what that means); (3) had not ever been offered for sale; (4)
`
`
` It was not until months later, on Sept. 29, 2023, that Motif made those
`representations for the very first time. Infra.
`
`
`
`Sept. 2023—Motif claims not to possess the majority of its ingredients. Because of Motif’s
`representation that it could not produce samples of
` of its products, Impossible requested
`samples of each of the ingredients in Motif’s products; however, Motif only produced a fraction
`of the ingredients that its CTDs indicate are in its
` products such that Motif has failed to
`produce a complete set of ingredients for any accused product. Motif again claims that it does
`not have possession of the missing ingredients. Ex. 11 at 4-5.
`
`

`

`Case 1:22-cv-00311-WCB Document 289 Filed 12/04/23 Page 3 of 5 PageID #: 17948
`
`The Honorable William C. Bryson
`November 16, 2023
`
`Page 2
`
` products. Impossible
`October 2023—Motif reveals that it has possession of of the
`confronted Motif with social media indicating that Motif was publicly distributing products that
`Motif represented it did not possess, and again requested samples of all accused products.
`Ex. 12. In response, on October 13 and contradicting its prior representations, Motif produced
`samples of products, and then claimed it does not possess
` of its products or all of the
`ingredients for such products. Ex. 13. Even this revised representation is questionable: Motif
`maintained that it does not possess its
`, yet Motif produced videos of a
`. Exs. 14-15 (screenshots). When confronted with
`its own production, Motif asserted during meet and confer that the videos it produced were not
`Motif’s products (and they did not know what they were).
`
`III.
`
`Discovery Regarding Motif’s Activities Related to Its
`
` Products
`
`On May 26, 2023, Impossible served Interrogatory Nos. 16 and 18 asking for a description of the
`chemical composition of all ingredients in the
` products and identification and description of
`“each instance in which each [product] has been made, used, sold, offered for sale, or imported
`into the United States.” D.I. 89; Ex. 16 at 11, 18. Motif responded on June 26 with a short list of
`documents and a statement that its investigation was ongoing. D.I. 119; Ex. 16 at 11-12, 18-20.
`
`Following meet and confer, on Sept. 29, 2023, Motif supplemented its responses to Nos. 16 and
`18, and for the first time characterized
` of its products—
`
`
`
`
`
` D.I. 223; Ex. 16 at 14-15, 20-22. That new representation came
`long after its required CTD disclosure, six months after initial infringement contentions, and one
`month after final infringement contentions were served. This revelation appears to be an attempt
`to reduce what has been
`actual and accused Motif products for the majority of this case to
`only products in an effort to avoid an infringement adjudication and discovery obligations for
`such products (based only on Motif’s belated and unsupported say-so). It also came well after
`Impossible significantly reduced asserted claims in view of Motif’s representations that it had
` products. And Motif has still produced minimal documentation for the majority of the
`products. For example, for No. 18, Motif’s Sept. 29 response did not provide any specific dates
`of manufacture or use for
` of the “prototype” products. Ex. 16 at 20-22.
`
`
`
`IV. Motif’s Response to Interrogatory No. 18 Is Incomplete
`
`Interrogatory No. 18 seeks fundamental, irrefutably relevant information—a description of the
`details of the making, using, selling, offering for sale, and/or importation of the infringing
`products. While Motif claimed during a November 13, 2023 meet and confer to not understand
`the Interrogatory to require such details (Ex. 17 at 1), that is expressly what is requested in No.
`18. This information is necessarily in Motif’s possession as they are Motif’s products.
`
`This information is particularly important in light of Motif’s gamesmanship and obfuscation
`
`throughout discovery. First, Motif served core technical documents indicating that it has
`products. Then, Motif repeatedly, for months, avoided providing discovery on those products—
`including (1) refusing production of samples without revealing that it did not even have
`possession of products to provide samples of, (2) falsely representing that it did not have
`
`

`

`Case 1:22-cv-00311-WCB Document 289 Filed 12/04/23 Page 4 of 5 PageID #: 17949
`
`The Honorable William C. Bryson
`November 16, 2023
`
`Page 3
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`products that it in fact did possess and distributed publicly during litigation, and (3) continually
`changing their story with respect to their products as if playing a game of “bait-and-switch”.1
`
`Impossible is entitled to know when—if ever—Motif (or its agents) has actually made these
`products. Notably, for
` of its
` products, in response to Interrogatory No. 16 regarding the
`ingredients in the products, Motif could not identify any document related to the ingredients in
`the product aside from the formulation document produced as a CTD. Ex. 16 at 11-15. For
`example, Motif cites no documents indicating that Motif’s
` has ever been made at
`all. If Motif has not made, used, sold, offered for sale, or imported these products, then Motif
`has needlessly complicated discovery by identifying them in the first place and not timely
`correcting that representation, wasted party and Court resources, and severely prejudiced
`Impossible.
`
`V.
`
`Motif Should Produce Samples
`
`If these “prototypes” are in fact Motif products—as Motif has represented them to be—Motif
`should be ordered to produce samples of them and their ingredients. Making a product,
`including a “prototype,” is an act of infringement. Respironics, Inc. v. Invacare Corp., 303 Fed.
`Appx. 868-69, 878-79 (Fed. Cir. 2008) (affirming jury verdict finding infringement of prototype
`device but vacating and remanding on other grounds). The composition of Motif’s products is
`central to the issue of infringement of the Food Product Patents in this case, i.e. whether the
`accused products meet the e.g., protein, sulfur, sugar, and volatile compound limitations. Motif’s
`notably sparse documentation does not resolve that issue and Motif’s products are not publicly
`available. Impossible requested samples of all accused products promptly after fact discovery
`opened, yet still has not received samples of over half of Motif’s products—and while this case
`has been ongoing, Motif has been distributing samples of at least some products that it has failed
`to produce. Under these circumstances, Motif should be ordered to produce samples. Invensas
`Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 287 (D. Del. 2012); Caterpillar, Inc. v. Deere &
`Co., No. 96 C 5355, 1997 WL 399627, at *2 (N.D. Ill. July 11, 1997).
`
`products, but to date has not provided
`Eight months ago, Motif represented that it had
`Impossible with samples of the majority of those products or the ingredients in them and has
`even refused to identify when more than half of the products were supposedly made. Impossible
`has been forced to expend resources and make strategic decisions in view of Motif’s months-
`long representation that it has
` products. Further if Motif succeeds in what appears to be an
`attempt to avoid an infringement adjudication on products it is attempting to recharacterize as
`“prototypes,” Motif may simply re-commence its pursuit of those infringing products at a later
`date. Motif’s obfuscation is a transparent attempt to prejudice Impossible by identifying a
`supposed “product,” months later labeling it a “prototype,” and providing insufficient discovery
`regarding the actual composition of the product. There are only two potential realities—either
`the CTDs that Motif produced relate to fantasy products (and Motif significantly complicated
`this case to burden and prejudice Impossible), or those are actual Motif products, and Motif must
`provide meaningful discovery about them.
`
`1 Motif’s documents indicate that at least in December 2022 (months after this litigation began),
`it sampled at least some of the accused products that have not been produced. Ex. 18.
`
`

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`Case 1:22-cv-00311-WCB Document 289 Filed 12/04/23 Page 5 of 5 PageID #: 17950
`
`The Honorable William C. Bryson
`November 16, 2023
`
`Page 4
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`Respectfully,
`
`/s/ Bindu A. Palapura
`
`Bindu A. Palapura (#5370)
`
`BAP:nmt/10989854/20200.00002
`
`Enclosures
`cc:
`Counsel of Record (via CM/ECF)
`
`