Case 1:22-cv-00311-WCB Document 290 Filed 12/04/23 Page 1 of 5 PageID #: 18023
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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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`JURY TRIAL DEMANDED
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`))))))))))
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`IMPOSSIBLE FOODS INC.,
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`MOTIF FOODWORKS, INC. and
`GINKGO BIOWORKS, INC.,
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`Plaintiff,
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`v.
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`Defendants.
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` RESPONSIVE DISCOVERY DISPUTE LETTER TO
`THE HONORABLE WILLIAM C. BRYSON FROM BINDU A. PALAPURA
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`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
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`Attorneys for Plaintiff Impossible Foods Inc.
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`OF COUNSEL:
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`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
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`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
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`Dated: November 20, 2023
`Public Version Dated: December 4, 2023
`/ 20200.00002
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`PUBLIC VERSION
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`

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`Case 1:22-cv-00311-WCB Document 290 Filed 12/04/23 Page 2 of 5 PageID #: 18024
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`Dear Judge Bryson:
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`Plaintiff (“Impossible”) respectfully requests that the Court deny Defendant (“Motif”)’s requests.
`Several are moot and the remaining are unsupported. Motif’s motion incorrectly states that
`Impossible’s responses were served on April 14 and “corrected” on April 20. D.I. 265 at 1.
`Impossible’s responses were timely served on April 17 and pursuant to § 2.5 of the Protective
`Order, Impossible served a redacted version on April 20. D.I. 55; Ex. 1. Also, prior to Motif
`seeking the briefing schedule for this motion, Impossible agreed to supplement its responses to
`several interrogatories addressed in Motif’s motion no later than November 20. Those
`supplements render a large portion of Motif’s motion moot. Ex. 5.
`I.
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`Interrogatory No. 2
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`Motif’s motion raises a complaint that was mooted in meet and confer on November 13 (before
`Motif sought a briefing schedule). This interrogatory seeks the first public disclosure of the
`claimed invention. Impossible responded that there was no such disclosure before the priority
`date—which Impossible stated in response to No. 3 is January 13, 2014.1 Impossible further
`responded that the Impossible Burger was first publicly disclosed in 2014. During November 13,
`2023 meet and confer, Impossible explained that the burger was not disclosed in the 12 days in
`2014 before the priority date, and agreed to supplement the response to No. 2 to state so and
`identify related documents. Impossible agreed to provide that and other supplementation in 1
`week—on November 20. D.I. 264-1, Ex. 17 at 4. Impossible has done so, and Motif’s
`complaint is moot. Motif’s unsupported argument that its complaint about No. 3 somehow
`impacts No. 2 fails. The first public disclosure was after the latest possible priority date.
`II.
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`Interrogatory No. 3
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`Motif raises an issue that was mooted prior to Motif seeking a briefing schedule. Impossible
`agreed to supplement its response to provide identification of exemplary support in priority
`documents. Impossible agreed to do so by November 20 and has now done so.
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`Motif’s second complaint—that Impossible’s response to No. 3 cites more than one priority
`date—is an issue of Motif’s own making. As stated in Impossible’s response, Impossible
`contends that the priority date for all asserted claims is January 13, 2014. D.I. 265-1, Ex. D at 9.
`That contention is consistent with this Court’s construction of the claims—which adopted the
`position that Motif advocated for—the “sulfur compound” limitation must be satisfied by a
`compound that is present separately from a protein. D.I. 176 at 8-9. That is what Motif and its
`expert, Dr. McGorrin, argued was the correct construction. D.I. 120 at 17-20; D.I. 121, ¶ 21.
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`However, prior to the Markman proceedings, Motif and its expert (Dr. Tarte) took a different
`position before the PTAB. In its Dec. 7, 2022 petition for IPR of U.S. Patent No. 9,943,096,
`Motif and its expert argued that pea flour meets the sulfur compound limitation of the claims.
`Ex. 2 at 12. Dr. Tarte’s declaration in support of that petition states that Motif’s counsel
`informed Dr. Tarte that “in an inter partes review, the Patent Trial and Appeal Board interprets
`claims in the same way as a district court would.” Ex. 3, ¶ 29. However, at his Sept. 7, 2023
`deposition (after this Court’s Aug. 15, 2023 claim construction order), Dr. Tarte maintained that
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`1 Impossible’s response to Interrogatory No. 3 further states that if Motif and Motif’s experts’
`interpretation of claim scope is accepted, then the priority date is earlier than January 13, 2014.
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`Case 1:22-cv-00311-WCB Document 290 Filed 12/04/23 Page 3 of 5 PageID #: 18025
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`The Honorable William C. Bryson
`November 20, 2023
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`the claims are invalid based on the pea flour disclosure and testified that Motif’s counsel told
`him “that the board is not required to take the same construction as a district court.” Ex. 4 at
`99:11-16.
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`Page 2
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`Thus, even having obtained the construction that it advocated for, Motif is advocating for a
`different scope before the PTAB. The scope of the claims necessarily impacts the priority
`support analysis. As Impossible’s interrogatory response explains, if Motif’s IPR interpretation
`of the claims (regarding the sulfur compound limitation and some or all of 4 other claim
`limitations) is applied, then an earlier priority date is applicable. D.I. 265-1, Ex. D at 9-10.
`Motif’s motion does not even acknowledge that explanation in Impossible’s interrogatory
`response, and Motif cannot properly address it for the first time in reply. Del. L. R. 7.1.3(c)(2).
`Motif’s complaint is a complaint about Motif’s own self-serving, inconsistent claim construction
`positions. Motif would like the claims to be broader for purposes of validity, and narrower for
`purposes of avoiding infringement. It is Motif that insists on two claim scopes; Impossible’s
`interrogatory response merely accounts for that.
`III.
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`Interrogatory No. 12
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`Motif’s arguments regarding the purported relevance of Impossible’s discussions with
`Impossible’s vendors or licensees about Motif lack any merit or legal authority. First, “the
`timing and scope of Impossible’s awareness of Motif’s activities” is the subject of No. 5 (D.I.
`265 at 2)—an interrogatory that is not addressed in Motif’s motion because Motif does not argue
`that Impossible’s response is deficient. D.I. 265-1, Ex. D at 13-16. Second, Motif has no claim
`for interference with “Motif’s business relationships” and, therefore, provides no basis for
`obtaining discovery. Third, the conclusory assertion that such information is related to
`“equitable defenses” does not establish anything as Motif identifies no defense or any authority.
`Finally, the assertion that this information is relevant to whether Impossible delayed in filing suit
`does not support this request. To the extent that delay is even relevant to irreparable harm in the
`context of a permanent injunction, Motif already has the facts regarding Impossible’s pre-suit
`awareness of Motif’s activities in Impossible’s response to No. 5. Moreover, Motif did not
`commercially launch its food products until May 2023, over a year after Impossible brought this
`suit. D.I. 264-1, Ex. 16 at 20.
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`Regardless, a reasonable investigation did not reveal the existence of any such communications,
`and Impossible supplemented its response accordingly. While Motif’s counsel stated during
`meet and confer that they were “aware” of a vendor with whom Impossible had allegedly
`discussed Motif, despite Impossible’s request, Motif has not identified that vendor so that
`Impossible could investigate. D.I. 264-1, Ex. 17 at 4. Motif’s request should be denied.
`IV.
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`Interrogatory Nos. 6 & 14
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`No. 6 seeks “validity, infringement, and damages analyses.” Impossible responded that all such
`information is privileged; there is no non-privileged information to discover. That privileged
`information is “the circumstances of Impossible’s first anticipation of potential litigation against
`Motif” that are sought by the Interrogatory. D.I. 265 at 2. Motif argues that what it actually
`wants are facts such as “the date Impossible first anticipated litigation against Motif and the
`Impossible employees involved in the decision to sue Motif” but offers no explanation of
`relevance of such information other than a wholly conclusory statement that it “relate[s] to
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`Case 1:22-cv-00311-WCB Document 290 Filed 12/04/23 Page 4 of 5 PageID #: 18026
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`Page 3
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`The Honorable William C. Bryson
`November 20, 2023
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`Impossible’s request for injunctive relief, and whether Impossible did or did not implement a
`litigation hold.” Id. To the extent that this conclusory argument relates to supposed delay in
`bringing suit, as explained above with respect to No. 12, Motif already has the facts related to
`Impossible’s awareness of Motif’s activities. Regarding Motif’s reference to a litigation hold,
`that is not the information called for by No. 6, and again, Motif fails to explain any relevance or
`provide any supporting authority. To the extent that Motif seeks to challenge a claim of Work
`Product Privilege—Motif’s motion does not identify any such dispute, and indeed Motif has
`raised no such dispute with Impossible.
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`Regarding No. 14, Motif does not identify any claim, defense, or even issue in this case to which
`the requested information is relevant. To the extent that Motif intends to argue in reply that the
`relevance is the same as Motif’s conclusory argument for No. 6 (i.e., “relate[s] to Impossible’s
`request for injunctive relief, and whether Impossible did or did not implement a litigation hold”),
`it fails for the same reasons. During meet and confer, Motif stated that it was seeking
`engagement agreements with private investigators and Impossible noted that Motif received
`those agreements in briefing on Motif’s failed Motion to Compel. D.I. 76, Exs. 1-2. Impossible
`did not agree that such information is relevant to any issue in this case, because it is not. Motif’s
`motion as to Nos. 6 and 14 should be denied.
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`V.
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`Interrogatory No. 9
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`Motif’s motion raises yet another complaint that is now moot. Motif demanded that Impossible
`supplement No. 9 generally relating to damages. The dispute arose because Motif demanded that
`Impossible supplement on the very day in late September that Motif identified and produced
`thousands of pages of documents providing some of the information regarding Motif’s making,
`using, or selling of the Accused Products which Impossible needed. D.I. 264-1, Ex. 16 at 23-24.
`Note that Impossible says “some” because Motif’s production still leaves many holes and
`questions. Id. Now that Impossible has had the opportunity to review the produced pages, it has
`supplemented its response—as Impossible told Motif would happen before Motif brought this
`motion. Thus, Motif’s complaint is moot.
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`VI.
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`Interrogatory Nos. 4 and 8
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`Impossible did not “refuse” to provide a date by which it would supplement; rather, Impossible
`promised to provide a date certain shortly; yet Motif moved anyway. Now, Impossible has
`served its supplements and the issues are moot.
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`As for No. 4, Motif’s arguments lack merit. It is Motif who asserts that it did not make any
`commercial sales of food products until after it was sued for infringement. D.I. 264-1, Ex. 16 at
`20-21. As such, Motif was on actual notice under 35 U.S.C. § 287 by virtue of this suit once it
`began selling, and marking is irrelevant. As for No. 8, Motif’s only complaint was that it
`requested more information for “nexus” with respect to secondary considerations. Impossible
`has supplemented its contentions regarding nexus (as it agreed to do before Motif brought this
`motion) and, as such, Motif’s motion is moot.
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`

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`Case 1:22-cv-00311-WCB Document 290 Filed 12/04/23 Page 5 of 5 PageID #: 18027
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`The Honorable William C. Bryson
`November 20, 2023
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`BAP:mes/11172866/20200.00002
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`Enclosures
`cc:
`Counsel of Record (via CM/ECF)
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`Page 4
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`Respectfully,
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`/s/ Bindu A. Palapura
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`Bindu A. Palapura (#5370)
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