Case 1:22-cv-00311-WCB Document 314 Filed 12/15/23 Page 1 of 6 PageID #: 18356
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`v.
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`Defendants.
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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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`JOINT LETTER TO THE HONORABLE WILLIAM C. BRYSON ON BEHALF
`OF THE PARTIES SUBMITTING JOINT CLAIM CONSTRUCTION CHART
`
`
` 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.
`
`
`Jeremy A. Tigan (#5239)
`Lucinda C. Cucuzzella (#3491)
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`1201 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`(302) 658-9200
`jtigan@morrisnichols.com
`ccucuzzella@morrisnichols.com
`
`Attorneys for Defendant Motif FoodWorks, Inc.
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`
`Dated: December 15, 2023
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`
`
`
`
`
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, Delaware 19801
`(302) 984-6300
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Attorneys for Defendant Ginkgo Bioworks, Inc.
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`
`

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`Case 1:22-cv-00311-WCB Document 314 Filed 12/15/23 Page 2 of 6 PageID #: 18357
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`Dear Judge Bryson:
`
`Pursuant to Paragraph 13 of the Amended Scheduling Order (D.I. 161), the parties jointly write
`regarding claim construction issues and to submit the parties’ Joint Claim Construction Chart
`(attached as Exhibit A).
`
`Impossible’s Position
`
`During the parties’ meet and confer two days ago, Ginkgo incorrectly asserted that it is entitled
`to further explanation of the plain and ordinary meaning of the claim terms that Ginkgo contends
`are indefinite or for which Ginkgo seeks construction, and today, for the first time, Ginkgo
`requests that the Court amend the briefing schedule in a manner that the Court has already
`rejected. July 24, 2023 Transcript at 31:4-32:9 (excerpt attached as Exhibit B). In making these
`requests, Ginkgo seeks to shift a burden it bears to Impossible and ignores that Impossible and
`Motif previously submitted claim construction briefs setting forth their positions on the disputed
`claim terms. Ginkgo’s requests should be denied.
`
`First, Ginkgo proposes that Terms 1, 6, and 8 are indefinite, thus Ginkgo bears the burden of
`establishing that a skilled artisan would not understand the applicable claim terms with
`reasonable certainty. Masimo Corp. v. Philips Elec. N. Am. Corp., No. 09-80-LPS, 2016 WL
`6542726, at *19 (D. Del. Oct. 31, 2016) (“A patent is presumed to be valid. [A] party alleging
`indefiniteness must prove by clear and convincing evidence that the claims fail to ‘inform those
`skilled in the art about the scope of the invention with reasonable certainty.’” (quoting Nautilus,
`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014))); see also D.I. 106, 9–10. Ginkgo’s
`indefiniteness positions do not obligate Impossible to set forth a proposed construction. Indeed,
`in claim construction proceedings regarding the Food Product patents in this matter, Motif
`contended that several claim terms were indefinite, Impossible contended those terms should be
`given their plain and ordinary meaning, and the Court agreed with Impossible. E.g., D.I. 176 at
`7, 18-21. Ginkgo’s request that the Court amend the schedule now to obligate Impossible to
`brief issues for which Ginkgo bears the burden is not supported by any fact or law.
`
`Second, Ginkgo ignores that the claim construction and indefiniteness contentions that Ginkgo is
`raising are the subject of briefing and expert declarations previously submitted by both
`Impossible and Motif. Thus, Ginkgo’s claim that it does not have any explanation of
`Impossible’s positions is false. The prior briefing relates to at least Ginkgo’s Terms 1 and 2.1
`Ginkgo’s other terms appear to merely re-package the same disputes. For example, the meaning
`of Term 7—“wherein each nucleic acid sequence is operably linked to a methanol-inducible
`promoter element”—overlaps with “operably linked” and “promoter element.” “Promoter
`element” is Term 1 (and is the subject of prior briefing by Impossible and Motif), and the parties
`have agreed regarding the construction of “operably linked.” Likewise, Term 3 “from P.
`pastoris,” is not a unique term—it is a portion of Term 2, which was the subject of prior briefing
`by Impossible and Motif. The remaining disputed terms (Terms 4 and 5) are clear on their
`face—as the parties discussed during meet and confer—and do not need to be re-written merely
`because Ginkgo has raised them for construction. “The appropriate starting point for claim
`construction is always with the language of the asserted claim itself” and, “[i]n general, words
`
`1 Ginkgo chose to break Term 2 into Terms 2a, 2b, and 2c for charting purposes.
`
`

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`Case 1:22-cv-00311-WCB Document 314 Filed 12/15/23 Page 3 of 6 PageID #: 18358
`
`The Honorable William C. Bryson
`December 15, 2023
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`used in a claim are accorded their ordinary and customary meaning.” Cat Tech LLC v.
`TubeMaster, Inc., 528 F.3d 871, 884 (Fed. Cir. 2008) (internal citations and quotations omitted).
`For example, “a nucleic acid molecule encoding [x] and [y]” (Term 5) does not require
`construction and plainly refers to a nucleic acid that “encodes.” E.g., ’656 patent, 2:12-15 (“In
`some embodiments, the methylotrophic yeast cell further includes a nucleic acid molecule that
`includes at least one heterologous nucleic acid encoding a polypeptide[.]”).
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`Page 2
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`Ginkgo’s citation to a transcript in an unrelated matter before Chief Judge Connolly does not
`change these facts. That matter did not involve the patents or issues here, nor did it involve
`indefiniteness contentions or issues that had been previously briefed.
`
`Finally, in support of its belated complaint regarding the briefing schedule, Ginkgo incorrectly
`states that “[i]n securing amendment of the pleadings for the third time, Impossible convinced
`this Court to require Ginkgo to file its Markman brief first.” Not so. Rather, the current
`scheduling order arose because claim construction proceedings were already underway between
`Impossible and Motif when Ginkgo was added as a defendant. Ginkgo has had access to that
`briefing since at least August 1, 2023—including all of Impossible’s arguments and supporting
`documents and declarations. D.I. 94-1, 106, 107, 120, 142, 144. Moreover, during the July 24,
`2023, scheduling conference (by which time the claim construction briefing from Impossible and
`Motif was complete), Ginkgo’s counsel confirmed that the current briefing schedule was
`acceptable. Ex. B, July 24, 2023 Transcript at 32:20-33:18. The parties have met and conferred,
`Ginkgo has known the timing of this briefing and has had the benefit of all the prior briefing on
`these patents for over four months, and there is no reason to amend the schedule in any respect. 2
`
`Ginkgo’s Position
`
`Impossible’s proposed construction of “plain and ordinary meaning” for all eight disputed claim
`terms, without further explanation, is improper. At the parties’ meet and confer on December
`13, 2023, Impossible refused to tell Ginkgo what it believes the “plain and ordinary meaning” of
`the disputed claim terms actually is. As a consequence, the meet and confer was unproductive,
`the extent of the claim construction disputes between the parties is unclear, and Ginkgo is unduly
`prejudiced by not having notice of Impossible’s actual constructions. This prejudice is
`particularly acute because, the Court may recall, Ginkgo is slated to serve the opening claim
`construction brief on January 5, 2024. D.I. 161 at 7. Thus, Ginkgo will be made aware of
`Impossible’s actual arguments only after Ginkgo submits its opening brief. This is unfair to
`Ginkgo and burdensome to the Court.
`
`Impossible’s sandbagging should not be tolerated. Judges in this district have held that when a
`party asserts that a claim term should be given its “plain and ordinary meaning,” the party must
`
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`2 Impossible received Motif’s portion of this letter at 3:30 p.m. Eastern Time today. As the
`“correspondence” Motif cites was provided to Impossible at 4:41 p.m., Impossible will not
`substantively respond here. At the Court’s request, Impossible will investigate and respond.
`Regarding Motif’s complaints regarding Impossible’s plain and ordinary meaning contentions, it
`raised no such issue in prior briefing, and it is wrong for the same reasons Impossible discusses
`here with respect to Ginkgo.
`
`

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`Case 1:22-cv-00311-WCB Document 314 Filed 12/15/23 Page 4 of 6 PageID #: 18359
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`Page 3
`
`The Honorable William C. Bryson
`December 15, 2023
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`articulate what that “plain and ordinary meaning” is so that disputes can be properly presented to
`the court. E.g., Digi Portal LLC v. Party City Co., C.A. No. 20-1593-MN (D. Del. Jan. 7, 2022)
`(D.I. 27, Order) (ordering party to articulate “what it contends is the plain and ordinary meaning
`for each of those terms”); CAO Lighting, Inc. v. GE Lighting, Inc., C.A. No. 20-681-MN (D. Del.
`Sept. 24, 2021) (D.I. 93, Order) (ordering parties to set forth what they contend the plain and
`ordinary meaning is). Indeed, as the Federal Circuit cautioned in O2 Micro Intern. Ltd. v.
`Beyond Innovation Tech. Co., Ltd. “[a] determination that a claim term ‘needs no construction’
`or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one
`‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’
`dispute.” 521 F.3d 1351, 1361-62 (Fed. Cir. 2008).
`
`This Court should hold that Impossible’s failure to propose claim constructions in a timely
`fashion constitutes waiver of any proposed constructions. As Chief Judge Connolly recently
`cautioned to the bar of this Court, failure by a party to provide any explanation beyond “plain
`and ordinary meaning” is tantamount to waiver of the opportunity to present a position. As he
`explained, “I am tempted to say the next time I get this situation . . . [where] one side, the
`plaintiff[,] says, oh, plain and ordinary meaning and offers no alternative definition and all it
`does is criticize the defendant[’s construction], which there’s some actual support for, [then] I
`don’t hold a hearing. I’m just going with the defendant. I was really tempted to do that in this
`case. So get the word out.” Volterra Semiconductor LLC v. Monolithic Power Systems, Inc.,
`C.A. No. 19-2240-CFC-SRF, at 22:22-23:7 (D. Del. Nov. 12, 2021) (transcript) (excerpt attached
`as Exhibit C). Courts in other districts have similarly had little patience for such gamesmanship.
`Hybrid Audio, LLC v. Asus Computer International Inc., No. 3:17-cv-05947-JD, 2022 WL
`3348594, at *1 & *3 (N.D. Cal. 2022) (finding parties had forfeited formal claim constructions
`by arguing “plain and ordinary meaning” without more).
`
`A waiver order is appropriate here. In securing amendment of the pleadings for the third time,
`Impossible convinced this Court to require Ginkgo to file its Markman brief first. See Ex. B,
`July 24, 2023 Telephonic Status Conference, transcript at 30:11-31:19. It is now taking
`advantage of that situation to prejudice Ginkgo, and to delay and multiply these proceedings by
`failing to timely disclose its real positions. Ginkgo requests that this Court send an appropriate
`message to Impossible that this conduct will not be tolerated, consistent with Chief Judge
`Connolly’s suggestion.
`
`Alternatively, the Court should order Impossible to immediately say what it contends the plain
`and ordinary meanings of the disputed terms are. In addition, it is unfair for Ginkgo to respond
`first to Impossible’s belated actual constructions without sufficient time to prepare over the
`holiday period. Ginkgo requests that, in addition to requiring that Impossible disclose its actual
`position, the Court also reset the schedule to require that Impossible file the opening brief on
`January 5, 2024, Ginkgo and Motif file their respective responsive briefs on January 19, 2024,
`Impossible file its reply on January 26, 2024, and Ginkgo and Motif file their respective sur-
`replies on February 2, 2024. If the Court still wishes Gingko to file the opening brief, Ginkgo
`respectfully requests at least a two-week extension of all dates in the current briefing schedule so
`that it has sufficient time over the holidays to consider and address Impossible’s actual
`constructions once they are disclosed, and to have a genuine meet and confer with Impossible.
`
`

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`Case 1:22-cv-00311-WCB Document 314 Filed 12/15/23 Page 5 of 6 PageID #: 18360
`
`The Honorable William C. Bryson
`December 15, 2023
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`Motif’s Position
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`Page 4
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`Motif joins Ginkgo’s position in full. Motif likewise objects to Impossible’s failure to meet and
`confer adequately by again improperly refusing to explain its positions in advance of claim
`construction briefing. Previously, Motif “dispute[d] [Impossible’s] inclusion of the statement
`‘[t]he parties met and conferred in good faith on May 30 but could not reach an agreement’ in the
`preamble of the Joint Claim Construction Statement” because, “[o]n the short call, [Impossible]
`only asked questions about a few terms for claim construction and could provide no answers to
`any of [Motif’s] questions. [Impossible] simply did not provide an avenue to agreement on the
`meet-and-confer call itself.”3
`
`As others have recognized, because “the plain meaning to apply is the plain meaning to one of
`ordinary skill in the art, not to a layman or lay counsel” and “[d]isputes frequently arise as to
`what one of skill in the art would use as the ordinary or plain meaning,” “it is generally improper
`for a party to state generally that the ordinary meanings of the claim terms should govern and
`then refuse to set forth what it contends are those ordinary meanings.” 1 Annotated Patent
`Digest § 4:5 (“Advocating for ordinary meaning does not excuse a party from stating what it
`contends is that meaning”) (collecting cases). To promote a fair and efficient briefing process,
`Defendants are entitled to understand the scope of the parties’ disputes before briefing begins.
`
`* * *
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`Should Your Honor have any questions regarding the foregoing, counsel are available at the
`Court’s convenience.
`
`Respectfully submitted,
`
`
`
`
`
` /s/ 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.
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`3 Motif’s counsel provided the quoted correspondence to Impossible prior to submission of this
`letter and would be pleased to provide this correspondence to the Court upon request.
`
`

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`Case 1:22-cv-00311-WCB Document 314 Filed 12/15/23 Page 6 of 6 PageID #: 18361
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`Page 5
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`
` /s/ Daniel M. Silver
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, Delaware 19801
`(302) 984-6300
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Attorneys for Defendant Ginkgo Bioworks, Inc.
`
`
`The Honorable William C. Bryson
`December 15, 2023
`
`
`
`
`
`
`
`
` /s/ Jeremy A. Tigan
`Jeremy A. Tigan (#5239)
`Lucinda C. Cucuzzella (#3491)
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`1201 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`(302) 658-9200
`jtigan@morrisnichols.com
`ccucuzzella@morrisnichols.com
`
`Attorneys for Defendant Motif FoodWorks, Inc.
`
`
`Dated: December 15, 2023
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`
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`BAP:gam/11214081/20200.00002
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`Enclosures
`cc:
`Counsel of Record (via CM/ECF)
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`
`