Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 1 of 50 PageID #: 19115
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`IMPOSSIBLE FOODS INC.,
`
`
`
`Plaintiff,
`
`v.
`
`MOTIF FOODWORKS, INC., and
`GINKGO BIOWORKS, INC.,
`
`Defendants.
`
`Case No. 22-311-WCB
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`
`
`JURY TRIAL DEMANDED
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`
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`DEFENDANT GINKGO BIOWORKS, INC.’S ANSWERING BRIEF IN OPPOSITION
`TO PLAINTIFF’S MOTION FOR LEAVE TO AMEND
`
`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.
`
`Dated: December 15, 2023
`
`OF COUNSEL:
`
`Daralyn J. Durie
`Adam R. Brausa
`Vera Ranieri
`Morrison & Foerster LLP
`425 Market Street
`San Francisco, CA 94105-2482
`415.268.7000
`ddurie@mofo.com
`abrausa@mofo.com
`vranieri@mofo.com
`
`Aaron D. Bray
`Morrison & Foerster LLP
`755 Page Mill Road
`Palo Alto, CA, 94304-1018
`650-813-5600
`abray@mofo.com
`
`Caleb D. Woods
`Morrison & Foerster LLP
`2100 L Street, NW Suite 900
`Washington DC
`202-887-1500
`calebwoods@mofo.com
`
`i
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 2 of 50 PageID #: 19116
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`TABLE OF CONTENTS
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`Page
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`I.
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`INTRODUCTION ............................................................................................................... 1
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`II. NATURE AND STAGE OF PROCEEDINGS ................................................................... 2
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`III. LEGAL STANDARD .......................................................................................................... 3
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`IV. ARGUMENT ....................................................................................................................... 4
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`A. Ginkgo Will Be Unduly Prejudiced By the Jury Confusion that Will Result if
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`Impossible Is Permitted to Amend Its Complaint ......................................................... 5
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`B. Ginkgo Will Be Unduly Prejudiced By Additional Pre-Trial Costs and Burdens if
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`Impossible Is Permitted to Amend Its Complaint ......................................................... 8
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`V. CONCLUSION .................................................................................................................. 10
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 3 of 50 PageID #: 19117
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`
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`Avadel CNS Pharmaceuticals, LLC et al v. Jazz Pharmaceuticals, Inc. et al,
`No. 22-487-GBW, D.I. 68 (D. Del. Nov. 03, 2023) ..................................................................7
`
`CAO Lighting, Inc. v. Gen. Elec. Co.,
`No. 20-681-GBW, D.I. 440 (D. Del. Jun. 9, 2023)....................................................................8
`
`Cureton v. Nat'l Collegiate Athletic Ass'n,
`252 F.3d 267 (3d Cir. 2001).......................................................................................................7
`
`Datascope Corp. v. Smec, Inc.,
`962 F.2d 1043 (Fed. Cir. 1992)..................................................................................................4
`
`Dole v. Arco Chem. Co.,
`921 F.2d 484 (3d Cir. 1990)...................................................................................................3, 4
`
`Emerson Elec. Co. v. Emerson Quiet Kool Co. Ltd.,
`No. 17-1846-LPS-JHL, 2021 WL 663058 (D. Del. Feb. 19, 2021) ......................................6, 8
`
`Foman v. Davis,
`371 U.S. 178 (1962) ...................................................................................................................4
`
`Genentech, Inc. v. Amgen Inc.,
`No. CV 17-1407-CFC, 2020 WL 708433 (D. Del. Feb. 12, 2020) ...........................................8
`
`Genzyme Corporation et al v. Novartis Gene Therapies, Inc. et al,
`No. 21-01736-RGA, D.I. 147 (D. Del. Mar. 6, 2023) ...............................................................5
`
`Hutchins v. Zoll Medical Corp.,
`492 F.3d 1377 (Fed. Cir. 2007)..................................................................................................6
`
`Oakwood Lab’ys LLC v. Thanoo,
`999 F.3d 892 (3d Cir. 2021).......................................................................................................6
`
`Philips Elecs. N. Am. Corp. v. Contec Corp.,
`220 F.R.D. 415 (D. Del. 2004) ..................................................................................................5
`
`Qorvo, Inc. v. Akoustis Technologies, Inc.,
`No. 21-1417-JPM, D.I. 313 (D. Del. Sept. 1, 2023) ..................................................................5
`
`Race Tires Am., Inc. v. Hoosier Racing Tire Corp.,
`614 F.3d 57 (3d Cir. 2010).......................................................................................................10
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`Sonos, Inc. v. D&M Holdings Inc.,
`No. 14-1330-RGA, 2017 WL 476279 (D. Del. Feb. 3, 2017) ...................................................4
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`Targus Int’l LLC v. Victorinox Swiss Army, Inc.,
`No. 20-464-RGA, 2021 WL 2291978 (D. Del. Jun. 4, 2021) .................................................10
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`Vehicle IP, LLC v. AT&T Mobility LLC,
`No. 09-1007-LPS, 2016 WL 6404093 (D. Del. Oct. 20, 2016) .................................................6
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`Other Authorities
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`Fed. R. Civ. P. 15 and 15(a)(2) ........................................................................................................3
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`I.
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`INTRODUCTION
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`For the fourth time, Plaintiff Impossible Foods Inc. (“Impossible”) seeks to amend its
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`complaint. This time, it seeks to add a trade secret misappropriation claim against Defendant
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`Motif Foodworks, Inc. (“Motif”). Ginkgo opposes Impossible’s latest request for leave to amend
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`because Impossible insists that its trade secret claim proceed, and be tried alongside, its already-
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`pending patent infringement claims.1 This makes no sense: Only Motif is accused of trade
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`secret misappropriation, whereas both Motif and Ginkgo are accused of infringing the Yeast
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`Strain patents.2 Trying both sets of claims, in a single trial, would unduly prejudice Ginkgo by
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`forcing it to be a co-defendant with a distinct company accused of misappropriating Impossible’s
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`trade secrets. A single trial would confuse jurors as to whether evidence is relevant only to
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`Impossible’s trade secret claims against Motif, or also Impossible’s patent infringement claims
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`against Motif and Ginkgo. Ginkgo would also be forced to spend extra time and incur extra
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`expenses during distinguishing between Impossible’s patent and trade secret claims.
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`If this argument sounds familiar, it is. Ginkgo raised similar prejudice concerns when
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`Impossible sought to have the Food Product Patents (asserted only against Motif) and the Yeast
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`Patents (asserted against Motif and Ginkgo) both proceed on the same schedule and be tried
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`together. D.I. 133 at 3. The Court rejected Impossible’s proposal and set different schedules and
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`trial dates for the Food Product Patents and Yeast Patents. See D.I. 161 at 1-2. For similar
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`reasons, Impossible’s suggestion to add a trade secret claim only against Motif to the Yeast
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`Patents should be rejected. Indeed, the prejudice to Ginkgo from a single trial and being forced
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`to constantly distinguish pre-trial between Impossible’s trade secret and patent infringement
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`
`
` 1
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` Ginkgo otherwise takes no position on the merits of Impossible’s new allegations against
`Motif.
`2 The Yeast Patents are U.S. Patent No. 10,273,492 and U.S. Patent No. 10,689,656.
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`claims would be even greater than before, because these claims involve different legal standards
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`and facts. Impossible is free to file a separate lawsuit against Motif for trade secret
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`misappropriation if it believes its allegations have any merit, but Ginkgo should not be dragged
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`along too. Impossible’s motion for leave to file its Fourth Amended Complaint should be
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`denied.
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`II.
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`NATURE AND STAGE OF PROCEEDINGS
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`This case began on March 9, 2022, when Impossible filed its original complaint against
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`Motif, alleging infringement of United States Patent No. 10,863,761, entitled “Methods and
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`compositions for consumables.” D.I. 1. On July 25, 2022, Impossible filed its First Amended
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`Complaint, adding four new patents to the case (and collectively, with the initial patent, referred
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`to as “the Food Product Patents”). Two months later, on September 7, 2022, Impossible filed its
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`Second Amended Complaint against Motif only, adding two more patents (the “Yeast Patents”)
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`to this case. D.I. 22.
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`Plaintiff amended its complaint for the third time on July 3, 2023. This amendment was
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`filed on the very last day it was permitted to file an amended pleading pursuant to the scheduling
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`order. The amendment, for the first time, added Ginkgo as a defendant and alleged that Ginkgo
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`infringed the Yeast Patents (but not the Food Product Patents). D.I. 129. Impossible sought to
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`have the Yeast Patents case put on the same schedule as the Food Product Patents, and to be tried
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`together. D.I. 133 at 2. Ginkgo opposed this request as “unfair and highly prejudicial.”. D.I.
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`133 at 4. On July 25, 2023, this Court amended the scheduling order, putting Impossible’s Food
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`Product Patent claims against Motif on a separate case schedule than Impossible’s Yeast Patent
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`claims against both Motif and Ginkgo. D.I. 161. In the amended scheduling order, the Court set
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`a second deadline of December 1, 2023 for amending pleadings that “appl[ied] to only the Yeast
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`Patents case.” Id. at 2, 4.
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`On November 29, 2023, Impossible counsel emailed Motif and Ginkgo counsel a copy of
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`a proposed Fourth Amended Complaint and informed Motif and Ginkgo that it intended to seek
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`leave to file it and add a claim for trade secret misappropriation against Motif. During the meet
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`and confer process, Impossible stated that its trade secret claim should proceed on the same
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`schedule as the Yeast Patents, and be part of the same trial. According to Impossible, this
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`appropriate because its trade secret claim against Motif and its patent infringement claims against
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`Motif and Ginkgo involve the same “general subject matter.”
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`On December 1, 2023, close to two years after this litigation began, Impossible filed its
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`motion for leave to file its Fourth Amended Complaint. Impossible alleges trade secret
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`misappropriation against Motif under the Defend Trade Secret Act (18 U.S.C. §§ 1836 et seq.).
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`See D.I. 285. The alleged trade secrets (none of which are specifically identified) appear to
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`generally relate to the fermentation process used to produce heme from yeast cells, as well as
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`fermentation costs and cost structures. See D.I. 284-6 at ¶¶ 65-66. Impossible’s new trade secret
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`allegations do not mention Ginkgo nor discuss the Yeast Patents at all. Id. at ¶¶ 7-8, 11-12, 64-
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`105, 240-248. The Yeast Patents claim yeast cells and do not purport to claim any novel
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`fermentation processes. See D.I. 284-2 at Exhibits 3-4.
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`III. LEGAL STANDARD
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`Plaintiff’s request for leave to amend their complaint for the fourth time is governed by
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`Rule 15, which provides that where, as here, the amendment is not as of right, “a party may
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`amend its pleading only with the opposing party’s written consent or the court’s leave.” Fed. R.
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`Civ. P. 15(a)(2). The Court grants leave “when justice so requires,” id., however “[t]he policy
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`favoring liberal amendment of pleadings is not . . . unbounded.” Dole v. Arco Chem. Co., 921
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`F.2d 484, 487 (3d Cir. 1990).3 The Supreme Court and the Third Circuit have held that factors
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`that “may weigh against amendment . . . include ‘undue delay, bad faith or dilatory motive on the
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`part of the movant, repeated failure to cure deficiencies by amendments previously allowed,
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`undue prejudice to the opposing party by virtue of allowance of the amendment, futility of
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`amendment, etc.’” Id. (quoting Foman v. Davis, 371 U.S. 178, 182 (1962)). “The decision to
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`grant or deny leave to amend lies within the discretion of the court.” Sonos, Inc. v. D&M
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`Holdings Inc., No. 14-1330-RGA, 2017 WL 476279, at *1 (D. Del. Feb. 3, 2017).
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`IV. ARGUMENT
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`Impossible’s trade secret misappropriation claim against Motif should be in a separate
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`action, on a separate schedule, with a separate trial from Impossible’s patent infringement claims
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`against Motif and Ginkgo. The Court previously recognized the inefficiencies and prejudice that
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`Ginkgo would be exposed to if claims against Motif (infringement of the Food Product Patents)
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`were joined with claims against Motif and Ginkgo (infringement of the Yeast Patents).
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`The same rationale applies here with even greater force, as Impossible’s trade secret
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`misappropriation allegations involve different legal and factual issues from its patent
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`infringement claims. This is especially true where the proposed amendment is untimely, as the
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`deadline to amend pleadings (generally) was June 20, 2023 (D.I. 37 at 3), not December 1,
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`2023—a deadline that “appl[ied] to only the Yeast Patents case” (D.I. 161 at 2).
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`Even more crucially, Impossible’s trade secret allegations have the potential to prejudice
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`and confuse the jury about Ginkgo’s potential liability for patent infringement. And even before
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`the case gets to a jury, Ginkgo would suffer additional prejudice from the additional costs and
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` 3
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` Because a motion to amend a pleading is a procedural matter, Third Circuit law applies. See
`Datascope Corp. v. Smec, Inc., 962 F.2d 1043, 1045 (Fed. Cir. 1992) (reviewing an order
`denying a motion to amend under the law of the regional circuit).
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`burdens associated with having to distinguish between discovery and issues relevant to Ginkgo
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`(Impossible’s patent infringement claims), and issues that have nothing to do with Ginkgo
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`whatsoever (Impossible’s trade secret claim). There is no reason to expose Ginkgo to this
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`prejudice, particularly given the timing of Impossible’s motion and the fact that it could have—
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`and should have—filed a separate lawsuit against Motif. Impossible’s untimely Motion to
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`Amend should therefore be denied. See Qorvo, Inc. v. Akoustis Technologies, Inc., No. 21-1417-
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`JPM, D.I. 313 at 2 (D. Del. Sept. 1, 2023) (denying a motion for leave to amend, finding
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`prejudice where amendment would either have an adverse effect on the current timeline or
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`prejudice nonmovant’s ability to defend against the amended crossclaims, noting that the movant
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`could bring a separate suit) (Ex. A); see also Genzyme Corporation et al v. Novartis Gene
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`Therapies, Inc. et al, No. 21-01736-RGA, D.I. 147 (D. Del. Mar. 6, 2023) (denying motion for
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`leave to amend to add a seventh patent where two other patent families were already represented
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`as it would not be “fair to Defendants” and plaintiff could bring suit separately) (Ex. B).
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`A.
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`Ginkgo Will Be Unduly Prejudiced By the Jury Confusion that Will
`Result if Impossible Is Permitted to Amend Its Complaint
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`Impossible’s motion for leave to amend should be denied. Trying trade secret claims
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`against Motif with joint patent claims would unduly prejudice Ginkgo and cause jury confusion.
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`First, the jury may be confused as to who is liable for which claim, and what acts are
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`relevant for which claim. Courts in this district have routinely recognized in cases involving
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`multiple defendants that juries can be confused as to what claims are brought against whom,
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`risking painting separate parties with the same brush. See, e.g., Philips Elecs. N. Am. Corp. v.
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`Contec Corp., 220 F.R.D. 415, 418 (D. Del. 2004) (recognizing that forcing two entities to go to
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`trial together created a substantial risk of prejudice where “there is the real prospect that the jury
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`will assume that [one defendant] is liable for patent infringement by association with [another
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`defendant]”); Vehicle IP, LLC v. AT&T Mobility LLC, No. 09-1007-LPS, 2016 WL 6404093,
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`at *3 (D. Del. Oct. 20, 2016) (recognizing the risk for prejudice due to a high likelihood of jury
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`confusion where claims against multiple defendants did not come from the same set of facts);
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`Emerson Elec. Co. v. Emerson Quiet Kool Co. Ltd., No. 17-1846-LPS-JHL, 2021 WL 663058,
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`at *3 (D. Del. Feb. 19, 2021) (recognizing that consolidating for trial the claims of unrelated
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`plaintiffs relating to trademarks presented a risk that the jury might believe the plaintiffs were
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`co-owners of the marks). Impossible offers no reason why it needs to try its trade secret claims
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`against Motif in a patent infringement case against Ginkgo. The risk that Ginkgo will be lumped
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`in with Motif by the jury is real and represents substantial prejudice.
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`Second, trade secret claims involve different proofs and defenses from patent
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`infringement claims, which will necessarily implicate different legal and factual issues. For
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`example, to be successful on a trade secret misappropriation claim, Impossible must prove that it
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`has information that it has taken reasonable measures to keep secret, that the information derives
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`independent economic value from not being known by the public, and that Motif has acquired
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`through improper means. See Oakwood Lab’ys LLC v. Thanoo, 999 F.3d 892, 905 (3d Cir.
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`2021). In contrast, to prove patent infringement, Impossible must show that Ginkgo’s accused
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`yeast strains meet each and every limitation of the asserted claims. See, e.g., Hutchins v. Zoll
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`Medical Corp., 492 F.3d 1377, 1380 (Fed. Cir. 2007) (“Patent infringement requires that every
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`element and limitation in a correctly construed claim is embodied in the accused system either
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`literally or [under the doctrine of equivalents].”). In terms of defenses, Ginkgo has already
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`attacked the Yeast Patents on the grounds that their shared specification does not sufficiently
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`describe or enable the claimed inventions. Impossible will presumably defend the sufficiency of
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`its disclosures to the public—very different from arguing that it took steps to keep certain
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`information secret. As a result, there is a high likelihood a jury would be overwhelmed and
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`confused by the different legal requirements, different facts, and different parties. See Avadel
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`CNS Pharmaceuticals, LLC et al v. Jazz Pharmaceuticals, Inc. et al, No. 22-487-GBW, D.I. 68
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`(D. Del. Nov. 03, 2023) (denying a motion to consolidate trade secret and patent claims between
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`the same parties, because of delay to the ongoing patent case, possible overcomplication of
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`issues, and potential for jury confusion) (Ex. C).
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`Impossible contends that the risk of confusion is minimal, because, according to
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`Impossible, a “trade secret claim is less complex than a patent infringement claim.” D.I. 285
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`at 9. Impossible’s opinion on the relative complexity of the two, however, does not remedy the
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`potential issues with presenting a jury with both claims at once. Impossible also asserts that the
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`underlying science implicated by its trade secret claim overlaps to some degree with the science
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`underlying its patent infringement claims. Id. at 9. While Impossible has not described its
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`purported trade secret(s) with any specificity, it appears that they relate to proprietary yeast
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`fermentation processes, whereas the Yeast Patents claim the yeast cells themselves, and do not
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`suggest any novel fermentation techniques. Even if there were some overlap in the scientific
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`issues relating to Impossible’s trade secret claims on the one hand, and its patent infringement
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`claims on the other, that does not change the fact that there will be numerous factual and legal
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`issues that do not overlap at all. Moreover, any efficiencies gained by the minimal overlap in the
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`“general subject matter” of Impossible’s claims is far outweighed by the severe prejudice Ginkgo
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`would suffer and the high risk of juror confusion, as discussed above. Thus, Impossible’s
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`untimely Motion for Leave to Amend should be denied.
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`B.
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`Ginkgo Will Be Unduly Prejudiced By Additional Pre-Trial Costs and
`Burdens if Impossible Is Permitted to Amend Its Complaint
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`Ginkgo will also suffer undue prejudice if Impossible’s trade secret claim against Motif is
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`allowed to proceed on the same schedule or as part of the same case as Impossible’s claims for
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`patent infringement against Motif and Impossible. To determine whether an amendment would
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`cause prejudice, courts focus on hardships to the nonmovant, such as being subject to additional
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`discovery, costs, and preparation. See Cureton v. Nat'l Collegiate Athletic Ass'n, 252 F.3d 267,
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`273 (3d Cir. 2001). For example, the Genentech, Inc. v. Amgen Inc. court found that an
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`amendment seeking to add a claim arising out of a different fact pattern would harm judicial
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`economy by adding claims that concern a different set of facts. No. CV 17-1407-CFC, 2020 WL
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`708433, at *1-2 (D. Del. Feb. 12, 2020); see also CAO Lighting, Inc. v. Gen. Elec. Co., No. 20-
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`681-GBW, D.I. 440, at 7, 8 (D. Del. Jun. 9, 2023) (denying motion to amend to add claim arising
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`out of a different fact pattern because the nonmovant would be prejudiced by the added costs and
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`preparation) (Ex. D). At least one court has also found that prejudice would befall a non-movant
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`if claims were added, in the context of consolidation under Rule 42. Cf. Emerson, 2021 WL
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`663058, at *2 (finding potential efficiencies in consolidation did not outweigh inconvenience,
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`prejudice, and potential delay where separate proofs were required for each claim).
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`Here, Ginkgo—a non-party to the trade secret claims—will suffer prejudice through
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`additional costs and complexity. This is not a theoretical concern. Impossible has recently
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`served interrogatories and requests for production on Ginkgo, seeking information and
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`documents related to Motif and
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` that appear to be only relevant to
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`Impossible’s proposed trade secret claim against Motif. See Exs. E, F. Ginkgo has thus already
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`incurred expenses investigating and preparing responses to irrelevant discovery, because
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`Impossible seeks to assert these claims against Motif.
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`Additionally, if Impossible’s trade secret claims are added to the current case, Ginkgo
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`will be forced to parse Impossible’s contentions and its expert reports to distinguish the relevant
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`(Yeast Patent-related) from the irrelevant (trade secret-related). This is also not a speculative
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`risk. Ginkgo is already inundated with review of communications, subpoenas, and discovery
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`requests relating to the Food Product Patents that have no bearing on the Yeast Patents. For
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`example, in the five months since Gingko was added to this case, over 25 subpoenas have been
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`served. Only upon review and inquiry (and therefore, additional cost) has Ginkgo been able to
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`determine that almost all relate to the Food Product Patents, and thus are not relevant to Ginkgo.
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`Thus, Ginkgo has already incurred additional, unfair costs solely because the Food Product
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`Patents are being asserted against Motif in the same case. Impossible provides no reasoning to
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`suggest the addition of the trade secret claim to this case would have a different result.
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`Impossible also states, without any support, that “Ginkgo will not be affected [by the
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`addition of trade secret misappropriation claims against Motif] because of the addition of the
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`claim will not delay the case.” D.I. 285 at 10. But this dubious assertion wholly ignores the
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`significant prejudice, discussed above, to which Ginkgo will be exposed. Impossible also fails to
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`provide any support whatsoever for its reasoning that the addition of entirely new claims in a
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`case would not cause, or at least not significantly risk, additional delay. Impossible made a
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`similar argument in support of its position that its claims for infringement of the Food Product
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`Patents (against Motif only) and its separate claims for infringement of the Yeast Patents (against
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`Motif and Ginkgo) should be joined. See D.I. 138 at 8 (“Regardless, joining Ginkgo Bioworks
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`should not require significant changes to the Scheduling Order.”). That argument was not
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`persuasive then, and it is no more persuasive now.
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`Here, no matter how efficient Impossible contends it will be (a contention at odds with
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`Impossible’s most recent discovery requests), adding a new trade secret appropriation claim
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`against Motif only would force Ginkgo to engage in discovery in which it would not otherwise
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`be required to engage. The increased communications, discovery requests, and potential third-
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`party discovery related to the trade secret claim will generate increased costs and involvement
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`for Ginkgo. These increased expenditures constitute undue prejudice to Ginkgo, particularly
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`given Impossible’s habit of serially amending its pleadings. See Race Tires Am., Inc. v. Hoosier
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`Racing Tire Corp., 614 F.3d 57, 85 (3d Cir. 2010) (affirming district court’s denial of motion for
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`leave to amend and finding of prejudice where the plaintiff had sought leave to file a fourth
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`amended complaint, years after the case began).
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`Impossible’s reliance on Targus Int’l LLC v. Victorinox Swiss Army, Inc., No. 20-464-
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`RGA, 2021 WL 2291978 (D. Del. Jun. 4, 2021) is unavailing. There, the court concluded that
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`increased time needed to defend “another claim of inequitable conduct,” where the nonmovant
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`was already defending against one such claim, did not amount to undue prejudice. Id. (emphasis
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`added). Here, Ginkgo faces no trade secret claim and the addition of one—against Motif alone,
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`based on alleged facts unrelated to Ginkgo—would expand the case immensely, and with
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`prejudice to Ginkgo. Impossible’s untimely motion for leave to amend its complaint should
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`therefore be denied.
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`V.
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`CONCLUSION
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`For the reasons stated above, Ginkgo respectfully requests that the Court deny
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`Impossible’s motion for leave to file a Fourth Amended Complaint.
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`ME1 47016609v.1
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 15 of 50 PageID #: 19129
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`MCCARTER & ENGLISH, LLP
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`/s/ Alexandra M. Joyce
`Daniel M. Silver (#4758)
`Alexandra M. Joyce (#6423)
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, Delaware 19801
`(302) 984-6300
`dsilver@mccarter.com
`ajoyce@mccarter.com
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`Attorneys for Defendant Ginkgo Bioworks,
`Inc.
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`Dated: December 15, 2023
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`OF COUNSEL:
`
`Daralyn J. Durie
`Adam R. Brausa
`Vera Ranieri
`Morrison & Foerster LLP
`425 Market Street
`San Francisco, CA 94105-2482
`415.268.7000
`ddurie@mofo.com
`abrausa@mofo.com
`vranieri@mofo.com
`
`Aaron D. Bray
`Morrison & Foerster LLP
`755 Page Mill Road
`Palo Alto, CA, 94304-1018
`650-813-5600
`abray@mofo.com
`
`Caleb D. Woods
`Morrison & Foerster LLP
`2100 L Street, NW Suite 900
`Washington DC
`202-887-1500
`calebwoods@mofo.com
`
`
`
`ME1 47016609v.1
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 16 of 50 PageID #: 19130
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`Exhibit A
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 17 of 50 PageID #: 19131
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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` Case No. 1:21-cv-01417-JPM
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` )
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`QORVO, INC.,
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`Plaintiff,
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`v.
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`AKOUSTIS TECHNOLOGIES, INC. and
`AKOUSTIS, INC.,
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`Defendants.
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`ORDER
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`The Court held a Discovery Disputes Hearing on August 22, 2023 (the “Hearing”).
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`Based on discussions held during the Hearing, the following is ORDERED:
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`1. Defendant’s Motion to Re-Designate the Second Amended Complaint Marked
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`Attorneys’ Eyes Only to Confidential (ECF No. 183) is DENIED.
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`2. Defendant is allowed to share the Second Amended Complaint (ECF No. 125) as
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`well as Exhibits C-2, C-3, D-2, D-3, E-2, F-2, G-2, H2, I-2, J-2, J-3, K-2, L-3, M-1,
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`and N-1 with Mr. Aichele as long as he agrees to be bound to the Protective Order
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`(ECF No. 283).
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`3. In granting Mr. Aichele access to the Second Amended Complaint and the
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`aforementioned Exhibits, the Court recognizes the need for a Senior Executive,
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`familiar with Defendant’s technology, to participate in shaping their defense
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`strategy, and to prepare a 30(b)(6) witness. At the same time, the Court understands
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`

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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 18 of 50 PageID #: 19132
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`Plaintiff’s need for protecting their trade secrets, and as such Mr. Aichele is only
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`granted access to Exhibits that were previously in Defendant’s possession.
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`4. Defendant’s Motion for Leave to Amend Answer to Add Counterclaim (ECF No.
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`24) is DENIED.
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`5. The decision of whether to grant a motion to amend is within the Court’s discretion.
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`See In re Frank, 239 F. 709, 710 (3d Cir. 1917). The Supreme Court has held that
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`leave to amend should be freely granted if (1) there is no undue delay, bad faith, or
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`dilatory motive on the part of the moving party; (2) granting leave is not unfairly
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`prejudicial to the non-moving party; and (3) the amendment would not be futile. See
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`Foman v. Davis, 371 U.S. 178, 182 (1962); In re Burlington Coat Factory Secs.
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`Litig., 114 F.3d 1410, 1434 (3d Cir. 1997).
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`6. Here Defendants requested to amend their answer less than three months before the
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`close of fact discovery and over three months after the deadline to amend pleadings
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`has passed. Considering the amount of time left, granting such request would either
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`have an adverse effect on the current timeline thus prejudicing the Plaintiff by further
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`delaying the resolution of a case filed nearly two years ago, or would highly
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`prejudice Plaintiff’s ability to mount a defense against any crossclaims.
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`Furthermore, as the Court highlighted during the Hearing, this claim can properly
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`be brought and litigated as a separate claim.
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`7. During the Hearing the Parties discussed an anticipated Motion to Strike Qorvo’s
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`Untimely Disclosure of Trade Secrets. Based on the discussed arguments and
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`declarations submitted by both parties (ECF Nos. 302, 305), the Court will not strike
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`2
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 19 of 50 PageID #: 19133
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`Qorvo’s disclosure. As was discussed during the Hearing, the Court expects Qorvo
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`to significantly reduce its trade secret claims by the close of fact discovery.
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`8. The Fact discovery deadline is extended until November 15, 2023. No other
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`deadlines are impacted.
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`9. Defendant’s request for deposition of Qorvo’s CEO is DENIED.
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`SO ORDERED, this 1st day of September, 2023.
`/s/ Jon P. McCalla
` JON P. McCALLA
` UNITED STATES DISTRICT JUDGE
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`3
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`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 20 of 50 PageID #: 19134
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`Exhibit B
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`CM/ECF LIVE - U.S. District Court:ded
`12/15/23, 10:42 AM
`Case 1:22-cv-00311-WCB Document 326 Filed 12/29/23 Page 21 of 50 PageID #: 19135
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`U.S. District Court
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`CIVIL DOCKET FOR CASE #: 1:21-cv-01736-RGA
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`Genzyme Corporation et al v. Novartis Gene Therapies, Inc. et al
`Assigned to: Judge Richard G. Andrews
`Relate