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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IMPOSSIBLE FOODS INC.,
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`Plaintiff,
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`v.
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`MOTIF FOODWORKS, INC.,
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`Defendant.
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`I.
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`BACKGROUND
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`ORDER
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`Civil Action No. 22-311-WCB
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`Impossible Foods Inc., filed this action on March 9, 2022, charging Motif Foodworks, Inc.,
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`with infringement of U.S. Patent No. 10,863,761. Dkt. No. 1. On July 25, 2022, Impossible
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`amended its complaint for the first time, adding allegations of infringement of four new patents in
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`addition to the ’761 patent (the five patents asserted in the amended complaint are collectively
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`referred to as the “Food Products Patents”). On September 7, 2022, Impossible filed a Second
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`Amended Complaint, which added two new patents (the “Yeast Patents”). On July 3, 2023,
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`Impossible filed a Third Amended Complaint, which added Ginkgo Bioworks, Inc., as a defendant
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`with respect to the Yeast Patents. On July 25, 2023, the court modified the scheduling order,
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`directing that the Food Products Patent case and the Yeast Patents case be tried separately and
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`proceed on separate timelines. Dkt. No. 161. The deadline to amend pleadings and join parties in
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`the Yeast Patents case was December 1, 2023. Id. at ¶ 7. The same deadline in the Food Products
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`Patents case was June 20, 2023. Dkt. No. 37 at 3.
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`1
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`Case 1:22-cv-00311-WCB Document 342 Filed 01/29/24 Page 2 of 4 PageID #: 22104
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`On December 1, 2023, the last day to amend pleadings in the Yeast Patents case, Impossible
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`moved to amend its Yeast Patents complaint, adding a new claim against Motif under the Defend
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`Trade Secrets Act. Dkt. No. 284. The new claim was based on actions by a third party, The
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` The asserted trade secrets relate generally to production of heme proteins, including
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`logistical details such as cost structures and production output. Dkt. No. 284-1 at ¶¶ 94-95. The
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`Yeast Patents, on the other hand, relate to the underlying nucleic acid sequences encoding those
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`heme proteins. See e.g., U.S. Patent No. 10,273,492 at 7748–57 (claim 1); see also U.S. Patent
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`No. 10,689,656 at 87:31–41 (claim 1). Motif and Ginkgo both oppose Impossible’s motion.
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`II.
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`LEGAL STANDARD
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`Impossible’s request for leave to amend is governed by Federal Rule of Civil Procedure
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`15(a)(2), which instructs the court to grant leave to amend “when justice so requires.” Among
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`other reasons, the court has discretion to deny leave if the amendment would be “prejudicial to the
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`opposing party.” Bjorgung v. Whitetail Resort, LP, 550 F.3d 263, 266 (3d Cir.2008); see also
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`Genentech, Inc. v. Amgen Inc., No. CV 17-1407-CFC, 2020 WL 708433, at *1 (D. Del. Feb. 12,
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`2020). In evaluating prejudice to the opposing party, courts consider “whether allowing an
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`amendment would result in additional discovery, cost, and preparation to defend against new facts
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`or new theories.” Cureton v. Nat'l Collegiate Athletic Ass'n, 252 F.3d 267, 273 (3d Cir. 2001).
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`“The decision to grant or deny leave to amend lies within the discretion of the court.” Sonos, Inc.
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`v. D&M Holdings Inc., No. CV 14-1330-RGA, 2017 WL 476279, at *1 (D. Del. Feb. 3, 2017)
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`(citing Foman v. Davis, 371 U.S. 178, 182 (1962)).
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`Case 1:22-cv-00311-WCB Document 342 Filed 01/29/24 Page 3 of 4 PageID #: 22105
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`III. DISCUSSION
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`Granting Impossible leave to amend for a fourth time would unfairly prejudice Ginkgo and
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`would render this case unwieldy for a jury.
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`The court has already recognized the prejudice to Ginkgo of trying the Food Products and
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`Yeast Patents cases together. The same concerns underly Impossible’s proposed amendment. The
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`proposed amendment will create jury confusion about which claims apply to which defendant. See
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`Philips Elecs. N. Am. Corp. v. Contec Corp., 220 F.R.D. 415, 418 (D. Del. 2004) (noting “the real
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`prospect that the jury will assume [one party] is liable for patent infringement by association with
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`[the other]”). To the extent that the jury finds Motif acted wrongly in relation to Impossible’s trade
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`secrets, it may improperly impute that behavior to Ginkgo based on Ginkgo’s business relationship
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`with Motif.
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`The appropriate case in which Impossible should have amended its claims was the Food
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`Products Patents case, to which Ginkgo is not a party and bears no risk of prejudice. That deadline
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`passed on June 30, 2023. Dkt. No. 37 at 3. Although Impossible asserts that it did not discover
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`the alleged trade secret misappropriation until after that deadline, the belated discovery does not
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`justify amendment in a largely dissimilar case.
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`While the proposed trade secret claims and existing patent claims both depend on the same
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`background information, they ultimately turn on entirely different facts. For example, the trade
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`secret claims involve questions such as the degree to which Motif is responsible for
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`actions—questions far afield of patent infringement. This case already involves 17 asserted claims
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`across two patents, against two defendants. The addition of trade secret claims against only Motif
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`will further complicate an already complicated case. See Genentech, Inc. v. Amgen Inc., No. CV
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`17-1407-CFC, 2020 WL 708433, at *2 (D. Del. Feb. 12, 2020) (denying leave to amend in part,
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`Case 1:22-cv-00311-WCB Document 342 Filed 01/29/24 Page 4 of 4 PageID #: 22106
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`where proposed amendment added a claim of patent infringement concerning a different drug than
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`the one already at issue in the case; reasoning that the expansion of an already “unwieldy” case
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`would undermine the court’s efforts to “drive the case to a reasonable and efficient conclusion.”).
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`The added efficiency of trying these claims together does not outweigh the prejudice, particularly
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`to Ginkgo, of having to defend allegations of patent infringement in a case cluttered with other
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`issues directed solely at another defendant.
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`Accordingly, Impossible’s motion for leave to amend is DENIED. Impossible is free to
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`pursue its trade secret claims in a separate action against Motif, but not in the unrelated action to
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`which Ginkgo is a party.
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`This order has been filed under seal because the parties’ briefs and exhibits pertaining to
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`the present motions were filed under seal. Within three business days of the issuance of this order,
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`the parties are directed to advise the court by letter whether they wish any portions of the order to
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`remain under seal. Any request that portions of the order should remain under seal must be
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`supported by a particularized showing of need to limit public access to those portions of the order.
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`IT IS SO ORDERED.
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`SIGNED this 19th day of January, 2024.
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`______________________________
`WILLIAM C. BRYSON
`UNITED STATES CIRCUIT JUDGE
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