Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 1 of 13 PageID #: 23143
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 22-311-WCB
`
`JURY TRIAL DEMANDED
`
`))))))))))
`
`IMPOSSIBLE FOODS INC.,
`
`Plaintiff,
`
`v.
`
`MOTIF FOODWORKS, INC. and
`GINKGO BIOWORKS, INC.,
`
`Defendants.
`
`CLAIM CONSTRUCTION STATUS REPORT
`
`Pursuant to the Court’s Amended Scheduling Order (D.I. 161) and the Court’s
`
`February 6, 2024 Order (D.I. 349), Plaintiff Impossible Foods Inc. (“Impossible”), and
`
`Defendants Motif FoodWorks, Inc. (“Motif”), and Ginkgo Bioworks, Inc. (“Ginkgo”), hereby
`
`provide the parties’ claim construction status report.
`
`For reference, the currently asserted claims of U.S. Patent No. 10,273,492 (the ’492
`
`patent) are claims 4, 5, 7, and 14. The asserted claims of U.S. Patent No. 10,689,656 (the ’656
`
`patent) are claims 1, 5, 7, 8, 10, 11, 15, 24, 26, and 28.
`
`There are 8 disputes briefed by the parties. D.I. 314, 333, 334, 338, 339, 340, 341, 346,
`
`347, 351, 352, 353, 354. Impossible and Motif filed briefs on some terms, prior to Ginkgo being
`
`added to this case by Impossible. D.I. 106, 107, 120, 123, 142, 144, 148, 149. For the Court’s
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`reference, below is an amended chart of the disputes that groups related issues.
`
`For purposes of scheduling a claim construction hearing, counsel for the parties have
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`conflicts on the following dates in February and March:
`
`Impossible’s lead counsel is unavailable for a hearing on March 11 and March 20-22,
`
`2024, due to personal and professional commitments.
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`

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`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 2 of 13 PageID #: 23144
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`Ginkgo’s counsel, including all Delaware counsel that have appeared for Ginkgo, are
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`unavailable for hearing from February 26, 2024 to March 8, 2024, because they are counsel for a
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`party at the scheduled trial in Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, LLC,
`
`Case No. 1:21-cv-01138-GBW (D. Del.).
`
`Impossible’s Statement Regarding Claim Construction and Depositions in the Food Product
`Patent Matter
`
`Gingko and Motif assert below that Impossible presents “new” positions in the chart
`
`below. That assertion is incorrect. Each of Impossible’s positions in the chart below are found
`
`in Impossible’s briefing:
`
`-
`
`-
`
`For Terms 2 and 3, Impossible’s briefing explains that “‘from P./Pichia pastoris indicates
`that the sequence has its origins in the P. pastoris genome.” D.I. 338 at 10-15; D.I. 338
`at 17-18; D.I. 339 at 19; D.I. 354 at 14-19.
`
`For Terms 7 and 8, Impossible’s briefing explains that “‘a,’ ‘an,’ and ‘the’ mean ‘one or
`more.’” D.I. 338 at 19-21, 23-25; D.I. 351 at 12-13.
`
`Impossible presents them in the summary chart below for the Court’s convenience.
`
`The deadline to complete fact discovery in the Food Product Patent litigation between
`
`Impossible and Motif is March 22, 2024. Motif refuses to proceed with depositions for
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`witnesses that possess knowledge relevant to both the Food Product Patent matter and the Yeast
`
`Patent matter until there is a claim construction order in the Yeast Patent case and offered dates
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`to depose several key witnesses April 10-12. This prejudices Impossible in completing fact
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`discovery and commencing expert discovery in the Food Product Patent case and amounts to
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`Motif granting itself a fact discovery extension without the Court’s permission.
`
`For the Food Product case, Motif has previously requested, and in the spirit of
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`cooperation Impossible has agreed to, two extensions of the close of fact discovery. D.I. 214,
`
`310. With respect to these extensions, Impossible has already agreed to compress the time
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`between the close of fact discovery and the opening expert reports from 83 days to 70 days. D.I.
`
`2
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`

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`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 3 of 13 PageID #: 23145
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`214, 310. Motif now seeks to further shorten that time by disregarding the deadline for fact
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`discovery.
`
`Motif requested, and received, separate schedules for the two matters. Motif’s refusal to
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`provide testimony relevant to expert reports on which Impossible has the burden of proof until
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`after the close of fact discovery is prejudicial to Impossible. Impossible requests the Court
`
`instruct Motif to proceed with fact depositions in the Food Product Patent matter to timely
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`complete fact discovery by March 22, 2024.
`
`Regarding the Yeast Patent case and depositions sought by Ginkgo, to date Ginkgo has
`
`not served any deposition notices or subpoenas. Impossible will not object to a deposition notice
`
`or subpoena on the sole basis that the witness was deposed in the Food Product patent case.
`
`Impossible expects that all parties will reasonably cooperate to minimize the burden on
`
`witnesses, especially third-party depositions.
`
`Motif’s Statement Regarding Claim Construction and Depositions
`
`Impossible misrepresents the status of fact discovery and the Parties’ negotiations in the
`
`Food Product Patent litigation. Both parties previously mutually agreed and stipulated that short
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`extensions to the Food Product Patent case schedule were necessary to address the extensive
`
`number of depositions, ongoing document production, and other discovery matters. The parties
`
`are actively deposing each others’ witnesses—approximately 30 in total in the Food Product
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`Patent case. The parties dispute, however, whether a small subset of these witnesses—four
`
`Motif witnesses—can be deposed a matter of days beyond the close of fact discovery to avoid
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`burdening third parties with multiple depositions.
`
`On Nov. 7, 2023, and again on Dec. 19, 2023, Impossible informed Motif that it would
`
`not make third-party witnesses, like its former employee Smita Shankar, available for more than
`
`one deposition in connection with the Food Product Patent and Yeast Patent litigations, despite
`
`3
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`

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`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 4 of 13 PageID #: 23146
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`such witnesses having knowledge relevant to both cases. In response, on Nov. 13, 2023, Motif
`
`proposed that the parties agree that depositions of third-party witnesses with such dual
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`knowledge could be taken shortly past the discovery cut-off for the Food Product Patent
`
`litigation without compromising the use of the testimony in that case. Like Impossible, Motif
`
`has a number of such former employees.
`
`Motif’s approach would allow the parties to complete document discovery and the Court
`
`to issue Yeast Patent claim constructions before these depositions occur, which will reduce the
`
`burden on both sides’ third-party witnesses with dual knowledge. Those witnesses would not
`
`need to sit more than once if their depositions are scheduled within a short period after the Food
`
`Product Patent discovery cut-off.
`
`Impossible also misrepresents that Motif “refused to proceed with such depositions.” On
`
`Jan. 20, Motif identified six witnesses as likely having knowledge relevant to both the Food
`
`Product and Yeast Patent cases. On Feb. 9, Motif provided deposition dates for third-party
`
`witnesses with dual knowledge during the Food Product Patent litigation discovery period, as
`
`well as alternative dates within two weeks after close of discovery. Motif indicated to
`
`Impossible that it would put these third-party witnesses up for deposition on the earlier dates if
`
`the Court has issued a claim construction ruling in the Yeast Patent litigation by that time or the
`
`later dates if the Court takes longer to issue its order. Impossible did not accept any of these
`
`dates until Feb. 21, after Motif notified Impossible that certain witness availability had changed.
`
`Despite the practicality of Motif’s offer, Impossible insists that these third parties sit for
`
`depositions within the close of discovery in the Food Product Patent case. Motif understands
`
`Impossible wants two full months between the last deposition in the Food Product Patent
`
`litigation and the deadline for opening expert reports. When asked why this much intervening
`
`4
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`

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`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 5 of 13 PageID #: 23147
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`time was required, Impossible has refused to explain.
`
`Impossible’s position is not reasonable. It is commonplace in many, if not most cases,
`
`for expert disclosure deadlines to follow quickly after the close of fact discovery. Even if these
`
`third-party dual knowledge witnesses were deposed on Motif’s proposed alternative dates,
`
`Impossible would have more than 45 days between the last deposition and opening expert
`
`reports. Impossible has not and cannot offer any reason why 45 days (as opposed to 60 days) is
`
`insufficient time between the last Food Product Patent deposition and opening expert reports. In
`
`Motif’s view, this proposal for taking a limited subset of third party depositions a handful of
`
`days after the cut-off in order to avoid burdening them (and Motif) with the need to sit for
`
`deposition twice is entirely reasonable given that it will not require any modification to the case
`
`schedule.
`
`Lastly, Motif objects to Impossible’s inclusion of claim construction positions in the
`
`chart below that are new and/or diverge from positions taken in its claim construction briefing.
`
`For example, Impossible asserts “plain and ordinary meaning” as constructions for Terms 3, 7,
`
`and 8 in its Answering Brief (D.I. 338) but proposes additional construction in the chart below.
`
`Motif and Ginkgo are highly prejudiced by Impossible’s attempt to offer new interpretations of
`
`these terms after briefing is closed.
`
`Ginkgo’s Statement Regarding Claim Construction and Depositions
`
`Ginkgo objects to Impossible’s inclusion of new claim construction positions in the chart
`
`in Section II below. Specifically, in connection with Terms 2a, 2c, and 3, Impossible includes,
`
`for the first time, proposed constructions of the terms “from P. pastoris” and “from Pichia
`
`pastoris” that were not previously offered in Impossible’s submissions to this Court or
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`previously disclosed as Impossible’s proposed claim constructions. Similarly, in connection
`
`with Terms 7 and 8, Impossible proposes that certain terms “mean” something, but previously
`
`5
`
`

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`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 6 of 13 PageID #: 23148
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`contended that its position was “plain and ordinary meaning.” Briefing is now closed, and this
`
`status report is an inappropriate vehicle for Impossible to continue to change its positions.
`
`Ginkgo takes no position as to the dispute between Impossible and Motif regarding the
`
`schedule for fact discovery in the Food Product Patent case other than to note that it may seek
`
`depositions of some witnesses, including both party witnesses and third parties, noticed in the
`
`Food Product Patent case (in which it is not a party) in relation to the Yeast Patents case (in
`
`which Ginkgo is a party). Impossible has acknowledged that it will not object to Ginkgo
`
`noticing or subpoenaing depositions of witnesses on the basis that they were previously deposed.
`
`Ginkgo agrees to work cooperatively to minimize the burden on all witnesses, including third
`
`parties, to the extent practicable and in consideration of the schedule and progress in the Yeast
`
`Patents case.
`
`6
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 7 of 13 PageID #: 23149
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`I.
`
`AGREED CLAIM TERMS
`
`The parties agree on the following construction.
`
`Claim Term
`
`“operably linked” (’492 patent, all
`asserted claims; ’656 patent, all
`asserted claims)
`
`Joint Proposed
`Construction
`“a promoter or other expression element(s) are positioned relative to a nucleic acid
`coding sequence in such a way as to direct or regulate expression of the nucleic
`acid (e.g., in-frame)”
`
`II.
`
`DISPUTED TERMS FOR CONSTRUCTION
`
`The parties propose the following disputed terms for construction.
`
`7
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 8 of 13 PageID #: 23150
`
`No.
`
`1
`
`Claim Term
`
`“promoter element”
`(all asserted claims)
`
`2a.1 “a Mxr1 transcriptional
`activator sequence”
`[from P. pastoris]
`(’492 patent, all asserted
`claims)
`
`Impossible’s Proposed
`Construction
`Plain and ordinary meaning.
`No construction is necessary.
`To the extent that this term is
`construed:
`a polynucleotide that regulates
`(e.g., drives) transcription of a
`polynucleotide sequence (e.g.,
`gene)
`a promoter element is
`upstream of, and adjacent to or
`in close physical proximity to
`the gene
`
`Plain and ordinary meaning,
`which is the sequence to
`which the Mxr1
`transcriptional activator
`protein binds
`From P. pastoris indicates that
`the sequence has its origins in
`the P. pastoris genome
`
`Motif’s Proposed
`Construction
`Indefinite
`
`Ginkgo’s Proposed
`Construction
`Indefinite
`
`the sequence of the native P.
`pastoris Mxr1 transcriptional
`activator
`
`a sequence of an Mxr1
`transcriptional activator
`protein [found naturally in P.
`pastoris]
`
`1 For Terms 2a, 2b, and 2c, Impossible and Motif construed larger phrases than Ginkgo identified for construction, as explained in the
`parties’ briefing.
`
`8
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 9 of 13 PageID #: 23151
`
`No.
`
`2b.2
`
`2c.3
`
`5
`
`3
`
`Claim Term
`
`[a first exogenous
`nucleic acid encoding]
`“a methanol expression
`regulator 1 (Mxr1)
`transcriptional activator”
`(’656 patent, cls. 1, 5, 7,
`8, 10, 11, 15, 24)
`
` [a nucleic acid
`encoding] “a Mxr1
`transcriptional activator
`sequence” [from P.
`pastoris]
`(’656 patent, cls. 26, 28)
`
`“a nucleic acid molecule
`encoding [x] and [y]”
`(’492 patent, all asserted
`claims)
`
`“[x] from P. pastoris” /
`“[x] from Pichia
`pastoris”
`(’492 patent, all asserted
`claims; ’656 patent, cls.
`7, 10, 11, 26, 28)
`
`Impossible’s Proposed
`Construction
`Plain and ordinary meaning,
`which is the nucleic acid
`encoding the Mxr1
`transcriptional activator
`protein
`From P. pastoris indicates that
`the sequence has its origins in
`the P. pastoris genome
`
`Plain and ordinary meaning
`This is the same issue that is
`raised in Term 2.
`
`This term is part of Term 2, it
`is not a separate term.
`Plain and ordinary meaning
`From P. pastoris indicates that
`the sequence has its origins in
`the P. pastoris genome
`
`Motif’s Proposed
`Construction
`[a first exogenous nucleic acid
`encoding] a sequence of a
`native Mxr1 transcriptional
`activator
`
`Ginkgo’s Proposed
`Construction
`[a first exogenous nucleic acid
`encoding] a sequence of an
`Mxr1 transcriptional activator
`protein
`
`[a nucleic acid encoding] the
`sequence of the native P.
`pastoris Mxr1 transcriptional
`activator
`
`[a nucleic acid encoding] a
`sequence of an Mxr1
`transcriptional activator
`protein [found naturally in P.
`pastoris]
`
`a nucleic acid molecule
`encoding both x and y
`
`a nucleic acid molecule
`encoding both x and y
`
`Motif construes this term as
`part of its construction of the
`larger Terms 2a and 2c.
`
`x found naturally in P. pastoris
`This term is not part of Term 2,
`in that it is found elsewhere in
`the claims in addition to its
`connection with Term 2
`
`2 The parties do not dispute that Term 2b refers to the sequence encoding the Mxr1 transcriptional activator protein.
`3 The parties do not dispute that Term 2c refers to the sequence encoding the Mxr1 transcriptional activator protein
`
`9
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 10 of 13 PageID #: 23152
`
`No.
`
`6
`
`4
`
`7
`
`Claim Term
`
`“sequence to which
`[the/a] Mxr1
`transcriptional activator
`binds”
`(’656 patent, all asserted
`claims)
`
`“wherein the
`recombinant nucleic acid
`molecule comprises [x],
`wherein the recombinant
`nucleic acid molecule
`comprises [y]”/
`(’656 patent, cls. 1, 5, 7,
`8, 10, 11, 15, 24)
`
`“wherein each nucleic
`acid is operably linked to
`a methanol-inducible
`promoter element”
`(’656 patent, cls. 26, 28)
`
`Impossible’s Proposed
`Construction
`Plain and ordinary meaning,
`does not require construction
`to resolve any controversy.
`
`Motif’s Proposed
`Construction
`Indefinite
`
`Ginkgo’s Proposed
`Construction
`Indefinite
`
`Plain and ordinary meaning,
`does not require construction
`to resolve any controversy.
`
`wherein the recombinant
`nucleic acid molecule
`comprises [x], wherein the
`same recombinant nucleic acid
`molecule comprises [y]
`
`wherein the recombinant
`nucleic acid molecule
`comprises [x], wherein the
`same recombinant nucleic acid
`molecule comprises [y]
`
`Plain and ordinary meaning,
`does not require construction
`to resolve any controversy.
`The claim language should be
`read as written, and not
`reorganized.
`“a,” “an,” and “the” mean
`“one or more.”
`
`wherein the nucleic acid
`encoding a Mxr1
`transcriptional activator
`sequence, the nucleic acid
`encoding a member of the
`globin family PF00042, and
`the nucleic acid encoding the
`at least one polypeptide are
`each present on the same
`recombinant nucleic acid
`molecule and are each
`operably linked to the same
`methanol-inducible promoter
`element
`
`wherein the nucleic acid
`encoding a Mxr1
`transcriptional activator
`sequence, the nucleic acid
`encoding a member of the
`globin family PF00042, and
`the nucleic acid encoding the
`at least one polypeptide are
`each present on the same
`recombinant nucleic acid
`molecule and are each
`operably linked to the same
`methanol-inducible promoter
`element
`
`10
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 11 of 13 PageID #: 23153
`
`Motif’s Proposed
`Construction
`Indefinite
`
`Ginkgo’s Proposed
`Construction
`Indefinite
`
`Impossible’s Proposed
`Construction
`Plain and ordinary meaning,
`does not require construction
`to resolve any controversy.
`“a,” “an,” and “the” mean
`“one or more.”
`
`No.
`
`8
`
`Claim Term
`
`“wherein the [methanol-
`inducible] promoter
`element” / “wherein the
`[at least one] methanol-
`inducible promoter
`element”
`(’492 patent, cls. 5, 7;
`’656 patent, cls. 10 and
`11, and cl. 28
`contingently only)
`
`11
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 12 of 13 PageID #: 23154
`
`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Andrew M. Moshos
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Andrew M. Moshos (#6685)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`amoshos@potteranderson.com
`
`Attorneys for Plaintiff Impossible Foods Inc.
`
`OF COUNSEL:
`
`Wendy L. Devine
`Kristina M. Hanson
`Shannon P. Gillespie McComb
`Jessica Ramsey
`Susannah M. L. Gagnon
`Joyce K. Yao
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, CA 94105
`Tel: (415) 947-2000
`
`Matthew R. Reed
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 493-9300
`
`Lori P. Westin
`Natalie J. Morgan
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`12235 El Camino Real
`San Diego, CA 92130
`Tel: (858) 350-2300
`
`Michael T. Rosato
`Sonja R. Gerrard
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104
`Tel: (206) 883-2529
`
`Dated: February 23, 2024
` 11349427 / 20200.00002
`
`12
`
`

`

`Case 1:22-cv-00311-WCB Document 371 Filed 02/23/24 Page 13 of 13 PageID #: 23155
`
`/s/ Jeremy A. Tigan
`Jeremy A. Tigan
`Cindy Cucuzzella
`MORRIS, NICHOLS, ARSHT &
`TUNNELL LLP
`1201 N. Market Street
`Wilmington, DE 19801
`jtigan@morrisnichols.com
`ccucuzzella@morrisnichols.com
`
`Joseph M. Paunovich
`Ryan Landes
`Sandra L. Haberny
`Sarah Cork
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`joepaunovich@quinnemanuel.com
`ryanlandes@quinnemanuel.com
`sandrahaberny@quinnemanuel.com
`sarahcork@quinnemanuel.com
`
`Stephen Q. Wood
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`2755 E. Cottonwood Parkway, Suite 430
`Salt Lake City, UT 84121
`stephenwood@quinnemanuel.com
`
`Counsel for Defendant Motif FoodWorks,
`Inc.
`
`Dated: February 23, 2024
`
`/s/ Alexandra M. Joyce
`Daniel M. Silver
`Alexandra M. Joyce
`MCCARTER & ENGLISH, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
`dsilver@mccarter.com
`ajoyce@mccarter.com
`
`Adam R. Brausa
`Daralyn J. Durie
`Vera Ranieri
`MORRISON & FOERSTER, LLP
`425 Market Street
`San Francisco, CA, 94105-2482
`abrausa@mofo.com
`ddurie@mofo.com
`vranieri@mofo.com
`
`Aaron D. Bray
`MORRISON & FOERSTER, LLP
`755 Page Mill Rd
`Palo Alto, CA 94304
`abray@mofo.com
`
`Caleb D. Woods
`MORRISON & FOERSTER, LLP
`2100 L Street, NW
`Suite 900
`Washington, D.C., 20037
`calebwoods@mofo.com
`
`Counsel for Defendant Ginkgo Bioworks,
`Inc.
`
`13
`
`