Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 1 of 22 PageID #: 25234
`
`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.
`
`PLAINTIFF IMPOSSIBLE FOODS INC.’S OPENING BRIEF IN SUPPORT OF
`MOTION TO COMPEL DISCOVERY RELATED TO MOTIF INVESTIGATIONS
`
`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.
`
`OF COUNSEL:
`
`Wendy L. Devine
`Kristina M. Hanson
`Shannon P. Gillespie McComb
`Jessica Ramsey
`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
`Jeffrey Nall
`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
`
`PUBLIC VERSION
`
`

`

`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 2 of 22 PageID #: 25235
`
`Michael T. Rosato
`Sonja R. Gerrard
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Tel: (206) 883-2529
`
`Matthew Macdonald
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`953 East Third Street, Suite 100
`Los Angeles, CA 90013
`Tel: (323) 210-2953
`
`Dated: March 18, 2024
`Public Version Dated:
`March 25, 2024
`11382997 / 20200.00002
`
`ii
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`

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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 3 of 22 PageID #: 25236
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`TABLE OF CONTENTS
`
`PAGE
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION .............................................................................................................. 1
`
`NATURE AND STAGE OF PROCEEDINGS .................................................................. 2
`
`SUMMARY OF THE ARGUMENT ................................................................................. 3
`
`STATEMENT OF FACTS ................................................................................................. 4
`
`ARGUMENT ...................................................................................................................... 6
`
`A.
`
`B.
`
`Legal Standard ........................................................................................................ 6
`
`Motif Must Produce the Relevant Discovery Related to Investigations ................. 7
`
`1.
`
`2.
`
`3.
`
`Motif’s Investigations Into Impossible Are Critical to Impossible’s
`Ability to Prove Claims and Defenses at Trial ........................................... 8
`
`To Receive Equitable Relief, Motif Must Come With Clean Hands ........ 11
`
`Liberal Discovery Standards Merit Discovery into Motif
`Investigations ............................................................................................ 12
`
`VI.
`
`CONCLUSION ................................................................................................................. 13
`
`

`

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`
`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES
`Advanced Micro Devices, Inc. v. Intel Corp.,
`C.A. No. 05-441-JJF, 2006 U.S. Dist. LEXIS 102143 (D. Del. Dec. 15, 2006) ...........7, 11
`Aptix Corp. v. Quickturn Design Sys.,
`269 F.3d 1369 (Fed. Cir. 2001)..........................................................................................12
`Detoy v. City & Cty. of S.F.,
`196 F.R.D. 362 (N.D. Cal. 2000) .....................................................................................1, 2
`Dove v. Atl. Capital Corp.,
`963 F.2d 15 (2d Cir. 1992).................................................................................................13
`Folz v. Union Pac. R.R.. Co.,
`No. 13-CV-00579-GPC-PCL, 2014 WL 2860271 (S.D. Cal. June 23, 2014) ...............1, 12
`Georgia-Pacific Corp. v. United States Plywood Corp.,
`318 F. Supp. 1116 (S.D.N.Y 1970)................................................................................3, 10
`Heat & Control, Inc. v. Hester Indus., Inc.,
`785 F.2d 1017 (Fed. Cir. 1986)............................................................................................6
`Hickman v. Taylor,
`329 U.S. 495 (1947) .............................................................................................................6
`Keystone Driller Co. v. Gen. Excavator Co.,
`290 U.S. 240 (1933) .....................................................................................................11, 12
`Manhattan Med. Co. v. Wood,
`108 U.S. 218 (1883) ...........................................................................................................11
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)..........................................................................................12
`Pacitti v. Macy’s,
`193 F.3d 766 (3d Cir. 1999).................................................................................................6
`Tuerkes-Beckers, Inc. v. New Castle Assocs.,
`158 F.R.D. 573 (D. Del. 1993) ............................................................................................7
`RULES
`Fed. R. Civ. P. 26(b)(1)..............................................................................................................6, 12
`Fed. R. Civ. P. 30(c)(2) ....................................................................................................................2
`Fed. R. Civ. P. 30(d)(1)....................................................................................................................1
`
`ii
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`

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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 5 of 22 PageID #: 25238
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`Fed. R. Civ. P. 30(d)(3)....................................................................................................................2
`MISCELLANEOUS
`Fed. R. Civ. P. 26(b)(1) Advisory Committee’s note to 1983 Amendment ....................................6
`Story’s Equity Jurisprudence, 14th Ed. § 98............................................................................11, 12
`
`iii
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`

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`I.
`
`INTRODUCTION
`
`Impossible respectfully requests that the Court revisit the question addressed last week
`
`during the deposition of Motif’s former CEO, Michael Leonard, and order Motif (and any third-
`
`party witnesses) to answer questions about what has been called the
`
` As the Court
`
`is aware, documents produced in this case show that Motif Foodworks conducted extended
`
`“competitive intelligence” investigations into Impossible’s
`
` through a
`
`third-party research firm called
`
` See, e.g., Ex. 1. Undeniably, these investigations are
`
`relevant to potential trade secret claims that Impossible has against Motif. But Motif’s conduct is
`
`equally undeniably relevant to the patent cases now before the Court. Most significantly, the
`
`investigations are relevant to rebut Motif’s estoppel defense, which claims that Motif was
`
`candid with Impossible about its plans and that Impossible somehow encouraged Motif to infringe
`
`Impossible’s patents. The facts that Impossible already knows about the
`
` investigations
`
`suggest the opposite: Motif was not candid with Impossible and was in fact planning to compete
`
`with Impossible all along. Impossible, of course, does not know many of the facts surrounding
`
`the
`
` investigations because Motif has instructed witnesses not to answer questions. The
`
`facts surrounding the
`
` investigations are also relevant to damages, willfulness, and
`
`Impossible’s requests for injunctive relief. Contrary to Motif’s arguments, a party may not shield
`
`potentially relevant information from discovery in one case merely because that evidence could be
`
`used in another case. To the contrary, discovery is broad, and instructions not to answer questions
`
`on the basis of relevance are clearly improper. “Clearly established federal law provides that a
`
`deponent may not refuse to answer a question based only a relevance objection.” Folz v. Union
`
`Pac. R.R.. Co., No. 13-CV-00579-GPC-PCL, 2014 WL 2860271, at *3 (S.D. Cal. June 23, 2014)
`
`(citing to Fed. R. Civ. P. 30(d)(1); Detoy v. City & Cty. of S.F., 196 F.R.D. 362, 366 (N.D. Cal.
`
`

`

`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 7 of 22 PageID #: 25240
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`2000)).1
`
`This matter is urgent. The close of fact discovery in the food patent case is imminent, and
`
`two depositions highly relevant to this information—both of which were requested months ago but
`
`delayed repeatedly by Motif—are scheduled for Wednesday, March 20 (former CEO of Motif,
`
`Jonathan McIntyre), and Friday, March 22 (former Motif Senior Manager of Corporate & Business
`
`Development, Morgan Keim). If this matter is not promptly addressed, discovery will need to be
`
`reopened to complete discovery in this area, and witnesses will need to be recalled.
`
`II.
`
`NATURE AND STAGE OF PROCEEDINGS
`
`Impossible filed this action against Motif for direct, induced, contributory, and willful
`
`infringement of U.S. Patent No. 10,863,761 on March 9, 2022. D.I. 1. Impossible subsequently
`
`added four additional patents related to the Food Products on July 25, 2022, and allegations of
`
`infringement related to two patents regarding the yeast constructs used to manufacture heme (the
`
`“Yeast Patents”) on September 7, 2022. D.I. 19, D.I. 22. On June 3, 2023, Impossible added
`
`Ginkgo Bioworks, Inc. (“Ginkgo”) as a defendant with respect to infringement of the Yeast
`
`Patents. D.I. 129. The court subsequently severed the Yeast Patent claims from the Food Product
`
`Patent claims and set a separate scheduling order for the Yeast Patent litigation. D.I. 161. In
`
`response to the operative complaint in this case, Motif filed an answer and counterclaims on July
`
`17, 2023 which claimed “[p]laintiff is barred, in whole or in part, by estoppel, acquiescence,
`
`waiver, unclean hands, and/or other equitable defenses.” D.I. 152 at 22.
`
`In the summer of 2023, Motif produced a handful of documents relating to work performed
`
`by the
`
` relating to a “competitive intelligence” assessment that Motif commissioned.
`
`1 Fed. R. Civ. P. 30(c)(2) (“A person may instruct a deponent not to answer only when necessary
`to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under
`Rule 30(d)(3) [deposition being conducted in bad faith or . . . oppresses the [] party.]”.)
`
`2
`
`

`

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`These documents revealed that these investigations had included, at Motif’s express request,
`
`
`
`; as a result, Motif
`
`improperly obtained significant, confidential information about
`
`
`
`
`
`Impossible thereafter sought leave to amend the Yeast Patent complaint to add trade-secret-
`
`theft claims against Motif. The Court denied Impossible’s motion on January 19, 2024, finding
`
`“[t]he appropriate case in which Impossible should have amended its claims was the Food Products
`
`Patents case, to which Ginkgo is not a party and bears no risk of prejudice.” See D.I. 336 at 3.
`
`Fact discovery with respect to the Food Product Patents is ongoing and is currently
`
`scheduled to close on March 22, 2024. D.I. 310. The parties are undertaking fact depositions now.
`
`Trial in the Food Patent Case is set to begin on January 13, 2025. D.I. 37, ¶ 18.
`
`III.
`
`SUMMARY OF THE ARGUMENT
`
` Impossible respectfully requests that the Court order Motif to provide relevant discovery
`
`related to investigations Motif conducted regarding Impossible’s business.
`
`The facts surrounding Motif’s investigations into Impossible—
`
`and otherwise—are
`
`related to multiple issues in this case. They are relevant to rebut Motif’s false estoppel-based claim
`
`that it developed heme products only at Impossible’s urging. They are relevant to multiple
`
`Georgia-Pacific2 factors on damages. And they are relevant to rebut Motif’s specious assertion
`
`that it is not a competitor of Impossible, an issue that goes to both damages and to Impossible’s
`
`request for injunctive relief. Impossible respectfully requests the Court order Motif to stop
`
`2 Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y 1970).
`
`3
`
`

`

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`instructing witnesses to respond to deposition questions related to Motif’s investigations on
`
`grounds of relevance, and order further deposition testimony from Dr. Michael Leonard, the Motif
`
`former CEO deposed last week, of at least 2 hours on the topic of Motif’s investigations into
`
`Impossible.
`
`IV.
`
`STATEMENT OF FACTS
`
`Motif engaged
`
`on at least
`
` occasions to investigate Impossible. In each case,
`
`
`
`
`
`
`
` It appears that
`
`Motif first retained
`
` in the
`
`.
`
`As noted above, Impossible filed this case in March 2022, shortly after learning that Motif
`
`intended to market heme to Impossible’s competitors. Among other defenses, Motif has asserted
`
`the defenses of equitable estoppel and unclean hands. Motif’s responses to interrogatories explain
`
`the defense as follows:
`
`Impossible has unclean hands, foreclosing any of the relief that Impossible seeks in
`this litigation. For example, Impossible acted in bad faith by falsely giving the
`appearance that it was interested in partnering with Motif with respect to Motif’s
`potential production of soy leghemoglobin, which Motif had planned in good faith
`to benefit Impossible and to develop a productive partnership between the two
`companies. Impossible then injured Motif by secretly waiting for years to file the
`present lawsuit, on information and belief, at a time when Impossible knew that
`Impossible could inflict commercial injury on Motif. Indeed, as Impossible
`intended, the filing of the instant lawsuit injured Motif.
`
`Ex. 2 at 25. Notably, however, Motif continued using
`
` services to learn confidential
`
`information about Impossible even after Impossible filed this case, and it should have been obvious
`
`that no “partnership” was in the offing. See Ex. 3 at 4-7.
`
`4
`
`

`

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`In July 21, 2023, Motif produced documents revealing for the first time the existence of
`
` investigations. In December 2023, Impossible sought to file a Fourth Amended Complaint,
`
`which included Defense of the Trade Secret Act claims on December 1, 2023.
`
`Even after Impossible sought leave to add trade secret claims, Motif expressly referenced
`
`the
`
`investigations in support of its equitable defenses. Motif then subsequently responded
`
`to Interrogatory Number 19, which asked for factual circumstances related to Motif’s
`
`investigations of Impossible, including, but not limited to, investigations by
`
`. In that
`
`response, dated December 8, 2023, Motif cited its response to Interrogatory No. 4, which asked
`
`for facts related to Motif’s equitable defenses. Motif’s response noted “[t]o help Motif develop a
`
`successful business proposal for Impossible that focused on how Motif could address Impossible’s
`
`specific needs, Motif hired a third party,
`
`
`
`” Ex. 3 at 5 (emphasis added). Additionally, Motif stated in its
`
`interrogatory response that each time
`
` was engaged it was for the purpose of partnering with
`
`Impossible. Id. at 5-7. This interrogatory response directly tied Motif’s equitable defense of
`
`unclean hands that Impossible is estopped from asserting its patents and not entitled to an
`
`injunction to the
`
` investigations.
`
`In January of this year, after the Court denied Impossible’s motion to amend, Impossible
`
`continued to seek discovery into the facts and circumstances surrounding the
`
`
`
`investigations. When Impossible asked Motif to supplement responses to a relevant interrogatory
`
`request, Motif refused to do so not because the information was irrelevant (as it now claims) but
`
`because that information “would be more properly obtained through other forms of discovery,”
`
`and specifically that “Motif identified six current and former Motif employees who may have
`
`knowledge of this topic, some of whom Impossible has noticed for deposition.” Those “six current
`
`5
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`

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`and former Motif employees” included the three witnesses now at issue: Mike Leonard, Jon
`
`McIntyre, and Morgan Keim. Id. at 7. Notably, Impossible noticed and served subpoenas for these
`
`individuals in November. (Mike Leonard (November 16, 2023, Ex. 4), Jonathan McIntyre
`
`(November 15, 2023, Ex. 5), and Morgan Keim (November 14, 203, Ex. 6)). Motif, however,
`
`delayed these depositions to the two weeks at the end of fact discovery. Motif’s last minute about
`
`face on the appropriate scope of questioning of these witnesses has necessitated the urgency of this
`
`motion.
`
`When the parties briefed multiple discovery issues before the Court the first week of
`
`March, Impossible learned it would not receive corporate testimony related to Topic No. 39. D.I.
`
`394, ¶ 4. However, Impossible should not be denied testimony to support its factual assertions
`
`that will impeach Motif’s witnesses’ testimony, discredit Motif’s equitable theories, and provide
`
`relevant information for damages and willfulness.
`
`V.
`
`ARGUMENT
`
`A.
`
`Legal Standard
`
`Pretrial discovery is “accorded a broad and liberal treatment.” Hickman v. Taylor, 329 U.S.
`
`495, 507 (1947); Pacitti v. Macy’s, 193 F.3d 766, 777-78 (3d Cir. 1999) (“It is well recognized
`
`that the federal rules allow broad and liberal discovery.”). Indeed, parties are entitled to discovery
`
`related to any nonprivileged matter as long as it “is relevant to any party’s claim or defense and
`
`proportional to the needs of the case,” regardless of whether it may be admissible as evidence.
`
`Fed. R. Civ. P. 26(b)(1). Because of these liberal standards, a “court must be careful not to deprive
`
`a party of discovery that is reasonably necessary to afford a fair opportunity to develop and prepare
`
`the case.” Heat & Control, Inc. v. Hester Indus., Inc., 785 F.2d 1017, 1024 (Fed. Cir. 1986)
`
`(quoting Fed. R. Civ. P. 26(b)(1) advisory committee’s note to 1983 amendment). This rule has
`
`particular force in the context of depositions, where an instruction not to answer based on relevance
`
`6
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`

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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 12 of 22 PageID #: 25245
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`is improper and a reason to award sanctions. Tuerkes-Beckers, Inc. v. New Castle Assocs., 158
`
`F.R.D. 573, 574 (D. Del. 1993) (“Counsel may not instruct a witness not to answer a question,
`
`unless ... answering the question would require the disclosure of information that is protected from
`
`disclosure as privileged or work product”).
`
`There is no rule limiting discovery simply because the information sought might cast the
`
`defendant in a bad light or assist the plaintiff in proving other claims that the plaintiff might have.
`
`Indeed, courts routinely overrule objections to discovery based simply because some information
`
`may be relevant to other claims that are not currently in this litigation is not a reason to deny
`
`relevant discovery in this case. Advanced Micro Devices, Inc. v. Intel Corp., C.A. No. 05-441-
`
`JJF, 2006 U.S. Dist. LEXIS 102143, at *51-52 (D. Del. Dec. 15, 2006) (“Thus, while it would be
`
`proper to deny discovery of the foreign conduct at issue in this litigation if it were only relevant to
`
`claims or defenses that have been stricken by the September 26, 2006 Order, it is not proper to
`
`deny the discovery of the Foreign Conduct Discovery Materials because they are relevant to the
`
`export commerce claims.”).
`
`B.
`
`Motif Must Produce the Relevant Discovery Related to Investigations
`
` Information about the
`
` is critical to support Impossible’s currently-asserted
`
`claims and defenses and to rebut Motif’s (false) claim that Impossible induced it to infringe.
`
`Simply put, Motif—and its witnesses at deposition—are claiming that Motif’s development of
`
`heme proteins was designed for a partnership with Impossible and that Impossible encouraged
`
`Motif in these pursuits. Ex. 7 at 279:14-19 (Impossible Counsel: “What is the purpose of that?
`
`This is an interrogatory. . . . What’s the relevance of that?” Motif Counsel: “These are the
`
`interrogatories that the company responding to your discovery requests and I’m just going to walk
`
`him through each one.”). In reality, Motif was developing heme to compete with Impossible and
`
`7
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`

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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 13 of 22 PageID #: 25246
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`sell to Impossible’s biggest competitors.3 The
`
` investigations are undeniably concrete
`
`evidence that Motif was not being up front with Impossible—about its development of heme or its
`
`intentions.
`
`1.
`
`Motif’s Investigations Into Impossible Are Critical to Impossible’s
`Ability to Prove Claims and Defenses at Trial
`
`a)
`
`Discovery Related to Motif’s Investigations Into Impossible Is
`Pivotal to Disproving Motif’s Unclean Hands and Estoppel
`Allegations
`
`Impossible sells the only plant-based meat replica on the market that contains heme, the
`
`molecule that Impossible’s inventors have shown—and patented—that contributes to the
`
`unmistakably meaty aroma and flavor of Impossible’s products. Impossible is seeking a
`
`permanent injunction in this case to maintain that exclusive market. One of Motif’s central
`
`defenses in this case is unclean hands and estoppel—a claim that Impossible somehow encouraged
`
`Motif to produce heme and infringe Impossible’s patents. This defense is aimed at the heart of
`
`Impossible’s case—its ability to enforce its patents and request to the Court for an injunction.
`
`Remarkably, Motif has affirmatively pointed to its covert investigations of Impossible as
`
`evidence of its desire to “partner” with Impossible. Impossible must be given the opportunity to
`
`disprove this fallacy. If Motif was purely interested in a partnership with Impossible, and
`
`Impossible was encouraging Motif to develop a
`
`would Motif need to hire a third party to surreptitiously investigate
`
`, why
`
`
`
`(providing
`
`confidential
`
`information
`
`related
`
`to
`
`Impossible’s
`
`
`
`),
`
`MOTIF000160809; see also Ex. 9 at MOTIF00412465, 468-472 (confidential information related
`
`Ex. 1 at MOTIF000160814-822, 826-827
`
`3 See Ex. 8 (
`
`
`
`8
`
`
`
`
`
`

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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 14 of 22 PageID #: 25247
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`to Impossible’s
`
`); and Ex. 1 at MOTIF000160823, 828-833 (information
`
`related to ingredients in Impossible’s
`
`). If Motif was being fully candid with
`
`Impossible about its plans, why the cloak and dagger? If Impossible were a “partner,” why would
`
`Motif not just ask for this information? It is essential that Impossible be permitted to impeach the
`
`self-serving testimony of Motif’s witnesses (and its self-serving interrogatory responses) with this
`
`information. Ex. 3 at 6.
`
`Motif, despite having full knowledge that this material is relevant to its alleged unclean
`
`hands theory, has instructed witnesses not to answer questions in depositions on grounds of
`
`relevance and refused to supplement relevant interrogatory responses. Ex. 7 at 134:4-22; Ex. 10
`
`at 3). This is despite the fact that the day after the Court denied Impossible leave to file the Fourth
`
`Amended Complaint regarding trade secret allegations, Motif told Impossible it would not
`
`supplement its Interrogatory response related to the investigations, but invited that the information
`
`“would be more properly obtained through other forms of discovery,” noting specifically that
`
`“Motif identified six current and former Motif employees who may have knowledge of this topic,
`
`some of whom Impossible has noticed for deposition.” Ex. 10 at 3. Three of those six employees
`
`are Michael Leonard, in whose deposition this problem first arose, Jonathan McIntyre, who is
`
`being deposed Wednesday, March 20, and Morgan Keim, who is being deposed on Friday, March
`
`22.
`
`Impossible requires this information to effectively refute Motif’s unclean hands
`
`defense. Motif’s obstructive behavior vitally impacts Impossible’s ability to prepare an effective
`
`case both with respect to Impossible’s critical equitable request for injunctive relief as well as
`
`disproving Motif’s estoppel defense related to Impossible’s infringement claims.
`
`9
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`

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`b)
`
`Discovery Related to Motif’s Investigations Into Impossible Is
`Integral to Damages
`
`The
`
` investigations are also plainly relevant to damages and, in particular, Georgia
`
`Pacific factors 5, 9, and 11. While Motif relies on self-serving statements that the
`
`
`
`investigations were related to “partnering” with Impossible, information related to the true intent
`
`of these investigations will show “[t]he commercial relationship between the [hypothetical]
`
`licensor and the licensee, such as, whether they are competitors.” Georgia-Pacific, 318 F. Supp.
`
`at 1120. If Motif thought Impossible was a friendly partner, the invasive and covert investigations
`
`by a third party would not have been necessary. This information is directly relevant to showing
`
`the true commercial relationship between Impossible and Motif at the time.
`
`This information is also related to GP factor 9, “[t]he utility and advantages of the patent
`
`property over the old modes or devices,” as well as GP factor 11, with respect to “evidence
`
`probative of the value of that use.” Id. The time, money, and effort Motif put into investigating
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`and gathering competitive intelligence on Impossible to
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`
`
`
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`, which Motif has commercialized as Hemami, shows how much Motif values
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`this technology.
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`c)
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`Discovery Related to Motif’s Investigations Into Impossible Is
`Fundamentally Relevant to Willfulness
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`Motif has acknowledged in an interrogatory response that it had knowledge of the patents
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`at issue in this litigation as early as September 2020. Ex. 2 at 14. Yet, with knowledge of
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`Impossible’s patented innovations, Motif proceeded with investigations into Impossible’s
`
`
`
` The
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`investigations are related to Motif’s intentional insistence to
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`infringe Impossible’s patents. If Impossible had invited infringement of its patents, such that Motif
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`did not believe it would be infringing or would have a license, Motif would not have needed to
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`engage in clandestine research into Impossible’s
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`. Instead, the
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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 16 of 22 PageID #: 25249
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`competitive intelligence sought demonstrates that Motif knew it would be infringing Impossible’s
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`patents.
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`2.
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`To Receive Equitable Relief, Motif Must Come With Clean Hands
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`The
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` investigations are also relevant because they rebut
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` equitable counter
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`claims. Equity law is clear: “[H]e who seeks equity must present himself in court with clean hands.
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`If his case discloses fraud or deception or misrepresentation on his part, relief there will be denied.”
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`Manhattan Med. Co. v. Wood, 108 U.S. 218, 225 (1883). A party who has been dishonest or
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`fraudulent cannot expect the assistance of the court to obtain an equitable remedy.
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`Motif is a counterclaim plaintiff seeking equitable relief and asserts equitable defenses.
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`The fact that Impossible has a trade secret claim underscores Motif’s failure to come to the court
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`with clean hands. Impossible is not seeking discovery to support its trade secrets claims here, and
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`simply because some information is relevant to claims that are not currently in this litigation is not
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`a reason to deny relevant discovery in this case. Advanced Micro, 2006 U.S. Dist. LEXIS 102143
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`at *51-52 (“Thus, while it would be proper to deny discovery of the foreign conduct at issue in
`
`this litigation if it were only relevant to claims or defenses that have been stricken by the September
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`26, 2006 Order, it is not proper to deny the discovery of the Foreign Conduct Discovery Materials
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`because they are relevant to the export commerce claims.”). “It is one of the fundamental
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`principles upon which equity jurisprudence is founded, that before a complainant can have a
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`standing in court he must first show that not only has he a good and meritorious cause of action,
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`but he must come into court with clean hands. He must be frank and fair with the court, nothing
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`about the case under consideration should be guarded, but everything that tends to a full and fair
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`determination of the matters in controversy should be placed before the court.” Keystone Driller
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`Co. v. Gen. Excavator Co., 290 U.S. 240, 244 (1933) (citing Story’s Equity Jurisprudence, 14th
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`Ed. § 98).
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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 17 of 22 PageID #: 25250
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`Impossible can—and will—prove that even if the Court accepted all of Motif’s allegations
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`as true (and to be clear, they are not), Motif’s “unconscionable act . . . has immediate and necessary
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`relation to the equity that he seeks in respect to the matter in litigation.” Aptix Corp. v. Quickturn
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`Design Sys., 269 F.3d 1369, 1376 (Fed. Cir. 2001) (citation omitted). Similarly, Motif does not
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`have the requisite clean hands necessary to seek equitable relief. The fact that a limited subset of
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`this information may also be relevant to Impossible’s trade secret claims cannot bar relevant
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`discovery needed by Impossible to refute Motif’s claims in the instant litigation.
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`3.
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`Liberal Discovery Standards Merit Discovery into Motif
`Investigations
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`Impossible has legitimate rights to pursue discovery regarding Motif’s investigations of
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`Impossible. “Parties may obtain discovery regarding any nonprivileged matter that is relevant to
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`any party’s claim or defense and proportional to the needs of the case.” Fed. R. Civ. P.
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`26(b)(1). As discussed above, the investigations are plainly potentially relevant to the issues in
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`this case. But even if they were not, that does not justify Motif’s conduct. “Clearly established
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`federal law provides that a deponent may not refuse to answer a question based only a relevance
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`objection.” Folz, 2014 WL 2860271 at *3.
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`Nor can Motif justify refusing to answer questions because the answers might conceivably
`
`be relevant to a potential trade secret case. There is no exception to discovery in patent cases for
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`evidence that might also be relevant to an unasserted trade secret claim. The cases Motif has cited
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`are all trade secret cases, not patent cases, and the procedural rules of a trade secret case do not
`
`apply. In a patent case, discovery is broad and will invariably touch on a wide-range of issues. O2
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`Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006) (“[The]
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`discovery regime under the Federal Rules of Civil Procedure [is broad], especially given the
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`particular importance of discovery in complex patent cases.”) (citations omitted). And courts have
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`Case 1:22-cv-00311-WCB Document 418 Filed 03/25/24 Page 18 of 22 PageID #: 25251
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`repeatedly held that the mere fact that information might be relevant in another proceeding is no
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`reason to refuse to answer a question. See, e.g., Dove v. Atl. Capital Corp., 963 F.2d 15, 19 (2d
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`Cir. 1992) (“However, where the discovery sought is relevant to a good faith defense in the federal
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`case.”). Motif bears the burden to show that this discovery is sought in bad faith, which it cannot
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`show because this discovery clearly bears on these issues.
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`Furthermore, the suggestion that this information is sought for the purpose of obtaining
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`information about a trade secret case is also wrong. In fact, Impossible determined that only some
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`of the information that Motif used
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`to obtain were Impossible’s trade secrets, however only
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`8 unique documents relating to
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` were cited in the Fourth Amended Complaint as relevant
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`to the trade secret claims. As an example, one
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` (MOTIF00160805 (attached
`
`here as Ex. 1)) that was cited had only five of the 30 pages cited with respect to the trade secret
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`claims. D.I. 284-5 at Ex. 14. Additionally, there are