Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 1 of 25 PageID #: 25936
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendants.
`
`C.A. No. 22-311-WCB
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`
`
`))))))))))
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`
`
`IMPOSSIBLE FOODS INC.,
`
`
`
`
`
`MOTIF FOODWORKS, INC. and
`GINKGO BIOWORKS, INC.,
`
`
`
`PLAINTIFF IMPOSSIBLE FOODS INC.’S OPENING BRIEF IN SUPPORT OF
`MOTION FOR ENTRY OF JUDGMENT FOR LEAVE TO AMEND
`PLAINTIFF’S FINAL INFRINGEMENT CONTENTIONS
`
`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
`
`Michael T. Rosato
`Sonja R. Gerrard
`
`
`
`PUBLIC VERSION
`
`

`

`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 2 of 25 PageID #: 25937
`
`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 21, 2024
`Public Version Dated: March 28, 2024
` 11391791 / 20200.00002
`
`ii
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`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 3 of 25 PageID #: 25938
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`TABLE OF CONTENTS
`
`PAGE
`
`
`NATURE AND STAGE OF PROCEEDINGS .................................................................. 1
`
`SUMMARY OF THE ARGUMENT ................................................................................. 2
`
`I.
`
`II.
`
`III.
`
`STATEMENT OF FACTS ................................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Motif’s Core Technical Documents Did Not Contain the Information
`Necessary to Accuse Hemami of Direct Infringement ........................................... 4
`
`Motif’s Discovery Responses Did Not Contain the Information Necessary
`to Accuse Hemami of Direct Infringement ............................................................. 5
`
`Impossible’s
`
` Contradicts Motif’s Documents ................................ 6
`
` Testing
`For The First Time, Motif’s Fact Witnesses Identify
`As Hemami Testing ................................................................................................ 7
`
`Motif Recognizes Hemami Has Been Accused Since the Complaint .................... 8
`
`IV.
`
`ARGUMENT ...................................................................................................................... 9
`
`A.
`
`Legal Standard ........................................................................................................ 9
`
`1.
`
`Leave to Amend the Final Infringement Contentions ................................. 9
`
`B.
`
`Leave to Amend the Final Infringement Contentions to Add Motif’s
`Hemami Product Should Be Granted .................................................................... 10
`
`1.
`
`2.
`
`3.
`
`Impossible Was Diligent in Bringing Its Motion to Add Direct
`Infringement for Hemami ......................................................................... 10
`
`There is Good Cause for Impossible’s Proposed Amendment ................. 13
`
`Motif Has Identified No Prejudice From This Amendment ..................... 14
`
`V.
`
`CONCLUSION ................................................................................................................. 18
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`
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`i
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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 4 of 25 PageID #: 25939
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`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES
`Bayer Cropscience AG v. Dow Agrosciences LLC, C.A. No. 10-1045,
`2012 WL 12904381 (D. Del. Feb. 27, 2012) .....................................................................10
`Betchel v. Robinson,
`886 F.2d 644 (3d Cir. 1989)...............................................................................................15
`E. I. du Pont de Nemours & Co. v. Phillips Petro. Co.,
`
`23 F.R.D. 237 (D. Del. 1959) ..............................................................................................7
`Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-
`VAC-SRF, 2022 WL 18707841 (D. Del. Nov. 17, 2022) .................................................12
`Lipocine Inc. v. Clarus Therapeutics, Inc., C.A. No. 19-622 (WCB),
`2020 WL 4794576 (D. Del. Aug. 18, 2020) ......................................................................10
`
`Novartis Pharms. Corp. v. Abbott Lab’ys.,
`
`203 F.R.D. 159 (D. Del. 2001) ............................................................................................7
`O2 Micro Int’l, Ltd. v. Monolithic Power Sys.,
`476 F.3d 1355 (Fed. Cir. 2006)..........................................................................................10
`Power Integrations, Inc. v. Fairchild Semiconductor Intl., Inc., C.A. No. 04-
`1371-JJF, 2005 WL 8136574, at *1 (D. Del. Oct. 11, 2005) ............................................11
`Targus Int’l LLC v. Victorinox Swiss Army, Inc., C.A. No. 20-cv-464-RGA,
`2021 WL 2291978 (D. Del. June 4, 2021) .........................................................................13
`
`
`RULE
`Fed. R. Civ. P. 15(a)(2) ..................................................................................................................10
`Fed. R. Civ. P. 33(d) ........................................................................................................5, 6, 11, 13
`
`ii
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`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 5 of 25 PageID #: 25940
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`Pursuant to the Scheduling Order (D.I. 37, ¶ 15), Impossible Foods Inc. (“Impossible”)
`
`submits this opening brief in support of its Motion for Leave to Amend Plaintiff’s Final
`
`Infringement Contentions. Prior to March 2024, Impossible was led to believe from all of Motif’s
`
`discovery responses and documents that its Hemami product did not contain sugar or amino acids
`
`(i.e., sulfur containing compounds). In March, this drastically changed.
`
`
`
` on Motif’s Hemami
`
`product
`
`. Declaration of Lorelei P. Westin (“Westin Decl.”), ¶
`
`4. Impossible also discovered a document among the thousands produced
`
`
`
`. This showed—for the first time—that Motif’s
`
`Hemami product infringed U.S. Patent No. 9,943,096 (the “ʼ096 patent”). Impossible seeks leave
`
`to amend its Final Infringement Contentions to add chart A24 alleging Motif’s Hemami product
`
`infringes the ʼ096 patent. Ex. 1. Motif has indicated that it opposes this motion.
`
`I.
`
`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. On July 25, 2022, the Court
`
`granted Impossible leave to file its First Amended Complaint (D.I. 18), by which Impossible added
`
`allegations of infringement of U.S. Patent Nos. 9,943,096 (the “ʼ096 Patent”); 10,039,306 (the
`
`“ʼ306 Patent”); 11,013,250 (the “ʼ250 Patent”); and 11,224,241 (the “ʼ241 Patent”) (collectively,
`
`the “Food Product Patents”). D.I. 19. On September 7, 2022, the Court granted Impossible leave
`
`to file its Second Amended Complaint, by which Impossible added allegations of infringement of
`
`U.S. Patent Nos. 10,273,492 (the “ʼ492 Patent”); and 10,689,656 (the “ʼ656 Patent”) (together, the
`
`“Yeast Patents”). D.I. 22. On June 30, 2023, the Court granted Impossible leave to file its Third
`
`Amended Complaint (D.I. 128), by which Impossible added Ginkgo Bioworks, Inc. (“Ginkgo”) as
`
`
`
`

`

`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 6 of 25 PageID #: 25941
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`a defendant with respect to infringement of the Yeast Patents. D.I. 129.
`
`Fact discovery with respect to the Food Product Patents is ongoing and is currently
`
`scheduled to close on March 22, 2024. D.I. 315. The parties entered into a stipulation related to
`
`a limited extension of fact discovery on March 20, 2024. D.I. 409. The parties are undertaking
`
`fact depositions now. Opening expert reports, including with respect to infringement, are due May
`
`31, 2024. D.I. 315. Trial is set to begin on January 13, 2025, with respect to the Food Product
`
`Patents. D.I. 37, ¶ 18.
`
`Impossible timely brings this motion for leave to amend its Final Infringement Contentions
`
`to include Motif’s Hemami product.
`
`II.
`
`SUMMARY OF THE ARGUMENT
`
`Impossible seeks leave to amend its Final Infringement Contentions to include claim chart
`
`A24, alleging direct infringement of the ʼ096 patent from Motif’s Hemami product based on newly
`
`discovered information. As explained in further detail below, Impossible respectfully requests that
`
`the Court grant the instant motion for at least the following reasons.
`
`First, Impossible’s motion is timely. Impossible relied on Motif’s document production
`
`and representations in discovery responses in preparing its infringement contentions. Motif
`
`identified documents supposedly showing the composition of Hemami; such documents
`
`
`
`, neither of which showed the presence of sugar or sulfur-containing
`
`compounds, which are required by the claims of the ’096 patent. Exs. 2, 3. Now, Impossible has
`
`newly-discovered information contradicting Motif’s discovery representations that establishes
`
`infringement. It was only after this
`
` and after finding a document that Motif failed to identify
`
`in discovery (but should have) that Impossible has notice that Hemami directly infringed the ʼ096
`
`patent. Impossible brought this motion within mere weeks of such discovery.
`
`2
`
`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 7 of 25 PageID #: 25942
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`Second, Impossible has good cause to amend its Final Infringement Contentions. The
`
`
`
` for Motif’s Hemami product
`
` for the first
`
`time, which is in stark opposition to any document Motif produced. Furthermore, Motif was asked
`
`by discovery mechanism to identify documents showing the contents or ingredients of its products
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`and never identified a document
`
`
`
` This document was hidden among over 100,000 produced documents.
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`Impossible’s diligent review in preparation for fact witness depositions recently uncovered this
`
`key document; and once it was discovered, Impossible found a handful more just like it. There is
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`no excuse for Motif’s failure to identify, but good cause for Impossible’s amendment now.
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`Third, Motif would not suffer undue prejudice should the Court grant Impossible’s motion.
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`Hemami has been an accused product for at least contributory infringement of each of the patents
`
`in the litigation, as Motif knows. Furthermore, as Hemami
`
`
`
`, much discovery has already been conducted.
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`Accordingly, Impossible’s motion to amend should be granted.
`
`III.
`
`STATEMENT OF FACTS
`
`Impossible is a leading plant-based food innovator that has successfully developed multiple
`
`award-winning plant-based meat replica products, including the IMPOSSIBLE BURGER, since
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`its founding in 2011. D.I. 129, ¶¶ 1, 4, 16, 19. Since Impossible discovered the utility of heme-
`
`containing proteins for replicating the experience of cooking and eating meat in plant-based foods,
`
`Impossible has applied for and received numerous patents that protect its manufacturing processes,
`
`its ingredients, and its finished products. Id., ¶¶ 4, 16, 20. Impossible is the only plant-based food
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`innovator—other than products that incorporate Motif’s Hemami ingredient—that sells meat
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`replica products that contain heme. To protect the investment in its proprietary technology,
`
`3
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`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 8 of 25 PageID #: 25943
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`Impossible filed suit against Motif, accusing its meat-replica products that contained Hemami, of
`
`infringing the Food Product Patents. D.I. 129, ¶ 39.
`
`The parties have been engaging in fact discovery regarding the Food Product Patents.
`
`A. Motif’s Core Technical Documents Did Not Contain the Information
`Necessary to Accuse Hemami of Direct Infringement
`
`On March 3, 2023, Motif produced core technical documents, including MOTIF00000486.
`
`Ex. 2. These core technical documents concerned not only commercial products (or those ready
`
`to be sold)
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`, as Impossible learned many months later. D.I. 299 at 43:3-
`
`7 (emphasis added). Hemami was one of the products for which Motif produced technical
`
`documents. One such technical document identified the ingredients for the Hemami product
`
`
`;
`
`
`
` Id. On April 7, 2023, Impossible served its Initial Infringement
`
`Contentions, alleging infringement of the Food Product Patents by 22 Motif products (“Accused
`
`Products”). D.I. 61. Because the core technical documents produced by Motif did not indicate the
`
`presence of sugars or sulfur-containing compounds, Impossible did not accuse Hemami of direct
`
`infringement. In addition, Motif’s corporate representative on “the composition of the Accused
`
`Instrumentalities, including the quantity of each ingredient, the function of each ingredient, the
`
`reasons for the selection of each ingredient, and the reasons for the selection of the quantity of
`
`each ingredient,” when shown the document identified in Motif’s Interrogatory response relating
`
`to Hemami, stated in response to “Does HEMAMI contain sugar?”:
`
` and in response to “Would HEMAMI contain sugar?”:
`
`
`
`
`
`at 171:6-174:21 (
`
`4
`
` Ex. 4 at 172:23-173:7, see also id.
`
`).
`
`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 9 of 25 PageID #: 25944
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`B. Motif’s Discovery Responses Did Not Contain the Information Necessary to
`Accuse Hemami of Direct Infringement
`
`Seeking further information related to the composition of Motif’s products, Impossible
`
`served Interrogatories on May 26, 2023. D.I. 87. Interrogatory No. 16 requests Motif:
`
`Identify and describe in detail the chemical composition of all ingredients and
`components of the Accused Instrumentalities, including the identity of specific
`protein,
`carbohydrate
`(e.g.,
`specific monosaccharides,
`disaccharides,
`polysaccharides, or mixtures thereof), and lipid ingredients or components. The
`response should include, but not be limited to, a specific identification of all
`evidentiary support.
`
`Ex. 5 at 11 (emphasis added). Interrogatory No. 17 requests Motif:
`
`in detail any chemical analysis, quantification,
`Identify and describe
`authentication, or other testing that You or any Third Party has conducted with
`respect to any ingredient or component of the Accused Instrumentalities,
`including but not limited to any results or raw data underlying Motif’s nutritional
`fact panels or ingredient statements (e.g., for the “Nutrition Fact[]” data in the
`“Ingredient and Nutrition Deck” for “Motif BeefWorks™” (MOTIF00000704-719,
`715)). The response should include, but not be limited to, a specific identification
`of all evidentiary support.
`
`Ex. 5 at 24 (emphasis added).
`
`Motif responded on June 26, 2023 (D.I. 119): in reliance upon Fed. R. Civ. P. 33(d), Motif
`
`identified 2 documents in response to Interrogatory No. 16, only one of which related to
`
`
`
`Hemami. Ex. 5 at 12; see also Ex. 6. This document was a product data sheet that did not contain
`
` and
`
`. Ex. 6. Motif supplemented this response
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`related to the chemical composition of all ingredients of the Accused Products on September 8,
`
`2023 (D.I. 198), identifying 38 documents. Ex. 5 at 13. None of those documents were about
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`Hemami. Motif supplemented its response to Interrogatory No. 16 again on September 29, 2023
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`(D.I. 223), identifying 69 documents—only one of which was related to Hemami. Id. at 14-15
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`(identifying MOTIF00535521(Ex. 7)). Motif last supplemented Interrogatory No. 16 on October
`
`5
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`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 10 of 25 PageID #: 25945
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`30, 2023 (D.I. 236), but this supplement again did not identify any new documents related to
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`Hemami. Id. at 15-24.
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`With respect to Interrogatory No. 17, Motif responded in the first instance, again relying
`
`on Rule 33(d), identifying 7 documents, 6 of which related to Hemami. Ex. 5 at 26. Only 1 of the
`
`6 Hemami-related documents
`
`MOTIF00010142 (Ex. 8)).
`
` Id. (identifying
`
`
`
`. See Ex. 9. Motif supplemented its response on September 8, 2023 (D.I. 198) by
`
`identifying 37 additional documents, 14 of which concerned Hemami. Ex. 5 at 28. None of the
`
`documents concerned “nutritional data” for Hemami. Ex. 10.1
`
`Notably, none of the documents identified in either interrogatory response contained
`
`information related to the
`
` (also known as the “sulfur containing
`
`compounds” in this litigation) and Motif never provided any narrative response regarding the
`
`ingredients or testing of Hemami to provide information not set forth in the documents. Exs 2, 3,
`
`7-10.
`
`
`
`. Exs. 2, 3, 7-10. Relying on these documents, on September 1, 2023, Impossible
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`served its Final Infringement Contentions regarding the same 22 Motif products identified in its
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`Initial Infringement Contentions—including those that were later revealed to be
`
`—but did not include Hemami. D.I. 193.
`
`C.
`
`Impossible’s
`
` Contradicts Motif’s Documents
`
`Impossible received samples of Motif’s Hemami product on June 16, 2023. Westin Decl.,
`
`¶ 4. The samples produced by Motif
`
`. Westin
`
`
`1 For the Court’s convenience, Impossible provides only the documents Impossible has identified
`as relating to Hemami for review. If the Court desires, Impossible will provide all documents
`identified in these interrogatory responses for review.
`6
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`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 11 of 25 PageID #: 25946
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`Decl., ¶ 4.
`
`
`
`. Id.2 Unexpectedly, as it is contrary to every document
`
`that Motif has identified in its responses to interrogatories, Impossible’s
`
`
`
`
`
`. Westin Decl., ¶ 5. Yet, none of Motif’s interrogatory responses disclosed
`
`. Impossible immediately began preparing its
`
`amended contentions.
`
`D.
`
`For The First Time, Motif’s Fact Witnesses Identify
`Hemami Testing
`
` As
`
`Motif produced 108,969 documents in this case (which is an exponentially larger number
`
`of pages). In March, while preparing for fact witness depositions, Impossible stumbled upon a
`
`single document within that production
`
`, but does not mention
`
`Hemami or “myoglobin” (one way Motif references Hemami). Ex. 13. On March 11, Ms. Sallade,
`
`a Motif witness, at her deposition identified for the first time a document (Depo Exhibit 3
`
`MOTIF00320199) as
`
` Ex. 12 at 74:20-75:5; see also Ex. 13.
`
`Astonished, and equipped with the new knowledge that Motif
`
`. Ex. 13.
`
`
`
`, Impossible immediately began drafting contentions and sent draft
`
`
`2 Results of testing conducted by counsel is attorney work product. Novartis Pharms. Corp. v.
`Abbott Lab’ys., 203 F.R.D. 159, 163 (D. Del. 2001) (holding testing results were privileged work
`product when “testing was done at the request of its counsel”); E. I. du Pont de Nemours & Co.
`v. Phillips Petro. Co., 23 F.R.D. 237, 239 (D. Del. 1959) (rejecting motion to compel discovery
`of work product where the court found “it may be difficult for the defendants to make a showing
`of good cause for the reason that what is being sought is the results of tests upon their own
`product which presumably they can make just as easily as the plaintiff.”) (emphasis added).
`Notably, the timing of the request to amend contentions do not change the nature of the testing.
`If Impossible had reason to previously test and included contentions for Hemami in the Final
`Infringement Contentions based on expert testing, there would be no question that information
`should not be disclosed until expert discovery. Should the Court determine it necessary,
`Impossible is happy to provide the Court with the necessary documents to review in camera.
`7
`
`

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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 12 of 25 PageID #: 25947
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`amended contentions to Motif only three days later, on March 14, 2024. Ex. 14 at 3-4. Impossible
`
`identified a document
`
`
`
` Ex. 11. Impossible quickly looked for and found other testing documents related
`
`to this document.3 Ex. 15. In response, on the evening of March 20, 2024, Motif produced 52
`
`documents, five of which including the original
`
`. Exs. 16,
`
`26. Impossible now knows that these documents are testing of Hemami—despite no mention of
`
`Hemami or myoglobin in the documents—because of Ms. Sallade’s testimony on March 11
`
`
`
`
`
` Ex. 12 at 80:3-10. Ms. Sallade was asked “how can you tell that it’s
`
`for the Hemami product?” to which she responded
`
` Id. Impossible has since identified that
`
`
`
`
`
`
`
`, two compounds that are included in each of the claims in the Patents-in-Suit. Ex. 11.
`
`Yet, none of these documents were identified by Motif in response to interrogatories calling
`
`for such information, nor was such information disclosed in narrative form.
`
`E. Motif Recognizes Hemami Has Been Accused Since the Complaint
`
`Impossible filed suit, accusing Motif’s products that contained Hemami, and the parties
`
`have treated Hemami as a part of this litigation since. For example, both parties’ interrogatory
`
`
`3 This document contained an embedded link (which is a link to another document that is “dead”
`and goes nowhere) that indicated it would contain raw data from another document. Once
`Impossible understood the significance of this document, Impossible requested immediate
`production of the linked document and received additional relevant documents from Motif. On
`the evening of March 20, 2024, Motif produced five documents that contained testing related to
`Hemami, including
`. Ex. 16, 26. In addition, because the
`original source document, Exhibit 13, contained lot numbers (instead of anything identifying the
`subject being tested as Hemami) Impossible also looked for other documents in the production
`testing those lot numbers and found additional test results for those lot numbers further showing
`the presence of amino acids in Hemami.
`
`8
`
`

`

`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 13 of 25 PageID #: 25948
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`responses include Hemami. Impossible’s interrogatory responses to Motif include Hemami in its
`
`damages responses. Ex. 17 at 35. Impossible’s interrogatories to Motif identify Hemami
`
`specifically and request information regarding it and Motif’s interrogatory responses
`
`
`
`. Ex. 18 at 20, 23-24, 37-38, 57, 66, 69-72.
`
`Additionally, Motif’s response to Impossible’s Interrogatory No. 8, which requests: “For each
`
`Accused Product, identify the number of units sold, price per unit, gross revenue, costs, including
`
`fixed and variable costs, gross profit, and net profit on a monthly basis from the launch of each
`
`Accused Product to the present,” identify documents solely regarding Hemami sales. Id. at 40-41
`
`(identifying MOTIF00007997 (Ex. 19), MOTIF00007999 (Ex. 20), MOTIF00008000 (Ex. 21))
`
`(each containing “Hemami” in the “Description” of the invoice).
`
`In addition, Motif’s counsel has admitted already that Hemami is accused in this case and
`
`noted that it is a product at issue in this litigation. At the December 4, 2023 hearing, Motif’s
`
`counsel identified the products that were made, sold, and offered for sale by Motif, stating “our
`
`understanding, assuming that Hemami is an accused product, is that Motif sells or has offered to
`
`sell the Hemami product, the BeefWorks patties product, the BeefWorks grounds product, and the
`
`PorkWorks grounds product.” D.I. 299 at 43:3-7.
`
`That Hemami is accused in this case is the undisputed understanding of the parties.
`
`IV. ARGUMENT
`
`A.
`
`Legal Standard
`1.
`
`Leave to Amend the Final Infringement Contentions
`
`Leave to amend contentions requires a showing of good cause, which in turn requires a
`
`showing of diligence. O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1366 (Fed.
`
`Cir. 2006); Bayer Cropscience AG v. Dow Agrosciences LLC, C.A. No. 10-1045 (RMB/JS), 2012
`
`WL 12904381, at *1-2 (D. Del. Feb. 27, 2012) (“The key factor courts look at to determine whether
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`9
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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 14 of 25 PageID #: 25949
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`good cause exists to grant an amendment to a contention is the diligence of the moving party.”).
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`Consideration of diligence is two-fold: (1) the diligence in discovering the reason the amendment
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`is appropriate, and (2) the diligence in bringing such to the Court’s attention. Bayer Cropscience,
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`2012 WL 12904381 at *2. Courts also consider whether the proposed amendment will prejudice
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`the non-moving party. Id. at *3.
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`Federal Rule of Civil Procedure 15(a)(2) favors amended pleadings as “[t]he court should
`
`freely give leave when justice so requires.” This Court has previously “interpreted that language
`
`as establishing a liberal policy in favor of allowing amendments.” Lipocine Inc. v. Clarus
`
`Therapeutics, Inc., C.A. No. 19-622 (WCB), 2020 WL 4794576, at *2 (D. Del. Aug. 18, 2020)
`
`(referring to Fed. R. Civ. P. 15(a)(2)).
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`B.
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`Leave to Amend the Final Infringement Contentions to Add Motif’s Hemami
`Product Should Be Granted
`
`Impossible respectfully requests that the Court grant its motion for leave to amend its Final
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`Infringement Contentions because Impossible has timely sought leave to amend, has good cause
`to amend, and Motif4 will not suffer prejudice.
`
`1.
`
`Impossible Was Diligent in Bringing Its Motion to Add Direct
`Infringement for Hemami
`
`At the time Impossible received the Hemami sample, Motif’s document production
`
` contained no information related to
`
`. Ex. 2. In response to Impossible’s interrogatory responses directly
`
`aimed to get at this information, Motif provided no information related to testing of Hemami for
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`amino acids and
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`Ex. 5 at 11-28.
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`. See generally
`
`
`4 The relevant contentions do not impact Defendant Ginkgo; thus, there is no prejudice to
`Ginkgo.
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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 15 of 25 PageID #: 25950
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`In making its infringement contentions, Impossible relied in good faith on Motif’s
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`representations in identifying documents related to the composition and testing of Hemami,
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`namely that such documents indicated the absence of any quantity of sugar or sulfur containing
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`compounds. Moreover, Motif was required by Rule 33(d) to provide an additional narrative
`
`response if the documents it identified did not respond to or provide the information sought.5 Thus,
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`Motif failed to accurately disclose the contents of Hemami and for the vast majority of discovery,
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`Motif led Impossible to believe that Hemami had no sugar and no amino acids.
`
`As a matter of diligence, and because Hemami
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`Hemami samples for
`
`
`
`, Impossible sent
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`. Westin Decl., ¶ 4.
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`. Id. Impossible informed Motif
`
`of its intention to amend the contentions within one week of obtaining
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`. See Ex. 14
`
`at 3-4.
`
`The recent discovery of the
`
` was also almost by happenstance
`
`because they did not contain any words (such as Hemami or myoglobin) that would indicate what
`
`they were – only Motif would have had such “inside” information. Ex. 11. Motif’s witness, Ms.
`
`Sallade, knew exactly what such testing was: in her deposition on March 11, 2024, Ms. Sallade
`
`
`5 A party may only rely on identifying documents in response to an interrogatory if “the answer
`to an interrogatory may be determined by examining . . . a party’s business records (including
`electronically stored information), and if the burden of deriving or ascertaining the answer will
`be substantially the same for either party.” Fed. R. Civ. P. 33(d). Motif had knowledge of the
` and should have either identified the appropriate documents or provided a
`narrative response. Additionally, to the extent Motif has knowledge of the sugar content of its
`own Hemami product that is not reflected in a document, Motif had a duty to provide that
`information in a narrative response. Power Integrations, Inc. v. Fairchild Semiconductor Intl.,
`Inc., C.A. No. 04-1371-JJF, 2005 WL 8136574, at *1 (D. Del. Oct. 11, 2005) (finding that
`interrogatories which sought limited factual clarifications should be answered in narrative format
`as opposed to a direction to voluminous pages of documents).
`11
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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 16 of 25 PageID #: 25951
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`told Impossible
`
`. See, supra,
`
`Section III.D. Armed with this knowledge, Impossible quickly identified more relevant documents
`
`(and obtained more from Motif), including a document that has identified all five lots of Hemami
`
`tested. Ex. 11. This is the document identified to Motif at the meet and confer as one of the bases
`
`for Impossible’s good cause. Ex. 14 at 1.
`
`For the first time in this litigation, Impossible has proof that Motif’s Hemami product
`
`
`
` therefore infringes asserted claim 3 of the ’096
`
`patent. And both of these discoveries occurred within the month of March. Impossible timely
`
`brings its motion to amend upon finding that Motif’s Hemami product infringes the ’096 patent.
`
`Huber Engineered Woods LLC v. Louisiana-Pac. Corp., C.A. No. 19-342-VAC-SRF, 2022 WL
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`18707841, at *13 (D. Del. Nov. 17, 2022) (finding plaintiff was diligent when activities regarding
`
`new infringement liability occurred in February and plaintiff moved for leave to amend complaint
`
`in April and denying motion to strike untimely infringement contentions); Targus Int’l LLC v.
`
`Victorinox Swiss Army, Inc., C.A. No. 20-cv-464-RGA, 2021 WL 2291978, at *2-3 (D. Del. June
`
`4, 2021) (finding plaintiff was diligent in amending complaint where discovery of the new product
`
`occurred in October and motion to amend the complaint was filed in December). Thus,
`
`Impossible’s request to amend is timely and brought diligently.
`
`The parties met and conferred on March 19, 2024 regarding this motion. During that
`
`conference, Motif implied that Impossible was not diligent in its discovery of infringement because
`
`Motif produced at least some of the
`
` as of July 2023. That argument,
`
`however, not only places the burden on Impossible to review and know the precise content and
`
`meaning of over 100,000 documents produced by Motif without the benefit of witness testimony
`
`or explanation, but it also excuses Motif’s failure to disclose and improper reliance on Rule 33(d).
`
`12
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`Case 1:22-cv-00311-WCB Document 428 Filed 03/28/24 Page 17 of 25 PageID #: 25952
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`It is indisputable that Impossible’s Interrogatory Nos. 16 and 17 called for the identification of
`
`testing documents related to Hemami, that the
`
` are such documents,
`
`that Motif had unique knowledge and access to information to be able to identify those documents
`
`as such, and should have identified them in response to Impossible’s interrogatory or provided a
`
`narrative response. Motif did neither and thus is squarely to blame for the timing of Impossible’s
`
`discovery of the significance of these documents.
`
`Within three days of obtaining the proof that Hemami meets the claim elements of the ’096
`
`patent, Impossible informed Motif of its intention to seek leave to amend the contentions and
`
`provided amended contentions.6 Ex. 14 at 2, 3-4. Accordingly, Impossible was diligent in
`
`disclosing its intention to amend the infringement contentions and in bringing this motion.
`
`2.
`
`There is Good Cause for Impossible’s Proposed Amendment
`
`Impossible has good cause to amend its contentions to include direct infringement of the
`
`ʼ096 patent by Hemami because it only now has, for the first time, proof of such infringement.
`
`Motif’s documents discovered only recently
`
` Ex. 11. Furthermore, and surprisingly,
`
` demonstrates
`
`
`
`
`
`.
`
`Westin Decl., ¶ 5. These facts are in contradiction to Motif’s discovery responses.
`
`Notably, the documents cited by Motif in response to Interrogatory Nos. 16 and 17 do not
`
`contain any information related to
`
` Exs.
`
`2, 3, 6-10. The fact that Mo