Case 1:22-cv-00311-WCB Document 46 Filed 01/04/23 Page 1 of 5 PageID #: 2050
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 22-311 (WCB)
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`)))))))))
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`IMPOSSIBLE FOODS INC.,
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`Plaintiff,
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`v.
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`MOTIF FOODWORKS, INC.,
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`Defendant.
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`LETTER TO THE HONORABLE WILLIAM C. BRYSON
`FROM JEREMY A. TIGAN REGARDING PROTECTIVE ORDER DISPUTES
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jeremy A. Tigan (#5239)
`Lucinda C. Cucuzzella (#3591)
`1201 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`(302) 658-9200
`jtigan@morrisnichols.com
`ccucuzella@morrisnichols.com
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`Attorneys for Defendant Motif FoodWorks, Inc.
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`OF COUNSEL:
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`Joseph M. Paunovich
`Sandra L. Haberny
`Ryan Landes
`Sarah Cork
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`865 South Figueroa Street
`10th Floor
`Los Angeles, CA 90017
`(213) 443-3000
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`Stephen Q. Wood
`QUINN EMANUEL URQUHART
` & SULLIVAN, LLP
`2755 E. Cottonwood Parkway
`Suite 430
`Salt Lake City, UT 84121
`(801) 515-7300
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`January 4, 2023
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`Case 1:22-cv-00311-WCB Document 46 Filed 01/04/23 Page 2 of 5 PageID #: 2051
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`Dear Judge Bryson:
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`Motif FoodWorks, Inc. submits this letter in connection with the parties’ protective order
`disputes. First, Motif requests that the Court enter a protective order including Motif’s proposed
`prosecution bar. Motif’s proposal is narrowly tailored to protect both parties’ protected material
`from misuse in patent prosecution activities, while still allowing access to relevant discovery. The
`parties’ proposed Protective Order is attached hereto as Exhibit A.
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`Impossible Foods Inc. (“Impossible”) and Motif are direct competitors (D.I. 22 at ¶ 4), and
`Impossible continues to actively prosecute dozens of patents in the parties’ shared technology
`field. Additionally, Motif has already filed four IPRs and will be filing two additional IPRs and
`an ex parte reexamination challenging the asserted patents. Under Impossible’s proposal (no
`prosecution bar), counsel, and those directing them, will be able to access confidential and trade
`secret information and craft new patents and claims or attempt to overcome the prior art while still
`purporting to cover Motif’s confidential technology. Prosecution bars are common practice and
`exist to prevent exactly these types of practices—general prohibitions on use of information
`outside the litigation are well-recognized as insufficient. An individual with knowledge of
`confidential information about the products of a competitor can easily craft new patents and claims
`without citing or submitting that information to the Patent Office or giving any indication that they
`“used” the knowledge in drafting new patents and claims. In short, it would be fundamentally
`unfair for either side to access the opposing parties’ confidential information and have the option
`to play any role in ongoing patent prosecution activities.
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`Second, Motif requests that the Court overrule Impossible’s objection to the one individual
`Motif has designated to access Impossible’s confidential information. Motif has no in-house
`counsel or legal department. It is a small company with only one employee, Janet Collins,
`currently responsible for overseeing this litigation. Ms. Collins has provided a declaration
`herewith attesting to her lack of competitive decision-making. Impossible objected for reasons
`that have nothing to do with competitive decision-making. Motif cannot be in a position in which
`it has no employee capable of overseeing and directing this litigation that is able to receive
`protected information.
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`I. Motif’s Narrowly Tailored Prosecution Bar Proposal Should Be Adopted
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`Under prevailing Federal Circuit law, which governs the inclusion of a prosecution bar in
`a protective order, a court should first consider whether there is an “unacceptable” risk of
`inadvertent disclosure or competitive use of confidential information, determined by the extent to
`which affected counsel is involved in “competitive decision-making” with its client. In re
`Deutsche Bank Trust Co. Ams., 605 F.3d 1373, 1378-79 (Fed. Cir. 2010). The court must then
`“balance this risk against the potential harm to the opposing party from restrictions imposed on
`that party’s right to have the benefit of its counsel of its choice.” Id. at 1380. After balancing
`these competing interests, the court may decide what degree of protection is required. Id. at 1381.
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`Impossible wants its attorneys and employees that will have access to Motif’s highly
`confidential information to be involved in consulting on, preparing, prosecuting, and amending
`patents and claims relating to the parties’ shared technology field and even the patents-in-suit.
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`Case 1:22-cv-00311-WCB Document 46 Filed 01/04/23 Page 3 of 5 PageID #: 2052
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`Allowing this without a prosecution bar would create an unacceptable risk that Motif’s confidential
`information will permit Impossible to strategically obtain or amend pending or future claims
`related to the accused products in this matter. The risk of harm is heightened where, as here,
`Impossible and Motif are direct competitors in the particular market. See PhishMe, Inc. v. Wombat
`Sec. Techs., Inc., No. 16-403, 2017 WL 4138961, at *8 (D. Del. Sept. 18, 2017).
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`Courts routinely approve prosecution bars to prohibit such actions. See, e.g., Evertz
`Microsys.. Ltd. v. Lawo Inc., No. 19-302, 2019 WL 5864173, at *3 (D. Del. Nov. 8, 2019) (“Courts
`frequently impose prosecution bars to protect against the risk of inadvertent disclosure when
`counsel has been or may be involved in…patent prosecution.”); Avion Pharms., LLC v. Granules
`Pharms., Inc., No. 20-898, 2021 WL 1785580, at *2 (D. Del. May 5, 2021); British Telecomms.,
`PLC v. IACV/InterActiveCorp, 330 F.R.D. 387, 395-96 (D. Del. 2019).
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`The risk of use, even if inadvertent, here outweighs any potential harm to Impossible from
`restricting those with access to Motif’s confidential information from such activities. “[I]t is very
`difficult for the human mind to compartmentalize and selectively suppress information once
`learned, no matter how well-intentioned the effort may be to do so.” Deutsche Bank, 605 F.3d at
`1378. Notably, Impossible’s legal team defending against Motif’s IPRs includes attorneys who
`are not involved in this litigation, including its lead PTAB counsel, Mike Rosato. Thus any
`potential harm to Impossible is negligible.
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`Motif thus proposes standard language in paragraph 6.3 to prevent individuals with access
`to confidential information from patent prosecution activities. This proposed language is
`reasonable, proper in scope, and narrowly tailored to reflect the risk presented by the disclosure of
`competitive information to both parties. The proposed prosecution bar is only imposed on the
`individuals who actually receive the opposing party’s confidential information, and it does not
`include a prohibition against “any firm” representing a party that receives the opposing party’s
`confidential information from participating in patent prosecution activities. See, e.g., British
`Telecomms., 330 F.R.D. at 387, 395 (imposing prosecution bar against individual attorneys); MAX
`Int’l v. Iconex LLC, No. 18-1412-MN, D.I. 26 at 1; D.I. 27 (D. Del. Mar. 4, 2019) (Exs. B, C)
`(issuing a “narrowly tailored” prosecution bar that was limited to attorneys “who actually view or
`otherwise become aware of information marked as Attorneys’ Eyes Only (AEO)”).
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`II. Any Prosecution Bar Should Not Extend to Post-Grant Proceedings Other Than The
`Drafting Or Amending Of Patent Claims
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`Applying the framework articulated in Deutsche Bank, courts routinely enter protective
`orders allowing recipients of confidential information to participate in post-grant proceedings
`except in the drafting/amending of patent claims. See, e.g., British Telecomms., 330 F.R.D. at 396-
`98 (imposing a prosecution bar against attorneys who had access to confidential information only
`in regard to drafting and amending claims in post-grant review); LBT IP I LLC v. Apple Inc., 19-
`1245-LPS, D.I. 28 (D. Del. Apr. 27, 2020) (Ex. D); Evertz Microsys., 2019 WL 5864173, at *4.
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`Here, Motif’s counsel has elected to pursue IPRs and ex parte reexamination of the patents-
`in-suit, and it would suffer serious harm and prejudice if its outside counsel of record in both this
`litigation and filed Patent Office challenges are now suddenly barred from participating in such
`proceedings. And, there is no risk of improper use by Motif’s counsel in this context because it is
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`Case 1:22-cv-00311-WCB Document 46 Filed 01/04/23 Page 4 of 5 PageID #: 2053
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`simply challenging the validity of the patents-in-suit, not drafting/amending patent claims. By
`contrast, Impossible may draft/amend claims in IPR and reexamination proceedings and thus there
`is a need for a standard prosecution bar on those limited activities. Again, the fact that Impossible’s
`defense in such proceedings is led by other attorneys mitigates any burden this bar may impose.
`III.
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`Impossible’s Objection To Non-Attorney Janet Collins’ Access To Highly
`Confidential Information Should Be Overruled
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`The protective order provides that the burden shall be on the objecting party (Impossible)
`to show why proposed in-house personnel do not satisfy the requirements of paragraph 6.2 and
`why the disclosure should not be allowed. The proposing party (Motif) has the burden of providing
`sufficient information to reasonably make a determination. Motif is a small company. It has no
`in-house legal counsel and only a few individuals with the requisite seniority and ability to manage
`this litigation, and only one without competitive decision-making authority, which Impossible
`proposed as the protective order’s measuring stick for access to an opposing parties’ confidential
`information. Motif proposed this individual, Janet Collins, as its designee to Impossible. Ms.
`Collins attests in the declaration attached hereto as Exhibit E to her job responsibilities, lack of
`competitive decision-making authority and that she has signed the required undertaking.
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`Impossible objects to Ms. Collins on the grounds that she oversees and directs Motif’s
`regulatory activities and, according to Impossible, was involved in Motif’s FDA submissions
`allegedly “copying” Impossible Foods’ technology. See Ex. F. Neither objection has merit. First,
`Ms. Collins’ involvement in Motif’s regulatory activities does not amount to competitive decision-
`making. See Ex. E ¶1-3, 7; Razor USA LLC v. DGL Group, Ltd., 2020 WL 3604081, at *3 (D.N.J.
`Jul. 2, 2020) (employee’s “legal advice on regulatory, compliance, or other legal issues d[id] not
`amount to being personally involved in competitive decision-making”). Second, Motif’s reference
`in an FDA submission for its products to public information about Impossible’s products,
`explaining to the FDA why Motif’s products, like Impossible’s, should be generally regarded as
`safe (“GRAS”) for human consumption, does not even remotely evidence “copying” or anything
`improper, much less that Ms. Collins has competitive decision-making authority. Ex. E ¶7.
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`It is common practice in this district to permit non-attorneys access to confidential
`information, and preventing Ms. Collins from having access to confidential information would
`make it impossible for her to fulfill her obligations to Motif in overseeing and managing this
`litigation. Ex. E ¶4-5; see, e.g., Bayer Healthcare LLC v. Aurobindo Pharma Ltd. et al, No 21-
`1575-WCB, D.I. 59 at 9 (D. Del. Sept. 26, 2022) (Ex. G) (including three in-house personnel
`employed by the parties including non-attorneys responsible for overseeing the litigation).
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`For all these reasons, Motif requests that the Court enter the proposed Protective Order that
`includes Motif’s proposed patent prosecution bar and approve Ms. Collins as a Motif designee.
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`Respectfully,
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`/s/ Jeremy A. Tigan
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`Jeremy A. Tigan (#5239)
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`Case 1:22-cv-00311-WCB Document 46 Filed 01/04/23 Page 5 of 5 PageID #: 2054
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`Attachment(s)
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`cc:
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`Clerk of the Court (via hand delivery)
`All Counsel of Record (via CM/ECF and email)
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