Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 1 of 13 PageID #: 30104
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`C.A. No. 22-311-WCB
`
`JURY TRIAL DEMANDED
`
`
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`
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`
`))))))))))
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`IMPOSSIBLE FOODS INC.,
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`MOTIF FOODWORKS, INC. and
`GINKGO BIOWORKS, INC.,
`
`
`
`
`
`Defendants.
`
`PLAINTIFF IMPOSSIBLE FOODS INC.’S REPLY BRIEF IN SUPPORT OF ITS
`MOTION FOR LEAVE TO AMEND ITS IDENTIFICATION OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS REGARDING THE YEAST PATENTS
`
`
`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
`Quincy Rush
`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
`
`
`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:
`
`Mark A. Hayden
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`

`

`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 2 of 13 PageID #: 30105
`
`
`
`
`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: June 27, 2024
`Public Version Dated:
`July 10, 2024
`11584802 / 20200.00002
`
`ii
`
`

`

`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 3 of 13 PageID #: 30106
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`
`
`I.
`
`TABLE OF CONTENTS
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`PAGE
`
`
`DEFENDANTS ATTEMPT TO SURPRISE PLAINTIFF WITH NEW
`THEORIES ......................................................................................................................... 1
`
`II.
`
`IMPOSSIBLE HAS GOOD CAUSE TO AMEND............................................................ 2
`
`A.
`
`B.
`
`Impossible was diligent in seeking leave to amend and Defendants will not
`be unfairly prejudiced. ............................................................................................ 2
`
`Impossible diligently sought leave after Defendants introduced new
`theories .................................................................................................................... 3
`
`1.
`
`2.
`
`3.
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`Defendants’ § 101 invalidity theory is brand new ...................................... 4
`
`Any delay is the result of Defendants’ failure to disclose .......................... 5
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`Impossible’s amendment is material to the case before the Court.............. 6
`
`C.
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`Impossible’s proposed amendment does not unfairly prejudice Motif or
`Ginkgo..................................................................................................................... 6
`
`III.
`
`CONCLUSION ................................................................................................................... 8
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`
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`
`i
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 4 of 13 PageID #: 30107
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`
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`TABLE OF AUTHORITIES
`
`CASES
`
`PAGE(S)
`
`Bechtel v. Robinson,
`886 F.2d 644 (3d Cir. 1989).................................................................................................3
`British Telecommunications PLC v. IAC/InterActiveCorp,
`C.A. No. 18-366-WCB, 2020 WL 3047989 (D. Del. June 8, 2020) ...................................6
`Integra LifeSciences Corp. v. HyperBranch Med. Tech., Inc.,
`223 F. Supp. 3d 202 (D. Del. 2016) .....................................................................................2
`Lear Corp. v. NHK Seating of Am., Inc.,
`No. 13-12937, 2020 WL 1815876 (E.D. Mich. Apr. 10, 2020) ......................................4, 5
`LookSmart Grp., Inc. v. Microsoft Corp.,
`No. 17-04709, 2019 WL 7753444 (N.D. Cal. Oct. 17, 2019) .............................................2
`Vaxcel Int’l Co. v. HeathCo LLC, C.A. No. 20-224-LPS,
`2022 WL 611067 (D. Del. Feb. 3, 2022) .............................................................................6
`
`Venetec Int'l, Inc. v. Nexus Med., LLC,
`541 F. Supp. 2d 612 (D. Del. 2008) .....................................................................................2
`STATUTES
`35 U.S.C. § 101 ................................................................................................................................2
`35 U.S.C. § 102 ................................................................................................................................2
`
`
`
`
`
`ii
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 5 of 13 PageID #: 30108
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`
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`I.
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`DEFENDANTS ATTEMPT TO SURPRISE PLAINTIFF WITH NEW THEORIES
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`Motif FoodWorks Inc. (“Motif”) and Ginkgo Bioworks Inc. (“Ginkgo”) (collectively,
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`“Defendants”) paint their own late disclosures as Impossible’s gamesmanship. Contrary to their
`
`assertions, Defendants are attempting to circumvent proper disclosures for efficient litigation by
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`withholding contentions until the Final Invalidity contentions, after Impossible had already
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`narrowed its claims. D.I. 527-1 at Ex. 1. Impossible Foods Inc. (“Impossible”) seeks to properly
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`balance the disclosure of the contentions between the parties by seeking leave to amend its
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`Identification of Asserted Yeast Patents Claims to assert claim 2 instead of claim 5 of U.S. Patent
`
`No. 10,273,492 (the “ʼ492 Patent”) to directly address the Defendants’ new contentions and to
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`efficiently litigate the issues before the Court.
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`Impossible narrowed its list of claims to assert on April 9, 2024, based on the information
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`available at that time. D.I. 557-1 at Ex. 4. Defendants cannot argue that the Final Invalidity
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`Contentions served on April 19, 2024, do not contain new prior art references, new prior art
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`combinations, and wholly new invalidity theories. D.I. 527-1 at Ex. 1. Impossible considered
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`Defendants’ new contentions and diligently sought leave to amend as appropriate.
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`Defendants cry foul that Impossible sought leave to assert claim 111 and then later
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`disclosed to Defendants that Impossible intended to seek leave to substitute claim 2 for claim 5 in
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`the ʼ492 patent. This was not a calculated strategy of delay, as Defendants imply, but the
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`unavoidable result of Defendants’ eleventh-hour change in position.
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`Impossible cannot read Defendants’ minds. Impossible does not deny it was aware that
`
`
`1 Claim 11 was disclosed, but not asserted, in Impossible’s Final Infringement Contentions on
`March 8, 2024. D.I. 557-1, Ex. 3 at 4. Claim 11 was also included in Impossible’s narrowed list
`of six asserted claims on April 9, 2024. Id. at Ex. 4. Impossible sought to include claim 11, and
`disclosed its positions related to claim 11 (id. at Ex. 5), as a result of the Court’s March 22, 2024
`claim construction order. D.I. 498.
`
`1
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 6 of 13 PageID #: 30109
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` D.I. 556 at
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`4. However, that does not mean Impossible could have anticipated Defendants’ assertion of new
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`prior art in their Final Invalidity Contentions, nor excuse Defendants’ belated new contentions.
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`D.I. 527-1 at Ex. 1. Good cause for amendment exists because Defendants’ Final Invalidity
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`Contentions contain entirely new theories of invalidity pursuant to 35 U.S.C. §§ 101 and 102 and
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`rely on new prior art references, which could have—and should have—been asserted earlier.
`
`II.
`
`IMPOSSIBLE HAS GOOD CAUSE TO AMEND
`
`A.
`
`Impossible was diligent in seeking leave to amend and Defendants will not be
`unfairly prejudiced.
`
`Impossible was diligent in bringing its motion for leave to amend to the Court
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`approximately six weeks after receiving the Final Invalidity Contentions, only four weeks after
`
`notifying Defendants of Impossible’s intent to exchange claim 2 for claim 5, and only three weeks
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`after the Defendant’s served the reduced Identification of Asserted Prior Art references in the Yeast
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`Patents case. See Venetec Int'l, Inc. v. Nexus Med., LLC, 541 F. Supp. 2d 612, 618 (D. Del. 2008)
`
`(“[T]he good cause standard under Rule 16(b) hinges on the diligence of the movant, and not on
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`prejudice to the non-moving party.”).
`
`Defendants’ late disclosure of its new invalidity theories prejudiced Impossible’s ability to
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`make an informed choice regarding its best claims to assert. See LookSmart Grp., Inc. v. Microsoft
`
`Corp., No. 17-04709, 2019 WL 7753444, at *2 (N.D. Cal. Oct. 17, 2019) (“The purpose of
`
`[infringement and invalidity contentions] is ‘to ... provide all parties with adequate notice of and
`
`information with which to litigate their cases.’” (citation omitted)); Integra LifeSciences Corp. v.
`
`HyperBranch Med. Tech., Inc., 223 F. Supp. 3d 202, 205 (D. Del. 2016) (“more fulsome”
`
`invalidity contention disclosures “allow Plaintiffs to more meaningfully consider Defendant’s
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`invalidity contentions prior to narrowing the number of asserted claims at issue in this case”).
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`2
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 7 of 13 PageID #: 30110
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`Choosing claims is a balance of available information, including contentions related to
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`infringement, invalidity, and damages. After Defendants included wholly new invalidity
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`theories—which Impossible disputes would
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`invalidate any of
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`the claims—Impossible
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`reconsidered each of the factors for each claim again. At this point, the calculation, based on new
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`information from Defendants, has changed.
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`Defendants’ claim of prejudice rings hollow considering their familiarity with
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`
`
`. Even in their opposition brief Defendants dedicate several pages to the notion that
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`. D.I. 556 at 2-5.
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`Further, both Defendants have already run searches for art related to this claim as they have
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`disclosed art concerning
`
` D.I. 527 at 9; see also id. at 1.
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`While Impossible does not believe either party particularly needs witness testimony related to this
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`issue, only one deposition has been taken to date and time remains in discovery to seek any
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`necessary information. See Bechtel v. Robinson, 886 F.2d 644, 652 (3d Cir. 1989) (noting the
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`“non-moving party must do more than merely claim prejudice; ‘it must show that it was unfairly
`
`disadvantaged or deprived of the opportunity to present facts or evidence which it would have
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`offered had the. . . amendments been timely.’” (citation omitted)).
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`B.
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`Impossible diligently sought leave after Defendants introduced new theories
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`Defendants’ argument that Impossible delayed in seeking leave to amend lacks merit as
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`Impossible timely brought its motion for leave to amend approximately six weeks after receiving
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`the Final Invalidity Contentions and less than three weeks after receiving the Identification of
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`Asserted Prior Art References in the Yeast Patents Case. Defendants inexplicably waited to assert
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`or indicate any reliance on either of the references Krainer et al., “Optimizing cofactor availability
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`for the production of recombinant heme peroxidase in Pichia pastoris,” Microbial. Cell Factories,
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`14(4):1-9 (2015) (“Krainer”) or the Pichia pastoris Strain CBS7435 for over a year after Motif
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`3
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 8 of 13 PageID #: 30111
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`
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`submitted its invalidity Petition regarding the ’492 Patent to the USPTO, 10 months since Motif
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`served its initial invalidity contentions, and 5 months since Ginkgo served its initial invalidity
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`contentions.
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`1.
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`Defendants’ § 101 invalidity theory is brand new
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`Contrary to Defendants’ argument, the Court’s claim construction did not create their new
`
`invalidity theory. Impossible filed its opening brief in support of the term “transcriptional
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`activator” on June 14, 2023 (D.I. 106). Defendants have been on notice of Impossible’s proposed
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`constructions and should have included these positions in their invalidity contentions related to the
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`Yeast Patents, which were served on November 17, 2023 (D.I. 266)—more than five months since
`
`Impossible’s Opening Claim Construction Brief. Instead, Defendants improperly surprised
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`Impossible with a brand-new invalidity theory after Impossible had narrowed to only six claims in
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`the Yeast Patents. This is more than a year since Defendants’ received Impossible’s positions,
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`which have remained consistent.
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`Defendants’ “newfound” disclosures and “reduction” of asserted invalidity references did
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`not narrow the issues before the Court, they broadened them. Therefore, Defendants’ complaints
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`of having to “recalibrate” its discovery strategy are a problem of their own making. D.I. 556 at
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`10.
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`Defendants’ new § 101 invalidity theory, which Defendants claim was prompted by the
`
`Court’s claim construction, shows that the Lear Corp. v. NHK Seating of America, Inc., No. 13-
`
`12937, 2020 WL 1815876 (E.D. Mich. Apr. 10, 2020) case does support Impossible’s good cause
`
`argument. Compare D.I. 556 at 8 with 2020 WL 1815876, at *7. As in Lear, a new invalidity
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`theory (in that case, indefiniteness), was found to constitute good cause to amend the contentions
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`to address the issues prompted by that new theory.
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` “But for” Defendants’ late disclosure of their new theories and references, Impossible
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`4
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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 9 of 13 PageID #: 30112
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`would not have needed to seek leave to amend as it could have addressed the Defendants’ newly
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`disclosed invalidity theory if Defendants had disclosed it properly under the scheduling order. D.I.
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`161, ¶ 14; Lear, 2020 WL 1815876, at *6 (“[I]n the normal course, a patent holder is allowed to
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`serve its final infringement contentions after receiving the accused infringer’s initial invalidity
`
`contentions”).
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`The Defendants also argue that Impossible should have been on notice as to its previously
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`undisclosed invalidity theory due to the Court’s claim construction being different from that of the
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`PTAB, attempting to shift blame to the Court and Impossible for the Defendants’ own inclusion
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`of a new (and previously undisclosed) theory. D.I 556 at 11, n.5. The Court’s claim construction
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`is not the reason for Impossible’s motion for leave to amend its infringement contentions, that is
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`solely the result of Defendants’ new invalidity theories. Impossible’s motion for leave to amend
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`its infringement contentions seeks to remedy Defendants’ delayed disclosures.
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`2.
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`Any delay is the result of Defendants’ failure to disclose
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`The Defendants could have identified the Pichia pastoris Strain CBS7435 earlier. D.I.
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`204; D.I. 266. Defendants attempt to justify their late introduction of Pichia pastoris Strain
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`CBS7435 in their contentions because the Yeast Patents cite the Krainer reference on their face.
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`D.I. 556 at 9. Defendants’ argument reaches through two layers of incorporation by reference.
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`Impossible does not dispute that it has been aware of the Krainer reference. However, Strain
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`CBS7435 is mentioned in the reference, but no sequencing data is provided. This is not a fulsome
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`disclosure that would put Impossible on notice that Defendants would suddenly shift strategy and
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`incorporate this strain and claim it anticipates the claims of the Yeast Patents. Defendants have
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`known of these references for at least a year and should have made a fulsome disclosure sooner.
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`D.I. 527 at 6. Any alleged delay in including claim 2 in the asserted claims is the result of
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`Defendants’ failure to properly disclose their contentions.
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`5
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 10 of 13 PageID #: 30113
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`3.
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`Impossible’s amendment is material to the case before the Court
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`In their opposition brief, Defendants cite to a prior ruling of this Court as support for their
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`opposition to leave for Impossible to amend its contentions. D.I 556 at 9. However, in British
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`Telecommunications PLC v. IAC/InterActiveCorp, this Court found that the amendment would not
`
`be material to the parties’ contentions, which distinguishes the instant case. C.A. No. 18-366-
`
`WCB, 2020 WL 3047989, at *4-5 (D. Del. June 8, 2020) (Bryson, J.). Here, Plaintiff is seeking
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`leave to amend its contentions to add claim 2 and remove claim 5. This amendment is in response
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`to Defendants’ new invalidity theories, which is material to both parties’ positions.
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`Defendants cite to Vaxcel International Co. v. HeathCo LLC, C.A. No. 20-224-LPS, 2022
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`WL 611067 (D. Del. Feb. 3, 2022) for support that Impossible should not be allowed to amend the
`
`claims. D.I. 556 at 7-8. However, the Vaxcel case is distinguishable because that case involved a
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`Plaintiff seeking to add four claims across three patents. 2022 WL 611067, at *3. That proposed
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`addition would have “inject[ed] new issues” for the court. Id. Here, in contrast, Impossible seeks
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`leave to add in claim 2, and drop claim 5, both of which are dependent claims of the same
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`independent claim in the same patent. This exchange of claims will not add to the number of
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`claims at issue or inject wholly new issues in this litigation. Further, the Plaintiff in the Vaxcell
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`case already had an astounding 100 claims asserted against the Defendant; in contrast here
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`Impossible is only asserting six claims in the Yeast Patents and is not seeking to increase that
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`number adhering to the Court’s requirement of narrowing for efficiency. Id.
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`C.
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`Impossible’s proposed amendment does not unfairly prejudice Motif or
`Ginkgo
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`Defendants’ argument that the proposed amendment would require Defendants to
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`“evaluate and develop invalidity theories specific to claim 2 (including through additional prior
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`art searching), draft new invalidity contentions specific to claim 2, and recalibrate its discovery
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`6
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 11 of 13 PageID #: 30114
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`
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`strategy to account for a new claim” (D.I. 556 at 10), are all contradicted by the fact that Motif
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`filed a Petition for Inter Partes Review on January 28, 2023, seeking a finding that all claims of
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`the ’492 Patent are unpatentable—including claim 2, which is publicly available. Plainly speaking,
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`Defendants will not be prejudiced as at least Motif started evaluating the validity of this claim well
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`over a year ago. Further, in that same Petition, Motif identified Krainer as a background reference;
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`Defendants had every reason and opportunity in the present litigation to bring these belated
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`arguments forth earlier.2
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`Contrary to Defendants assertions that “an entirely new claim” would cause prejudice to
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`Defendants in discovery (id. at 11.), the addition of claim 2 should not require additional discovery
`
`and will not prejudice either of the Defendants. Both Defendants’ Final Invalidity Contentions
`
`currently cite references that discuss Leghemoglobin. D.I. 527-1, Ex. 1, Ex. A.5 at 121, Ex. A.7
`
`at 211, Ex. A.8 at 253 (citing Crane at [0021] (“The various classes of heme-binding proteins that
`
`are encompassed by the methods of the present invention include, without limitation, globins (e.g.,
`
`hemoglobin, myoglobin, neuroglobin, cytoglobin, leghemoglobin. . . .”)). The purported delay in
`
`asserting claim 2 is attributable to Defendants’ failure to fully disclose their invalidity positions at
`
`the appropriate time.
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`In its [Proposed] Amended Identification of Asserted Yeast Patents Claims and its
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`[Proposed] Amended Final Infringement Contentions for the Yeast Patents, Impossible seeks to
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`merely exchange one claim for another in the same patent. See D.I. 527-1 at Exs. 5-9. Contrary
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`to Defendants’ assertions that this exchange of asserted claims would be “incompatible with the
`
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`2 Institution was denied in this case, despite Krainer being of record.
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`7
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 12 of 13 PageID #: 30115
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`case narrowing that has occurred to date,” Impossible’s proposal does not “expand the case.” D.I.
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`556 at 11.
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`Impossible is the party that was prejudiced with an eleventh-hour disclosure of new
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`invalidity arguments in the Final Contentions. Impossible seeks relief from that prejudice with
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`this motion seeking amendment of the asserted claims and relevant infringement contentions.
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`III. CONCLUSION
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`Impossible respectfully requests that the Court grant its motion for leave to amend its
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`Identification of Asserted Yeast Patents Claims and Final Infringement Contentions asserting
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`claim 2 instead of claim 5 of the ’492 Patent in light of Defendants’ new prior art theories and
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`prior art references, because Impossible diligently sought leave to amend, has good cause to
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`amend, and neither Defendant will suffer prejudice.
`
`8
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`

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`Case 1:22-cv-00311-WCB Document 582 Filed 07/10/24 Page 13 of 13 PageID #: 30116
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ David E. Moore
`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:
`
`Mark A. Hayden
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Tel: (212) 999-5800
`
`
`
`
`
`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
`Quincy Rush
`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
`
`Matthew Macdonald
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`953 East Third Street, Suite 100
`Los Angeles, CA 90013
`Tel: (323) 210-2953
`
`Dated: June 27, 2024
`Public Version Dated:
`July 10, 2024
`11584802 / 20200.00002
`
`9
`
`