In a document filed on Wednesday with a district court in Delaware, Motif argued that Impossible Foods’ lawsuit (filed last month, accusing Motif of patent infringement) should be put on hold while the parties await the findings of an inter partes review of the patent in question.
If the PTAB cancels the patent (which Motif says should never have been granted in the first place), Impossible Foods’ case would collapse, said Motif.
But whatever the PTAB concludes, said Motif, it is likely to move more quickly that the district court litigation, and an inter partes review would "significantly simplify the issues for trial regardless of its outcome."
Motif: Patent should never have been granted as claimed inventions were already well-documented in prior art
Building on the case it makes in its recent petition for inter partes review of Impossible Foods’ ‘761 patent (awarded in 2020) Motif reiterated its view that its claimed inventions were already well-documented in the prior art, and therefore not patentable.
“Meat-like products that simulate various features of meat are not new. Nor are the ingredients highlighted in Plaintiff’s complaint new. Impossible did not invent heme protein. It exists in animal muscle tissues and plants that people eat every day, and heme proteins have been sold and used in foods for decades to fortify iron-content and provide more natural, meat-like color to foodstuffs.
“Even the concept of muscle, fat and connective tissue ‘replicas’ was well known long before Plaintiff sought to file the ’761 patent [read more about these arguments HERE].”
Impossible Foods is ‘confident’ it will ‘prevail both in the district court and before the Patent Office’
Anticipating arguments that Impossible Foods might make against staying the lawsuit, Motif noted that Impossible did not threaten legal action when Motif first allegedly infringed its patent last summer ago by testing its ‘HEMAMI’ ingredient in burgers at a restaurant chain.
“Nothing about [Impossible Foods’] pursuit of its claims suggests there is any urgency in resolving them. Plaintiff’s infringement allegations involve public activity from nearly a year ago and Plaintiff never asked Motif to cease until filing suit [in March 2022]. Plaintiff has not requested an expedited schedule. It has not sought a temporary restraining order or preliminary injunction.”
Impossible Foods therefore “cannot claim it would be unduly prejudiced by a stay when its conduct to date shows the opposite.”
An Impossible Foods spokesperson told us: "Motif's futile effort to delay the case is a deliberate and obvious attempt to buy time while they continue to infringe our patent. The Patent Office has already examined and granted our patent, and we expect the district court case to proceed and for Motif to be held accountable, without further delay."
* Impossible Foods v Motif FoodWorks. Case #1:22-cv-00311 filed March 9, 2022 in Delaware.
Meaty dispute: Soy leghemoglobin and myoglobin
Impossible Foods US patent 10,863,761 – issued in 2020, covers the application of Impossible Foods’ flagship heme ingredient in meat substitutes – and is at the center of a lawsuit filed by Impossible Foods against Motif in March accusing it of patent infringement.
Both companies use a genetically engineered strain of Pichia pastoris yeast to express heme-containing proteins that impart ‘meaty’ flavors and colors to meat alternatives.
- Impossible Foods’ ‘heme’ is identical to soy leghemoglobin, a protein found in nodules attached to the roots of nitrogen-fixing plants such as soy.
- Motif FoodWorks’ new HEMAMI ingredient is identical to bovine myoglobin, a heme-binding protein found in the muscle tissue of cows.
