Background
The food-tech industry has been rapidly growing in recent years with the rise in popularity of alternative (“alt-“) animal products. Such alt-animal products typically consist of non-animal (e.g., plant-based) proteins or lab-grown meat that serve as a substitute for products from living animals such as cows, chickens, or pigs.
Investment in pioneer food tech companies has been on the rise. For example, when Beyond Meat Inc. (“Beyond Meat”) went public in 2019, it enjoyed one of the most successful initial public offerings that year.
Pioneers have also cleared important regulatory hurdles recently. For example, Eat Just, Inc. (“Eat Just”), which created an alt-chicken product based on lab-grown chicken, achieved approval for sale by Singaporean regulators at the end of 2020. This was the first lab-grown meat to ever receive regulatory approval in any jurisdiction worldwide.[1]
The United States Food and Drug Administration (“FDA”) has taken notice of this trend, calling food made with cultured animal cells “an emerging area of food science,” and appears to be in the process of establishing a regulatory framework for approving lab-grown alt-animal products. Moreover, the FDA has already approved plant-based alt-animal products in the U.S. market.[2]
In addition to commercial and regulatory advancements, food tech pioneers—such as Beyond Meat, Eat Just, and Impossible Foods—have also been aggressively patenting their innovations, collectively filing hundreds of patent applications globally since the early 2000s.
Patent-owners have the right to exclude others from practicing the claimed invention, which can be used as leverage in licensing deals or to potentially obtain an injunction and damages in a patent infringement lawsuit. Patent rights can therefore be very powerful, especially early on in the development of a new market, if the patent owner is willing to exercise its rights.
Here, pioneer, Impossible Foods Inc. (“Impossible Foods”) has done just that in filing the first-ever the U.S. patent infringement lawsuit in the food tech industry, against an apparent direct competitor in the hemeprotein alt-animal product space. That suit was filed against Motif Foodworks Inc. (“Motif”), a Massachusetts-based start-up, last month. And in response, Motif has filed an IPR seeking to invalidate Impossible Foods’ hemeprotein patent. This post provides a summary of this litigation.
The District Court Case
On March 9, 2022, Impossible Foods filed a patent infringement lawsuit against Motif in the United States District Court for the District of Delaware. According to the complaint, Impossible Foods accused Motif of infringing United States Patent No. 10,863,761 (“the ’761 Patent”), covering a beef-replica product containing hemoproteins. Independent claim 1, the only independent claim in the ’761 Patent, states:
- A beef replica product, comprising:
a) a muscle replica comprising 0.1%-5% of a heme-containing protein, at least one sugar compound, and at least one sulfur compound; and
b) a fat tissue replica comprising at least one plant oil and
a denatured plant protein,
wherein said muscle replica and fat tissue replica are assembled in a manner that approximates the physical organization of meat.[3]
Motif has recently launched an alt-meat burger using an ingredient named HEMAMI—a hemeprotein that is identical to bovine myoglobin.
According to the complaint, Impossible Foods alleges that Motif’s manufacture, use, offers for sale, and encouragement of its business partners to make, use, sell, and/or offer for sale the allegedly infringing alt-meat burger containing HEMAMI constitutes direct infringement and induced infringement of, at least, claim 1 of the ’761 Patent.[4] Impossible Foods also alleges that Motif had the opportunity “to obtain non-public information regarding Impossible Foods’ proprietary yeast and methods of making its proprietary heme-containing protein,” although no breach of contract claim has been pleaded to date.[5] Impossible Foods is demanding a jury trial, damages (including treble damages for willful infringement), and an injunction.[6]
In its answer, Motif admits that HEMAMI contains heme, but denies that it has committed acts of infringement.[7]
The IPR
On April 20, 2022, Motif filed a petition for inter partes review (“IPR”) of the ’761 Patent with the Patent and Trademark Appeal Board (“PTAB”). Under the IPR petition, Motif is requesting a panel of administrative judges from the U.S. Patent and Trademark Office (“USPTO”) to cancel the claims of the ’761 Patent.[8] Specifically, Motif has challenged all of the claims of the ’761 Patent (claims 1-17),[9] and has sought to cancel all of the challenged claims on 35 U.S.C. §§ 102 and 103 grounds.[10]
Among its allegations, Motif has asserted that the ’761 Patent’s only independent claim (claim 1) is anticipated by PCT Application No. PCT/US2005/035904 (“McMindes”), published before the ’761 Patent’s earliest priority date on April 20, 2006. McMindes allegedly discloses soy protein-containing food products, which “…may be 100% meat-free…”[11], and methods of preparing them. Furthermore, McMindes allegedly discloses ingredients for making soy-based meat substitutes “which more closely resemble[] meat,” including “in texture and moisture content” and with “appropriate nutritional values.”[12]
Moreover, the petition notes, with regards to the claimed “0.1%-5% of a heme-containing protein” element of claim 1 of the ’761 Patent, that a person of ordinary skill in the art (POSITA) would already know that an alt-beef product would require that claimed range of hemeprotein because “[b]ovine skeletal muscle contains between 4 mg/g and 20 mg/g myoglobin…[and] a POSITA would understand it contains between 0.4% and 2% myoglobin.”[13] Therefore, Motif contends that all elements of the ’761 Patent’s only independent claim have already been disclosed by prior art before Impossible Foods filed for this patent. Motif further alleges that a combination of McMindes and other cited prior art either anticipate the rest of the ’761 Patent’s dependent claims or renders them obvious.[14]
Impossible Foods has three months to file a preliminary response to the petition and, if the IPR is instituted, the PTAB will likely issue a final determination regarding Impossible Foods’ challenge within one year. On April 26, 2022, Motif filed a motion to stay in the district court case pending the outcome of the IPR, which is standard practice.[15]
Key Takeaways
This litigation (both the lawsuit and an instituted IPR) could have a major impact on the trajectory of each company. For example, if Impossible Foods is able to obtain a permanent injunction as it requested, which is difficult but more easily obtained indirect competitor situations, such could be a potentially severe result for Motif because a permanent injunction would prevent it from making, using, selling, offering for sale, or importing infringing products without a license from Impossible Foods.[16]
By filing this lawsuit, Impossible Foods asserted its rights to exclude by claiming infringement but also put the asserted ’761 Patent at risk of being canceled or invalidated. The first test of the strength of the ‘761 patent will occur through the IPR, which will take approximately one year. If the IPR is instituted and the claims of the ’761 Patent are canceled, then Impossible Foods may choose to appeal the decision at the United States Court of Appeals for the Federal Circuit (“Federal Circuit”). If the IPR is not instituted, or if the claims of the ’761 Patent are not canceled, then the district court case will move forward (assuming it was stayed in the first place), which could last for several years unless the parties settle.
Additionally, the outcome of this dispute could affect how food tech companies approach their IP strategy in general. While the food industry has traditionally relied on trade secrets and trademarks for protection, there has been a sharp increase in food tech patents in the last few years. This lawsuit and IPR is the first time one of these patents is tested in the U.S.
On the one hand, if Impossible Foods wins, the win could bolster the value of its large patent portfolio covering hemeproteins. For example, if Impossible Foods is successful in both the lawsuit and IPR challenge, food tech companies seeking to develop hemeprotein-based alt-animal products may have to obtain a license from Impossible Foods if their products are or may be covered by the ‘761 Patent. On the other hand, if Motif is successful and the one or more claims of the ‘761 Patent are either cancelled or invalidated, Impossible Foods’ broader patent portfolio could also be put at risk as its hemeprotein technology appears to be central to it.
This litigation is in its very early stages and could be important for emerging food tech companies to monitor.
[1] Eat Just’s lab-grown chicken gained regulatory approval from the Singapore Food Agency. See, e.g., BusinessWire, https://www.bskb.com/our-firm/articles/article-detail/insights/2021/04/16/substitute-cultivated-meat-technology-a-deep-dive-patent-landscape-analysis (last visited Apr. 14, 2022).
[2] See, e.g., FDA, https://www.fda.gov/news-events/fda-brief/fda-brief-fda-approves-soy-leghemoglobin-color-additive (last visited May 4, 2022).
[3] U.S. Patent No. 10,863,761 (filed May 21, 2021).
[4] See Complaint at 7-11, Impossible Foods Inc. v. Motif FoodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 1.
[5] Id. at 8.
[6] Id.at 13.
[7] See Answer at 6, Impossible Foods Inc. v. Motif FoodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 10.
[8]See Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2022-00887 (PTAB Apr. 20, 2022).
[9] Id. at 1-3.
[10] Id. at 19-20.
[11] PCT/US2005/035904, McMindes et al., at [0002] (Apr. 20, 2006) (emphasis added).
[12] Id., at [0008].
[13] See Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2022-00887 at 25 (PTAB Apr. 20, 2022).
[14] Id. at 22-70.
[15] See Motion to Stay Pending Inter Partes Review, Impossible Foods Inc. v. Motif FoodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 8.
[16] Id.
