The food tech industry has grown rapidly in the last ten years due to innovations in the alternative animal product space and a growing customer desire for more sustainable options.[1] With this rapid growth and an increasing number of entrants to the field comes an increased likelihood of intellectual property clashes. In this article, we will discuss the IPR petitions that Motif FoodWorks Inc. (“Motif”) filed against competitor Impossible Foods Inc.’s (“Impossible Foods”) patents and the PTAB’s recent decision to institute inter partes review (IPR) for U.S. Patent No. 9,943,096 B2.

Background

Impossible Foods is one of the early entrants to the food tech industry and has a large global patent portfolio. The heart of Impossible Food’s portfolio are hemeproteins.[2] Motif is a Massachusetts-based start-up that recently launched an alt-meat burger using an ingredient named HEMAMI—a hemeprotein that is identical to bovine myoglobin.[3] Both companies use “precision fermentation,” a process that uses a genetically engineered microbe such as yeast, fungi, bacteria or algae to produce more sustainable ingredients.

Before Motif filed its IPR petitions, Impossible Foods filed the first U.S. patent infringement lawsuit in the food tech industry against Motif, in March 2022.[4] Impossible Foods initially accused Motif of infringing U.S. Patent No. 10,863,761 (“the ’761 patent”), covering a beef-replica product containing hemoproteins.[5]

In July 2022, Impossible Foods filed a First Amended Complaint, which added allegations that Motif infringed four additional Impossible Foods patents: U.S. Patent No. 9,943,096 (“the ’096 patent”); U.S. Patent No. 10,039,306 (“the ’306 patent”); U.S. Patent No. 11,013,250 (“the ’250 patent”); and U.S. Patent No. 11,224,241 (“the ’241 patent”).[6] In September 2022, Impossible Foods filed a Second Amended Complaint, which added allegations that Motif infringed two more patents: U.S. Patent No. 10,273,492 (“the ’492 patent”) and U.S. Patent No. 10,689,656 (“the ’656 patent”).[7]  

The IPR Petitions

After Impossible Foods filed its complaint in district court, Motif filed a petition for IPR with the PTAB on April 20, 2022, challenging the ’761 patent named in Impossible Foods’ First Complaint. That petition (IPR2022-00887) was not instituted.[8]

Subsequently, after Impossible Foods filed its First and Second Amended Complaints in the district court case, Motif filed several additional petitions for IPR with the PTAB. The new IPR petitions challenge six additional Impossible Foods’ hemeprotein patents.

In December 2022, Motif filed four IPR petitions against Impossible Foods’ patents related to meat alternative products containing hemeprotein, sugars, and sulfur compounds and methods for its use.[9] The challenged patents are the ’096 patent; the ’306 patent; the ’250 patent; and the ’241 patent. Motif argued that these patents should be revoked.[10] Furthermore, Motif argued that this concept cannot be patented in light of prior art because these components have been known to be associated with the taste and smell of meat in the food industry and have been used to simulate meat flavors in meat alternative products by food scientists and flavor chemists before Impossible Foods.[11] In April, Impossible Foods submitted a request to correct the priority claims of the ’096, ’241, ’250, and ’306 patents, claiming that these challenged patents claim the filing date of U.S. Provisional Application 61/671,069 (“the ’069 provisional”), International Application PCT/US2012/046560 (“Brown,” one of Motif’s listed prior art against several of the challenged patents), and U.S. Provisional Application 61/572,205 (“the ’205 provisional”).[12]  The corrected priority, if granted would have affected review of the ’096 and ’241 patents because Motif has argued that the subject matter of certain challenged claims of those patents were disclosed by Brown.[13] After reviewing Motif’s petition, Impossible Foods’ response, exhibits submitted by both sides, and Impossible Foods’s request to correct priority claims, the PTAB concluded that “Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable…”[14] for three of the four IPR petitions that Motif filed. However, on June 16, 2023, the PTAB issued its decision “that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’096 patent,” and instituted an IPR to examine the ’096 patent.[15]  

The ’096 patent is titled “Methods and Compositions for Affecting the Flavour and Aroma Profile of Consumables.” Regarding the priority dispute, the PTAB concluded that “[f]or purposes of this Decision on Institution, we determine that Petitioner presents sufficient evidence indicating the ’816 Provisional’s disclosure lacks written description support for the full scope of the challenged claims of the ’096 patent…. Accordingly, for purposes of this Decision, the earliest effective filing date that the ’096 patent claims are entitled to claim is …July 12, 2013.”[16] This decision means that Brown will be viewed as prior art against the ’096 patent during the IPR proceedings. Regarding claim construction, the PTAB pointed to “food flavor additive composition” as a term that will be construed during the course of the IPR proceedings.[17] Finally, the PTAB concluded that Motif has established a reasonable likelihood of prevailing on some of its asserted grounds, which is sufficient to institute review of “all challenged claims and on all grounds presented” under SAS Inst. Inc. v. Iancu.[18]

Takeaways

The PTAB’s recent decision show that the ongoing fight between Motif and Impossible Foods is just getting started and that the food tech industry should pay close attention to PTAB decisions as companies in this space continue to develop their patent portfolio.

Furthermore, the ’096 patent may not be the only Impossible Foods patent to be reviewed by the PTAB. In January 2023, Motif filed two more IPR petitions against Impossible Foods’ patents related to its plant-based alt-meat products.[19] The patents at issue in these petitions are the ’492 patent and the ’656 patent, which relate to genetically modified yeast cells.[20] The PTAB’s decision regarding institution of IPR proceedings for the ’492 patent and the ’656 patent are currently pending. We will continue to monitor developments in the Motif-Impossible Foods IPR proceedings and provide insight and updates as they become available.

[1] See e.g. Good Food Institute, https://gfi.org/blog/2023-outlook-the-state-of-the-plant-based-meat-category/ (last visited May 9, 2023). See also, a previous article we wrote profiling some companies operating in this space.

[2] See, e.g., U.S. Patent No. 10,172,381 (filed Oct. 18, 2017) and U.S. Patent No. 10,273,492 (filed Aug. 16, 2017).

[3] See, e.g. Motif, https://madewithmotif.com/2021/12/08/motif-foodworks-announces-the-commercial-launch-of-hemami-food-tech-earns-generally-recognized-as-safe-gras-status-from-fda/ (last visiting May 9, 2023).

[4] Complaint at 7-11, Impossible Foods Inc. v. Motif FodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 1. See also a previous article we wrote covering that litigation.

[5] See Answer at 6, Impossible Foods Inc. v. Motif FoodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 10.

[6] First Amended Complaint, Impossible Foods Inc. v. Motif FoodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 19.

[7] Second Amended Complaint, Impossible Foods Inc. v. Motif FoodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 22.

[8] See Institution Decision, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2022-00887 (PTAB Apr. 20, 2022).

[9] U.S. Patent No. 9,943,096 (filed Apr. 17, 2018); U.S. Patent No. 10,039,306 (filed Jul. 10, 2015); U.S. Patent No. 11,013,250 (filed Jan. 3, 2019); and U.S. Patent No. 11,224,241 (“the ’241 patent”)

[10] See IPR2023-00206, IPR2023-00209, IPR2023-00208, and IPR2023-00207

[11] See, e.g. Amended Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2022-00887 at 1-3 (PTAB Dec. 7, 2022).

[12] Patent Owner’s Motion Pursuant to 37 C.F.R. §1.323, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00206, 2-3 (PTAB Apr. 13, 2023).

[13] See, e.g Patent Owner’s Motion Pursuant to Board Order, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00206, 3-11 (PTAB Jun. 1, 2023).

[14] See, e.g. Institution Decision, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00209 at 23 (PTAB Dec. 7, 2022).

[15] See, e.g. Institution Decision, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00209 at 39 (PTAB Dec. 7, 2022).

[16] Id. at 11-12.

[17] Id. at 15.

[18] See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1351 (2018) (“When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.”)

[19] See IPR2023-00321, IPR2023-00322, and IPR2023-00206

[20] See U.S. Patent No. 10,273,492 (filed Aug. 16, 2017) and U.S. Patent No. 10,689,656 (filed Nov. 10, 2017).