The food tech industry has been growing and evolving rapidly in the last ten years due to technological innovations in the space and a growing customer demand for plant-based food products and sustainable meat options. We have previously covered a high profile legal battle in the plant-based meat sector of this industry discussing (1) the first patent infringement lawsuit in the food tech industry and (2) its related petition for inter partes review (“IPR”) with the Patent and Trademark Appeal Board (“PTAB”). After over two years of legal sparring, Impossible Foods Inc. (“Impossible Foods”) and Motif FoodWorks Inc. (“Motif”), have reached a settlement in their district court dispute over their hemeprotein patents—a key ingredient that give both companies’ plant-based meat products their meat-like flavor.
The Origins of the Dispute
Impossible Foods is one of the early entrants to the food tech industry with a large global patent portfolio focused on hemeproteins used in their meat substitute product. [1] Motif is a Massachusetts-based start-up, which had developed its own heme-based technology, called Hemami—a hemeprotein that is identical to bovine myoglobin— which is used in its plant-based meat products.[2]
The legal battle began in March 2022 when Impossible Foods filed a lawsuit in the United States District Court for the District of Delaware against Motif, accusing Motif of infringing its patents.[3] At the heart of the dispute was the use of hemeproteins for mimicking the taste and texture of meat in plant-based meat substitute products. Impossible Foods’ technology includes a soy leghemoglobin protein (a type of hemeprotein) as a significant part of what makes their plant-based burgers “bleed” and taste like traditional meat.
Impossible Foods alleged that Motif’s Hemami directly infringed its patent claims.[4] In response, Motif launched a counteroffensive, challenging the validity of several of Impossible Foods’ patents at the PTAB.[5]
PTAB Resolution
In a mixed outcome, the PTAB invalidated one of Impossible’s key patents, a victory for Motif.[6] However, the PTAB declined to review challenges to six other patents held by Impossible Foods, leaving much of the company’s intellectual property intact.[7] This partial victory for Motif intensified the legal struggle between the two companies, further complicating the path to resolution as both companies filed motions to appeal or cross-appeal the PTAB decision to the United States Court of Appeals for the Federal Circuit (“CAFC”).[8]
The Settlement
After years of legal back-and-forth, the two companies decided to settle their initial district court dispute out of court. The settlement, which was filed in a Delaware court on August 31, 2024 and granted on September 3, 2024, concludes the case with both parties agreeing to bear their own legal costs.[9] The resolution of this dispute allows both companies to move forward without the cloud of ongoing district court litigation over them.
Looking Ahead
Despite the recent settlement, the legal battles between these two companies may not be over because the appeal of the PTAB decision is still pending at the CAFC.[10] Additionally, Impossible Foods is appealing revocation of its European patent, EP2943072, at the European Patent Office (“EPO”). Impossible Foods filed a Notice of Appeal (No. T0425/23) with the European Patent Office on February 17, 2023, which is scheduled to proceed to oral proceedings on January 21, 2025. Notably, Impossible Foods withdrew their Main Request and Auxiliary Request AROA on August 22, 2024 and will be proceeding with Auxiliary Request 1 (“AR1”) filed on April 19, 2023 as the new main request.[11] AR1 is directed to “[a] method of making a meat substitute” rather than the meat substitute itself or the hemeprotein.[12] However, it is unclear if the August 22, 2024 letter was related to the settlement filed in Delaware court as the specific terms of the settlement have not been disclosed. We will continue to monitor developments in the food tech industry and provide insight and updates as they become available.
With thanks to Jennifer Bailey for an update on the EPO proceeding.
[1] 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).
[2] See, e.g. Motif, https://madewithmotif.com/products/breakthrough-ingredients/ (last visited Sep. 4, 2024); see also PCT Patent Application No. WO2022147357A1 (filed Dec. 31, 2021); PCT Patent Application No. WO2022174157A1 (filed Feb. 14, 2022); PCT Patent Application No. WO2022187736A1 (filed Mar. 7, 2022); and PCT Patent Application No. WO2023076307A1 (filed Oct. 25, 2022).
[3] Complaint, Impossible Foods Inc. v. Motif FodWorks Inc., No. 1-22-cv-00311 (D. Del. Mar. 9, 2022), ECF No. 1.
[4] Id.
[5] See Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2022-00887 (PTAB Apr. 20, 2022); Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00206 (PTAB Dec. 7, 2023); Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00209 (PTAB Dec. 7, 2023); Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00208 (PTAB Dec. 7, 2023); Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00207 (PTAB Dec. 7, 2023); Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00321 (PTAB Jan. 28, 2024); and Petition, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00322 (PTAB Jan. 28, 2024).
[6] See Final Decision, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00206 (PTAB Jun. 12, 2024).
[7] See, e.g.,Institution Decision, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2022-00887 (PTAB Oct. 26, 2022).
[8] See Notice of Appeal, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00206 (PTAB Aug. 13, 2024); Final Decision, Motif FoodWorks Inc. v. Impossible Foods Inc., IPR2023-00206 (PTAB Aug. 27, 2024).
[9] See Stipulation of Dismissal with Prejudice, Impossible Foods Inc. v. Motif FodWorks Inc., No. 1-22-cv-00311 (D. Del. Aug. 31, 2024), ECF No. 605; and Stipulation and Order, Impossible Foods Inc. v. Motif FodWorks Inc., No. 1-22-cv-00311 (D. Del. Sep. 03, 2024), ECF No. 606.
[10] See, e.g., Impossible Foods v Motif FoodWorks. Case # CAFC-24-2217 filed Aug. 14, 2024.
[11] See Letter dealing with oral proceedings during the appeal procedure, T0425/23 (EPO Aug.22, 2024).
[12] See Auxiliary request during appeals procedure – 01, T0425/23 (EPO Apr. 19, 2024).