Food Fight!

By Jason R. Wachter

The technology used to create what we eat is big business.  Thus, patents which can be obtained on the composition of new foods and on the methods to make them are also a big business.  One active area of intellectual property development and enforcement is the development of meat substitutes which are made from plants but still taste like meat.

Recently, Impossible Foods, Inc., the company that released the vegetarian “Impossible™ Burger,” filed a patent infringement lawsuit against Motif FoodWorks, Inc.,  a competitor in the plant-based beef substitute industry.  In the suit, Impossible Foods alleges infringement of its U.S. Patent No. 10,863,761 (the ‘761 Patent) which claims a particular “beef replica product.”  Impossible Foods specifically alleges that the plant-based beef products manufactured and sold by Motif FoodWorks infringe because they include the biological molecule heme in its plant-based beef products.

Motif’s promotes its products as having “Hemami™ ”, a combination of the umami flavor, look, and smell of meat.   Impossible Foods alleges that heme “. . . is a central component of meat’s appeal, leading to meat’s savory flavor and aroma and influencing how meat cooks” and that “heme is the molecule that gives meat its bloody taste when raw and creates the intense, meaty flavors and aromas when it’s cooked.”  Impossible Foods, Inc. v Motif FoodWorks, Inc., Case No. 1:22-cv-00311-UNA, Dkt. No. 1 (D.Del. March 9, 2022). On its website Impossible Foods states that it makes Heme “. . . using a yeast genetically engineered with the gene for soy leghemoglobin, which is derived from soy plants.”

In response to the lawsuit, Motif FoodWorks denied the allegations and filed counterclaims against Impossible Foods.  Additionally, it file a petition with the U.S. Patent Trial and Appeal Board (“PTAB”) for review of the validity of the ‘761 Patent. At the same time, Motif filed a motion to stay the lawsuit while the PTAB considers Motif’s petition.  It will be interesting to see how things play out.

This case is one of many that highlight the importance of patents and the role they play in protecting and enforcing valuable intellectual property through legal proceedings.  It also can be used to illustrate the due diligence and business decisions that should be made during the development of a product and entry into the marketplace.

Having a patent or even a pending patent application can be considered a valuable corporate asset in many instances for fund-raising and investment purposes.  However, enforcement has its risks since a patent may be challenged and its value diminished or eliminated entirely.  On the flip side, a successful challenge can increase a patent’s value.  If Motif’s challenge to the ‘761 Patent is either not taken up by the PTAB or the review petition is considered on its merits but the effort invalidate the ‘761 Patent fails, the ‘761 Patent may become more valuable and can be leveraged for future funding or investment.  Value can further increase if the lawsuit is not settled and Impossible Foods obtains a favorable ruling.  However, if the challenge to the ‘761 Patent is taken up by the PTAB and the patent is found invalid or at least substantially invalid (assuming through any appeals), and/or the district court separately rules against Impossible Foods and finds the ‘761 Patent invalid, such a judgment(s) could potentially have a detrimental effect on future fund raising and could open the door to more competition.  A similar result can occur if the patent validity is upheld but the court finds that there is no infringement since this can show competitors how to avoid at least this patent.

When faced with a potential infringer, a patent holder should consider a scope of enforcement options, assessing the potential related costs, time commitment and risk of loss of their patent before proceeding. Conversely, a company developing and offering for sale a product that will be competing for market share should evaluate potential intellectual property risks before investing significant resources into such a product, including considering patents and other intellectual property held by known competitors.  By conducting proper due diligence and obtaining a freedom to operate opinion, risks can be assessed up front and the company can be prepared in advance for a possible lawsuit.  Even if the suit is successful and the competing product is found to infringe a patent(s), advance diligence can allow steps to be taken to mitigate damages.

For more information about protecting and enforcing your intellectual property and steps to reduce the risk of infringing third party rights, please reach out to Jason at