Motif FoodWorks suffers setback in IP row with Impossible Foods over heme proteins, but remains ‘confident in our legal position’
The dispute centers on the use of meaty-tasting heme proteins in plant-based meat alternatives, an area in which both companies play.
Impossible Foods’ heme protein is identical to soy leghemoglobin, a protein found in nodules attached to the roots of nitrogen-fixing plants such as soy; while Motif FoodWorks’ HEMAMI heme protein is identical to bovine myoglobin, which is found in the muscle tissue of cows.
In a lawsuit filed in March 2022, Impossible accused Motif of infringing its ‘761 patent, which covers the application of heme proteins in meat alternatives. Motif, in turn, filed a petition with the USPTO’s Patent Trial and Appeal Board (PTAB) to challenge the validity of the patent, which it argues should never have been issued in the first place.
USPTO: Motif has 'not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim'
In a ruling published October 26 and seen by FoodNavigator-USA, however, the PTAB denied Motif’s request for an inter partes review of the offending patent, arguing that Motif had “not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim.”
This does not mean that Impossible Foods will automatically win its lawsuit against Motif, and there are several examples (including in the stevia industry) of firms that have failed to convince the patent office of their position over a disputed patent that have nevertheless gone on to prevail in civil litigation over the same IP.
However, it is undoubtedly a setback for Motif FoodWorks.
Impossible Foods: Confident the District Court 'will take the appropriate steps to remedy Motif’s infringement'
In a statement sent to FoodNavigator-USA, an Impossible Foods spokesperson said: "We're a product company, and this decision by the Patent Office is a testament to our novel technology – which includes our first-of-its-kind plant-based meat.
“It also affirms the strength of our robust patent portfolio. We look forward to presenting our case and have confidence that the District Court will take the appropriate steps to remedy Motif’s infringement."
Motif: 'Impossible is borrowing a well-worn page out of the Silicon Valley bullying-playbook'
Motif FoodWorks, in turn, sent us this statement: “We are confident in our legal position and our determination to continue challenging Impossible’s aggressive actions through every avenue available.
“Impossible is using legally dubious and factually baseless claims to stifle innovation and competition for the sake of their own profits. If Impossible truly believed in their mission to ‘make our global food supply more sustainable’ they would welcome innovators like Motif FoodWorks, not lawyer up.
“Instead, Impossible is borrowing a well-worn page out of the Silicon Valley bullying-playbook — when you can’t innovate, you litigate.”
Animal-free animal proteins?
Since initially filing the lawsuit vs Motif last March, Impossible Foods has amended its complaint and expanded its argument to claim that Motif is infringing multiple patents beyond the ‘761 patent reviewed by the PTAB.
In a recent (Oct 13) court filing in the case, Motif FoodWorks argued that its myoglobin is fundamentally different from Impossible’s soy leghemoglobin because it is identical to bovine myoglobin (ie. an animal protein) whereas Impossible’s patents cover meat substitutes that are “free of animal heme-containing protein.”
“Despite the clear and unambiguous exclusion of animal proteins, Impossible alleges that Motif infringes because its products contain an animal heme-containing protein. Specifically, [Impossible Foods'] second amended complaint expressly alleges as the basis for infringement that Motif’s accused products contain bovine myoglobin.
“This allegation is not only implausible, it is irreconcilable. Bovine refers to a cow, which even a child knows is an animal… Food products that contain bovine myoglobin therefore cannot plausibly be ‘free of animal heme-containing protein.’ Impossible has plead itself out of court.”
Impossible Foods, meanwhile, argued in papers filed today (Oct 27) that: "Motif’s website, press releases and FDA submissions repeatedly state that its products are 'animal-free,' that they are made 'without the animal' and that they contain 'animal-free proteins.'
"Motif cannot have it both ways—it cannot argue that it does not infringe the Challenged Patents because its bovine myoglobin is an animal heme-containing protein and thus is not free of animal products while at the same time representing to the public and the FDA that its offerings do not contain animal products and are “animal-free.”
Motif has not yet responded to this argument in official court filings. However, startups in the nascent 'animal-free' dairy, egg, and collagen protein space generally argue that the term 'animal-free' simply refers to the fact that no animals were involved in their production.
Meaty dispute: Soy leghemoglobin (Impossible Foods) vs myoglobin (Motif FoodWorks)
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.
*The case is Impossible Foods v Motif FoodWorks. Case #1:22-cv-00311 filed March 9, 2022 in Delaware.