At issue is the use of heme proteins in plant-based meat alternatives, an area in which Impossible and Motif – who have each laid off staff in recent months as market conditions have deteriorated – both 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.
Both are produced via precision fermentation using a genetically engineered strain of yeast to express heme-containing proteins that impart ‘meaty’ flavors and deep red colors to meat alternatives, but they are not exactly the same, according to Motif, which noted in a recent court filing defending a patent infringement lawsuit from Impossible that Impossible’s patents cover meat substitutes that are “free of animal heme-containing protein.”
Impossible Foods: 'We do not tolerate theft of our technology'
Impossible says it is simply defending its intellectual property, while Motif argues that many of the inventions claimed in Impossible Foods' patents are obvious and already disclosed in the prior art, and says the EPO's decision to revoke Impossible's EU patent "affirms our beliefs that Impossible’s patents are invalid and never should have been issued in the first place."
According to Motif FoodWorks: "If Impossible wins [its lawsuit in Delaware], it means no one else can experiment with heme in the plant-based industry."
According to Impossible Foods: "We have always welcomed and embraced competition, but... we do not tolerate theft of our technology."
Impossible Foods to appeal, says revocation of EU patent 'has no impact on the validity or strength of Impossible’s US patents'
The rationale behind the EPO’s Nov 30 decision to revoke Impossible Foods’ EU patent 2,943,072 B1 (Methods and compositions for affecting the flavor and aroma profile of consumables - the '072 patent) is not yet available online, but according to Motif, the “challenges in the US share numerous similarities with the EU patent that was recently overturned,” although Impossible Foods says the revocation "has no impact on the validity or strength of Impossible’s US patents."
In a statement sent to FoodNavigator-USA, an Impossible Foods spokesperson said the firm's European plans haven’t changed, and it "looks forward to launching our full suite of products there [Impossible made its European debut in the UK in May with the launch of plant-based chicken nuggets and sausage patties, formulated without its flagship soy leghemoglobin ingredient, which is not yet approved in the UK or the EU]."
Noting that Impossible has "a robust patent portfolio in Europe, which extends beyond this patent," the spokesperson noted that the decision by the oppositions division of the EPO, "which is merely preliminary, did not find that Impossible’s inventions are not novel. The review compared Impossible’s patent against our own prior invention.
"The patent reviewed by the European Patent Opposition Board is not one of the seven patents that we've asserted against Motif in the current US district court litigation. Furthermore, our European patent that was reviewed remains fully enforceable until the Boards of Appeal reviews and makes a decision about our appeal. We’re optimistic that the Boards of Appeal will review and overturn this decision."
A spokesperson at the EPO told us it would make its thinking public in due course: "Additional information on why the patent was revoked will be provided in due course when the final written decision is published."
Motif: ‘We agree with the European Patent Office’s ruling that Impossible’s patent is obvious'
According to Motif, which has been mounting a PR campaign presenting Impossible Foods as a bully that's "stifling innovation" in the plant-based industry with some fairly broad assertions ('Innovation in the plant-based food industry could come to a halt if Impossible’s lawsuit is successful...'), both Impossible’s ‘072 EU patent and its US patents that Motif is challenging "address meat alternative products containing heme protein, sugars and sulfur compounds.
"Motif argues that these ingredients, which have been used to develop the taste and smell of meat and meat alternatives in food products for decades, are not patentable by Impossible, and hence concurs with the EPO decision finding Impossible’s claimed inventions obvious.”
Motif CEO Michael Leonard added: “We agree with the European Patent Office’s ruling that Impossible’s patent is obvious and look at it as a win for the industry – and a sign of things to come. At the same time, we continue to challenge additional Impossible patents in the US that also limit plant-based innovation and consumer choice.”
Four additional US patents challenged
While the revocation of the EU patent is a setback for Impossible Foods, Motif has in turn failed to convince the US Patent Trial and Appeal Board to review the US patent (10,863,761) at the center of a lawsuit* filed in Delaware in March in which Impossible Foods accused Motif of infringing its IP, noted Impossible Foods.
"So far they have failed on all accounts, which reinforces the strength of our case and our patents."
Impossible Foods recently amended the lawsuit to accuse Motif of infringing six additional US patents.
Motif’s new petitions with the PTAB filed this morning (type 'Motif' in the search box) challenge four of these patents (US11,224,241, US11,013,250, US10,039,306, US9,943,096, which Motif says relate to the generation of flavors and aromas in meat alternative products that contain heme proteins, sugars, and sulfur compounds.
“We will continue to fight Impossible’s aggressive actions to limit competition through every avenue available, including via the patent challenges we are announcing today," Leonard told FoodNavigator-USA.
PTAB refusal to initiate inter partes review has no bearing on court case, says Motif
Asked whether the PTAB’s refusal to initiate an inter partes review was bad news for Motif in its legal battle with Impossible, Leonard said: “It's not admitted into evidence, it wouldn't be presented to a jury, and it's not something that the court would take into account in deciding any merits issues within the case.”
He also explained that an inter partes review is only one means of challenging a patent, noting that other avenues - including an ex parte reexamination - could be pursued in due course.
Meaty dispute: Soy leghemoglobin (Impossible Foods) vs myoglobin (Motif FoodWorks)
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.
‘I want to leave the door open for a dialogue with Impossible Foods’
Asked whether the publicity surrounding the IP dispute was prompting potential customers to give Motif a wide berth over fears of infringing Impossible’s IP, he told us: “There are some customers that are more risk averse than others, but we still have robust discussions with customers interested in HEMAMI, although a lawsuit is never a good thing for anybody.”
He said: “I want to leave the door open for a dialogue with Impossible Foods, as I believe that there's potential for us to collaborate. We are a b2b technology and ingredient developer and I think there's opportunities there and I would welcome a dialogue. Unfortunately, at this stage, there's been zero willingness to engage in that dialogue.
“And so we're going down this path where with no dialogue, we destroy value for both companies, and I don't think that makes a lot of sense.”
‘We're going down this path where with no dialogue, we destroy value for both companies, and I don't think that makes a lot of sense’
He added: “This is not the approach that's going to help us grow this industry and I think a majority of other players in this space believe that a collaborative approach to innovation is required.
“No one company is going to drive growth of plant based and people are watching this and saying does it make sense they're kicking each other in the shins and spending money on legal fees versus taking those resources and applying them to innovating.”
*The case is Impossible Foods v Motif FoodWorks. Case #1:22-cv-00311 filed March 9, 2022 in Delaware
