Motif FoodWorks Inc v. Impossible Foods Inc

1. Case Identification

• Case #: IPR2022-00887
• Patent #: 10,863,761
• Filed: April 20, 2022
• Petitioner(s): Motif FoodWorks, Inc.
• Patent Owner(s): Impossible Foods Inc.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Methods and Compositions for Consumables
• Brief Description: The ’761 patent discloses meat replica products, specifically beef replicas, designed to approximate the characteristics of actual meat. The invention combines a "muscle replica," containing a heme-containing protein, with a "fat tissue replica," containing plant oil and denatured plant protein, assembled to mimic the physical organization of meat.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-11, 13-14, and 16-17 under §102 by McMindes

• Prior Art Relied Upon: McMindes (International Publication No. WO 2006/041966).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McMindes, which discloses a "structured meat product" designed to simulate beef steaks and patties, teaches every limitation of the challenged claims. McMindes’s product is made from a hydrated soy protein material (the "muscle replica") combined with a humectant (the "fat tissue replica"). Petitioner contended McMindes discloses the key limitations of claim 1 as follows:
    • A "muscle replica" comprising a heme-containing protein: McMindes teaches its product can optionally contain up to 50% real beef, which includes the heme-protein myoglobin. Petitioner’s calculations showed that the resulting myoglobin concentration (0.15%-0.78%) falls within the claimed 0.1%-5% range.
    • Sugar and sulfur compounds: McMindes discloses adding flavor ingredients like malt extract (sugar) and onion/garlic powder (sulfur).
    • A "fat tissue replica" with plant oil and denatured plant protein: McMindes’s "humectant" is an oil-in-water emulsion containing various plant oils (e.g., soy, canola) and uses soy protein or gluten as an emulsifier. Petitioner argued a POSITA would know these proteins are denatured during the described extrusion and cooking processes.
  • Key Aspects: The core of the anticipation argument relied on McMindes's disclosure of "hybrid" meat products containing both plant protein and real beef, thereby inherently providing the claimed heme-containing protein.

Ground 2: Obviousness of Claims 1-11 and 13-17 over McMindes in view of Ljublinskij

• Prior Art Relied Upon: McMindes (WO 2006/041966) and Ljublinskij (Russian Patent No. 2,274,003).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground provides an alternative basis for the heme-protein limitation, particularly for McMindes's 100% meat-free embodiments. Ljublinskij teaches adding hemoglobin (a heme-protein) to food products, such as confectionery bars, in concentrations of at least 2.4% to provide nutritional iron fortification and a desirable meat-like color. This concentration falls squarely within the ’761 patent’s claimed range.
  • Motivation to Combine: Petitioner argued a POSITA would combine Ljublinskij’s teachings with McMindes’s meat-free replica to achieve two of McMindes's stated goals: improving nutritional value and enhancing meat-like coloration. Adding hemoglobin would make the product more meat-like in both nutrition and appearance.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as both McMindes and Ljublinskij teach that their respective ingredients can be incorporated into food products using conventional mixing techniques.

Ground 3: Obviousness of Claim 12 over McMindes in view of Crane and (Ljublinskij or Sonac)

• Prior Art Relied Upon: McMindes (WO 2006/041966), Crane (Patent 9,085,766), and either Ljublinskij or Sonac (a Harimix proteins brochure).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targets claim 12, which adds the limitation that the beef replica contains "no animal products." While Ljublinskij and Sonac teach using animal-derived hemoglobin, Crane discloses methods for producing functional, recombinant heme-proteins (including hemoglobin and leghemoglobin) from non-animal sources like yeast.
  • Motivation to Combine: McMindes explicitly teaches that its products can be made free of animal products to appeal to consumers with religious or health-related dietary restrictions. To create a fully vegan product that still possessed the benefits of heme-protein taught by Ljublinskij/Sonac, a POSITA would be motivated to substitute the animal-derived heme with a non-animal, recombinant version as taught by Crane.
  • Expectation of Success: Crane teaches that its recombinant proteins are suitable for commercial food applications, and a POSITA would expect to be able to incorporate them into McMindes's product using ordinary skill.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 15 is obvious over McMindes and general knowledge of a POSITA, and that other claims are obvious using Sonac (a commercial hemoglobin colorant) or Proulx (a journal article on plant-derived leghemoglobin) as the source for the heme-protein.

4. Key Claim Construction Positions

• Petitioner argued that while several key terms have a plain meaning, a POSITA would understand them in the context of the specification. The proposed constructions were central to mapping the prior art.
• "muscle replica" / "fat tissue replica": Petitioner contended these terms should be understood to encompass compositions that mimic at least one property (such as color, texture, or appearance) of the corresponding animal tissue, either before or after cooking. This construction allows McMindes's extruded soy protein and humectant emulsion to meet the claim limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under either §325(d) or §314(a) would be improper.
• §325(d) (Advanced Bionics): Petitioner contended the Examiner committed material error by overlooking key teachings in the prior art. It was argued that although U.S. counterparts to McMindes and Crane were cited in an Information Disclosure Statement (IDS), they were never substantively examined or applied in a rejection. Further, Ljublinskij and Sonac were never before the Examiner, making the asserted combinations new and not cumulative.
• §314(a) (Fintiv): Petitioner argued the Fintiv factors strongly favor institution. The co-pending district court litigation was at a very early stage, with minimal investment by the court or parties. Petitioner also filed a concurrent motion to stay the litigation and stipulated it would not pursue the same grounds in court if the IPR was instituted.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of the ’761 patent as unpatentable.