by Dennis Crouch
I just talked about the new Moderna v. Pfizer patent infringement lawsuit with my patent class. I showed them Claim 1 of asserted US10898574. One student who has some biotech background offered the insight: “Wow, that claim is really broad … effectively covers the industry standard.”
Another student suggested that equitable estoppel may be an issue. Moderna indicated that it would not be asserting its patents during the midst of the COVID-19 pandemic. Apparently for Moderna, the pandemic was over by March 8, 2022. As such, Moderna is only seeking monetary damages “for Defendants’ infringement occurring on or after March 8, 2022.” The complaint also carves out “sales to the U.S. government that are subject to 28 U.S.C. § 1498 or to the 92 low- and middle-income countries in the Gavi COVAX Advance Market Commitment (AMC).” US Gov’t sales would require a separate action under Section 1498 in the Court of Federal Claims. Apparently a simultaneous lawsuit has been filed in Germany.
The complaint does not seek injunctive relief, so this is directly about the size of the damage award. Although I have no direct knowledge of this, I suspect that there were some limited negotiations and the competing offers differed by more than an order of magnitude.
The technology here all centers genetically modified mRNA with code for a particular polypeptide of interest (e.g., the spike protein). Claim 1, of the ‘574 patent, for instance claims a method to get the cell to start producing the protein by administering the mRNA. Here, the claim calls for simultaneously introducing N1-Methylpseudouridine, which serves to suppress immune response and increase protein production. Claim 2 of the same patent is directed to a pharmaceutical composition of “lipid nanoparticles” that encase the mRNA.
Patent litigator Bill Lee (Wilmer Hale) is representing Moderna. Pfizer has not yet filed an appearance.