IP Law Daily, PATENT NEWS: Pfizer, BioNTech, Moderna accused of infringing mRNA patents, (Jun 7, 2023)

By Jonathan Anderson

The plaintiff is not seeking an injunction against further use of the accused vaccines, but rather a share of the revenue the defendants generated from the shots.

Biotechnology firm Promosome LLC has sued pharmaceutical companies Pfizer, BioNTech, and Moderna for alleged patent infringement of messenger ribonucleic acid (mRNA) technology that defendant companies used in their COVID-19 vaccines. The complaint states that Promosome disclosed the patented technology in 2014 and 2015 to defendants, which relied on the information to develop the vaccines without securing licenses. Promosome is seeking an unspecified award of damages, including up to three times the amount of compensatory damages The complaints in Promosome LLC v. Pfizer Inc. and Promosome LLC v. Moderna, Inc., were filed June 6, 2023, in U.S. District Court for the Southern District of California.

Background. Defendants produced vaccines for COVID-19. Pfizer and BioNTech jointly produced a vaccine the Food and Drug Administration (FDA) approved for emergency authorization for persons 16 years and older on December 11, 2020. Moderna’s vaccine received emergency authorization from the FDA for individuals 18 years old and older on December 18, 2020.

Promosome alleges that its founders developed a method for increasing messenger mRNA protein expression and patented this method under U.S. Patent No. 8,853,179 (the ’179 Patent), which was issued in 2014. Promosome disclosed the patented technology to Moderna in 2013 and BioNTech in 2015. Although reverse engineering of the vaccine shows that companies relied on the patented technology for their vaccines, none of the defendants licensed the ’179 Patent.

Patent infringement. Both complaints contain one claim for infringement of the ’179 Patent. The complaints allege that defendants infringed and continue to directly infringe, literally or under the doctrine of equivalents, in violation of 35 U.S.C. § 271(a).

Relief sought. The complaint requests a judgment finding that defendants infringed the ’179 patent and an unspecified award of damages, including up to three times the amount of compensatory damages. The complaint explicitly states that Promosme is not seeking any injunctive relief against the vaccines or their use, but rather a cut of the revenue; Pfizer and BioNTech allegedly recorded $75 billion in revenue from their vaccine, while Moderna recognized approximately $38 billion in revenue.

“Promosome applauds Defendants’ efforts to develop and sell a COVID-19 vaccine. Those efforts have saved innumerable lives. And the COVID-19 vaccines have accelerated and demonstrated the promise of mRNA therapeutics and vaccines unlocked by Promosome’s patented method. But it is now clear that Defendants incorporated the method of the ’179 Patent into their COVID-19 vaccine without appropriately compensating Promosome for the right to do so,” the complaint against Pfizer and BioNTech reads. It continues: “Promosome files this Complaint to receive its rightful share of the tens-of-billions in revenues Defendants already have earned and countless billions they will continue to earn by willfully infringing the ’179 Patent.”

The Cases are No. 3:23-cv-01047-JES-DDL and No. 3:23-cv-01048-CAB-BLM.

Attorneys: Amanda K. Bonn and Bill Carmody (Susman Godfrey L.L.P.) for Promosome LLC.

Companies: Promosome LLC; Pfizer Inc.; BioNTech SE; BioNTech Manufacturing GmbH; Moderna, Inc.; Moderna US, Inc.; ModernaTX, Inc.

News: Patent CaliforniaNews