A federal judge has ruled that Moderna’s lawsuit against Pfizer and BioNTech will be put on hold, while the US Patent and Trademark Office reviews petitions brought against two of the three Covid-19 vaccine-related patents that Moderna feels have been infringed.
In a ruling published Friday, a Massachusetts federal judge said delaying the lawsuit until the Patent Trial and Appeal Board makes its decision would “simplify the issues in this case.”
Pfizer and BioNTech argued in two separate petitions for inter partes review filed with the Patent Trial and Appeal Board in August 2023, saying Moderna is attempting to “co-opt an entire field of mRNA technology” and that Moderna’s patents are invalid.
Moderna first brought a lawsuit against Pfizer and BioNTech in August 2022 seeking monetary damages, alleging that their vaccine Comirnaty copied Moderna’s technology, which was patented before the pandemic when Moderna was developing an mRNA vaccine for another respiratory illness called MERS.
Moderna claims in its lawsuit that Pfizer and BioNTech made the same chemical modification to mRNA to help it evade the immune system and that its competitors used the full-length spike protein in their vaccine, thus infringing its patents.
In 2020, Moderna said it wouldn’t enforce its patents during the pandemic, but then changed its mind in 2022 as the severity of the outbreak waned, explaining that it would begin enforcing patents in wealthy countries. It has since sued BioNTech in Germany, and sued both companies in the UK, Ireland and Belgium.
Pfizer and BioNTech have filed counterclaims against Moderna in the US, asking for the case to be dismissed, for a recovery of court fees and for an official judgment invalidating Moderna’s claims.