Modernatx Inc v Pfizer Ltd & Ors [2024] EWHC 1695 (Pat) (02 July 2024)

Modernatx Inc v Pfizer Ltd & Ors [2024] EWHC 1695 (Pat) (02 July 2024)

Both EP949 and EP565 are invalid for obviousness over the cited prior art. EP949 is obvious over UPenn and Karikó 2008; EP565 is obvious over WO674 and Pardi. The skilled person/team would have found it obvious to use N1-methyl-pseudouridine in mRNA (EP949) and to develop a betacoronavirus mRNA vaccine in an LNP (EP565) as claimed. The amendments proposed by Moderna to EP565 do not cure invalidity. No issues of infringement arise as it was admitted. Relief is limited to financial remedies, with pledge issues to be determined separately.

Citation
[2024] EWHC 1695 (Pat)
Parties
Claimant (hp 2022 000022) / Defendant (hp 2022 000027): MODERNATX, INC.; Defendant (hp 2022 000022): PFIZER LIMITED; Defendant (hp 2022 000022): PFIZER MANUFACTURING BELGIUM NV; Defendant (hp 2022 000022) / Claimant (hp 2022 000027): PFIZER INC.; Defendant (hp 2022 000022): BIONTECH MANUFACTURING GMBH; Defendant (hp 2022 000022) / Claimant (hp 2022 000027): BIONTECH SE
Jurisdiction
England and Wales
Judgment Date
02 July 2024
Procedural Posture
Patent Revocation and Counterclaim for Revocation / First Instance Trial Judgment
Outcome
Both EP949 and EP565 revoked for invalidity (obviousness).
Legal Topics
Patent Validity, Obviousness, Novelty, Added Matter, Insufficiency, M RNA Technology, COVID 19 Vaccines
Intellectual Property Patents Patent Validity Obviousness Novelty Added Matter Insufficiency M RNA Technology +1 more

Case Brief

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Parties

MODERNATX, INC.

Claimant (hp 2022 000022) / Defendant (hp 2022 000027)

PFIZER LIMITED

Defendant (hp 2022 000022)

PFIZER MANUFACTURING BELGIUM NV

Defendant (hp 2022 000022)

PFIZER INC.

Defendant (hp 2022 000022) / Claimant (hp 2022 000027)

BIONTECH MANUFACTURING GMBH

Defendant (hp 2022 000022)

BIONTECH SE

Defendant (hp 2022 000022) / Claimant (hp 2022 000027)

Procedural Posture

Patent Revocation and Counterclaim for Revocation / First Instance Trial Judgment

Legal Issues

  1. 1 Whether EP949 and EP565 are invalid for lack of novelty, obviousness, added matter, or insufficiency; entitlement to priority; scope of common general knowledge; effect of prior art (UPenn, Karikó 2008, WO674, Pardi)

Ratio Decidendi

Both EP949 and EP565 are invalid for obviousness over the cited prior art. EP949 is obvious over UPenn and Karikó 2008; EP565 is obvious over WO674 and Pardi. The skilled person/team would have found it obvious to use N1-methyl-pseudouridine in mRNA (EP949) and to develop a betacoronavirus mRNA vaccine in an LNP (EP565) as claimed. The amendments proposed by Moderna to EP565 do not cure invalidity. No issues of infringement arise as it was admitted. Relief is limited to financial remedies, with pledge issues to be determined separately.

Court Disposition

Both EP949 and EP565 revoked for invalidity (obviousness).

Orders

  • EP949 revoked for lack of inventive step (obviousness) over UPenn and Karikó 2008.
  • EP565 revoked for lack of inventive step (obviousness) over WO674 and Pardi.