Paul Hastings with BioNTech at patent trial against Moderna

German immunotherapy and pharmaceutical company BioNTech and its US partner Pfizer, producers of one of the Covid-19 vaccines, are trying to invalidate two patents owned by their competitor Moderna in front of the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). BioNTech is represented by global law firm Paul Hastings with global co-chair of the IP Naveen Modi (pictured) togethr with Bruce Wexler, Eric Dittmann, Chetan Bansal, Rebecca Hilgar and Ryan Meuth. Pfizer is being represented by lawyers David Krinsky and Stanley Fisher of Williams & Connolly.

The reason of the trial is that Moderna obtained the patents at issue during the pandemic with “unimaginably broad claims directed to a basic idea that was known long before the asserted priority date of 2015”, the two partners said.

As explained by The Global Legal Post, “the claims cover the composition and administration of an mRNA vaccine encoding any spike protein or spike protein subunit of any betacoronavirus (whether in existence or arising at any later point in time), formulated in a lipid delivery system. The petitions state that the patents’ broad claims encompass subject matter disclosed in the art before 2015, the earliest date to which the patents in dispute claim priority”. Such claims, according to Pfizer and BioNTech, should be considered as unpatentable and should be cancelled.

Pfizer and BioNTech request that the challenges claims be found unpatentable and cancelled.

However, this is not the first clash between pharmaceutical companies. In fact, Moderna had already filed suit against Pfizer and BioNTech in August 2022, alleging that the two had first infringed patent law between 2010 and 2016.