Dutch court nullifies one of Moderna’s mRNA patents

Moderna accuses Pfizer and BioNTech of infringing two of its patents for mRNA vaccines with their vaccine Comirnaty (case ID: C/09/643000). The claimant, which filed proceedings against the defendants in several countries at the end of 2022, is requesting damages for all sales made by its competitors after 8 March 2022.

The patents-in-suit, EP 35 90 949 B1 and EP 37 18 565 B1 pertain to “ribonucleic acids containing n1-methyl-pseudouracils and uses thereof” and “respiratory virus vaccines” respectively. However, while both patents are concerned with mRNA vaccines, they have different applications. EP 949 covers claims concerning modified mRNA. EP 565 covers the ‘betacoronavirus mRNA-LNP vaccine’, an improved substance for the prevention of contracting COVID and other respiratory diseases.

Successful counterclaim

The defendants counterclaimed for invalidity. Now, the District Court of The Hague has declared the Dutch part of EP 949 invalid due to lack of novelty. A spokesperson for Moderna told JUVE Patent, “We are disappointed with the court’s decision and will appeal this decision. We remain confident that Moderna will ultimately prevail in this case.”

Only a few weeks ago, the EPO’s Opposition Division revoked EP 565 in an opposition case. Moderna also appealed this decision. According to representatives of BioNTech and Pfizer, the corresponding infringement proceedings in the Netherlands have been suspended pending a decision by the Technical Boards of Appeal.

In parallel proceedings in Germany, the Regional Court Düsseldorf has scheduled a hearing for next week.

Global teams

Rutger Kleemans

All parties involved have relied on their advisors since the beginning of the dispute. The team around Dutch Freshfields partner Rutger Kleemans coordinates Moderna’s European strategy, which also encompasses Germany, Belgium, Ireland and the UK.

The only jurisdiction in which Freshfields is not representing Moderna is the US, where WilmerHale has taken over the instruction. In the Netherlands, the firm is working alongside patent attorney firm V.O.

A Dutch-Belgian team from Taylor Wessing represented Pfizer. While the two partners Charlotte Garnitsch and Patricia Cappuyns are leading the proceedings for EP 949, the Eindhoven-based partner Eelco Bergsma is involved in the proceedings for EP 565.

Charlotte Garnitsch

Theo Blomme, managing partner at Hoyng ROKH Monegier in the Netherlands, is leading for co-defendant BioNTech, alongside partner Peter van Schijndel. The Dutch office is working alongside the Hoyng ROKH Monegier outfits in Brussels, Düsseldorf and Paris to coordinate the European strategy.

For Moderna
Freshfields Bruckhaus Deringer (Amsterdam): Rutger Kleemans (partner) Ruben Laddé (senior associate; both lead); associates: Auke Tadema, Allard Van Duijn, Sam Kloosterboer
V.O. (Amsterdam): Jetze Beeksma, Henri Van Kalkeren (both partners, both patent attorneys)

For Pfizer
Taylor Wessing (Amsterdam/Brussels): Charlotte Garnitsch (lead); Patricia Cappuyns (both partners), David Mulder (counsel); associates: Laura Coucke, Narmeen Al Ganim, Pauline Springorum, Karlijn van Laar, Iris van der Heijdt, Yolandi Coetzee (patent attorney)
AOMB (Amsterdam): René Raggers (partner, patent attorney)

Theo Blomme

For BioNTech
Hoyng ROKH Monegier (Amsterdam): Theo Blomme (lead), (partner); Jeroen den Hartog (counsel, patent attorney), associates: Akiva Friedmann, Nathalie Rodriguez, Ella van Aanhold (patent attorney), Alba Folgueiras González (trainee patent attorney)

District Court of The Hague, the Netherlands
Edger Brinkman (presiding judge)