Context: The District of Delaware is getting more and more mRNA-related cases over COVID vaccines. In the spring, GlaxoSmithKline sued Moderna and Pfizer there (April 26, 2024 ip fray article).
What’s new: Northwestern University filed a complaint in Delaware yesterday against Moderna, alleging that its Spikevax COVID vaccine infringes on lipid nanoparticle (LNP) technology developed by Northwestern researchers. One unusual element of the complaint is that it comes with portrait photos of three inventors.
Direct impact: As is common in that field, the complaint is about damages, but potentially about a substantial amount.
Wider ramifications: Given how Northwestern describes its claimed invents and research efforts in that field, Moderna is unlikely to be the last one to be sued. The complaint does not mention any large licensees, and no license agreement came into being after Northwestern’s infringement notice to Moderna. As discussed further below, Northwestern first had to modify an existing license agreement with an apparently not very successful startup so as to regain standing to sue Moderna (and possibly others going forward).
Here’s the complaint, filed by local Delaware firm Richards, Layton & Finger, with a lot of the work in the background presumably being done by “of counsel” Bartlit Beck:
Here’s a screenshot of the part where they show the pictures of three inventors:
As the complaint explains, lipid nanoparticles are how modified RNA can be injected into the human body. Decades before mRNA vaccines became feasible, the concept of mRNA was understood in principle, but there was no way to make the wizardry work until LNP solved the problem.
Two of the inventors founded a startup company named Zylem, and Northwestern licensed to that company the patents that are now the patents-in-suit. The complaint says that “Zylem sought to develop and manufacture products using the technology in the Asserted Patents,” suggesting that (as inventive they may have been) they couldn’t turn their startup into a huge success. Last year, that license agreement was amended so as to give Northwestern “the exclusive right to sublicense the Asserted Patents and to sue for and retain past, present, and future damages from infringement of the Asserted Patents.”
Finally, these are the patents-in-suit, some of which are cited to by a host of Moderna’s own patents:
- U.S. Patent No. 9,216,155 on “synthetic nanostructures including nucleic acids and/or other entities”
- U.S. Patent No. 10,328,026 (same title)
- U.S. Patent No. 8,323,686 on “nanostructures suitable for sequestering cholesterol and other molecules”