After nearly two years of legal back and forth, Pfizer and its German partner BioNTech have won a brief reprieve in their patent fight against mRNA rival Moderna.
In a docket entry dated Friday, Massachusetts federal judge Richard G. Stearns granted a stay on the case to provide more time for the Patent Trial and Appeal Board (PTAB) to review challenges against two of the three relevant patents in the litigation.
Though PTAB’s review doesn’t encompass every piece of intellectual property at issue in the case, which was originally brought by Moderna in 2022, the organization’s assessment still has the potential to “simplify” the proceedings moving forward, Judge Stearns wrote.
Moreover, since Moderna is only seeking monetary damages from its rivals, it isn’t readily apparent to the court that keeping Pfizer and BioNTech’s COVID-19 vaccine on the market would cause any harm, Stearns said.
The legal brouhaha kicked off in late August, 2022, when Moderna filed lawsuits in the United States and Germany alleging that Pfizer and BioNTech copied “key features” of its patented mRNA technology tied to chemical modification and lipid nanoparticle formulation.
Pfizer and BioNTech attempted to parry Moderna’s legal challenge in Dec. 2022 by filing a countersuit, demanding a jury trial and refuting Moderna’s claims.
In pushing back against Moderna’s claims, lawyers for Pfizer and BioNTech argued their mRNA rival was stretching its “already overbroad” patents to claim credit for others’ work and put itself in the “single, starring role” of the response to the COVID-19 pandemic.
Pfizer and BioNTech in August pressed the U.S. Patent and Trademark Office’s (PTO’S) Patent Trial and Appeals Board to invalidate a pair of Moderna patents tied to mRNA vaccine production. At the time, the partners argued Moderna was trying to “coopt an entire field of mRNA technology.”
The board agreed to review both patents in March, according to Reuters.
Moderna and Pfizer did not immediately respond to Fierce Pharma’s request for comment on the latest development.
Meanwhile, both Pfizer-BioNTech and Moderna have suffered precipitous declines in COVID-19 vaccine revenue ever since the market shifted from a pandemic one to endemic.
For all of 2023, Pfizer and BioNTech’s Comirnaty sales clocked in at $11.2 billion, falling short of the partners’ $13.5 billion goal for the year.
Over the same 12-month stretch, Moderna’s shot Spikevax generated revenues of $6.7 billion, down from $18.4 billion in 2022.