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Moderna nabs a win in Arbutus patent case as appeals court upholds prior invalidation

While Arbutus Biopharma is busy scrapping with Moderna and Pfizer over COVID-19 vaccine patents, Moderna has chalked up a win in a separate case.

Back in 2018, Moderna challenged one of Arbutus’ lipid nanoparticle (LNP) technology patents at the U.S. Patent and Trademark office (PTO)’s Patent Trial and Appeal Board (PTAB). The patent, known as the ‘127 patent, was invalidated by the board the following year on the grounds that the company had already stated the invention in a prior patent (the ‘069 patent).

Now, after an appeal attempt by Arbutus, the U.S. Court of Appeals for the Federal Circuit has upheld the decision.

Moderna has “persuasively shown” that one or more formulations disclosed in the ‘069 patent are “the same or essentially the same” as formulations listed in the ‘127 patent, the appeals court said.

The patent in question isn’t involved in Arbutus’ COVID-19 vaccine patent suits against Moderna and Pfizer, so those disputes are still very much in play. Earlier this month, Arbutus, along with Genevant Sciences, accused Pfizer and BioNTech of “knowingly using” their patented LNP tech.

Arbutus and Genevant have been going at it longer with Moderna. Last year, Moderna’s attempt to invalidate two Arbutus delivery patents failed in court, leaving the door open for Arbutus to counterstrike. In that lawsuit, filed last February, the two are seeking damages for alleged infringement on six patents.

At the time of the filing, Genevant’s president and CEO Pete Lutwyche told investors on a conference call that that litigation could span “at least two years.”

Moderna, Pfizer and BioNTech are also being sued by CureVac and Alnylam in separate cases. The three are also battling each other after Moderna filed a patent infringement suit against Pfizer and BioNTech last summer, prompting a countersuit from Pfizer.