Moderna, Pfizer and BioNTech hit with COVID-19 vaccine lawsuits over mRNA tech

Promosome claimed it shared mRNA tech with the trio, who went on to make hugely successful vaccines | The small biotech wants a cut of more than $100 billion allegedly made by the big pharma companies.

Promosome has filed two separate patent infringement lawsuits against Moderna, Pfizer, and BioNTech, accusing them of infringing its patent in their COVID-19 vaccines.

The New York-based biotech patented a method for increasing mRNA protein expression, which is protected by US patent number 8853179.

mRNA is a genetic material that instructs the body on how to produce proteins and can be used in various ways, including in mRNA vaccines.

In its complaint, Promosome claimed its scientists taught Moderna scientists about the technology covered by its '179 patent in 2013 and also shared it with BioNTech in a slidedeck in 2015, but the pair never attempted to secure a licence for it.

The company claimed BioNTech later shared the innovation with Pfizer during the research and development process of its COVID-19 vaccine, which began in 2020.

Licensing partners

Promosome marketed the ‘179 patent under the trade name RESCUE and recognised Moderna and BioNTech as potential licensing or business partners, said the complaint.

Between 2013-2016 Promosome said it engaged with Moderna about potential licensing and business partnerships. To facilitate these discussions, Promosome and Moderna entered into a Confidential Disclosure and Non-Use Agreement on July 5, 2013, claimed the company.

The complaint goes on to say that on July 29, 2013, Stephen Hoge, president of Moderna at the time, visited Promosomes facilities and while there Promosome disclosed and discussed its IP, including the ‘179 patent.

In 2015, Moderna re-engaged with Promosome and Promosome shared an updated slide deck describing RESCUE and the method of the ‘179 patent, during which Promosome explained how the ‘179 patent method could be used in Moderna’s existing mRNA approach, the complaint said.

In the same year, Promosome’s president, John Manzello, spoke with Katalin Kariko, one of BioNTech’s mRNA scientists and senior VP at the time, and provided her with a slide deck describing RESCUE, alleged the company.

BioNTech never re-engaged Promosome to license its IP, including the relevant rights to practise the method of ‘179 patent, said the complaint.

In 2016, Promosome alleged that it sent a copy of the ‘179 patent to Moderna who responded by saying the head of IP would review it. Then-CEO Chris LeMasters emailed Moderna CEO, Stephane Bancel, to discuss the possible uses of Promosome’s IP, the company said.

Promosome and Moderna had interacted over the years discussing the ‘179 patent, however, Moderna had never reached out to license its IP rights, Promosome said.

BioNTech and Pfizer ‘incorporated’ patent into vaccine

The company alleged that BioNTech and Pfizer incorporated the method of the ‘179 patent into the COVID-19 vaccine and they now market under the name Comirnaty.

The pair outlined they “developed their vaccine utilising innovation from their respective scientists and replying upon decades of research conducted by others before the pandemic began”. Promosome claimed that ‘others ‘refers to discussions between it and the companies.

Meanwhile, Moderna developed its COVID-19 vaccine and “incorporated the method of the ’179 patent into its mRNA development platform, including the development of the COVID-19 vaccine that it now markets under the name Spikevax”, said the complaint.

Promosome claimed Moderna’s vaccine generated an estimated $35 billion in revenue and BioNTech and Pfizer’s generated more than $75 billion.

Promosome wants shares of the revenue made by all three companies.

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