As a follow up to their previous article, “The Role of Morality in IP Suits Over COVID-19 Vaccines,” Lynn A. Lehnert and Sara L. Pilson from Goldberg Segalla’s Intellectual Property group delve into the defense strategy of Moderna as it faces a copyright infringement lawsuit for its COVID-19 vaccine.

“Moderna is vigorously defending this lawsuit, arguing as its first line of defense that to the extent the plaintiffs seek royalties on the sale and provision of the COVID-19 vaccine to the U.S. government, these claims should be brought in the U.S. Court of Federal Claims, pursuant to Title 28 of the U.S. Code, Section 1498(a),” they wrote in a new article for Law360.

Moderna’s defense is that since it developed the COVID-19 vaccine for the government with its authorization, that under Section 1498(a), the lawsuit should be brought against the government in the Court of Federal Claims. Motions to dismiss the suits have been denied thus far and various parties have contests use of the statute.

Given both the money Moderna has received for developing the vaccine and the possible private market sales, Lynn and Sara expressed the inequitable outcome if Moderna was able to successfully use this statute.

“Applying Section 1498(a) to this case would result in Moderna receiving a freely funded FDA-approved vaccine and billions of dollars in sales — essentially, a windfall — while the U.S. taxpayer foots the bill for a patent infringement lawsuit against the government,” they wrote.

The court agrees with the plaintiff that applying the statute in this situation could create a slippery slope in which all government-funded projects aimed at achieving Congress’s policy goals would therefore be subject to the statute.

Based on various amici curiae arguments, “… [the statute’s] applicability is limited to manufacture or use of patent inventions by the federal government or federal contractors acting for the government.”

“The court indicated that it would revisit the Section 1498 issue after discovery. It remains to be seen whether this issue will resurface in the context of a motion for summary judgment,” they concluded.

READ THE FULL ARTICLE:

“The Implications of Moderna’s Vaccine IP Defense Strategy,” Law360, April 4, 2023 [Subscription Required]

MORE ABOUT GOLDBERG SEGALLA’S INTELLECTUAL PROPERTY GROUP:

The Intellectual Property practice group protects the ideas, innovations, inventions, imagery, and creative compositions that propel successful business ventures and create strong brands.

Led by a highly experienced U.S. patent attorney, our intellectual property team draws from a broad range of Goldberg Segalla’s litigation and transactional practices, resulting in collective experience solving IP problems that involve a vast array of academic disciplines, cutting-edge innovations, and industry sectors. The GS IP team blends its members’ real-world work in scientific and high-tech disciplines with exceptional business acumen and deep experience handling patents, trade secrets, copyrights, trademarks, and other IP matters. The result is a tech-savvy and efficient team dedicated to helping clients develop practical business strategies that maximize the return on their investments and innovations.