DCT

1:23-cv-00580

Alnylam Pharma Inc v. Moderna Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00580, D. Del., 05/26/2023
  • Venue Allegations: Venue is asserted in the District of Delaware on the basis that all Defendant entities are Delaware corporations.
  • Core Dispute: Plaintiff alleges that Defendant’s COVID-19 mRNA vaccine (SPIKEVAX®) infringes three patents related to a class of protonatable biodegradable lipids used to form lipid nanoparticles for delivering RNA-based therapeutics.
  • Technical Context: The technology concerns lipid nanoparticles (LNPs), which are critical delivery vehicles for fragile mRNA molecules, a foundational component of the most successful COVID-19 vaccines.
  • Key Procedural History: The complaint alleges that in 2014, Alnylam and Moderna engaged in business discussions regarding a potential license to the technology, during which Alnylam allegedly presented confidential technical information to Moderna. The complaint notes that Plaintiff does not seek injunctive relief.

Case Timeline

Date Event
2011-12-07 Patent Priority Date for ’229, ’479, and ’480 Patents
Early 2014 Alnylam and Moderna alleged to have begun licensing discussions
2020-02-07 First clinical batch of Moderna's accused vaccine candidate completed
2020-12-18 FDA grants Emergency Use Authorization for Moderna's COVID-19 Vaccine
2022-01-31 FDA approves Moderna's COVID-19 Vaccine under tradename SPIKEVAX®
2023-02-28 U.S. Patent No. 11,590,229 (’229 Patent) Issues
2023-04-25 U.S. Patent No. 11,633,479 (’479 Patent) Issues
2023-04-25 U.S. Patent No. 11,633,480 (’480 Patent) Issues
2023-05-26 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,590,229 - "Biodegradable Lipids for the Delivery of Active Agents"

  • Patent Identification: U.S. Patent No. 11,590,229, “Biodegradable Lipids for the Delivery of Active Agents,” issued February 28, 2023 (’229 Patent).

The Invention Explained

  • Problem Addressed: The patent’s background section describes the central challenge of delivering therapeutic nucleic acids like RNA, which are fragile and susceptible to degradation in the body. Existing lipid-based delivery systems needed improvements to reduce toxicity and enhance drug clearance after delivery (’229 Patent, col. 1:36-60).
  • The Patented Solution: The invention claims a specific class of synthetic, biodegradable cationic lipids designed to form lipid nanoparticles (LNPs). These lipids incorporate biodegradable groups, such as esters, into their hydrophobic tails. This structure allows the LNP to protect the RNA payload for delivery into a cell, after which the lipid is metabolized and eliminated from the body, which may reduce dose-limiting toxicity (Compl. ¶21; ’229 Patent, Abstract, col. 2:1-10).
  • Technical Importance: The development of biodegradable lipids was a key step in improving the safety profile of LNPs, enabling their use for systemic delivery of RNA therapeutics, a technology foundational to mRNA vaccines (Compl. ¶¶1, 19, 21).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a pharmaceutical composition), 11 (a method for delivering a nucleic acid), and 21 (a vaccine) (Compl. ¶¶65, 83).
  • Independent Claim 1 of the ’229 Patent recites the essential elements of a pharmaceutical composition comprising a lipid particle, which in turn comprises:
    • (i) a nucleic acid;
    • (ii) 35-65 mol% of a protonatable lipid compound;
    • (iii) 3-12 mol% distearoylphosphatidylcholine (DSPC);
    • (iv) 15-45 mol% cholesterol;
    • (v) 0.5-10 mol% of 1-(monomethoxy-polyethylene glycol)-2,3-dimyristoyl glycerol (PEG-DMG);
    • wherein the "protonatable lipid compound" has a specific chemical structure including a nitrogen atom central moiety, two hydrophobic tails, and an ester group; and
    • wherein one of the hydrophobic tails has a specific branched alkyl group structure with defined carbon counts and chain lengths.
  • The complaint also asserts dependent claims 2-7, 10, 12-18, and 22-25 (Compl. ¶¶65, 83).

U.S. Patent No. 11,633,479 - "Biodegradable Lipids for the Delivery of Active Agents"

  • Patent Identification: U.S. Patent No. 11,633,479, “Biodegradable Lipids for the Delivery of Active Agents,” issued April 25, 2023 (’479 Patent).

The Invention Explained

  • Problem Addressed: The technical problem is identical to that described for the ’229 Patent: the need for improved, well-tolerated cationic lipids for the systemic delivery of nucleic acids (’479 Patent, col. 1:44-64).
  • The Patented Solution: The ’479 Patent claims a specific lipid compound, rather than a composition containing it. The claimed compound comprises a head group, two hydrophobic tails, and a central nitrogen atom. The invention focuses on a specific chemical structure for at least one of the hydrophobic tails, requiring an alkyl group that is "branched at the α-position" relative to an ester group, along with specific chain lengths and carbon counts (’479 Patent, Abstract, Claim 1). This specific branching is described as a feature of the invention for creating effective and biodegradable delivery vehicles (Compl. ¶21).
  • Technical Importance: As with the ’229 Patent, this technology relates to the design of lipids that are both effective for RNA delivery and biodegradable, enhancing the safety profile of LNP-based therapeutics (Compl. ¶¶19, 61-62).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (a lipid compound) and 13 (a method for delivery), along with several dependent claims (Compl. ¶¶69, 87).
  • Independent Claim 1 of the ’479 Patent recites the essential elements of a lipid compound:
    • A head group, two hydrophobic tails, and a central moiety (a nitrogen atom);
    • Each hydrophobic tail consists of an aliphatic group interrupted by an ester group;
    • At least one hydrophobic tail has the formula -R¹²-M¹-R¹³, wherein R¹² is a C4-C14 alkyl group, M¹ is an ester group, and R¹³ is a C10-C20 alkyl group;
    • The R¹³ group is "branched at the α-position relative to M¹";
    • The tail has a chain length of 17 to 24 atoms and a total carbon content of 21 to 26 atoms;
    • The compound contains a protonatable group making it positively charged at or below pH 7.4.
  • The complaint also asserts dependent claims 6-9 and 16-20 (Compl. ¶¶69, 87).

U.S. Patent No. 11,633,480 - "Biodegradable Lipids for the Delivery of Active Agents"

Multi-Patent Capsule

  • Patent Identification: U.S. Patent No. 11,633,480, “Biodegradable Lipids for the Delivery of Active Agents,” issued April 25, 2023 (’480 Patent).
  • Technology Synopsis: The ’480 Patent claims a lipid particle composition for delivering a nucleic acid, similar to the ’229 Patent. The invention centers on a particle containing a specific class of protonatable lipid compound that includes biodegradable ester groups and defined structural characteristics, such as specific carbon counts and chain lengths, intended to enhance the safety and efficacy of RNA delivery (Compl. ¶¶40-41; ’480 Patent, Abstract).
  • Asserted Claims: Claims 5-10 are asserted (Compl. ¶¶76, 91). Independent claim 5 is representative of the asserted composition claims (Compl. ¶41).
  • Accused Features: The lipid nanoparticles in Moderna's COVID-19 Vaccine, which are alleged to contain four lipids (SM-102, DSPC, cholesterol, and PEG-DMG) that meet the compositional and structural requirements of the claims (Compl. ¶¶2, 77).

III. The Accused Instrumentality

Product Identification

  • The accused products are Moderna's COVID-19 Vaccines, sold under the tradename SPIKEVAX®, including monovalent and bivalent formulations (Compl. ¶¶2, 54, 56, 57).

Functionality and Market Context

  • The accused vaccines use messenger RNA (mRNA) to instruct cells to produce a version of the coronavirus's spike protein, triggering an immune response (Compl. ¶49). To deliver the fragile mRNA, the vaccines employ "Lipid Particles" that encapsulate and protect it (Compl. ¶¶2, 18).
  • These lipid particles are alleged to be composed of four specific lipids: the protonatable lipid SM-102, 1,2-distearoyl-sn-glycero-3-phosphocholine (DSPC), cholesterol, and polyethylene glycol [PEG] 2000 dimyristoyl glycerol (PEG-DMG) (Compl. ¶¶2, 70). The complaint alleges that the biodegradability of the lipid particle, particularly the use of ester linkages in the protonatable lipid, is essential to the vaccine's efficacy and safety (Compl. ¶¶61, 62).
  • The complaint alleges significant commercial success for the accused vaccines, citing revenues of $17.7 billion in 2021 and over $18.4 billion in 2022 (Compl. ¶55).

IV. Analysis of Infringement Allegations

The complaint incorporates by reference claim chart exhibits that were not filed with the public complaint; this analysis is based on the narrative allegations of infringement contained within the complaint body.

U.S. Patent No. 11,590,229 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A pharmaceutical composition comprising a lipid particle...wherein the lipid particle comprises: (i) a nucleic acid, Moderna’s COVID-19 Vaccine is a pharmaceutical composition containing a lipid particle that comprises mRNA, which is a nucleic acid (Compl. ¶¶2, 24). ¶2, 24 col. 493:45-47
(ii) 35-65 mol% of a protonatable lipid compound, The lipids in the accused vaccine are alleged to be in a molar ratio where the protonatable lipid, SM-102, constitutes 50 mol % of the total lipids (Compl. ¶71). ¶71 col. 493:48-49
(iii) 3-12 mol% distearoylphosphatidylcholine (DSPC), The lipids in the accused vaccine are alleged to be in a molar ratio where DSPC constitutes 10 mol % of the total lipids (Compl. ¶71). ¶71 col. 493:50-51
(iv) 15-45 mol% cholesterol, and The lipids in the accused vaccine are alleged to be in a molar ratio where cholesterol constitutes 38.5 mol % of the total lipids (Compl. ¶71). ¶71 col. 493:51
(v) 0.5-10 mol% of 1-(monomethoxy-polyethylene glycol)-2,3-dimyristoyl glycerol (PEG-DMG), The lipids in the accused vaccine are alleged to be in a molar ratio where the PEGylated lipid (PEG-DMG) constitutes 1.5 mol % of the total lipids (Compl. ¶71). ¶71 col. 493:51-53
wherein the protonatable lipid compound comprises...a central moiety [which] is a nitrogen atom; the hydrophobic tails consist of two hydrophobic tails; each...consists of a first hydrophobic chain, an ester group... The accused protonatable lipid, SM-102, is alleged to have a chemical structure that meets these requirements. A visual representation shows a central nitrogen atom bonded to two hydrophobic tails, each containing an ester group (-C(O)O-) (Compl. p. 23). ¶72, p. 23 col. 493:54-63
wherein...one of the hydrophobic tails has (a) the formula -R¹²-M¹-R¹³, wherein R¹² is a C4-C14 alkyl group, M¹ is -C(O)O-, and R¹³ is a C10-C20 branched alkyl group, (b) a chain length for formula...of 18 to 20 atoms, and (c) a total carbon atom content of 21 to 26 carbon atoms. The complaint alleges, via incorporated claim charts, that the chemical structure of SM-102 meets these specific formulaic, chain length, and carbon content requirements (Compl. ¶66). The provided image of SM-102 depicts a structure with two hydrophobic tails containing ester groups and branching (Compl. p. 23). ¶66, 72, p. 23 col. 494:1-12

U.S. Patent No. 11,633,479 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A lipid compound, comprising a head group, two hydrophobic tails, and a central moiety to which the head group and the two hydrophobic tails are directly bonded, wherein: the central moiety is a nitrogen atom; The accused lipid, SM-102, is alleged to have a chemical structure meeting these limitations. The complaint provides a diagram of SM-102 showing a head group, two hydrophobic tails, and a central nitrogen atom (Compl. p. 23). ¶72, p. 23 col. 503:1-7
each of the two hydrophobic tails independently consists of an aliphatic group interrupted by an ester group; and The diagram of SM-102 shows two tails, each containing an ester group (-C(O)O-) that interrupts the aliphatic chain (Compl. p. 23). ¶72, p. 23 col. 503:8-10
at least one of the hydrophobic tails has the formula -R¹²-M¹-R¹³, wherein...R¹³ is a C10-C20 alkyl group that is branched at the α-position relative to M¹; The complaint alleges via incorporated claim charts that the SM-102 structure meets this limitation (Compl. ¶74). The provided diagram shows branching on the alkyl group immediately adjacent to (i.e., at the alpha position relative to) the oxygen atom of the ester group (Compl. p. 23). ¶72, 74, p. 23 col. 503:11-16
the chain length of formula -R¹²-M¹-R¹³ is from 17 to 24 atoms; the total carbon atom content of the at least one hydrophobic tail is 21 to 26 carbon atoms; and The complaint alleges that SM-102 meets these specific chain length and carbon count limitations (Compl. ¶74). ¶74 col. 503:17-20
wherein the lipid compound contains a protonatable group such that the lipid compound is positively charged at a pH at or below pH 7.4. SM-102 is identified as a "protonatable biodegradable lipid" (Compl. ¶2). The nitrogen atom in its head group is protonatable, allowing it to become positively charged at physiological pH or below (Compl. ¶18). ¶2, 18 col. 503:21-24

Identified Points of Contention

  • Scope Questions: A central dispute for all three patents will be whether the specific chemical structure of SM-102 falls within the scope of the claims' detailed structural definitions for the "protonatable lipid compound." This involves interpreting terms defining carbon chain lengths, total carbon atoms, and specific branched alkyl groups.
  • Technical Questions: For the ’479 Patent, a key technical question will be the construction of the term "branched at the α-position relative to M¹." The infringement analysis will depend on the precise chemical definition of the "α-position" in the context of the ester group (M¹) and whether the branching in SM-102 occurs at that specific location. For the ’229 and ’480 Patents, a similar analysis will focus on whether SM-102's branched alkyl group meets the specific formulaic requirements recited in the claims for R¹³.

V. Key Claim Terms for Construction

  • The Term: "protonatable lipid compound" (in the context of the detailed structural limitations that follow in Claim 1 of the ’229 Patent and Claim 5 of the ’480 Patent).
  • Context and Importance: This term, as defined by the extensive structural limitations in the claims, is the lynchpin of the infringement case for the ’229 and ’480 Patents. The dispute will center on whether the accused SM-102 lipid embodies the specific combination of a nitrogenous central moiety, two ester-containing hydrophobic tails, and one tail having a branched alkyl group with particular carbon counts and chain lengths as claimed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses a wide array of chemical structures, including numerous formulas (e.g., Formula I-VIII) and extensive tables of representative head groups and hydrophobic tails, which may suggest the inventors contemplated a broad class of structures beyond the specific examples (’229 Patent, col. 15:36-col. 358:65).
    • Evidence for a Narrower Interpretation: The claims themselves are highly specific, reciting precise carbon counts (e.g., "total carbon atom content of 21 to 26 carbon atoms") and chain lengths (e.g., "18 to 20 atoms") for one of the hydrophobic tails (’229 Patent, Claim 1). Defendants may argue that these explicit numerical ranges strictly define the scope of the "protonatable lipid compound" and that any deviation by SM-102 places it outside the claim.
  • The Term: "branched at the α-position relative to M¹" (’479 Patent, Claim 1).
  • Context and Importance: This chemical structure term is critical for the infringement analysis of the ’479 Patent. Practitioners may focus on this term because infringement hinges on whether the specific branching point in the accused SM-102 lipid aligns with the patent's definition of the "α-position." Given the complexity of the molecule, the reference point for this position (M¹, the ester group) will be a central issue.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the invention as relating generally to cationic lipids with biodegradable groups and provides dozens of example structures (’479 Patent, Abstract; cols. 8-358). Plaintiff may argue this context supports a reading of "α-position" consistent with standard chemical nomenclature that would cover the SM-102 structure.
    • Evidence for a Narrower Interpretation: The claim language is precise. Dependent claim 6 of the ’479 Patent provides a specific formula and states "where R¹³ is branched at the α-position relative to the -C(O)O- group" (’479 Patent, Claim 6). Defendants may argue this ties the definition of the α-position to the carbon atom immediately adjacent to the ester's oxygen atom, potentially creating a point of non-infringement depending on the precise structure of SM-102.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Moderna actively induces infringement by manufacturing, using, and selling its COVID-19 vaccine with the knowledge and specific intent that end users and distributors will directly infringe by using the vaccine (Compl. ¶¶84, 88, 92).
  • Willful Infringement: While the complaint does not use the word "willful," it lays a foundation for such a claim by alleging pre-suit knowledge. It asserts that Moderna has been aware of Alnylam's "Lipid Particle Technology" since at least early 2014, citing business discussions and the sharing of confidential information (Compl. ¶¶3, 43-46). For the patents-in-suit, which issued in 2023, the complaint alleges that Alnylam notified Moderna of the underlying patent applications and the allowed claims prior to issuance, thereby providing notice (Compl. ¶¶68, 75, 81).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of structural identity: does the accused SM-102 lipid meet the highly specific, multi-part chemical definitions recited in the claims for a "protonatable lipid compound," particularly with respect to the precise location of branching, chain lengths, and total carbon counts?
  • A second central issue will be one of scienter and damages: can Alnylam establish that alleged 2014 licensing discussions provided Moderna with knowledge sufficient to support a claim for enhanced damages for infringement of patents that issued nearly a decade later?
  • A key evidentiary question will be one of technical mapping: what evidence will be presented to map the molar percentages of the four components in Moderna’s commercial vaccine products to the specific mol% ranges required by the composition claims of the ’229 and ’480 patents?