Acuitas Files Suit Against CureVac Alleging Incorrect Inventorship on COVID MRNA-LNP Vaccine Patent Family

Acuitas Therapeutics Inc. (“Acuitas”) filed a complaint on November 13 against CureVac in the U.S. District Court for the Eastern District of Virginia, alleging incorrect inventorship of four U.S. Patents related to COVID-19 mRNA-LNP vaccines and assigned to CureVac, namely U.S. Patent Nos. 11,241,493, 11,471,525, 11,576,966, and 11,596,686, (collectively, the “’493 Patent Family”).  Acuitas’s complaint states that “[t]he named inventors on the ’493 Patent Family [] should also include Acuitas’s scientists: Drs. Michael Hope, Ying Tam, Paulo Lin, and Barbara Mui” in addition to CureVac’s scientists.  They allege that “[w]hile CureVac’s scientists contributed to the work leading to those patents, they did not do so and could not have done so alone. Instead, they worked hand in hand with Acuitas’s scientists, who invented and taught CureVac’s scientists significant elements of each claimed invention in the ’493 Patent Family.”  Acuitas goes on to state that “Acuitas and CureVac have been collaborating on therapeutics that use Acuitas’s LNP technology since 2014. . . [and as] part of the collaboration, CureVac provided the mRNA, and [Acuitas] provided their expertise in lipids and LNP technology and created mRNA-LNP formulations using CureVac’s mRNA.”

Acuitas seeks a judgement declaring inventorship of each of the patents in the ‘493 Patent Family to add Drs. Hope, Tam, Lin and Mui as inventors, an order under 35 USC §256 requiring the Director of the PTO to issue a certificate correcting inventorship, a declaration of exceptional case awarding attorneys’ fees, and costs and expenses.

The ‘493 Patent Family is also subject of a patent dispute between Pfizer/BioNTech and CureVac.  In July 2022, Pfizer and BioNTech filed a complaint against CureVac in the District Court for the District of Massachusetts, seeking a declaratory judgment that their COVID-19 vaccine does not infringe the ‘493 patent, among others.  The case was transferred to the Eastern District of Virginia in May 2023.  Also in May 2023, CureVac asserted counterclaims alleging that Pfizer and BioNTech’s COVID-19 vaccine infringes each patent in the ‘493 Patent Family, as well as other patents.  The case (C.A. 2-23-cv-00222) remains pending.