Modernatx, Inc. v. Arbutus Biopharma Corporation

Case: 20-1184 Document: 135 Page: 1 Filed: 12/01/2021
United States Court of Appeals
for the Federal Circuit
______________________
MODERNATX, INC., FKA MODERNA
THERAPEUTICS, INC.,
Appellant
v.
ARBUTUS BIOPHARMA CORPORATION, FKA
PROTIVA BIOTHERAPEUTICS, INC.,
Cross-Appellant
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1184, 2020-1186
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00739.
______________________
Decided: December 1, 2021
______________________
AMY K. WIGMORE, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, argued for appellant. Also
Case: 20-1184 Document: 135 Page: 2 Filed: 12/01/2021
2 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
represented by MARK CHRISTOPHER FLEMING, EMILY R.
WHELAN, Boston, MA.
DAVID I. BERL, Williams & Connolly LLP, Washington,
DC, argued for cross-appellant. Also represented by
THOMAS S. FLETCHER, JESSICA PALMER RYEN; SONJA
ROCHELLE GERRARD, STEVEN WILLIAM PARMELEE, MICHAEL
T. ROSATO, Wilson Sonsini Goodrich & Rosati, Seattle, WA;
LORA MARIE GREEN, RICHARD TORCZON, Washington, DC.
ROBERT MCBRIDE, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by THOMAS W. KRAUSE, FARHEENA
YASMEEN RASHEED.
______________________
Before LOURIE, O’MALLEY, and STOLL, Circuit Judges.
LOURIE, Circuit Judge.
ModernaTx, Inc. (“Moderna”) appeals from the decision
of the U.S. Patent and Trademark Office Patent Trial and
Appeal Board (“Board”) holding that claims 7–8, 10–11, 13,
and 16–20 of U.S. Patent 9,364,435 are not unpatentable
as obvious. See Moderna Therapeutics, Inc. v. Protiva Bio-
therapeutics, Inc., IPR2018-00739, 2019 Pat. App. LEXIS
13612 (Sept. 11, 2019) (“Board Decision”). Arbutus Bio-
pharma Corporation (“Arbutus”) 1 cross-appeals from the
Board’s decision holding that claims 1–6, 9, 12, and 14–15
1 At the time that this appeal was filed in November
2019, the cross-appellant was named Protiva Biotherapeu-
tics, Inc. (“Protiva”). Subsequently, in June 2021, Protiva
moved the court to revise the official caption to replace Pro-
tiva with Arbutus. In this opinion, unless otherwise indi-
cated, we use “Protiva” and “Arbutus” interchangeably
based on the relevant context to refer to the cross-appellant
in this appeal.
Case: 20-1184 Document: 135 Page: 3 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 3
are unpatentable as anticipated. Id. For the reasons pro-
vided below, we dismiss Moderna’s appeal for lack of stand-
ing. Regarding Arbutus’s cross appeal, we affirm.
BACKGROUND
I. The ’435 Patent
Arbutus owns the ’435 patent directed to “stable nu-
cleic acid-lipid particles (SNALP) comprising a nucleic acid
(such as one or more interfering RNA), methods of making
the SNALP, and methods of delivering and/or administer-
ing the SNALP.” ’435 patent at Abstract. The patent,
which issued on June 14, 2016, claims priority from a pro-
visional application filed on April 15, 2008.
As described in the ’435 patent, RNA interference
(“RNAi”) is a biological process in which recognition of dou-
ble-stranded RNA “leads to posttranscriptional suppres-
sion of gene expression.” Id. at col. 1 ll. 39–42. That
biological process is mediated by small interfering RNA
(“siRNA”), “which induces specific degradation of mRNA
through complementary base pairing.” Id. at col. 1 ll. 42–
45. The ’435 patent recognized that RNAi provided “a po-
tential new approach to downregulate or silence the tran-
scription and translation of a gene of interest.” Id. at col. 1
ll. 52–54.
A “safe and effective nucleic acid delivery system is re-
quired for RNAi to be therapeutically useful.” Id. at col. 1
ll. 63–64. The delivery system “should be small” and
“should remain intact in the circulation for an extended pe-
riod of time in order to achieve delivery to affected tissues.”
Id. at col. 2 ll. 38–42. This requires a “highly stable, serum-
resistant nucleic acid-containing particle that does not in-
teract with cells and other components of the vascular com-
partment.” Id. at col. 2 ll. 42–45. The particle should also
“readily interact with target cells at a disease site in order
to facilitate intracellular delivery of a desired nucleic acid.”
Id. at col. 2 ll. 45–47. The ’435 patent thus recognized that
Case: 20-1184 Document: 135 Page: 4 Filed: 12/01/2021
4 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
there remained “a strong need in the art for novel and more
efficient methods and compositions for introducing nucleic
acids such as siRNA into cells.” Id. at col. 2 l. 66–col. 3 l. 1.
The ’435 patent describes the invention as “novel, se-
rum-stable lipid particles comprising one or more active
agents or therapeutic agents, methods of making the lipid
particles, and methods of delivering and/or administering
the lipid particles (e.g., for the treatment of a disease or
disorder).” Id. at col. 3 ll. 9–13. The lipid particles are com-
prised of one or more cationic lipids, one or more non-cati-
onic lipids, and one or more conjugated lipids. See id. at
col. 3 ll. 22–31. As described in the patent, “[t]he present
invention is based, in part, upon the surprising discovery
that lipid particles comprising from about 50 mol % to
about 85 mol % of a cationic lipid, from about 13 mol % to
about 49.5 mol % of a non-cationic lipid, and from about 0.5
mol % to about 2 mol % of a lipid conjugate provide ad-
vantages when used for the in vitro or in vivo delivery of an
active agent, such as a therapeutic nucleic acid (e.g., an in-
terfering RNA).” Id. at col. 5 ll. 55–62. The ’435 patent
further states that the stable nucleic acid-lipid particles
“advantageously impart increased activity of the encapsu-
lated nucleic acid (e.g., an interfering RNA such as siRNA)
and improved tolerability of the formulations in vivo, re-
sulting in a significant increase in the therapeutic index”
as compared to prior art nucleic acid-lipid particle compo-
sitions. Id. at col. 5 l. 62–col. 6 l. 2. And the particles are
“stable in circulation, e.g., resistant to degradation by nu-
cleases in serum, and are substantially non-toxic” to hu-
mans. Id. at col. 6 ll. 2–5
The ’435 patent contains 20 claims. Claim 1, the only
independent claim, recites:
1. A nucleic acid-lipid particle comprising:
(a) a nucleic acid;
Case: 20-1184 Document: 135 Page: 5 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 5
(b) a cationic lipid comprising from 50 mol
% to 85 mol % of the total lipid present
in the particle;
(c) a non-cationic lipid comprising from 13
mol % to 49.5 mol % of the total lipid
present in the particle; and
(d) a conjugated lipid that inhibits aggre-
gation of particles comprising from 0.5
mol % to 2 mol % of the total lipid pre-
sent in the particle.
Id. at col. 89 ll. 55–63. Many of the dependent claims con-
tain additional limitations directed to one of the various
components in the nucleic acid-lipid particle of claim 1. For
example, claims 2 and 3 are directed to the nucleic acid
component, claim 4 is directed to the cationic lipid compo-
nent, claims 5–8 are directed to the non-cationic lipid com-
ponent, and claims 9–12 are directed to the conjugated
lipid component. Id. at col. 89 l. 64–col. 91 l. 21. The re-
maining dependent claims pertain to the encapsulation of
the nucleic acid within the particle, id. at col. 91 ll. 22–24
(claim 13), pharmaceutical compositions comprising the
particle, id. at col. 92 ll. 1–3 (claim 14), and methods for in-
troducing a nucleic acid into a cell, in vivo delivery of a nu-
cleic acid, and treatment using the particle, id. at col. 92
ll. 4–22 (claims 15–20).
II. Inter Partes Review of the ’435 Patent
Moderna petitioned for inter partes review of the ’435
patent. In its petition, Moderna asserted three grounds
challenging all claims of the ’435 patent. In the first
ground, Moderna alleged that all claims of the ’435 patent
would have been obvious under 35 U.S.C. § 103 over a com-
bination of International Pat. Publ. WO 2005/007196 (“the
’196 PCT”) and U.S. Pat. Publ. 2006/0134189 (“the ’189
publication”). In the second ground, Moderna alleged that
all claims of the ’435 patent would have been obvious over
Case: 20-1184 Document: 135 Page: 6 Filed: 12/01/2021
6 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
a combination of the ’196 PCT, the ’189 publication, Lin, 2
and Ahmad. 3 In the third ground, Moderna alleged that
all claims of the ’435 patent were anticipated by U.S. Pat.
Publ. 2006/0240554 (“the ’554 publication”) under
35 U.S.C. § 102, and alternatively that the claims would
have been obvious over the ’554 publication.
Moderna’s obviousness arguments with respect to all
grounds centered on alleged overlapping ranges of compo-
nents. For example, claim 1 of the ’435 patent recites a
composition range for the cationic lipid that is “from 50
mol % to 85 mol % of the total lipid present in the particle.”
See ’435 patent at col. 89 ll. 57–58. In comparison, the ’196
PCT and the ’189 publication each disclose a range of be-
tween 2 mol % and 60 mol % for the cationic lipid. See
’196 PCT ¶ 88; ’189 publication ¶ 152. According to
Moderna, the range for each lipid component in the
claims—i.e., the cationic lipid, the non-cationic lipid, and
the conjugated lipid—overlaps with the range for that lipid
component taught by the prior art.
Moderna’s anticipation argument was based on one for-
mulation—the “L054 formulation”—disclosed in the ’554
publication. Moderna argued that the L054 formulation
contained all of the claimed components in amounts within
the claimed ranges of the ’435 patent. Specifically,
Moderna contended that the L054 formulation contained
50 mol % cationic lipid (which is within the 50–85 mol %
range of claim 1), 48 mol % non-cationic lipid (which is
2 Alison J. Lin, et al., Three-Dimensional Imaging of
Lipid Gene-Carriers: Membrane Charge Density Controls
Universal Transfection Behavior in Lamellar Cationic Lip-
osome-DNA Complexes, 84 Biophysical J. 3307–16 (2003).
3 Ayesha Ahmad, et al., New Multivalent Cationic
Lipids Reveal Bell Curve for Transfection Efficiency Ver-
sus Membrane Charge Density: Lipid-DNA Complexes for
Gene Delivery, 7 J. Gene Med. 739–48 (2005).
Case: 20-1184 Document: 135 Page: 7 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 7
within the 13–49.5 mol % range of claim 1), and 2 mol %
conjugated lipid (which is within the 0.5–2 mol % range of
claim 1).
The Board found that Moderna proved by a preponder-
ance of the evidence that claims 1–6, 9, 12, and 14–15 were
anticipated by the L054 formulation in the ’554 publica-
tion. However, the Board found that Moderna failed to
prove that the remaining claims were anticipated, or that
those claims would have been obvious over the prior art.
Moderna appealed from the Board’s decision that it had
failed to show that claims 7–8, 10–11, 13, and 16–20 were
not anticipated and/or would not have been obvious. Pro-
tiva cross-appealed from the Board’s decision that
claims 1–6, 9, 12, and 14–15 were anticipated. Subject to
the parties’ dispute about Moderna’s standing to pursue its
appeal, which we discuss further below, we have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4).
DISCUSSION
I. Moderna’s Appeal
Before we consider Moderna’s arguments on the merits
of the Board’s decision upholding claims of the ’435 patent,
we must first determine whether Moderna has standing to
pursue its appeal. After all, “no principle is more funda-
mental to the judiciary’s proper role in our system of gov-
ernment than the constitutional limitation of federal-court
jurisdiction to actual cases or controversies.” Daim-
lerChrysler Corp. v. Cuno, 547 U.S. 332, 341–42 (2006)
(quoting Raines v. Byrd, 521 U.S. 811, 818 (1997)).
Since the America Invents Act took effect nearly a dec-
ade ago, we have had a number of occasions to consider the
question of standing in appeals from Board decisions in
Case: 20-1184 Document: 135 Page: 8 Filed: 12/01/2021
8 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
IPR proceedings. 4 Our precedent generally makes clear
that, as in all appeals before this court, an appellant seek-
ing review of a Board decision in an IPR must have “(1) suf-
fered an injury in fact, (2) that is fairly traceable to the
challenged conduct of the [appellee], (3) that is likely to be
redressed by a favorable judicial decision.” Phigenix, 845
F.3d at 1171–72 (Fed. Cir. 2017) (quoting Spokeo, Inc. v.
Robbins, 136 S. Ct. 1540, 1547 (2016)).
Under the IPR statute, there is no standing require-
ment for petitioners to request institution of IPR by the
Board. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2143–44 (2016) (“Parties that initiate [IPRs] need not
have a concrete stake in the outcome; indeed, they may lack
constitutional standing.”). And we recognize that where a
statute grants judicial review, as the IPR statute does, see
35 U.S.C. § 319, the criteria of immediacy and redressabil-
ity may be “relaxed.” See Momenta, 915 F.3d at 768. But
we have always maintained that a party’s participation in
the underlying IPR before the Board is insufficient by itself
to confer standing on that party to appeal the Board’s deci-
sion to this Article III court. See Phigenix, 845 F.3d
at 1175; see also Momenta, 915 F.3d at 768 (“Although the
statutory grant of judicial review may ‘relax’ the Article III
criteria, judicial review of agency action remains subject to
the constitutional foundation of injury-in-fact, lest the
court occupy only an advisory role.”); JTEKT, 898 F.3d
at 1219 (“[T]he statute cannot be read to dispense with the
4 See, e.g., Apple Inc. v. Qualcomm Inc., 992 F.3d
1378 (Fed. Cir. 2021); Samsung Elecs. Co. v. Infobridge Pte.
Ltd., 929 F.3d 1363 (Fed. Cir. 2019); Momenta Pharms.,
Inc. v. Bristol-Myers Squibb Co., 915 F.3d 764 (Fed. Cir.
2019); JTEKT Corp. v. GKN Auto. Ltd., 898 F.3d 1217(Fed. Cir. 2018); Phigenix, Inc. v. Immunogen, Inc., 845
F.3d 1168 (Fed. Cir. 2017); Consumer Watchdog v. Wis.
Alumni Research Found., 753 F.3d 1258 (Fed. Cir. 2014).
Case: 20-1184 Document: 135 Page: 9 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 9
Article III injury-in-fact requirement for appeal to this
court.”). Accordingly, even when an appellant is “sharply
opposed to the Board’s decision and the existence of [a] pa-
tent, that is not enough to make th[e] dispute justiciable.”
Consumer Watchdog, 753 F.3d at 1263.
As the party seeking judicial review, Moderna “has the
burden of establishing that it possesses the requisite in-
jury.” See JTEKT, 898 F.3d at 1220. Moreover, Moderna
must show that standing existed at the time it filed its ap-
peal and has continued to exist at all times throughout the
appeal. See Steffel v. Thompson, 415 U.S. 452, 459 n.10
(1974) (“[A]n actual controversy must be extant at all
stages of review, not merely at the time the complaint is
filed.”); Momenta, 915 F.3d at 770 (“[I]t is established that
jurisdiction must exist throughout the judicial review, and
an intervening abandonment of the controversy produces
loss of jurisdiction.”).
Shortly after Moderna filed this appeal in Novem-
ber 2019, Protiva moved to dismiss for lack of standing.
Protiva argued that Moderna had never established that it
suffered an injury in fact. See Protiva Opening Standing
Br. 5 at 1. Protiva emphasized that it had never initiated a
patent infringement action or directly accused Moderna of
infringing its patents, and thus Moderna could only show
standing to appeal the Board’s decision if it were “currently
using claimed features” of the ’435 patent “or nonspecula-
tively planning to do so.” Id. at 4 (citing Fischer & Paykel
Healthcare Ltd. v. ResMed Ltd., No. 2018-2262 (Fed. Cir.
Nov. 27, 2019) (Order, non-precedential)). Indeed, Protiva
argued, Moderna had consistently taken the position that
it was not using Protiva’s patented technology and did not
intend to do so. Id. at 5.
5 Dkt. 22.
Case: 20-1184 Document: 135 Page: 10 Filed: 12/01/2021
10 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
In opposing Protiva’s motion to dismiss, Moderna ex-
pressly stated in January 2020 that it did “not base its Ar-
ticle III standing on the threat of an impending
infringement suit or Protiva’s accusations of infringe-
ment.” Moderna Resp. Standing Br. 6 at 3. Rather,
Moderna argued, its standing was based on its status as a
“current licensee to the ’435 patent for four viral tar-
gets . . . with actual monetary obligations . . . that are im-
pacted by the Board’s validity determinations.” Id. at 3–4.
Moderna relied on our case law for the proposition that
“[t]he risk of a future infringement suit is not the only way
an IPR petitioner can show injury-in-fact.” Id. at 4 (citing
Gen. Elec. Co. v. United Techs. Corp., 928 F.3d 1349, 1357
(Fed. Cir. 2019)). Moderna repeatedly cited our decision in
Samsung Electronics Co. v. Infobridge Pte. Ltd., to support
its position that financial impacts to an appellant based on
licensing obligations can be an independent means by
which to establish an injury-in-fact supporting standing.
See Moderna Resp. Standing Br. at 4, 8–9 (citing Samsung,
929 F.3d at 1368).
In support of its responsive brief in opposition to Pro-
tiva’s motion to dismiss, Moderna submitted a declaration
from Shaun Ryan, who was its Senior Vice President and
Deputy General Counsel. 7 In his declaration, Mr. Ryan de-
scribed information relating to Moderna’s status as a
6 The non-confidential version of Moderna’s respon-
sive brief is Dkt. 28. Moderna filed the confidential version
of its brief as Dkt. 30.
7 For confidentiality purposes, Moderna filed
Mr. Ryan’s declaration under seal with the confidential
version of its responsive brief in Dkt. 30. In this opinion,
to the extent we reference information from that confiden-
tial declaration, we reference only material that Moderna
has subsequently made public through its briefing and oral
argument in this appeal.
Case: 20-1184 Document: 135 Page: 11 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 11
sublicensee of the ’435 patent. Specifically, Mr. Ryan at-
tested that Protiva had licensed the ’435 patent among
other patents to a company called Acuitas Biotherapeutics
(“Acuitas”), and that Acuitas had, in turn, granted a series
of sublicenses to Moderna to practice the patented technol-
ogy for four viral targets, one of which was Respiratory
Syncytial Virus (“RSV”). Mr. Ryan further stated that, un-
der its rights from the Acuitas sublicenses, Moderna was
engaged in an active development program for the RSV vi-
ral target. According to Mr. Ryan, Moderna had already
made one milestone payment to Acuitas, and potentially
could have additional milestone and royalty obligations in
the future. Thus, Moderna argued, the royalty and mile-
stone obligations owed to Acuitas for the use of the ’435 pa-
tent caused harm to Moderna by increasing the financial
burdens on Moderna’s RSV development program.
We denied Protiva’s motion, but we specifically noted
that our denial was without prejudice to allow Protiva to
raise its standing argument in its merits brief. See Dkt. 35.
Shortly thereafter, Moderna filed its opening brief on the
merits, relying in its jurisdictional statement mainly on the
same arguments and evidence it had presented in opposing
Protiva’s motion to dismiss. Moderna Opening Br. at 6–9.
Protiva then filed its responsive brief, including its re-
sponse to Moderna’s assertions of standing. Protiva Resp.
Br. at 5–9. Protiva argued that the mere existence of a li-
cense is not sufficient to support Article III standing, and
that Moderna’s alleged “obligations” were “nothing but
rank speculation, which even Moderna characterizes as an
if and when proposition.” Id. at 5. Protiva noted that the
last milestone payment Moderna had made to Acuitas was
on or before February 2016, and emphasized that Moderna
“fail[ed] to identify any recent milestone payment or any
such payment reasonably forthcoming.” Id. at 7.
In March 2021, approximately nine months after
Moderna had filed its opening brief on the merits, Moderna
filed a motion to supplement the record to provide
Case: 20-1184 Document: 135 Page: 12 Filed: 12/01/2021
12 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
additional evidence of standing. In that motion, Moderna
argued that “new facts supporting Moderna’s ongoing
standing to appeal have arisen, and the existing facts have
continued to develop.” Moderna Mot. to Suppl. 8 at 3.
The “existing facts” to which Moderna referred were
those that Mr. Ryan had described in his original declara-
tion more than a year earlier. With its motion to supple-
ment, Moderna submitted a supplemental declaration from
Mr. Ryan, 9 in which he stated that Moderna had, at some
point during the previous year, terminated the RSV devel-
opment program that had been active at the time that the
appeal was filed. He also admitted that none of the four
viral targets that were covered under the Acuitas subli-
censes were being pursued to further phases, though he
noted that they had not been fully abandoned. Im-
portantly, Mr. Ryan did not provide an approximate date
on which that RSV development program had been termi-
nated, nor did he describe any concrete plans to further
pursue development programs for any of the four viral tar-
gets.
The “new facts” to which Moderna referred related to
Moderna’s ongoing development of a vaccine for COVID-19.
Mr. Ryan’s supplemental declaration described Moderna’s
8 The non-confidential version of Moderna’s motion
is Dkt. 111. Moderna filed the confidential version of its
brief as Dkt. 112.
9 Like his original declaration, Mr. Ryan’s supple-
mental declaration also purports to contain confidential in-
formation. Again, we reference only material from the
supplemental declaration that Moderna has made public.
Moreover, attached to Mr. Ryan’s supplemental declara-
tion in this appeal was a supplemental declaration that he
submitted on the same day in Appeal No. 20-2329. For pur-
poses of this opinion, we treat these two supplemental dec-
larations as one.
Case: 20-1184 Document: 135 Page: 13 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 13
work that led to its concrete plans as of September 2020 to
release a COVID-19 vaccine, its emergency use authoriza-
tion as of December 2020, and its subsequent commercial
shipments of the vaccine. Mr. Ryan also described a series
of public statements made by Arbutus in 2017 regarding
the alleged extensive scope of its patents. According to Mr.
Ryan, those aggressive public statements by Arbutus, in
combination with Arbutus’s refusal to grant Moderna a
covenant not to sue and Arbutus’s consistent insistence
that Moderna requires a license to Arbutus’s patents, cre-
ated a significant risk that Arbutus would sue for patent
infringement.
During oral argument, counsel for Moderna explained
its position that “Moderna had and continues to have
standing to pursue this appeal.” Oral Arg. at 1:32,
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
-1184_10072021.mp3. Moderna’s counsel began by argu-
ing that the basis for Moderna’s standing “at the outset
when this appeal was filed in November of 2019,” id. at
1:38, was “contractual rights that are affected by a deter-
mination of patent validity,” id. at 2:27. Counsel repeat-
edly emphasized the “active” status of Moderna’s RSV
development program at that time, which had resulted in
one milestone payment and potentially could have resulted
in future milestone and royalty obligations. But Moderna’s
counsel then argued that “the situation has evolved,” id.
at 6:53, and the “evolution keeps this controversy alive,” id.
at 8:24. Specifically, counsel conceded that “over
time, . . . that particular RSV program was not pursued,”
id. at 8:36, but “at the same time, the COVID vaccine was
developed and ultimately [] delivered to the market and
commercialized,” id. at 8:53.
Arbutus’s counsel responded by challenging each as-
pect of Moderna’s standing timeline, as well as the timeline
as a whole. Counsel began by arguing, regarding
Moderna’s position on standing at the time the appeal was
filed, that “any notion of immediacy is entirely absent”
Case: 20-1184 Document: 135 Page: 14 Filed: 12/01/2021
14 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
from the evidence that Moderna presented on its “specula-
tive” licensing obligations. Id. at 16:50. Arbutus’s counsel
also insisted that it was crucial that the ’435 patent was
only one of many patents licensed under the Acuitas subli-
censes, and that Moderna had not shown how its payment
obligations would change if the ’435 patent were to be in-
validated. Next, Arbutus’s counsel turned to Moderna’s
concession that the RSV development program had at some
point been abandoned, focusing on the lack of evidence re-
garding “when that happened versus when their COVID
vaccine came into being and recreated” standing. Id. at
23:33.
We agree with Arbutus that Moderna lacked standing
at the time the appeal was filed. Even if the ’435 patent
was the only patent that Moderna had licensed under the
Acuitas sublicenses, Moderna’s evidence of financial bur-
dens from the validity of that patent is too speculative.
Notwithstanding Moderna’s counsel’s repeated characteri-
zation of the RSV development program as “active” at the
time this appeal was filed, Moderna concedes that the last
milestone payment it made under the Acuitas sublicenses
was approximately five years earlier, and Mr. Ryan’s dec-
laration states only that Moderna would have to make an
additional milestone payment “if and when” a future mile-
stone is reached. On this evidence, Moderna falls short of
its burden to demonstrate that at the time it filed this ap-
peal, it had suffered or was suffering a “concrete” injury
from the existence of the ’435 patent. See Phigenix, 845
F.3d at 1171 (“To constitute a ‘concrete’ injury, the harm
must ‘actually exist’ or appear ‘imminent’—a ‘conjectural
or hypothetical’ injury will not suffice.” (internal citations
omitted)).
Even more problematic for Moderna, the ’435 patent is
not the only patent licensed under the Acuitas sublicenses,
but rather it is one of many licensed patents. On this point,
the parties appear to agree that the two crucial cases are
Samsung and Apple. In Samsung, we held that the
Case: 20-1184 Document: 135 Page: 15 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 15
appellant had standing because, even though multiple pa-
tents were licensed, the appellant had provided evidence
demonstrating that the express terms of the contract struc-
tured the patent pool in such a way that invalidation of the
patent at issue in the underlying IPR would have changed
the amount of royalties. Samsung, 929 F.3d at 1368. In
contrast, in Apple we held that the appellant lacked stand-
ing because multiple patents had been licensed, and the
appellant failed to present evidence that invalidation of the
particular patents it was challenging would affect its con-
tractual rights by changing its royalty obligations. Apple,
992 F.3d at 1383.
The facts here resemble those in Apple, not those in
Samsung. Moderna has provided no evidence as to how, if
at all, its obligations under the Acuitas sublicenses would
change if it is successful in its attempts to have the ’435 pa-
tent declared invalid while the remaining licensed patents
continue to exist. Thus, Moderna has failed to meet its bur-
den of demonstrating that it suffers an injury from the ex-
istence of the ’435 patent, or that any such injury would be
redressed by invalidation of that patent. See id. at 1383–
84. Accordingly, we agree with Arbutus that Moderna
lacked standing at the time this appeal was filed.
We also agree with Arbutus that, even if Moderna had
standing at the time it filed this appeal, Moderna has failed
to demonstrate that it continuously had standing through-
out the pendency of the appeal. Under our precedent, an
“intervening abandonment of the controversy produces loss
of jurisdiction.” Momenta, 915 F.3d at 770. Moderna’s ev-
idence fails to show an approximate date when the RSV
development program was terminated. Thus, on the record
before us, it is impossible to determine whether, by the
time the RSV development program was terminated,
Moderna was already sufficiently underway with its devel-
opment of a COVID-19 vaccine to “create[] a substantial
risk of future infringement or likely cause the patentee to
assert a claim of infringement.” E.I. DuPont de Nemours
Case: 20-1184 Document: 135 Page: 16 Filed: 12/01/2021
16 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
& Co. v. Synvina C.V., 904 F.3d 996, 1004–05 (Fed. Cir.
2018).
As the appellant, Moderna bears the burden on the is-
sue of standing, JTEKT, 898 F.3d at 1220, including the
burden to demonstrate that there has been no gap in its
standing while this appeal has been pending, Momenta,
915 F.3d at 770. In view of Moderna’s concession that the
basis for its standing shifted during the pendency of this
appeal—i.e., from the financial burdens of the Acuitas sub-
licenses to a potential infringement suit for the COVID-19
vaccine—Moderna had to come forth with evidence to
demonstrate the necessary continuity of jurisdiction.
Moderna failed to do so.
For the reasons explained above, we find that Moderna
has failed to meet its burden on its standing to pursue this
appeal. Therefore, Moderna’s appeal must be dismissed.
II. Arbutus’s Cross-Appeal
With respect to the cross appeal, there is no dispute
that Arbutus, as the patent owner, has standing to appeal
the Board’s decision that claims 1–6, 9, 12, and 14–15 are
unpatentable. Thus, we proceed to the merits.
Arbutus argues that the Board erred by failing to rec-
ognize a critical distinction between starting ingredients
versus a final product. Arbutus contends that the claims
of the ’435 patent are directed to completed lipid particles
of defined composition. In contrast, Arbutus argues, the
L054 formulation disclosed in the ’554 publication is a lipid
mixture of starting ingredients for making lipid particles,
not a completed lipid particle itself. According to Arbutus,
expert testimony and corroborating literature demon-
strated that a person of ordinary skill in the art would have
expected the composition of components in a final lipid par-
ticle to deviate from the composition of components in the
mixture of starting ingredients. Arbutus further argues
that its expert provided evidence that the ’554 publication’s
Case: 20-1184 Document: 135 Page: 17 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 17
fabrication process would skew the L054 formulation’s fi-
nal lipid particle such that the final composition would fall
outside the range of the ’435 patent claims.
Moderna responds that substantial evidence supports
the Board’s factual findings regarding the disclosures of
the ’554 publication. Moderna notes that the Board specif-
ically considered Arbutus’s argument that the L054 formu-
lation failed to teach the composition of the final lipid
particle, but the Board rejected that argument. Moderna
argues that after weighing the evidence, the Board found
that it was standard practice in the field to describe lipid
particles by the composition of components in the input for-
mulation. The Board further relied on the disclosures of
the prior art and the ’435 patent itself, as well as the testi-
mony of expert witnesses.
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we re-
view the Board’s factual findings underlying those deter-
minations for substantial evidence, In re Gartside, 203 F.3d
1305, 1316 (Fed. Cir. 2000). A finding is supported by sub-
stantial evidence if a reasonable mind might accept the ev-
idence as adequate to support the finding. Consol. Edison
Co. v. NLRB, 305 U.S. 197, 229 (1938).
“Anticipation is a question of fact that we review for
substantial evidence.” Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1341 (Fed. Cir. 2016) (citing Kennametal,
Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015)). A prior art reference anticipates a claim if it
discloses “each and every element of the claimed invention
. . . arranged or combined in the same way as in the claim.”
Id. (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009)).
We agree with Moderna that substantial evidence sup-
ports the Board’s decision. Arbutus’s arguments pertain to
whether a person of ordinary skill in the art would have
reasonably understood from the disclosure in a prior art
Case: 20-1184 Document: 135 Page: 18 Filed: 12/01/2021
18 MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION
reference that every element of the claims is disclosed,
which is the “dispositive question regarding anticipation.”
See AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1055
(Fed. Cir. 2010). In evaluating that question, the Board
first considered the substantial evidence that Moderna pre-
sented that a person of ordinary skill would understand
that the mol % of each component in the L054 formulation
would result in lipid particles within the claimed ranges of
the ’435 patent, which also describes lipid particles in
terms of mol % of the formulation. Board Decision, 2019
Pat. App. LEXIS 13612, at *23. Thus, the Board turned to
Arbutus’s evidence and found that it, at best, suggested
that there would be some variation in the final composi-
tions of the lipid particles fabricated from the L054 formu-
lation. See id. at *23–24. But the Board rejected as
speculative Arbutus’s expert’s opinion that all of the parti-
cles formed from L054 formulation would fall outside the
claimed ranges. Id. at *24–27. And the Board noted that
anticipation “does not require that all of the formed parti-
cles from the L054 formulation . . . be within the claimed
ranges . . . . Anticipation merely requires that a composi-
tion within the claimed ranges be disclosed.” Id. at *28 (cit-
ing Titanium Metals Corp. v. Banner, 778 F.2d 775, 782
(Fed. Cir. 1985)).
The Board’s legal conclusions regarding the require-
ments of anticipation were correct. “When a patent claims
a range, as in this case, that range is anticipated by a prior
art reference if the reference discloses a point within the
range.” Ineos USA LLC v. Berry Plastics Corp., 783 F.3d
865, 869 (Fed. Cir. 2015) (citing Titanium Metals, 778 F.2d
at 782). Furthermore, an anticipating reference need not
show that every disclosed compound anticipates; rather it
is sufficient that it contains a disclosure of “at least one
compound which anticipates.” See In re Sasse, 629 F.2d
675, 682 (Fed. Cir. 1980). Thus, to anticipate the claims of
the ’435 patent, the question for the Board was whether the
Case: 20-1184 Document: 135 Page: 19 Filed: 12/01/2021
MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION 19
’554 publication discloses at least one composition that falls
within the claimed ranges.
The Board weighed the evidence and found, as a factual
matter, that the ’554 publication disclosed at least one com-
position that anticipates the claims. In challenging that
factual determination in this appeal, Arbutus relies on the
same evidence and argument that failed to convince the
Board that the L054 formulation does not anticipate the
completed lipid particles of the ’435 patent claims. But Ar-
butus fails to persuade us that Moderna’s evidence was in-
sufficient to allow the Board to find that the L054
formulation does anticipate. Substantial evidence sup-
ports the Board’s decision.
CONCLUSION
We have considered the parties’ remaining arguments
but we find them unpersuasive. Accordingly, we dismiss
Moderna’s appeal for lack of standing. We affirm the
Board’s final written decision that claims 1–6, 9, 12, and
14–15 are unpatentable as anticipated.
DISMISSED-IN-PART, AFFIRMED-IN-PART
COSTS
No costs.