Trustees of the University of Pennsylvania v. BioNTech Civ. No., 2:24-cv-3801 (E.D. Penn.)
Robins Kaplan represented the University of Pennsylvania in an action in Federal District Court in Philadelphia against BioNTech for royalty payments related to a license for the use of mRNA patents, notably used in the development of the blockbuster COVID-19 vaccine Comirnaty®, that arose from the Nobel-Prize-winning research of Drs. Drew Weismann and Kaitlin Kariko at Penn. Robins Kaplan filed a complaint asserting Penn’s claim for underpayment of royalties from global net sales of the vaccine in the Federal District Court in Philadelphia. As described by BioNTech in its SEC filing announcing resolution of the dispute, “On December 23, 2024, [BioNTech] entered into a binding term sheet (the “Term Sheet”) with The University of Pennsylvania (“Penn”) to provide terms on which the Company would retain license rights under certain Penn patent rights in order to allow it to continue to pursue development and commercialization of Licensed Products (as defined in the Patent Sublicense Agreement entered into between the Company and Cellscript LLC as of July 19, 2017 (the “PSA”)).
On March 27, 2025, the Company and Penn entered into a series of agreements pursuant to the Term Sheet, including (i) a Settlement Agreement, pursuant to which the Company shall, among other things, pay up to $467.0 million to Penn, as previously disclosed, consisting of $400.0 million as royalties for calendar years 2020-2023, up to $15.0 million in funding for a three-year extension of the research term of the Company’s and Penn’s vaccine alliance, and $52.0 million as a contribution to a research and development investment fund (the “Fund”) to be jointly managed by the Company and Penn; and (ii) a side letter to the PSA to provide for a low single-digit percentage royalty on Net Sales of Licensed Products (each as defined in the PSA) for 2024 onwards and provide a framework for a license for use in combination products which would include the COVID-19 vaccine used in combination with other active pharmaceutical ingredients. The Company and Penn have also aligned on principal terms on which the Fund will be established and managed.”
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