ARBUTUS BIOPHARMA CORPORATION
`and GENEVANT SCIENCES GMBH,
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiffs,
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`MODERNA, INC. and MODERNATX, INC.,
`
`
`
`
`
`
`
`ORDER
`
`AND NOW, this 8th day of March, 2023, upon consideration of the Motion to Intervene filed by
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`CIVIL ACTION
`
`NO. 22-252
`
`Case 1:22-cv-00252-MSG Document 63 Filed 03/08/23 Page 1 of 3 PageID #: 1317
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`Emanuel McCray (D.I. 60), I find the following:
`
`1. On March 2, 2023, McCray filed a Motion to Intervene in this matter along with a proposed
`
`class action complaint. The proposed complaint seeks “a declaration that Moderna’s failure to
`
`procure a contract for production” of its COVID-19 vaccines before infringing Plaintiffs’ patents
`
`“precludes and prevents Moderna and the United States from shifting Moderna’s liabilities for
`
`infringing Plaintiffs’ patents to the United States.” (D.I. 60-1 ¶ 94.)
`
`2. Federal Rule of Civil Procedure 24 sets forth the standard for intervention. The Rule provides,
`
`in pertinent part:
`
`(a) Intervention of Right. On timely motion, the court must permit
`anyone to intervene who:
`. . .
`(2) claims an interest relating to the property or transaction that is the
`subject of the action, and is so situated that disposing of the action
`may as a practical matter impair or impede the movant’s ability to
`protect its interest, unless existing parties adequately represent that
`interest.
`. . .
`(b) Permissive Intervention.
`
`(1) In General. On timely motion, the court may permit anyone to
`intervene who:
`. . .
`
`

`

`Case 1:22-cv-00252-MSG Document 63 Filed 03/08/23 Page 2 of 3 PageID #: 1318
`
`(B) has a claim or defense that shares with the main action a
`common question of law or fact.
`
`Fed. R. Civ. P. 24.
`
`3. To intervene as of right under Federal Rule of Civil Procedure 24(a), a party must show “(1) a
`
`sufficient interest in the litigation; (2) ‘a threat that the interest will be impaired or affected, as a
`
`practical matter, by the disposition of the action’; and (3) that its interest is not adequately
`
`represented by the existing parties to the litigation.” Commonwealth of Pa. v. President United
`
`States of America, 888 F.3d 52, 57 (3d Cir. 2018) (emphasis added) (quotation omitted).
`
`4. McCray fails to establish either the first or the second element. McCray’s allegations against
`
`Defendants generally contend that the vaccines were released to the public with known serious
`
`health risks. (D.I. 60-1 ¶¶ 34, 57, 67.) He seeks intervention both as of right and permissively
`
`“solely to challenge Moderna’s attempt to shift liability for its . . . vaccines to the United States.”
`
`(D.I. 60 at p. 3.) More specifically, the proposed Intervenor Complaint seeks “a narrow
`
`declaration that Contract No. W911QY-20-C-0100 (the ’-0100 Contract) and 28 U.S.C. § 1498
`
`are unavailable for use by the United States to shift Moderna’s liability to the People of the
`
`United States for its infringements of Plaintiffs’ patents and Moderna’s liability for the safety
`
`and efficacy of the vaccine products made from these infringements.” (D.I. 60-1 ¶ 6.)
`
`5. To the extent McCray seeks to challenge the use of § 1498 in the underlying patent litigation,
`
`McCray is not the patentee and, therefore, does not have standing to challenge Defendants’
`
`efforts to use § 1498 and shift patent infringement liability to the United States. See 35 U.S.C.
`
`§ 281 (noting that a civil action for patent infringement may be brought only by a “patentee.”);
`
`see also 35 U.S.C. § 100(d) (defining “patentee” as “not only the patentee to whom the patent
`
`was issued but also the successors in title to the patentee.”).
`
`6. To the extent McCray is concerned that Defendants’ reliance on 28 U.S.C. § 1498 in the
`
`underlying case will preclude him from obtaining tort liability against Defendants in a separate
`
`
`
`2
`
`

`

`Case 1:22-cv-00252-MSG Document 63 Filed 03/08/23 Page 3 of 3 PageID #: 1319
`
`suit, his concerns are unfounded. Section 1498 pertains only to patent and copyright cases. See
`
`Richmond Screw Anchor Co. v. United States, 275 U.S. 331, 345 (1928) (noting that the
`
`“intention and purpose of Congress” in enacting this statute was “to stimulate contractors to
`
`furnish what was needed” by the government, “without fear of becoming liable themselves for
`
`infringements to inventors or the owners or assignees of patents.”). As such, even if Defendants
`
`are ultimately successful in having part of the current patent litigation transferred to the Court
`
`of Federal Claims, there will be no impact on McCray’s tort claims against Defendants in another
`
`jurisdiction.
`
`7. Likewise, I do not find that McCray is entitled to permissive intervention under Rule 24(b).
`
`Permissive intervention is discretionary and may be given to any party who “(A) is given a
`
`conditional right to intervene by a federal statute; or (B) has a claim or defense that shares with
`
`the main action a common question of law or fact.” Fed. R. Civ. P. 24(b)(1); see also United
`
`States v. Territory of Virgin Islands, 748 F.3d 514, 524 (3d Cir. 2014). The United States Court
`
`of Appeals for the Third Circuit has previously upheld the denial of permissive intervention for
`
`the same reasons that a district court denied a motion for intervention by right. See id. at
`
`524; Brody By & Through Sugzdinis v. Spang, 957 F.2d 1108, 1124 (3d Cir. 1992)
`
`(“[I]f intervention as of right is not available, the same reasoning would indicate that it would
`
`not be an abuse of discretion to deny permissive intervention as well.”).
`
`8. Because McCray has not asserted a claim or defense that shares a common question of law or
`
`fact with the main action, I will also deny permissive intervention.
`
`WHEREFORE, Emanuel McCray’s Motion to Intervene (Doc. No. 60) is DENIED.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY THE COURT:
`
` /s/ Mitchell S. Goldberg
`MITCHELL S. GOLDBERG, J.
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`