23andMe Files Lawsuit Against Ancestry.com for False Advertising and Patent Infringement

+15 votes
1.1k views

As if the month of May hasn't already been busy enough with GDPR shaking things up in the genetic genealogy world, today 23andMe slapped Ancestry.com with a lawsuit filed in California federal court. The suit looks for, among other things, payment for damages and invalidation of the "Ancestry" trademark. The article at Law360 says, in part:

"The suit accuses the Utah-based Ancestry.com of infringing its patent since 2013 by selling AncestryDNA kits that identify a person's relatives who share parts of their DNA. 23andMe also claims that Ancestry.com has been misleading customers by running a 'perpetual sale' and by falsely claiming in ads that it tests five times more regions than its rivals."

 

The article about the action makes for very interesting--if in places somewhat head-shaking--reading. The U.S. Patent in play is number 8,463,554, titled "Finding Relatives in a Database," issued 11 June 2013. The abstract for the patent reads:

"Determining relative relationship includes receiving recombinable deoxyribonucleic acid (DNA) information of a first user and recombinable DNA information of a second user, determining, based at least in part on the recombinable DNA information of the first user and recombinable DNA information of the second user, a predicted degree of relationship between the first user and the second user, and in the event that the expected degree of relationship between the first user and the second user at least meets the threshold, notifying at least the first user about a relative relationship with the second user."

 

Uh...

Regardless, the suit is now filed and in the works. Will be something else for the genetic genealogy community to watch....

HT: CeCe Moore, https://www.facebook.com/cecemoore1. Thanks, CeCe!

in The Tree House by Edison Williams G2G6 Pilot (207k points)

Update: This week, Ancestry.com responded to the lawsuit from 23andMe by filing a motion to dismiss with a California federal court. The filing indicated the 23andMe patent consisted of "abstract and non-inventive steps" of collecting two DNA samples and then comparing them to find a correlation based on phenomena that occur naturally.

The dismissal motion references two Supreme Court precedent rulings, one of which JN Murphy correctly guessed (below). This one is Alice Corp. versus CLS Bank International (2014) and is the "do it on a computer" argument. It had to do with an electronic escrow service for financial transactions, but rather than specifics of the computer-based service, the patent dealt with the idea behind the service, which evidently wasn't any more remarkable in concept than doing it with a paper ledger.

SCOTUS was unanimous in their opinion, written by Justice Clarence Thomas, that an abstract idea could not be patented just because it is implemented on a computer. Escrow is not an invention, and simply using a computer to manage it doesn't make it eligible for patent protection.

The second cited precedent is more interesting, and one I didn't see coming. This one is the March 2012 Supreme Court decision in the case of Mayo Collaborative Services (Mayo Clinic Medical Services) versus Prometheus Laboratories, Inc. This one involved a class of drugs used in treating certain autoimmune diseases. The drugs are metabolized differently by different people, so there's no one "correct" dosage. A Montreal hospital identified the threshold level, and filed patents to use that threshold as the start of steps to determine the most effective dosage for a patient. Prometheus Labs owned the patent, and up until 2004 the Mayo Clinic bought and used their "kits" for treatment. In June 2004 Mayo started offering its own diagnostic tests for the drug therapies, and Prometheus sued.

SCOTUS ruled unanimously that giving a drug to a patient, measuring the naturally-produced metabolites resulting from doing so, and then deciding whether to increase or decrease the dosage of the drug was not patentable subject matter. Justice Breyer wrote: "Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law."

Taking the two precedents cited by Ancestry, it seems their platform is that neither natural phenomena nor abstract ideas are patentable unless there is a new, additional, inventive concept involved. In other words, escrow had been done for decades before the first computer, and physicians had long adjusted drug dosages based on patient response. Ergo, with patience, you could write down the allele values resulting from the DNA tests of two individuals and compare them manually, side-by-side, for relatedness. To remind: 23andMe's infringement suit wasn't about patented testing technologies; it was about comparing DNA SNP information of two people using data stored in a database.

Maybe we'll end up with the "do it on a computer" argument, and the "DNA is DNA" argument.

Ancestry also claimed the false-advertising lawsuit--filed simultaneously but separately by 23andMe--was invalid because 23andMe is a competitor, not a customer who made decisions or purchases based on such claims. In the motion, Ancestry's attorneys write: "Not only does 23andMe fail to allege any facts establishing actual reliance on Ancestry's allegedly false and/or misleading statements, but the relief that 23andMe seeks is prohibited by well-established precedent." An allegation was that Ancestry runs "perpetual sale" by never selling the purported $99 test for $99.

Another point of contention that, to me, Ancestry deflects less well is the claim that it tests "5x more regions than other DNA tests." In this week's motion, Ancestry responds that the statement is a general one, not singling out or pointing to 23andMe. The motion also notes that 23andMe doesn't establish how many "regions" Ancestry tests in comparison to other competitors.

In its May filing, 23andMe had also claimed the "Ancestry" trademark was invalid because it is too generic. Evidently Ancestry responded to this as well, but the argument is redacted in publicly available documents.

This will no doubt drag on for many months unless one party blinks and decides to settle. But some of the issues involved are fundamental to our very notion of genetic genealogy, and worth watching for future developments.

See also: "23andMe DNA Patent Invalid Under Mayo, Ancestry.com Says," by Dani Kass; Law360.com, a LexisNexis Company.

If, like me, you're getting a bit nerdy about this case and want to follow it (to see how it might affect, longterm, our genetic genealogy community), I captured the motion to dismiss (by Ancestry) in this Case No. 3:18-cv-02791-EMC as submitted to, and subsequently released publicly by, the U.S. District Court for the Northern District of California, San Francisco Division.

I found it at a temporary storage location, so I've made it available at this permalink (PDF document). Even if you aren't particularly interested in the details, its 35 pages can really help when you have one of those nights where you just can't fall asleep....  smiley

3 Answers

+4 votes
I'm grateful for Ancestry.com. Their auDNA has helped me confirm several branches in my tree. That doesn't mean I don't have some disagreements with them, but overall I've been very pleased.
by James Stratman G2G6 Mach 7 (75.7k points)
+6 votes

Relating to the patent, I'm curious whether it could get struck down since it sounds (from a quick and superficial skim) like a “do it on a computer” patent, which US courts have recently acted to limit. For a good overview, there's an article that I read a few years ago on Ars Technica: Supreme Court smashes “do it on a computer” patents in 9-0 opinion. Worth reading to pick apart how this might impact 23andMe's patent. 

by JN Murphy G2G6 Mach 8 (83.1k points)
And at the end it says "the invention is not limited to the details provided. There are many alternative ways of implementing the invention."  So they think they own autosomal GG entirely?

I'm a little fuzzy on the exact details of 23andMe's patent and what it is supposed to cover that wasn't already prior art. Given the long history of (A) Family Tree DNA and GEDmatch, (B) forensic (and other) DNA databases, and (C) genetic science in general, it seems that this should be broadly covered by prior art. 

And the problem isn't what 23andMe thinks, but rather what the patent office and the judge (or jury) in this case think. 

If you look through the patent information, you'll see that it was originally filed 31 Dec 2008 and published for review/comment 2 Sep 2010. Warning: if you try to read the entire "Claims" section of patent 8,463,554, be sure to have a pile of naproxen sodium tablets handy to munch on...you will get a headache.

I absolutely positively do not understand what is going on with this lawsuit. The timing seems odd and, while I'm no intellectual property attorney, it's difficult for my small brain to fathom how 23andMe thinks this will be successful in anything resembling the seeming scope of the suit. Are they really hoping only for some small, specific concession from Ancestry in order to avoid the hassle of fighting the suit and/or counter-suing? I've added it to my Google News alert list, though, just to follow along.

Shaking my head as I read future and probably long-term updates about this is likely to be good exercise for my sternocleidomastoid muscle....

I suppose there's no point in having a patent and making no attempt to collect on it.  If it gets struck out, they only lose the costs.  If by some miracle it doesn't, they win big time.

If this goes to the US's higher courts, I'm sure that there will be numerous intervenors and amicus curiae briefs filed. 

+2 votes
Sounds to me like corporate game-playing. Yes, "23" may be seeing what they can get away with in the courts, but they've ALREADY gotten what they really expected from this - press coverage that smears the competition.

Notice that "23" isn't attacking the ethnicity percentages for the snake oil that they are - because THEY do it too!
by Frank Stanley G2G6 Mach 5 (51.1k points)

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