Submit to Digest

23andMe v. Ancestry: Court Finds ‘Finding Relatives in a Database’ Patent to Be Patent-Ineligible Subject Matter

Reports Patent

23andMe, Inc. v. DNA, LLC, Operations Inc., LLC, No. 18-cv-02791-EMC (N.D. Cal. Sept. 23, 2018), motion to dismiss hosted by PacerMonitor. 

With the rapid rise in popularity and availability of direct-to-consumer personal DNA testing, the landscape of service providers has swiftly expanded as the underlying technology has become increasingly accessible. As a result of this industry’s growth and internal competition, 23andMe, Inc. (“23”) brought suit against DNA, LLC, et al. (“Ancestry”) for patent infringement, misleading advertising violating federal and state laws, and a declaratory judgement against trademark infringement. Ancestry moved to dismiss all claims and, on September 23, 2018, the U.S. District Court for the Northern District of California granted in part and denied in part Ancestry’s motion to dismiss and concluded that one of 23’s patents regarding determining family members via similarities in DNA samples is patent-ineligible subject matter.

The patent at issue, ‘’554: Finding relatives in a database,’ describes a three-step technique to determine the degree of relationship between two DNA samples, by obtaining the samples, determining the degree of relatedness via a comparison test, and informing subjects about the results. The scientific concept behind ‘554 relies on ‘identical by descent’ (“IBD”) regions of DNA, which are long stretches of nearly identical genetic material in samples with shared ancestry. IBD regions form when genetic information is recombined between successive generations, with minor mutations. This phenomenon allows for the comparative length and percentage of shared DNA between two samples to determine the degree of relatedness. Such an assessment requires either sequencing the entire genome or running assays for specific markers, with a popular choice of single nucleotide polymorphisms (“SNPs”). Despite 23’s ‘554 patent including this subject, IBD region comparison and analysis is a fundamental concept in the genetics field, as is the correlation between a higher degree of similarity between DNA samples and degree of relationship.

 Ancestry’s motion to dismiss 23’s patent infringement claim maintains that ‘554’s substance is patent-ineligible, based on a Supreme Court decision stating laws of nature, natural phenomena, and abstract concepts are not to be patented. The district court applied the two-part Alice test to determine patent eligibility and found ‘554 contained patent-ineligible subject matter. The Alice test determines if the patent claims are ‘directed to’ patent-ineligible concepts and, if so, whether the claim is grounded on an ‘inventive concept,’ which ‘554 ultimately does not pass. The first portion of the test determines the key essence of ‘554, which is a law of nature. The ‘inventive concept’ portion determines if a new procedure or technique is applied to the concept, to distinguish it from purely natural phenomena. Prior courts have held that a law of nature or abstract idea can pass this test, only with the application of significant non-natural improvements or alterations. The court sided with Ancestry, finding that 23’s claims of alterations or improvements were not sufficient to move the basis of the concept away from the intrinsic nature of DNA. The court found that 23’s version of IBD analysis was neither novel nor inventive and relied on well-established concepts.  As ‘554 did not pass the Alice test and therefore contains patent-ineligible subject matter, Ancestry’s motion to dismiss patent infringement claims against was granted by the court.

Along with dismissing 23’s patent infringement claims, the court dismissed parts of 23’s claims of misleading advertisements under federal and state law but did not dismiss the request for a declaratory judgement against trademark infringement of the word ‘ancestry.’ In finding 23’s patent to include material unfit to be in a patent, the court has applied the standard that, in order for concepts rooted in natural law to be patent-eligible subject matter, a key requirement is inventive design and significant improvement to discern a unique concept or technique.