On Friday, May 11th, Mountain View, CA-based personal genetics testing company 23AndMe filed a lawsuit alleging patent infringement claims against Lehi, UT-based genealogy firm Ancestry.com. The suit, filed in the Northern District of California, targets Ancestry’s use of a DNA testing kit, which allegedly infringes upon a genetic testing patent held by 23AndMe.
The patent-in-suit in this case is U.S. Patent No. 8463554, titled Finding Relatives in a Database. Issued in June 2013, it covers a method for determining a relative relationship of people sharing a common ancestor within a threshold number of generations by obtaining recombinable DNA sequence information of first and second users which are then stored in a database including DNA sequence information from a plurality of users, determining a predicted degree of relative relationship corresponding to a number of generations within which the first and second users share a common ancestor, and notifying at least the first user about the relative relationship with the second user.
As 23AndMe notes in its lawsuit, the technology covered by the ‘554 patent improved upon prior art methods of genetic testing which relied on male Y chromosome DNA or mitochondrial DNA. While these genetic testing methods were capable of determining relationships from parents to children, either patrilineal or matrilineal, many other types of relative relationships could not be determined through these methods. The method covered by the ‘554 patent looks at DNA sequence information and not the whole genome to determine the degree of relative relationship based on the length of genome regions shared by two people; the longer the shared genome region, the closer the relative relationship between the individuals.
Ancestry.com’s infringing acts allegedly began by December 2013 when it began sales of AncestryDNA genetic testing kits. The kit includes a saliva collection tube which is filled by a user and sent to a lab for chromosomal analysis which identifies long chromosome segments shared by pairs of individuals that suggest recent common ancestry. The identification of DNA sequences suggesting inheritance by descent is covered by claims of the ‘554 patent.
23AndMe’s lawsuit includes six causes of actions including counts of patent infringement and misleading representations in violation of the Lanham Act. These representations have been made in advertisements marketing the AncestryDNA kit which allegedly mislead consumers into believing that Ancestry.com’s test kit is much more effective than 23AndMe’s kit, including unsubstantiated claims that the AncestryDNA kit provide “5x more detail than other tests.”
This lawsuit also pushes back against trademark infringement claims which had previously been made by Ancestry.com regarding 23AndMe’s use of the word “ancestry” in the company’s advertising and products. 23AndMe alleges that its use of the wordmark, which is covered by a federal trademark registered by Ancestry.com, is a non-trademark use that doesn’t deceive the public, is protected by the fair use doctrine and was unlikely to cause confusion. 23AndMe is also seeking cancellation of Ancestry.com’s mark, alleging that the wordmark has become generic for genetic testing and genealogical research services.