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8 November 2019GeneticsSaman Javed

23andMe petitions Fed Circuit for en banc review

DNA testing and analysis company 23andMe has asked the full US Court of Appeals for the Federal Circuit to review an earlier panel decision which held that one of its patents is invalid.

In its petition, filed Monday November 4, 23andMe said the panel’s use of a summary affirmance mechanism “confirms the need for the en banc court’s review as the egregious errors in the district court’s opinion cannot go uncorrected”.

In May 2018, 23andMe sued its competitor, Ancestry.com, for infringement of the disputed patent (US number 8,463,554).

But in August 2018, the US District Court for the Northern District of California ruled the claims of the patent as ineligible because they do not cover an “invention or unconventional technique”.

On October 4, in a panel decision, the US Court of Appeals for the Federal Circuit summarily affirmed the district court’s decision.

The ‘554 patent covers a method for relatives to find each other in a large database. It does this by finding and applying DNA information of the database users to identify and estimate the chromosomal DNA segments that may be from a common ancestor. It then uses that data to predict if, and how closely, the two users are related.

In its decision, the district court held that the claims of the ‘554 patent were invalid under the Alice test because the steps are “directed to a law of nature”.

The two-part test originates from a US Supreme Court ruling in Alice Corp v CLS Bank. In order for a patent to be protectable, its claims must be directed to a patent-eligible concept and not an abstract idea, such as laws of nature or mathematical processes.

The district court said the focus of the claims is a correlation that exists in nature—i.e. the more recombinable DNA information that is shared between two people, the closer the degree of relationship.

Additionally, under Alice step 2, the only “unconventional feature is the requirement that specific DNA information be compared, which simply restates the correlation that exists in nature,” the court said.

But 23andMe said the steps are new and unconventional because the patent uses a calculation tool to predict the degree of relationship between two people, and that the district court had erred by not separately addressing the “multiple and unique limitations” of claim 12 and 7 of the ‘554 patent.

“If the district court’s ruling is permitted to stand, it may well serve as a death knell for the patent eligibility of DNA-based method claims that employ unconventional and new techniques,” it said.

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11 July 2019   The US Court of Appeals for the Federal Circuit yesterday, July 10, handed victory to researchers at the Chinese University of Hong Kong in a case involving a foetal testing patent.