DCT
2:20-cv-00514
DatRec v. MyHeritage USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DatRec, LLC (Texas)
- Defendant: MyHeritage (USA), Inc.; and MYHERITAGE LTD CORPORATION (Utah)
- Plaintiff’s Counsel: Ramey & Schwaller, LLP
- Case Identification: 2:20-cv-00514, D. Utah, 07/17/2020
- Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendant has a regular and established place of business in the district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s online genealogy platform, MyHeritage.com, infringes three patents related to creating and managing verified personal databases, enabling secure communication based on verified identity, and merging computerized family trees.
- Technical Context: The technology at issue operates in the digital genealogy and personal data management sector, a market characterized by large-scale, user-contributed databases for family history research and health information tracking.
- Key Procedural History: The complaint does not mention any significant procedural events such as prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-02 | Earliest Priority Date for ’198 Patent |
| 2006-12-07 | Earliest Priority Date for ’309 Patent |
| 2007-07-18 | Earliest Priority Date for ’158 Patent |
| 2012-04-10 | ’158 Patent Issued |
| 2013-02-19 | ’309 Patent Issued |
| 2015-03-24 | ’198 Patent Issued |
| 2020-07-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,156,158 - "Method and System for Use of a Database of Personal Data Records"
The Invention Explained
- Problem Addressed: The patent's background section highlights the difficulty of verifying the identity of individuals communicating over the Internet and the challenge of efficiently associating an individual with relevant virtual communities based on shared interests or family relationships (Compl. ¶9; ’158 Patent, col. 2:28-38).
- The Patented Solution: The invention proposes a method to construct a "verified database" of individuals. The system permits multiple users to input "individual-associated data bits" (IDBs) about themselves and their relatives. These IDBs are then processed by the system to generate more reliable "individual-identifier data sets" (IDSs), which form the verified database. This database can then be processed to create sub-groups for specific applications, such as providing personalized medicine services to individuals sharing a particular medical condition (’158 Patent, Abstract; col. 3:1-6). The process flow is illustrated in Figure 1 of the patent, showing the progression from obtaining IDBs to generating a database and forming a virtual community (’158 Patent, Fig. 1).
- Technical Importance: The technology sought to enhance the reliability and utility of large-scale, user-contributed personal databases, making them suitable for applications like personalized medicine where data accuracy is a critical factor (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-23 (Compl. ¶10).
- Independent Claim 1 requires:
- providing a verified database of a plurality of identified individuals, the verified database comprising a plurality of individual-identifier data sets (IDSs) and relationship data;
- processing said verified database in accordance with one or more parameters or conditions selected in accordance with at least one medical application and creating a sub-group database including data records of the individuals from the verified database having said one or more selected parameters or conditions,
- thereby allowing collection of data and delivery of at least part of the collected data to one or more users and enabling the application of data from the verified database to provide a personalized medicine service to at least one of said identified individuals.
- The complaint reserves the right to assert claims 2-23 (Compl. ¶10).
U.S. Patent No. 8,381,309 - "Methods and Systems for Secure Communication Over a Public Network"
The Invention Explained
- Problem Addressed: The patent identifies a need for secure communication channels over public networks where there is a high level of confidence in the identity of the communicating parties (’309 Patent, col. 1:47-49).
- The Patented Solution: The invention describes a system for enabling communication based on authenticated identities. The system creates a database of verified data by comparing information about an individual entered by a "plurality of related individuals." Based on this verification, the system determines a "level of reliability in authenticity" and is then configured to define "one or more levels of permitted communication" between users (’309 Patent, Abstract; col. 2:36-40).
- Technical Importance: This technology provides a framework for establishing trust in online interactions, allowing users to control communication permissions based on system-verified identities rather than self-proclaimed profiles (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts independent claim 9 and dependent claims 1-8 and 10-17 (Compl. ¶17).
- Independent System Claim 9 requires:
- a server system associated with a database comprising verified data relating an individual, said server system being configured and operable to verify at least some of the data so as to authenticate an identity of the individual;
- determining a level of reliability in authenticity based on correspondence between data on said individual entered by a plurality of related individuals; and
- the system being configured to define one or more levels of permitted communication between individuals in the database and the verified individual on the basis of said verification.
- The complaint reserves the right to assert claims 1-17 (Compl. ¶17).
U.S. Patent No. 8,990,198 - "Method and system for computerized management of related data records"
Technology Synopsis
The patent describes a method for the automatic computerized identification and merging of family trees stored in one or more databases. The method involves directing a computer to find matching "nodes" (individuals) between trees based on weighted data items and then determining if two trees are "mergeable" by checking if the number of matching nodes and connecting links exceeds a predetermined threshold (Compl. ¶25, p. 18, 20).
Asserted Claims
Claims 1-18 (Compl. ¶24).
Accused Features
The complaint accuses MyHeritage's "Family Tree Builder" software, which allows users to merge two family tree projects through an "Import GEDCOM process" (Compl. ¶25, p. 19-20).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the website www.MyHeritage.com and its associated services and software (Compl. ¶10, 17, 24).
Functionality and Market Context
- The complaint alleges that MyHeritage operates a genealogy platform where users can build family trees, which the system then compares using its "Smart Matching™" technology to find connections between different user-created trees (Compl. ¶11, p. 5).
- The platform also includes a "Health Family Tree" feature, allowing users to add medical condition information to individuals in their tree (Compl. ¶11, p. 7).
- Communication features are also accused, including "Search Connect™," which allows users to find and contact others searching for the same ancestors, and "Contacting DNA Matches," which enables messaging between users based on DNA test results (Compl. ¶18, p. 12, 15).
- The complaint also identifies the "Family Tree Builder" software, which provides a function to merge family tree projects (Compl. ¶25, p. 19).
IV. Analysis of Infringement Allegations
8,156,158 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a verified database of a plurality of identified individuals, the verified database comprising a plurality of individual-identifier data sets (IDSs) and relationship data; | MyHeritage provides its "Smart Matching™" technology, which compares names, facts, and connections across millions of user-created family trees to find intersections and indicate highly accurate matches. | ¶11, p. 5-6 | col. 3:1-6 |
| processing said verified database in accordance with one or more parameters or conditions selected in accordance with at least one medical application and creating a sub-group database... | MyHeritage's "Health Family Tree" feature allows users to assign medical conditions (e.g., Cancers, Heart conditions) to individuals in their family tree, which allegedly constitutes processing the database for a medical application. | ¶11, p. 7-8 | col. 3:7-14 |
| thereby allowing collection of data... and enable to apply data from said verified database to provide personalized medicine service to at least one of said identified individuals; | The complaint alleges that assigning a condition allows for the collection of data and enables MyHeritage to provide a personalized medicine service. The complaint provides a screenshot showing the user interface for assigning a medical condition to an individual in a "Health Family Tree" (Compl. ¶11, p. 7). | ¶11, p. 8 | col. 4:1-5 |
Identified Points of Contention
- Scope Questions: Does the term "verified database" as described in the ’158 Patent, which involves a specific process of creating reliable Individual-Identifier Data Sets (IDSs) from raw data bits (IDBs), read on a collection of user-contributed family trees that are cross-referenced via "Smart Matching™"? The nature and rigor of the "verification" process will be a central question.
- Technical Questions: Does a user tagging an individual with a pre-defined medical condition in the "Health Family Tree" constitute the claimed step of "creating a sub-group database"? The dispute may turn on whether this action creates a new, distinct database structure or is merely a filtering or data-tagging operation within the existing database.
8,381,309 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a server system associated with a database comprising verified data... said server system being configured and operable to verify at least some of the data so as to authenticate an identity of the individual; | The "Search Connect™" feature is alleged to be a server system associated with a database of "millions of searches made by MyHeritage members," which allows users to find others searching for the same people. | ¶18, p. 12-13 | col. 2:27-35 |
| determining a level of reliability in authenticity based on correspondence between data on said individual entered by a plurality of related individuals; | The complaint alleges that when "Search Connect™" provides "basic information about the MyHeritage member who made the search (first name initial and last name, gender, country)," it is determining a level of reliability. | ¶18, p. 14 | col. 2:36-40 |
| the system being configured to define one or more levels of permitted communication between individuals in the database and the verified individual on the basis of said verification. | MyHeritage's "Contacting DNA Matches" feature, which allows a user to "click on the 'Contact' button for any DNA Match to send a message," is alleged to define a level of permitted communication based on verification. The complaint includes a screenshot from a MyHeritage blog post announcing this feature (Compl. ¶18, p. 15). | ¶18, p. 15 | col. 2:41-45 |
Identified Points of Contention
- Scope Questions: Can the claim limitation "determining a level of reliability... based on correspondence between data... entered by a plurality of related individuals" be met by functionality that, according to the complaint's own evidence, displays basic information about a single member who performed a search?
- Technical Questions: What evidence does the complaint provide that the accused system performs an active "verification" to "authenticate an identity" as required by the claim, rather than merely presenting user-provided search data to other users? The distinction between presenting data and verifying it will likely be a key issue.
V. Key Claim Terms for Construction
Patent: U.S. 8,156,158
- The Term: "verified database"
- Context and Importance: This term is foundational to claim 1 of the ’158 Patent. The definition will determine whether MyHeritage's aggregation of user-submitted family trees, cross-referenced by its "Smart Matching™" algorithm, meets the claim's threshold requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that verification can "serve as an indirect measure of verification of data bits that were not verified by the IDBs of one or more other individuals," which may support an argument that cross-referencing user data, as alleged with Smart Matching™, constitutes verification (’158 Patent, col. 12:1-5).
- Evidence for a Narrower Interpretation: The patent describes a structured process where raw "individual-associated data bits" (IDBs) are processed to "generate the IDS" and construct the database, and where a "reliability score" can be ascribed based on the extent of data verification (’158 Patent, col. 3:1-6; col. 12:6-14). This may support a narrower construction requiring a more formal, system-driven process of data validation and scoring beyond simple matching.
Patent: U.S. 8,381,309
- The Term: "determining a level of reliability in authenticity based on correspondence between data on said individual entered by a plurality of related individuals"
- Context and Importance: This limitation is a central element of claim 9 of the ’309 Patent. The infringement case for this patent may depend entirely on whether the accused "Search Connect" feature performs this specific function. Practitioners may focus on this term because the complaint's supporting evidence appears to describe a different function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification generally discusses improving confidence in a user's identity through verification, which could be argued to be the overall goal of a system that connects people searching for common ancestors (’309 Patent, col. 1:63-65).
- Evidence for a Narrower Interpretation: The claim language is highly specific, requiring a determination of reliability based on "correspondence" of data entered by "a plurality of related individuals" about a single subject individual. The patent abstract and general description emphasize verification through data provided by multiple users (’309 Patent, Abstract). The complaint’s evidence for this element shows information about the searching user, not a comparison of data about a single individual from multiple sources (Compl. ¶18, p. 14).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents-in-suit. The basis for these claims is the allegation that MyHeritage "actively encouraged or instructed others (e.g., its customers...)" on how to use its products and services in an infringing manner (Compl. ¶12-13, 19-20, 26-27).
- Willful Infringement: The complaint alleges that MyHeritage has had knowledge of the patents-in-suit and the underlying technology "from at least the date of issuance of the patent." Based on this alleged pre-suit knowledge, the plaintiff seeks a finding of willful infringement and requests treble damages (Compl. ¶12, 19, 26; Prayer for Relief ¶e).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "verified database," which the ’158 patent specification links to a structured process of generating reliable data sets (IDSs) from raw inputs (IDBs), be construed to cover a large-scale aggregation of user-contributed content that is cross-referenced by a matching algorithm?
- A second central question will be one of evidentiary sufficiency: does the accused platform’s functionality for connecting users searching for common ancestors perform the specific function of "determining a level of reliability... based on correspondence between data... entered by a plurality of related individuals" as required by Claim 9 of the ’309 Patent? The case may turn on whether the plaintiff can demonstrate a technical match beyond the general concept of connecting users.