Assignment history

Inventors

The four inventors named on the patent are:

• George M. Church: Professor of Genetics at Harvard Medical School and a Core Faculty Member at the Wyss Institute for Biologically Inspired Engineering at Harvard University.
• Je-Hyuk Lee: At the time of invention, a Postdoctoral Fellow at the Wyss Institute at Harvard University.
• Daniel Levner: At the time of invention, a Senior Staff Scientist at the Wyss Institute at Harvard University.
• Michael Super: At the time of invention, a Senior Staff Scientist at the Wyss Institute at Harvard University.

All inventors were affiliated with Harvard University, the original assignee, at the time of the invention. This represents a standard inventor-to-employer assignment pathway for university-developed technology.

Original assignee

The original assignee of record is the President and Fellows of Harvard College (commonly known as Harvard University), located in Cambridge, Massachusetts.

As a major research university, Harvard's primary business is education and research. It does not commercially manufacture or sell products. Instead, its Office of Technology Development actively licenses its intellectual property to established companies and startups to commercialize inventions developed by its faculty. The litigation history confirms that this patent was exclusively licensed to 10x Genomics, Inc., a company that sells spatial biology and genomics analysis platforms that appear to practice the patent's claims. Harvard remains an active, world-renowned educational and research institution.

Assignment timeline

A search of the USPTO Patent Assignment Database shows that title for US 11,021,737 has never been transferred from the original assignee. The ownership has remained with Harvard University since its grant. The database does, however, record other transactions related to the patent's rights.

• 2021-03-25 (executed) / recorded 2021-03-25 — Reel 058379/0421

  • Conveyance: Assignment of Assignor's Interest
  • Assignor: George M. Church, Je-Hyuk Lee, Daniel Levner, Michael Super
  • Assignee: President and Fellows of Harvard College
  • Correspondent: David A. Bello, Esq.; Rosenberg, Klein & Lee; Ellicott City, MD
  • Context: Standard confirmatory assignment of invention rights from the named inventors to their employer, Harvard University.

• 2012-09-06 (executed) / recorded 2023-10-13 — Reel 069695/0285

  • Conveyance: Confirmatory License
  • Assignor: President and Fellows of Harvard College
  • Assignee: United States of America as represented by the Secretary, Department of Health and Human Services
  • Correspondent: Richard A. Hertling; National Institutes of Health; Bethesda, MD
  • Context: A license granting the U.S. Government rights to the invention, a standard requirement for patents developed using federal research funding under the Bayh-Dole Act.

• 2023-10-06 (executed) / recorded 2023-10-16 — Reel 069726/0890 & 069726/0932

  • Conveyance: Security Agreement
  • Assignor: 10x Genomics, Inc.
  • Assignee: Royal Bank of Canada
  • Correspondent: Hylina E. Cannon; Dentons US LLP; San Diego, CA
  • Context: The exclusive licensee, 10x Genomics, pledged its license rights to this patent as part of a larger portfolio of collateral for financing. This securitization does not transfer ownership of the patent itself.

• 2024-04-30 (executed) / recorded 2024-05-02 — Reel 072554/0651

  • Conveyance: Release of Security Interest (Collateral)
  • Assignor: Royal Bank of Canada
  • Assignee: 10x Genomics, Inc.
  • Correspondent: Hylina E. Cannon; Dentons US LLP; San Diego, CA. The correspondent is the same as for the preceding Security Agreement.
  • Context: The security interest from the October 2023 financing was released, likely indicating the underlying loan was satisfied or refinanced.

Timeline diagram

timeline
    title Ownership of US 11021737
    2011 : Priority date
    2020 : Application filed
    2021 : Inventors assign rights to Harvard
         : Patent issues to Harvard
    2022 : First infringement suit filed by 10x and Harvard
    2023 : 10x Genomics pledges license as collateral
    2024 : Security interest is released

NPE / troll-pattern signals

1. Shell-entity transfer: Not present. The patent's title has remained with Harvard University, an operating educational and research institution, since its grant.

2. Known asserter in the chain: Not present. The owner is Harvard University. The party asserting the patent is 10x Genomics, the exclusive licensee, which is a major life sciences company that sells commercial products in the field of the invention.

3. Repeat correspondent across the chain: Not present. Different law firms and attorneys handled the distinct transaction types (inventor assignment, government license, commercial security agreement), which is typical. The recurrence of Hylina E. Cannon of Dentons is limited to the single securitization transaction (grant and release), which is not a signal of NPE activity.

4. Cascading transfers: Not present. There have been no transfers of title.

5. Pre-litigation transfer: Not present. No assignment of title occurred prior to the first infringement suit filed in February 2022.

6. Bankruptcy fire-sale: Not present.

7. Privateering: Not present. The patent was licensed by a university to an operating company (10x Genomics) which is now directly asserting the patent against its own competitors. This is a standard university tech-transfer and commercialization model, not a privateering arrangement.

8. Defensive aggregator (anti-NPE): Not present.

Verdict

• Operating-company assertion

The ownership chain is clean and institutional. The patent originated at Harvard University and has remained there. It is being asserted by its exclusive licensee, 10x Genomics, a significant operating company, against direct competitors in the spatial biology market. This fact pattern is the definition of a standard operating-company assertion, intended to protect market position for a commercialized product, and displays no signals associated with NPE or patent troll behavior.

Verification Link: USPTO Patent Assignment Search for Pat. No. 11,021,737