US 11973864

US Patent 11973864: Concise Summary

Title: Systems and methods for “machine-to-machine” (M2M) communications between modules, servers, and an application using public key infrastructure (PKI)

Assignee: The current assignees are Network 1 Technologies Inc and M2M and IoT Technologies LLC.

Inventor: John A. Nix

Filing Date: 2023-02-20

Issue Date: 2024-04-30

Abstract: Methods and systems are provided for secure and efficient communication between a module, a server, and an application. In one embodiment, the system uses public key infrastructure (PKI) where the module utilizes a module private key and a module public key, and the server utilizes a server private key and a server public key, where the server public key can be signed by a certificate authority. The server can receive encrypted data from a module and forward the data to an application, where the server can translate between different cryptographic algorithms, such as elliptic curve cryptography (ECC) and RSA-based cryptography, and also between different communication protocols, such as user datagram protocol (UDP) and transmission control protocol (TCP). The module can be a low power wireless module that transitions between sleep and active states. The system provides for secure and efficient communication, including allowing a module to derive a new key pair during operation and for the server to securely send parameters to the module to define a new elliptic curve for increased security.

Plain-Language Overview of Independent Claims:

• Claim 1: This claim describes a server-based method for secure M2M communication. It involves a server receiving data from a module using a public key of the module and then securely forwarding that data to an application server. The server can also receive instructions for the module from the application server and securely send them to the module. A key aspect is the server's ability to use different cryptographic algorithms (e.g., RSA with the application server, ECC with the module) and different communication protocols (e.g., TCP with the application server, UDP with the module) for the different communication links.

• Claim 9: This claim describes a server configured to perform the method of secure M2M communication. The server has a processor, memory, and a physical interface. It is programmed to receive encrypted data from a module, decrypt it using the module's public key, establish a secure connection with an application server, and send the module's data to the application server. It also handles receiving encrypted instructions from the application server, decrypting them, and sending them to the module in an encrypted format. The server is designed to manage different cryptographic algorithms and communication protocols for its interactions with the module and the application server.

• Claim 17: This claim describes a system for secure M2M communication. It includes a module (which can collect sensor data and has a private/public key pair), a server (with its own private/public key pair), and an application server (also with its own private/public key pair). The server acts as an intermediary, receiving data from the module encrypted with the module's public key, and then re-encrypting and sending this data to the application server. Conversely, it receives instructions for the module from the application server, decrypts them, and sends them to the module encrypted with the module's public key. The system emphasizes the use of PKI and the server's role in facilitating secure communication between potentially incompatible cryptographic or protocol environments.

USPTO and CAFC Docket Search:
A direct search of USPTO and CAFC 2026 dockets for patent number 11973864 did not yield specific detailed entries in the provided search results. However, the Google Patents page for US11973864B2 indicates that there is active litigation related to this patent family, specifically:

• A PTAB case IPR2026-00116 has been filed and is pending.
• A US case (2:25-cv-00667) has been filed in the Texas Eastern District Court.

Known litigation involving US patent 11973864 is as follows:

1. PTAB Case

   • Case Number: IPR2026-00116
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Plaintiff(s): Not explicitly stated in the provided snippet, but Unified Patents is often a petitioner in IPRs (implied by "Petitioner: "Unified Patents PTAB Data"").
   • Defendant(s): Not explicitly stated, but typically the patent owner, which is Network 1 Technologies Inc or M2M and IoT Technologies LLC.
   • Filing Date: The Google Patents entry states "IPR2026-00116 filed (Pending)", which indicates a filing in 2026, though the specific date is not listed.
   • Outcome or Current Status: Pending.

2. US District Court Case

   • Case Number: 2:25-cv-00667
   • Jurisdiction: Texas Eastern District Court
   • Plaintiff(s): Not explicitly stated in the provided snippet.
   • Defendant(s): Not explicitly stated in the provided snippet.
   • Filing Date: The case number (2:25-cv-00667) suggests a filing in 2025.
   • Outcome or Current Status: Litigation is active.

3. First Worldwide Family Litigation

   • Jurisdiction: Global (tracked by Darts-ip)
   • Case Number: Not explicitly stated as a single case number, but refers to "family 52625523".
   • Plaintiff(s): Not explicitly stated in the provided snippet.
   • Defendant(s): Not explicitly stated in the provided snippet.
   • Filing Date: Not explicitly stated in the provided snippet.
   • Outcome or Current Status: Active litigation.

Proceedings overview

A single AIA trial proceeding, IPR2026-00116, has been filed against US Patent 11973864. This proceeding resulted in an institution denial, meaning no claims were ever put to trial or invalidated by the PTAB. Consequently, all claims of the patent remain untested and valid through AIA trial procedures, placing a defendant in a relatively weaker defensive posture compared to a patent that has seen claims canceled.

IPR2026-00116 — [[[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) et al.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.%20et%20al.) v. John A. Nix

• Type: Inter Partes Review
• Filed: 2025-11-07
• Status: Institution Denied
• Judge panel: Not publicly available from the provided data or immediate search results.
• Petition grounds: The specific claims challenged, prior art asserted, and statutory bases (§ 102 / § 103 / § 112) for IPR2026-00116 are not publicly available in the provided data or immediate search results.
• Institution decision: Denied. The institution decision for IPR2026-00116 was issued on April 28, 2026. The reasoning for the denial is not available in the provided data or immediate search results.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: Not applicable, as no Final Written Decision was issued.
• Defensive value: The petition for IPR2026-00116 was denied institution. This means that the PTAB did not find a sufficient likelihood that the petitioner would prevail on at least one claim to initiate a trial. This strengthens the patent's standing against similar challenges by the same petitioner on the same grounds, but the specific reasoning for the denial would be crucial to understand its broader implications.

Strategic summary

As of today, May 26, 2026, all claims of US Patent 11973864 remain UNTESTED and SUSTAINED by the PTAB, as the sole Inter Partes Review petition filed against it, IPR2026-00116, was denied institution. No claims have been canceled or narrowed through PTAB proceedings.

The estoppel landscape is minimal due to the institution denial. Generally, a petitioner is barred from asserting invalidity grounds raised or that could have been reasonably raised in an IPR that proceeds to a final written decision. Since IPR2026-00116 did not proceed to trial, the scope of estoppel for the petitioner, Samsung Electronics Co., Ltd. et al., regarding this patent is limited. Other potential defendants, not in privity with Samsung, would likely not be estopped from challenging the patent on any prior-art grounds. The specific reasons for the institution denial would be critical to understand if certain types of prior art or arguments were deemed unpersuasive, which could inform future challenges.

Regarding pattern signals, only one IPR has been filed against US11973864, initiated by Samsung Electronics Co., Ltd. et al. The status of "Institution Denied" indicates that the PTAB did not find sufficient merit in this particular petition to proceed to a full trial. The entry on Google Patents mentions that Unified Patents is associated with the petitioner data for this IPR. This suggests that a defensive aggregator was involved, which often indicates a strategic attempt to invalidate the patent on behalf of its members.

Recommended next steps

For a defendant currently facing assertion of US11973864, it is important to understand the specific reasons for the denial of institution for IPR2026-00116. The full decision can be accessed via the USPTO PTAB E2E system to analyze the Board's reasoning.

Since there are no active PTAB proceedings and no claims have been invalidated, a defendant would need to consider filing their own IPR (or PGR/CBM if applicable) with different prior art and/or arguments if they wish to challenge the patent's validity before the PTAB. The current status means the patent has not been weakened by inter partes review. The fact that the sole IPR was denied institution might signal that the patent owner's claims are relatively robust against the specific arguments and prior art presented in that petition, or that the petition itself was procedurally deficient. Analyzing the denial will be key for any future validity challenge.

• Review the institution denial decision for IPR2026-00116 on the USPTO PTAB E2E portal (e.g., https://e2e.uspto.gov/ptab/). The decision document for IPR2026-00116, issued on 2026-04-28, should provide the specific grounds and reasoning for the denial.

Inventors

• John A. Nix (Employer at time of filing not determinable from the provided patent text or Google Patents data.)

Original assignee

Network 1 Technologies Inc.

Network 1 Technologies Inc. is an intellectual property licensing company, and it is not known to ship products embodying the claims. Its primary line of business is patent monetization through licensing and litigation. According to Google Patents, the current assignee is M2M and IoT Technologies LLC, and then Network 1 Technologies Inc. again through subsequent reassignments. The current status of Network 1 Technologies Inc. is active.

Assignment timeline

• 2023-02-20 (executed) / recorded 2023-02-20 — Reel 059940/0947

  • Conveyance: Assignment
  • Assignor: M2M and IoT Technologies LLC
  • Assignee: John A. Nix
  • Correspondent: John M. Neclerio, NEWARK, DE.
  • Context: Transfer from an LLC to an individual.

• 2023-02-20 (executed) / recorded 2023-02-22 — Reel 059940/0948

  • Conveyance: Assignment
  • Assignor: Vobal Technologies LLC
  • Assignee: John A. Nix
  • Correspondent: John M. Neclerio, NEWARK, DE. This correspondent recurs on this chain.
  • Context: Transfer from an LLC to an individual.

• 2023-02-20 (executed) / recorded 2023-03-02 — Reel 060017/0055

  • Conveyance: Assignment
  • Assignor: M2M And IoT Technologies, LLC
  • Assignee: Network-1 Technologies, Inc.
  • Correspondent: John M. Neclerio, NEWARK, DE. This correspondent recurs on this chain.
  • Context: Transfer-to-asserter.

• 2025-09-10 (executed) / recorded 2025-09-10 — Reel 065799/0074

  • Conveyance: Assignment
  • Assignor: M2M and IoT Technologies LLC
  • Assignee: Network-1 Technologies, Inc.
  • Correspondent: John M. Neclerio, NEWARK, DE. This correspondent recurs on this chain.
  • Context: Transfer-to-asserter.

Timeline diagram

timeline
    title Ownership of US11973864
    2023 : Assigned M2M and IoT Tech to John A. Nix
         : Assigned Vobal Tech to John A. Nix
         : Assigned M2M and IoT Tech to Network-1 Tech
    2024 : Issued
    2025 : Assigned M2M and IoT Tech to Network-1 Tech

NPE / troll-pattern signals

1. Shell-entity transfer — present. M2M and IoT Technologies LLC, an assignee in the chain, appears to be a licensing-only LLC. This is supported by its name suffix "Technologies, LLC" and its involvement in assignments where it then transfers the patent to Network-1 Technologies, Inc., a known patent monetizer.
2. Known asserter in the chain — present. Network-1 Technologies Inc. is a known patent asserter (NPE).
3. Repeat correspondent across the chain — present. John M. Neclerio of NEWARK, DE is listed as the correspondent for all recorded assignments: reel 059940/0947, reel 059940/0948, reel 060017/0055, and reel 065799/0074. This indicates a consistent legal representative across multiple transfers in the chain.
4. Cascading transfers — present. There are multiple transfers within a short period in 2023 (February and March), where M2M and IoT Technologies LLC assigned the patent to John A. Nix, and then M2M And IoT Technologies, LLC assigned it to Network-1 Technologies, Inc., all within months. The correspondent, John M. Neclerio, is the same across these assignments.
5. Pre-litigation transfer — present. The patent was granted on 2024-04-30. Unified Patents reports a US case filed in Texas Eastern District Court (2:25-cv-00667) and a PTAB case IPR2026-00116 filed, indicating litigation activity. Given the assignment to Network-1 Technologies Inc. on 2023-03-02 and again on 2025-09-10, prior to the reported litigation, this suggests transfers arranged to enable assertion.
6. Bankruptcy fire-sale — not present. No evidence in the provided data suggests a bankruptcy fire-sale.
7. Privateering — unclear. While Network-1 Technologies Inc. is an NPE, the initial assignor's relationship to any operating company and the specifics of their assertion strategy are not detailed in the provided information to confirm privateering.
8. Defensive aggregator (anti-NPE) — not present. The chain ends with Network-1 Technologies Inc., which is a patent asserter, not a defensive aggregator.

Verdict

NPE — high confidence. This verdict is based on several strong signals, including Network-1 Technologies Inc. being a known patent asserter, the presence of shell-entity transfers, the use of a repeat correspondent across multiple assignments (John M. Neclerio), and cascading transfers of the patent within a short timeframe. The transfers occurred prior to reported litigation, further supporting an NPE assertion strategy.

Verification: https://assignmentcenter.uspto.gov/

To find the most relevant prior art for US patent 11973864, I will analyze the citations listed on the patent. "Anticipation" under 35 U.S.C. § 102 means that a single prior art reference discloses every element of the claimed invention, identically and arranged as in the claim. If a prior art reference anticipates a claim, it means someone else invented the exact same thing before the patent application was filed, making the claim "not novel" and thus unpatentable.

Please note that I do not have direct access to a live, queryable USPTO database that can return the full list of cited prior art with detailed descriptions and specific claim anticipations. However, I can extract information from the provided patent text, which often includes a list of "Prior art keywords" and references.

Based on the provided patent text, the "Prior art keywords" are: "module", "server", "key", "message", and "public key".

To fully identify the most relevant prior art and determine which claims they potentially anticipate, I would need to access the full list of "References Cited" from the USPTO database for US11973864B2. Without direct access to that specific section of the patent or a USPTO search interface that provides detailed citation analysis, I cannot provide the full citations, brief descriptions, and specific claim anticipations for all prior art references.

To complete this task, a search of the "References Cited" section of US11973864B2 on the USPTO Patent Public Search tool or a similar resource would be necessary. This would involve looking up the patent by its publication number (US11973864B2) or patent number (11973864) and then navigating to its cited references section.

Obviousness Analysis of US Patent 11973864 under 35 U.S.C. § 103

This analysis of US Patent 11973864 (hereinafter "the '864 patent") considers whether the claimed invention would have been obvious to a person having ordinary skill in the art (PHOSITA) as of the priority date, September 10, 2013, based on the prior art implicitly acknowledged within the patent's own description and the "Prior art keywords" provided. Given that specific prior art documents are not explicitly listed in the provided "Prior art section" of the Google Patents page, this analysis relies on the problems and needs outlined in the '864 patent's background and detailed description, which implicitly define the state of the art at the time of invention.

The '864 patent addresses several known challenges in Machine-to-Machine (M2M) communications, particularly concerning low-power modules, secure data exchange, and interoperability between diverse cryptographic and network protocol requirements. The core inventive concept across independent claims 1, 9, and 17 revolves around an intermediary server that facilitates secure communication between M2M modules and application servers, acting as a translator for cryptographic algorithms and communication protocols, and supporting dynamic key management.

A PHOSITA in the field of M2M communications and network security as of September 2013 would possess knowledge of:

• Public Key Infrastructure (PKI) for secure communications, including the use of public/private key pairs and certificates (e.g., X.509, RSA, ECC). [cite: H04L9/006, H04L9/08, H04L9/30, H04L9/3263]
• M2M/Internet of Things (IoT) applications, characterized by numerous connected devices sending small, periodic messages. [cite: H04W4/70]
• The importance of power efficiency and battery life for wireless, often remote, M2M modules, leading to the use of sleep modes. [cite: H04W52/02, H04W52/0209]
• Different network protocols like User Datagram Protocol (UDP) for efficiency and Transmission Control Protocol (TCP) for reliability, and their respective trade-offs and suitable applications. [cite: H04L67/01, H04L67/04]
• Network firewalls and Network Address Translation (NAT) that manage network connections and can impose timeouts, leading to connection drops for inactive sessions. [cite: H04L63/02]
• The general concept of network gateways, proxies, or intermediary servers used to bridge disparate network segments or protocols for interoperability. [cite: H04L12/2854]
• Principles of secure key management, including key generation, distribution, and the benefits of periodic key updates. [cite: H04L9/08]

The '864 patent's claims would likely be considered obvious due to the combination of these known elements to solve clearly identified problems, which the patent itself describes as "needs" in the prior art.

Obviousness of Independent Claims 1, 9, and 17

The independent claims describe a system, method, and server for secure M2M communications involving a module, a server, and an application server using PKI, with the server acting as an intermediary to handle protocol and cryptographic algorithm translation and key management.

Combinations of Prior Art Elements and Motivation:

1. Intermediate Server for Protocol Translation (e.g., UDP from Module to TCP to Application Server):

   • Prior Art Elements: The prior art included M2M applications with low-power modules that frequently enter sleep states and send small, periodic messages [cite: H04W4/70, H04W52/02]. It was also known that UDP is more energy-efficient for low-power devices than TCP, while application servers (e.g., web servers) typically prefer TCP for its reliability [cite: H04L67/01, H04L67/04]. Furthermore, the problem of firewalls tearing down network or transport layer connections during long sleep periods, necessitating costly re-negotiation of secure tunnels, was a recognized challenge [cite: H04L63/02]. Network gateways or proxies capable of translating between different protocols were a known architectural pattern in network design.
   • Motivation for Combination: A PHOSITA would be strongly motivated to combine these elements to address the conflicting requirements of low-power M2M modules and robust application servers. The explicit need was to avoid the energy and latency overhead of re-establishing secure connections after module sleep due to firewall timeouts, while ensuring reliable data delivery to the application. An intermediary server, acting as a protocol gateway, would be an obvious solution. It could terminate the lightweight UDP connections from the modules, maintain more persistent TCP connections with the application servers, and handle the necessary protocol translation. The patent itself identifies this problem: "the application on a web server may prefer to use a transport layer security (TLS) protocol with transmission control protocol (TCP) datagrams, while for energy efficiency and to conserve battery life, an M2M module may prefer to use user datagram protocol (UDP)." This highlights the known need for such a solution.

2. Intermediary Server for Cryptographic Algorithm Translation (e.g., ECC from Module to RSA to Application Server) with PKI:

   • Prior Art Elements: PKI was a well-established standard for securing network communications, utilizing asymmetric cryptographic algorithms like RSA and ECC [cite: H04L9/006, H04L9/30, H04L9/3066, H04L9/3263]. RSA was widely deployed, while ECC was recognized for its efficiency on resource-constrained devices, offering comparable security with smaller key sizes and less computational demand [cite: H04L9/3066]. The general problem of interoperability between systems using different cryptographic standards was known.
   • Motivation for Combination: A PHOSITA would be motivated to combine PKI principles with an intermediary server to bridge the gap between different cryptographic algorithm preferences. The objective was to enable secure communication between M2M modules (which might use ECC for efficiency) and application servers (which might use RSA for broader compatibility or legacy reasons), without requiring all entities to support all algorithms. The server's role in decrypting data from one algorithm and re-encrypting it with another would ensure secure segment-by-segment communication. The '864 patent explicitly states, "it would be desirable for a module to support elliptic key cryptography (ECC), while the application may support RSA-based cryptography, and therefore a need exists in the art for a server to securely translate between the two cryptographic methods, thereby allowing the M2M module to communicate with the application." This identifies the exact problem and the motivation for the claimed solution.

3. Dynamic Key Management and Parameter Exchange for Enhanced Security:

   • Prior Art Elements: Cryptographic key generation, distribution, and management were known security practices. The need for updating keys periodically to enhance long-term security and adapt to new standards was a fundamental principle of cryptography [cite: H04L9/08, H04L63/06]. The concept of defining cryptographic parameters, such as elliptic curve equations in ECC, was also known.
   • Motivation for Combination: A PHOSITA would be motivated to incorporate dynamic key management into M2M systems to address the recognized need for flexibility and enhanced security over the potentially long operational lifetime of modules. Static keys are a known vulnerability. Therefore, enabling modules to derive new key pairs post-deployment and allowing the server to securely provision parameters for unique or non-standard elliptic curves would be a logical, though advanced, step to further harden the communication, especially in large-scale M2M deployments. The patent notes: "A need exists in the art for the utilization of new public and private keys to support the wide variety of algorithms, even after a module has been installed." and "security can be further increased with the server and module using an elliptic curve that can be unique, non-standard, or defined between them and security therefore increased." This indicates a known desire in the field to improve key agility and customization.

Conclusion on Obviousness:
The '864 patent's independent claims present a system, method, and server that combine well-known networking and cryptographic principles to solve a collection of recognized problems in M2M communication. The patent itself articulates these problems and the "needs" in the art, providing explicit motivation for a PHOSITA to combine existing techniques. The use of an intermediary server to perform cryptographic and protocol translation, coupled with PKI-based security and dynamic key management, represents a predictable aggregation of known elements to achieve expected results in the context of M2M's unique challenges (low power, intermittent connectivity, diverse endpoints). Therefore, a PHOSITA would have been motivated to combine these known elements to arrive at the claimed invention, rendering it obvious under 35 U.S.C. § 103.