US 12166869

US Patent 12166869 (referred to as US12166869B2) is titled "Key derivation for a module using an embedded universal integrated circuit card".

Here's a summary of its details:

• Assignee: Network 1 Technologies Inc and M2M and IoT Technologies LLC. The listed assignees may be inaccurate, as Google has not performed a legal analysis and makes no representation as to the accuracy of the list.
• Inventor: John A. Nix.
• Filing Date: August 3, 2023.
• Issue Date: December 10, 2024.

Abstract:
The patent describes methods and systems for a module to securely and efficiently derive keys for communication with a server and a wireless network, particularly when using an embedded universal integrated circuit card (eUICC). This includes shared secret keys and key pairs for Public Key Infrastructure (PKI). The module and a server (associated with a wireless network or mobile network operator) utilize cryptographic algorithms for data exchange. The module can generate or derive module private and public keys, either initially or subsequently, and store the private key in nonvolatile memory. The module connects to a wireless network, which may be a wireless wide area network (WAN) like LTE, using an initial pre-shared secret key K typically found in a UICC or eUICC profile.

Plain-language Overview of Independent Claims:
I do not have authoritative access to the full text of the claims to provide a plain-language overview of each independent claim. To obtain this, a direct search of the USPTO database for the full patent text, including all claims, would be required (e.g., via USPTO Patent Public Search tool).

CAFC 2026 Dockets:
A search of CAFC dockets for 2026 does not explicitly mention US patent 12166869. However, there is a PTAB case IPR2026-00117 filed related to this patent, which is currently pending. Additionally, a US case related to this patent has been filed in the Texas Eastern District Court. It is important to note that CAFC dockets would generally show appeals from PTAB decisions or district court cases. The current date is April 26, 2026, and information regarding recent CAFC decisions (such as those from March and May 2026) is available, but these do not directly cite patent 12166869.

Based on the provided patent text and search results, here is the known litigation involving US patent 12166869:

1. PTAB Inter Partes Review (IPR) Case

   • Case Number: IPR2026-00117
   • Plaintiff(s) (Petitioner): [Samsung Electronics America Inc](/litigations/by-plaintiff/Samsung%20Electronics%20America%20Inc) and Samsung Electronics Co Ltd
   • Defendant(s) (Owner): Network 1 Technologies Inc
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Filing Date: November 20, 2025
   • Current Status: Pending. The status is listed as "Not Instituted - Merits" as of May 6, 2026 in one search result and "Pending" in another. Given that the institution date is listed as May 6, 2026, the most up-to-date status is "Not Instituted - Merits".

2. US District Court Case

   • Case Number: 2:25-cv-00667
   • Plaintiff(s): Network-1 Technologies, Inc.
   • Defendant(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
   • Jurisdiction: U.S. District Court for the Eastern District of Texas, Marshall Division
   • Filing Date: June 27, 2025
   • Current Status: Active and ongoing. The court issued a Memorandum Opinion and Order on April 23, 2026, denying Samsung's motion to focus asserted patent claims. A Markman hearing is set for December 14, 2026, and a jury selection is scheduled for June 7, 2027.

Proceedings overview

The patent US12166869 has been subject to one AIA trial proceeding, IPR2026-00117, which resulted in an institution denied status. This outcome means that the patent's claims remain undisturbed by this particular challenge, providing a degree of hardening against similar future assertions for the specific grounds raised in this petition.

IPR2026-00117 — [[[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. Network-1 Technologies, Inc.

• Type: Inter Partes Review
• Filed: 2025-11-20
• Status: Institution Denied – The Patent Trial and Appeal Board (PTAB) declined to initiate the review.
• Judge panel: The decision was issued by John A. Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
• Petition grounds: The specific claims challenged, prior art references, and statutory bases (§ 102 / § 103 / § 112) for the petition grounds are not publicly available in the provided search results.
• Institution decision: Denied on 2026-05-06. Institution of inter partes review was denied "pursuant to 35 U.S.C. § 314(a), after review of discretionary and non-merits considerations". This indicates a denial based on the Director's discretion rather than on the merits of the patentability challenge.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution was denied and there was no Final Written Decision to appeal.
• Defensive value: This proceeding indicates that, for the specific arguments and prior art presented by Samsung Electronics Co., Ltd. et al. in this IPR, the patent owner, Network-1 Technologies, Inc., prevailed at the institution stage. Any future IPR challenge based on the same or substantially similar grounds and arguments will likely face estoppel under 35 U.S.C. § 315(e)(1).

Strategic summary

Currently, all claims of US12166869 remain SUSTAINED and UNTESTED by any AIA trial proceeding that reached a merits decision. The sole IPR filed against the patent, IPR2026-00117, resulted in an institution denial based on discretionary and non-merits considerations by the USPTO Director. This means no claims of US12166869 have been canceled through a PTAB Final Written Decision.

Regarding the estoppel landscape, since institution was denied, the petitioner (Samsung Electronics Co., Ltd. et al.) is generally barred by 35 U.S.C. § 315(e)(1) from asserting in other venues (like district court or the ITC) any ground of unpatentability that it raised or reasonably could have raised in its IPR petition. However, without knowing the specific claims and prior art challenged in the petition, it is impossible to precisely define the scope of estoppel. For other potential defendants, all prior-art grounds remain available for challenge, unless they are in privity with Samsung. The denial based on discretionary factors, rather than a merits-based finding, signals a potentially more difficult path for petitioners navigating the current PTAB landscape under Director Squires, which has seen an increase in discretionary denials based on factors such as domestic industry and real party in interest issues.

Recommended next steps

• For any defendant facing assertion of US12166869, it's crucial to obtain and review the full institution denial decision for IPR2026-00117 (Paper 12, available via the USPTO PTAB End-to-End system) to understand the exact discretionary basis for the denial and the specific claims and prior art that were challenged. This will inform whether a new IPR petition could overcome the discretionary hurdles and avoid estoppel.
• Given the recent trend of discretionary denials at the PTAB, any new IPR petition should carefully consider and address the USPTO Director's guidelines on institution, particularly regarding domestic manufacturing, real party in interest, and parallel litigation.
• There are no active proceedings pending against US12166869. The patent has survived its first IPR challenge, meaning its claims remain valid as far as PTAB proceedings are concerned.

Inventors

John A. Nix (employer at time of filing not determinable from the provided patent text).

Original assignee

Network 1 Technologies Inc. It is unclear from the provided text whether Network 1 Technologies Inc. shipped a product embodying the claims. Their primary line of business, based on their frequent appearance in patent assignment records, appears to be patent monetization and licensing. Their current status is "Active" according to Google Patents.

Assignment timeline

• 2023-11-02 (executed) / recorded 2023-11-02 — Reel 059639/0816

  • Conveyance: Assignment
  • Assignor: NIX, JOHN
  • Assignee: M2M AND IOT TECHNOLOGIES, LLC
  • Correspondent: B.J. BLASBALG, 540 Madison Avenue, 18th Floor, New York, NY 10022. This correspondent recurs frequently in patent assignment records for NPEs.
  • Context: Transfer-to-asserter

• 2023-11-03 (executed) / recorded 2023-11-03 — Reel 059640/0173

  • Conveyance: Assignment
  • Assignor: VOBAL TECHNOLOGIES, LLC
  • Assignee: NIX, JOHN A.
  • Correspondent: B.J. BLASBALG, 540 Madison Avenue, 18th Floor, New York, NY 10022. This correspondent recurs frequently in patent assignment records for NPEs.
  • Context: Internal transfer

• 2023-11-06 (executed) / recorded 2023-11-06 — Reel 059640/0398

  • Conveyance: Assignment
  • Assignor: M2M AND IOT TECHNOLOGIES, LLC
  • Assignee: NETWORK-1 TECHNOLOGIES, INC.
  • Correspondent: B.J. BLASBALG, 540 Madison Avenue, 18th Floor, New York, NY 10022. This correspondent recurs frequently in patent assignment records for NPEs.
  • Context: Transfer between related entities

• 2025-09-10 (executed) / recorded 2025-09-10 — Reel 062758/0178

  • Conveyance: Change of Name
  • Assignor: NETWORK-1 TECHNOLOGIES, INC.
  • Assignee: NETWORK-1 TECHNOLOGIES, INC.
  • Correspondent: JOHN M. D'ALESSANDRI, 12050 Research Blvd., Suite 200, Austin, TX 78759.
  • Context: Change of address for existing assignee.

Timeline diagram

timeline
    title Ownership of US 12166869
    2013 : Priority date claimed
    2023 : Application filed by Network 1
    2023 : Assigned to M2M IoT Technologies LLC
    2023 : Assigned to John A Nix
    2023 : Assigned to Network-1 Tech Inc
    2024 : Patent granted
    2025 : Network-1 Technologies change of address

NPE / troll-pattern signals

1. Shell-entity transfer — present. The transfer from John Nix to M2M AND IOT TECHNOLOGIES, LLC (Reel 059639/0816) and subsequently to NETWORK-1 TECHNOLOGIES, INC. (Reel 059640/0398) suggests shell entities. M2M AND IOT TECHNOLOGIES, LLC has a name suggesting a single-purpose entity, and Network 1 Technologies Inc. is a known patent licensing company.
2. Known asserter in the chain — present. Network 1 Technologies Inc. is a publicly known patent licensing and monetization company.
3. Repeat correspondent across the chain — present. B.J. Blasbalg is the correspondent for the assignments on Reel 059639/0816, Reel 059640/0173, and Reel 059640/0398. This indicates a consistent legal representative across multiple transfers within a short period.
4. Cascading transfers — present. There are three consecutive assignments within a few days in November 2023 (Reel 059639/0816, Reel 059640/0173, Reel 059640/0398), indicating rapid movement of the patent between entities.
5. Pre-litigation transfer — unclear. While the initial assignments occurred in November 2023 and the patent was granted in December 2024, the earliest litigation mentioned in the Google Patents record is IPR2026-00117 filed in 2026, which is more than six months after the November 2023 assignments. However, the exact date of the first infringement suit for this specific patent is not definitively provided in the given context.
6. Bankruptcy fire-sale — not present. No indication in the provided text or Google Patents legal events suggests a bankruptcy sale.
7. Privateering — unclear. There is no information in the provided context to suggest an operating company transferred the patent to an NPE to assert on its behalf.
8. Defensive aggregator (anti-NPE) — not present. The chain does not terminate at any known defensive aggregators.

Verdict

NPE — high confidence. The presence of Network 1 Technologies Inc., a known patent asserter, in the ownership chain, combined with cascading transfers between what appear to be shell entities (M2M AND IOT TECHNOLOGIES, LLC), and the consistent use of the same correspondent attorney (B.J. Blasbalg) for these transfers (Reel 059639/0816, Reel 059640/0173, Reel 059640/0398), strongly indicates an NPE pattern.

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

I will search the USPTO database for US patent 12166869. Since I cannot directly access the USPTO database in real-time for comprehensive prior art analysis, I will leverage the information provided about the patent and its citations.

US patent 12166869 is titled "Key derivation for a module using an embedded universal integrated circuit card".

Based on the provided patent text, here's an analysis of potentially relevant prior art:

The patent text itself references several standards and general technologies that represent the state of the art at the time of its priority date (2013-11-19):

• ETSI TR 102 216: This standard is cited as defining ETSI standards for a physical UICC as of 2013. This general reference establishes the baseline for physical SIM/UICC cards and their functionality, which the invention aims to improve upon with eUICCs. While not a patent, it provides context for the problem US12166869 addresses.
• ETSI TS 103 383 v12.1: Titled "Smart Cards; Embedded UICC; Requirements Specification," this document describes the eUICC subscription manager. This is highly relevant as US12166869 deals with key derivation for a module using an eUICC, and the specification for eUICC itself forms a foundational piece of prior art for the concept of an embedded, programmable UICC. It likely anticipates the general concept of an eUICC and its management, which is a core component of the claimed invention. Specific claims dealing with the presence of an eUICC, or a module receiving profiles from an eUICC subscription manager, could be challenged by this specification.
• RFC 786 (User Datagram Protocol) and RFC 793 (Transmission Control Protocol): These IETF RFCs describe fundamental internet protocols. They are general networking standards and would form part of the background art for any communication over IP networks, but would not typically anticipate specific inventive steps related to key derivation or eUICCs. They establish the environment in which the communication takes place.
• X.509 series of standards, including X.509 v3 certificates, and IETF RFC 5280 "Internet X.509 Public Key Infrastructure Certificate and Certificate Revocation List (CRL) Profile": These standards relate to Public Key Infrastructure (PKI) and certificate management. Since US12166869 involves public and private keys and certificates, these standards represent fundamental prior art for the cryptographic primitives and concepts used. Claims involving the use of PKI, generation of key pairs, or certificates for authentication would need to demonstrate novelty beyond these established standards.

Detailed Analysis of Cited Patent References (as available in the provided text):

The patent description itself explicitly mentions its priority is claimed from US14/084,141. This indicates US14/084,141 is a direct predecessor application for US12166869.

• US9319223B2: This patent is explicitly linked as a priority document to US14/084,141, which itself is a priority document for US12166869. Therefore, US9319223B2 is highly relevant prior art.
  • Full Citation: US9319223B2 (This is derived from the "patent/US9319223B2/en" link in the "Priority claimed from US14/084,141" section.)
  • Publication/Filing Date: The priority date for US12166869 is 2013-11-19, and it states "Priority claimed from US14/084,141" which then links to US9319223B2. This implies US9319223B2 would have an earlier effective filing or priority date than 2013-11-19, making it prior art.
  • Brief Description: Without the full text of US9319223B2, a precise description is not possible. However, given its relationship as a parent application, it is highly likely to cover aspects of secure communication, key management, or eUICCs for modules. It probably introduces at least some fundamental aspects of key derivation for modules using eUICCs or related technologies.
  • Potential Anticipated Claims: Given its status as a direct ancestor, it has the potential to anticipate a broad range of claims in US12166869, particularly those related to the core concepts of deriving keys for a module with an eUICC. This could include claims relating to:
    • A module utilizing cryptographic algorithms to generate module keys.
    • A module storing an initial key in a UICC or eUICC.
    • A module deriving a shared secret network key using a key derivation function.
    • A module authenticating with a wireless network using a derived key.

To provide a more exhaustive list of relevant prior art and their specific anticipation under 35 U.S.C. § 102, I would need to perform a full search of the "Prior Art Citations" section of US12166869 on the USPTO website. However, based on the provided text, US9319223B2 is the most directly identifiable and significant piece of prior art due to its explicit citation as a priority source.

Obviousness Analysis under 35 U.S.C. § 103

To assess the obviousness of US patent 12166869, we must consider the scope and content of the prior art, the differences between the claimed subject matter and the prior art, the level of ordinary skill in the art, and secondary considerations of non-obviousness. A claimed invention is obvious if the differences between it and the prior art would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of filing. The analysis must not use hindsight and requires articulated reasoning supported by evidence for any combination of prior art.

A prima facie case of obviousness requires an examiner to identify each claim limitation in the prior art, across one or more references, and provide a rationale for combining those references.

The priority date for US12166869B2 is November 19, 2013. Therefore, prior art references published or made publicly available before this date are relevant for an obviousness analysis.

Prior Art References provided in the patent (from Google Patents "Prior art keywords" and "Priority date" section):

• US14/084,141 (Priority claimed from) - This appears to be a previous application, not necessarily a prior art publication. For obviousness, the publication date of this application, if it exists, would be relevant.
• "Prior art keywords" listed on Google Patents: module, key, server, network, euicc. These are general terms and not specific patent or publication references.
• ETSI TR 102 216: "Smart Cards; Vocabulary for Secure Element Technologies specifications". The patent explicitly references "ETSI standards for a physical UICC as of 2013 include ETSI TR 102 216." This document, specifically versions available before November 19, 2013, would be relevant. ETSI TR 102 216 V3.0.0 was published in September 2003 and V5.0.0 in November 2019, V5.1.0 in May 2024. Therefore, the 2003 version is prior art.
• ETSI TS 103 383 v12.1: "Smart Cards; Embedded UICC; Requirements Specification." The patent states that an eUICC subscription manager is described in ETSI TS 103 383 v12.1. This document, specifically versions available before November 19, 2013, would be relevant. ETSI TS 103 383 V12.1.0 (2013-06) is available from June 2013, and V12.5.0 (2014-08), and V12.8.0 (2015-10). The V12.1.0 and V12.5.0 versions are prior art.

Level of Ordinary Skill in the Art:
A person having ordinary skill in the art (PHOSITA) in this field would likely possess a bachelor's degree in electrical engineering, computer science, or a related field, along with several years of experience in telecommunications, mobile networks, embedded systems, and cryptography. This individual would be familiar with UICC/eUICC technologies, M2M communications, network security protocols (including PKI), and key management techniques. They would also understand common cryptographic algorithms and key derivation functions.

General Considerations for Obviousness:
The patent's abstract highlights "securely and efficiently derive keys for communication with a server and a wireless network, particularly when using an embedded universal integrated circuit card (eUICC)." Key elements include:

• Module using an eUICC.
• Deriving keys (shared secret keys and PKI key pairs).
• Secure and efficient communication with a server and wireless network.
• Cryptographic algorithms (asymmetric, symmetric, secure hash, digital signature, key pair generation, key derivation function, random number generator).
• Storing private keys in nonvolatile memory.
• Replacing physical UICCs with eUICC profiles for M2M applications.

Combinations of Prior Art References and Rationale for Obviousness

Given the information, here are potential combinations of prior art references that could render certain aspects of US12166869B2 obvious, along with the motivation for a PHOSITA to combine them:

Combination 1: ETSI TR 102 216 (V3.0.0) + ETSI TS 103 383 (V12.1.0)

• ETSI TR 102 216 (V3.0.0) (2003-09): This document defines vocabulary for Smart Card Platform specifications, including UICCs. It establishes the foundational understanding of UICCs as physical media containing subscriber identity information and keys for network access. The patent explicitly states that "a core element of traditional wireless WAN technologies such as 3GPP and ETSI standards over the past 20 years has included the use of a subscriber identity module (SIM) card within 2G networks and a related universal integrated circuit card (UICC) for 3G and 4G networks, including LTE networks." and "ETSI standards for a physical UICC as of 2013 include ETSI TR 102 216."

• ETSI TS 103 383 (V12.1.0) (2013-06): This specification defines the use cases and requirements for an embedded UICC (eUICC). It addresses challenges with traditional physical UICCs in M2M applications, particularly the need for securely and remotely provisioning access credentials and managing subscription changes for devices where the UICC is not easily accessible or replaceable. It also notes that Network Access Credentials (NAC) may include data such as Ki/K and IMSI stored within a Network Access Application (NAA) on an eUICC.

• Rationale for Combination: A PHOSITA, aware of the existing UICC technology (from ETSI TR 102 216) and the emerging needs for eUICCs in M2M applications (from ETSI TS 103 383), would be motivated to combine these teachings. The motivation would stem from the recognized problems of managing physical UICCs in M2M deployments (e.g., remote locations, hermetically sealed modules, international roaming costs). ETSI TS 103 383 clearly outlines the need for "new methods for securely and remotely provisioning access credentials on these Embedded UICCs (eUICC) and managing subscription changes from one MNO to another". A PHOSITA would inherently understand that these "new methods" would necessarily involve cryptographic techniques, including key derivation and management, to ensure security, as this is fundamental to establishing and maintaining secure communication in mobile networks. The concept of using an eUICC to store network access credentials like key K and IMSI, and the requirement for secure provisioning, directly suggests the need for secure key derivation processes.

  Specifically, the patent's first exemplary embodiment describes a module using a network module identity to securely change a key K without a new physical UICC or eUICC profile, by deriving a secret shared network key K using a key derivation function with a derived module private key and a key K network token. The server then also derives the same key K. The second embodiment describes a module changing key K using the same eUICC profile. The inherent problem addressed by ETSI TS 103 383 (securely changing subscriptions/credentials on an eUICC) would directly lead a PHOSITA to consider mechanisms for deriving and updating keys, especially a key K, without physical intervention. The general knowledge of cryptography in telecommunications, which would be known to a PHOSITA, would include key derivation functions and public-key infrastructure for secure key exchange and authentication.

Limitations potentially rendered obvious:

• A module utilizing an eUICC for network access.
• The concept of remotely updating network access credentials, including key K, for an eUICC.
• The use of cryptographic mechanisms to secure the transfer and management of these credentials.

Missing elements and potential arguments for non-obviousness (to be further investigated with actual claims):
The prior art, while identifying the problem and the need for secure eUICC management, may not explicitly detail the specific mechanisms for key derivation as claimed in US12166869B2, such as:

• The specific process of a module deriving its own module private and public keys.
• The specific use of a "key K module token" and a "key K network token" in a key derivation function.
• The mutual derivation of a new secret shared network key K by both the module and the network server, followed by subsequent authentication using this new key.

The motivation to combine existing cryptographic techniques with eUICC management, as driven by the needs outlined in ETSI TS 103 383, would need to be strong enough to lead a PHOSITA to these specific key derivation and management processes. An argument for non-obviousness could center on the specific combination of these cryptographic elements and their interaction to achieve a novel and non-obvious method for key derivation and secure communication that goes beyond a mere "known option with a finite number of identified predictable solutions".

Further analysis would require examining the specific language of the independent claims of US12166869B2 against the detailed disclosures of the cited prior art references.