US 11233780

Here is a concise summary of US Patent 11233780:

US Patent Number: 11233780
Title: Embedded universal integrated circuit card supporting two-factor authentication
Current Assignee: Network 1 Technologies Inc, M2M and IoT Technologies LLC
Original Assignee: Network 1 Technologies Inc
Inventor(s): John A. Nix
Filing Date: 2019-06-26
Issue Date: 2022-01-25

Abstract:
The patent describes methods and systems for an embedded universal integrated circuit card (eUICC) that supports two-factor authentication. A module receives an encrypted profile containing two ciphertext portions. It decrypts the first portion using an eUICC profile key and symmetric ciphering to obtain an initial key (K) and network module identity. This allows the module to perform a first authentication with a wireless network. After this, a user associated with the module performs a second authentication (second factor) with the mobile network operator (MNO) over the wireless network. Upon successful second authentication, the MNO sends a symmetric key to the module, which is then used to decrypt the second ciphertext portion of the profile. This reveals a second, more permanent key (K) and network module identity. The module then disconnects and reconnects to the wireless network using this second key and identity, performing a second, more secure authentication.

Plain-Language Overview of Independent Claims:

• Independent Claim 1 (Method for securing communications):
  This claim outlines a process for a device (referred to as a "module") to establish secure communication. The module first receives an encrypted profile containing two distinct encrypted parts. It decrypts the first part to extract an initial security key and a network identity. Using these, the module performs an initial authentication with a wireless network. Subsequently, the module carries out a second authentication with the mobile network operator (MNO) using a "second factor" (a different verification method) over the same wireless network. Only after successfully completing this second authentication does the MNO send a specific symmetric key to the module. The module then uses this newly received symmetric key to decrypt the second encrypted part of the profile, thereby gaining access to a second, presumably more robust or permanent, security key and network identity.

• Independent Claim 11 (Module for securing communications):
  This claim describes a physical device, the "module," designed for secure communications. This module includes a physical interface for wireless network connection, a nonvolatile memory to store an embedded universal integrated circuit card (eUICC) and an encrypted profile (which has two encrypted sections), and a central processing unit (CPU). The CPU is specifically configured to carry out the steps detailed in Claim 1: decrypting the first part of the encrypted profile to get an initial key and identity, performing a first authentication with the wireless network using these credentials, then performing a second, two-factor authentication with the MNO over the wireless network, receiving a symmetric key from the MNO after this second authentication, and finally using that symmetric key to decrypt the second part of the profile to reveal a second key and network identity.

• Independent Claim 15 (Method for securing communications):
  This claim details a method focused on securely provisioning an eUICC profile key. The module initiates the process by sending its eUICC identity to an eUICC subscription manager via a first network. The module then receives an encrypted eUICC profile key, which was encrypted using an asymmetric ciphering algorithm and the eUICC's public key. The module decrypts this received key using the asymmetric ciphering algorithm and its corresponding private key to obtain a plaintext eUICC profile key. Subsequently, the module receives an encrypted profile, which itself was encrypted using the now-known plaintext eUICC profile key and a symmetric ciphering algorithm. The module then decrypts this encrypted profile to extract a plaintext first key and a plaintext first network module identity. Finally, the module uses this plaintext first key and identity to perform a first authentication with a wireless network.

CAFC 2026 Dockets:
Based on the provided patent information, there is currently no direct CAFC 2026 docket listed for US11233780. However, the patent family is involved in litigation:

• A PTAB (Patent Trial and Appeal Board) case, IPR2026-00114, has been filed and is pending.
• A US case (2:25-cv-00667) has been filed in the Texas Eastern District Court.
• The patent family also has first worldwide family litigation filed.

While PTAB and District Court cases can eventually lead to appeals at the CAFC, these specific entries do not indicate an active CAFC docket for 2026 at this time.

Known litigation involving US patent 11233780 includes the following:

1. Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB)

   • Case Number: IPR2026-00114
   • Plaintiff(s) / Petitioner(s): [[Samsung Electronics America Inc](/litigations/by-plaintiff/Samsung%20Electronics%20America%20Inc).](/litigations/by-plaintiff/Samsung%20Electronics%20America%20Inc.) and Samsung Electronics Co. Ltd.
   • Defendant(s) / Patent Owner: Network-1 Technologies, Inc.
   • Jurisdiction: United States Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (PTAB)
   • Filing Date: November 26, 2025
   • Outcome/Current Status: Institution was denied on May 6, 2026. The petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the challenged claims.

2. District Court Case in the Eastern District of Texas

   • Case Number: 2:25-cv-00667
   • Plaintiff(s): Not specified in public search results.
   • Defendant(s): Not specified in public search results.
   • Jurisdiction: U.S. District Court for the Eastern District of Texas
   • Filing Date: Not specified in public search results.
   • Outcome/Current Status: The case is identified as "litigation" in the patent information itself. Further details regarding specific parties or current status are not available from the conducted searches.

Proceedings Overview

There is a single AIA trial proceeding on file for US patent 11233780. This proceeding resulted in a denial of institution, meaning no claims were invalidated or sustained by the PTAB. This outcome gives a defendant a relatively strong defensive posture in that the patent has not been subjected to a full PTAB trial on the merits, and its claims remain untested.

IPR2026-00114 — [[[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: 2025-11-26
• Status: Institution Denied. The PTAB declined to institute a trial.
• Judge panel: The specific judge panel information is not available from the provided search results.
• Petition grounds: The specific claims challenged, prior art references, and statutory bases (§ 102 / § 103 / § 112) for the petition are not publicly available in the search snippets.
• Institution decision: Denied on 2026-05-06. The detailed reasoning for the denial of institution is not available from the provided search results and would require reviewing the full decision document.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: No Federal Circuit appeal has been noted for this proceeding, which is expected as institution was denied.
• Defensive value: The denial of institution for IPR2026-00114 means that the patent owner, Network-1 Technologies, Inc., prevailed at the institution stage. This indicates that Samsung Electronics Co., Ltd. et al. failed to show a reasonable likelihood of prevailing on at least one challenged claim, making a similar IPR-based defense using the same (or substantially the same) arguments more challenging for others.

Strategic Summary

As of the current date, all claims of US patent 11233780 are considered UNTESTED by the PTAB in a full trial on the merits. The single IPR filed, IPR2026-00114, was denied institution, meaning the PTAB did not proceed to a full review of the challenged claims. This indicates that the patent has not been narrowed or strengthened by any final written decision from the PTAB.

Regarding estoppel, since institution was denied for IPR2026-00114, the statutory estoppel provisions of 35 U.S.C. § 315(e)(2) do not apply to the petitioner (Samsung Electronics Co., Ltd. et al.) or its privies concerning any grounds that were raised or reasonably could have been raised in the petition. This means that a defendant currently facing assertion of this patent is generally free to use any prior art grounds they deem relevant, including those that may have been presented in the denied petition, as long as they are not otherwise estopped (e.g., due to prior district court judgments).

There is no discernible pattern of multiple IPRs from the same petitioner or aggressive PTAB appeals by the patent owner. The sole proceeding to date was initiated by Samsung Electronics Co., Ltd. et al., and it did not advance beyond the institution phase.

Recommended Next Steps

• For any party considering a challenge against US11233780, it is crucial to obtain and thoroughly review the full institution decision for IPR2026-00114 (Decision Issue Date: 2026-05-06). This document will provide the detailed reasoning behind the PTAB's denial, identifying specific deficiencies in Samsung's petition. Understanding these deficiencies will be vital for crafting any future IPR petitions to avoid similar pitfalls. The decision can typically be found on the USPTO PTAB E2E system by searching for IPR2026-00114.
• Given that the patent's claims remain untested by the PTAB, the absence of a trial on the merits means the patent is not "hardened" in the same way patents that survive FWDs might be. This could suggest that the patent has not faced a robust PTAB challenge or that prior challenges (like IPR2026-00114) were procedurally or substantively weak.
• Consider conducting a comprehensive prior art search to identify new and stronger grounds for invalidity, potentially addressing any weaknesses highlighted by the PTAB's decision to deny institution in IPR2026-00114.

Inventors

• John A. Nix. His employer at the time of filing (2019-06-26) is not explicitly stated in the patent or search results. However, he is identified as the Managing Member of IoT and M2M Technologies, LLC, an IP development company, and was the founder and CEO of Vobal Technologies, LLC, which provided M2M solutions.

Original assignee

The entity named on the issued patent as the original assignee is Network 1 Technologies Inc..

Network 1 Technologies Inc. is a publicly traded company (NYSE American: NTIP) whose primary line of business is the "development, licensing, and protection of intellectual property assets". They describe themselves as a "technology licensing company" that focuses on "enforcing and licensing its patent portfolio". The company actively engages in patent litigation to monetize its portfolio, which includes the M2M/IoT patent portfolio, under which US11233780 falls.

Network 1 Technologies Inc. does not appear to ship products embodying the claims; its business model is centered on patent licensing and assertion.

Its current status is operating and publicly traded.

Assignment timeline

The reel/frame and correspondent information for these assignments is not available from the provided Google Patents data.

• 2019-07-24 (recorded)

  • Conveyance: Assignment
  • Assignor: NIX, JOHN
  • Assignee: M2M AND IOT TECHNOLOGIES, LLC
  • Correspondent: Not available from Google Patents data.
  • Context: Inventor John Nix assigned his interest in the patent application to M2M AND IOT TECHNOLOGIES, LLC, an IP development company he headed.

• 2019-08-13 (recorded)

  • Conveyance: Assignment
  • Assignor: VOBAL TECHNOLOGIES, LLC
  • Assignee: NIX, JOHN A.
  • Correspondent: Not available from Google Patents data.
  • Context: VOBAL TECHNOLOGIES, LLC, a company founded by John Nix, assigned interest to John A. Nix.

• 2019-08-14 (recorded)

  • Conveyance: Assignment
  • Assignor: M2M AND IOT TECHNOLOGIES, LLC
  • Assignee: NETWORK-1 TECHNOLOGIES, INC.
  • Correspondent: Not available from Google Patents data.
  • Context: NETWORK-1 TECHNOLOGIES, INC. acquired the patent interest from M2M AND IOT TECHNOLOGIES, LLC, as part of its M2M/IoT patent portfolio acquisition.

• 2025-09-10 (recorded)

  • Conveyance: Change of Address
  • Assignor: NETWORK-1 TECHNOLOGIES, INC.
  • Assignee: NETWORK-1 TECHNOLOGIES, INC.
  • Correspondent: Not available from Google Patents data.
  • Context: Internal administrative update for a change of address.

Timeline diagram

timeline
    title Ownership of US 11233780
    2019 : Filed by Network 1 Tech Inc
         : Inventor assigns to M2M IoT Tech LLC
         : Vobal Tech LLC assigns to J.A. Nix
         : M2M IoT Tech LLC assigns to Network 1 Tech Inc
    2022 : Patent issued
    2025 : Network 1 Tech Inc address update

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The patent moved from the inventor (John Nix) to M2M AND IOT TECHNOLOGIES, LLC, an "inventor-controlled IP development company", and then to Network 1 Technologies Inc., a company explicitly focused on patent licensing and assertion. M2M and IoT Technologies, LLC acts as an IP holding/development company for John Nix's patents.
2. Known asserter in the chain — Present. Network 1 Technologies Inc. is a well-known publicly traded patent licensing and assertion entity (NPE). The company's business model revolves around acquiring, developing, licensing, and enforcing intellectual property. They have an active litigation history, including suing Samsung over the M2M/IoT patent portfolio.
3. Repeat correspondent across the chain — Unclear. Correspondent information (attorney name, firm, address) is not available from the provided Google Patents data.
4. Cascading transfers — Present. The initial transfers occurred in rapid succession within less than one month in 2019 (July 24, August 13, August 14). This rapid movement between entities (inventor, Vobal Technologies, M2M & IoT Technologies, and Network-1 Technologies) suggests a concerted effort to vest rights and prepare for monetization [cite: 2019-07-24, 2019-08-13, 2019-08-14 assignments].
5. Pre-litigation transfer — Unclear. While Network 1 Technologies Inc. has a history of litigation regarding the M2M/IoT portfolio, the specific filing date of the first infringement suit naming this patent (US11233780) is not provided, making it impossible to confirm if the transfers occurred within 6 months prior. However, Google Patents mentions a US case filed in Texas Eastern District Court (2:25-cv-00667) related to litigation for this patent family [cite: Google Patents Legal Status, 19, 21]. This suit by Network-1 Technologies Inc. against Samsung over six patents received from M2M and IoT Technologies LLC was filed around June 2025. The final assignment to Network-1 Technologies Inc. for this patent was on 2019-08-14, which is significantly before the 2025 litigation mentioned.
6. Bankruptcy fire-sale — Not present. There is no indication that the original assignee, Network 1 Technologies Inc., has filed for bankruptcy.
7. Privateering — Unclear. While Network 1 Technologies Inc. acquires portfolios and litigates, the specific relationship (e.g., royalty payments back to the original operating company) for this specific patent is not fully detailed. However, Network-1 is "obligated to pay M2M 14% of the first $100 million of net proceeds... and 5% of net proceeds greater than $100 million from Monetization Activities" for patents acquired from M2M and IoT Technologies. This arrangement, where M2M, an inventor-controlled IP development company, receives a share of monetization proceeds, aligns with a privateering-like model where an inventor/developer leverages an NPE for assertion.
8. Defensive aggregator (anti-NPE) — Not present. The chain ends with Network 1 Technologies Inc., a known NPE, not a defensive aggregator.

Verdict

NPE — high confidence

This verdict is driven by several strong signals. Network 1 Technologies Inc. is a publicly traded company whose sole business model is patent licensing and assertion, making it a classic NPE. The patent underwent cascading transfers within months of its application from the inventor to M2M and IoT Technologies, LLC (an inventor-controlled IP development company) and then to Network 1 Technologies Inc., indicating preparation for monetization [cite: 2019-07-24, 2019-08-14 assignments, 9, 15, 19, 21]. Furthermore, Network-1 has an arrangement to pay M2M a percentage of net proceeds from monetization activities, suggesting a privateering-like model.

For verification, see the USPTO Patent Assignment Search at https://assignmentcenter.uspto.gov/ by searching patent number 11233780.

I am unable to directly search the USPTO database or extract specific citation lists from live web pages like Google Patents within this environment. The provided patent text for US11233780B2 does not contain a dedicated "Prior Art Documents" or "Citations" section that lists the individual patent references and their details.

Therefore, I cannot provide the full citation, publication/filing date, brief description, and specific claims potentially anticipated under 35 U.S.C. § 102 for each prior art reference, as this information is not available in the provided context.

However, based on the provided patent text, I can infer the general technical area and some of the problems that US11233780 aims to address, which implicitly defines the landscape of the prior art it seeks to improve upon. The patent US11233780, titled "Embedded universal integrated circuit card supporting two-factor authentication," discusses the challenges with traditional Subscriber Identity Module (SIM) cards and Universal Integrated Circuit Cards (UICCs) in the context of machine-to-machine (M2M) communications and the Internet of Things (IoT).

The patent identifies the following issues with prior art related to physical UICCs:

• Difficulty in reaching remote modules for physical UICC replacement: Modules may be in inaccessible locations (e.g., shipping containers), making physical swapping expensive or difficult.
• Preference for hermetically sealed modules: Manufacturers or service providers may want modules to be sealed to prevent tampering, which conflicts with replaceable physical UICCs.
• Prohibitive cost of swapping UICCs for roaming: Modules moving between countries might benefit from different operators' UICCs for cost efficiency, but physical swapping is expensive.
• Security limitations of electronically transferred keys: While embedded UICCs (eUICCs) solve physical media issues, securely and efficiently transferring new network access credentials (like IMSI and network key K) remains a challenge. The security of the electronically transferred key K is only as strong as the encryption of the transfer channel and the security of the keys used for that channel, which may be outside the control of the Mobile Network Operator (MNO).
• Need for key rotation: The extended use of a single key K poses a security risk, and the prior art involving physical UICCs makes periodic key changes difficult and costly.

The invention of US11233780 aims to address these challenges by providing methods and systems for an eUICC that supports two-factor authentication and allows for secure, remote management of network access credentials, including the rotation of secret keys (Key K), without requiring physical intervention.

To analyze the obviousness of US patent 11233780 under 35 U.S.C. § 103, we will consider the independent claims and combinations of prior art references cited within the patent itself. A person having ordinary skill in the art (PHOSITA) in 2013 (the priority date of the patent) would be knowledgeable in wireless communication technologies, network security, integrated circuit cards (UICC/SIM), embedded UICCs (eUICCs), and various authentication and key management protocols.

The prior art references used in this analysis are sourced from the "References Cited" section of US11233780 on Google Patents (https://patents.google.com/patent/US11233780/en).

Obviousness Analysis of Independent Claim 1 (Method for securing communications)

Claim 1 Elements and Prior Art Relevance:

1. Receiving an encrypted profile including a first ciphertext portion and a second ciphertext portion:

   • The general concept of an eUICC receiving an encrypted profile for remote provisioning is well-established in the prior art, as exemplified by US8635467B2 (Secured provisioning of UICC profile) and the requirements outlined in ETSI TS 103 383 v12.1 (Embedded UICC; Requirements Specification). A PHOSITA would recognize that dividing a profile into multiple encrypted portions (e.g., a "first ciphertext portion" and a "second ciphertext portion") is a routine design choice to implement layered security or staged access to different sets of credentials, depending on the desired level of authentication or trust.

2. Decrypting the first ciphertext portion using an eUICC profile key and a symmetric ciphering algorithm to obtain a plaintext first key (K) and a plaintext first network module identity:

   • ETSI TS 103 383 v12.1 details eUICC profiles containing network access credentials like a subscriber identity (network module identity) and a secret key K for network authentication. US8635467B2 teaches the secure provisioning of such profiles, inherently involving decryption using an appropriate key. Symmetric ciphering is a widely known and fundamental cryptographic technique for data decryption using a shared key. The patent itself notes a problem that the invention addresses: that the security of an electronically transferred key K is dependent on the encryption of the channel and the security of keys used for that channel, which may be outside MNO control.

3. Performing a first authentication with a wireless network using the plaintext first key and the plaintext first network module identity:

   • This step describes a standard mobile network authentication process. 3GPP TS 33.401 V12.9.0 (3GPP System Architecture Evolution (SAE); Security architecture) and ETSI TR 102 216 V11.0.0 (UICC; Physical and logical characteristics) define the challenge-response authentication mechanism (e.g., using RAND and RES values with a pre-shared secret key K) for mobile devices accessing wireless networks (e.g., 3G, 4G LTE). The patent acknowledges this as a "core element of traditional wireless WAN technologies." US8219792B2 (M2M services using virtual SIM) would implicitly require this standard authentication for virtual SIMs (eUICCs) to function.

4. Performing a second authentication with a mobile network operator (MNO) using a second factor over the wireless network:

   • The general concept of two-factor authentication (2FA) for verifying user or device identity is a well-known security practice, separate from the initial network attachment. It involves combining two different authentication factors (e.g., something the user knows, something the user has, or something the user is). The patent describes examples of this second authentication as a user entering information on a web page or making a telephone call to a call center to confirm identity. The patent also explicitly states the problem that "a need exists in the art for the MNO to securely and efficiently control the use of an electronically transferred key K within a profile for an eUICC, even though copying and distributing the profile may be outside the control of the MNO."

5. Receiving a symmetric key from the MNO subsequent to a successful second authentication:

   • The secure transmission of configuration data and keys from an MNO or subscription manager to a device is inherent in remote provisioning systems (e.g., US8635467B2, US8948756B2 - Over-the-air provisioning of SIM profiles).

6. Using the received symmetric key to decrypt the second ciphertext portion of the encrypted profile to reveal a plaintext second key (K) and a plaintext second network module identity:

   • This is a continuation of the decryption process, similar to the first decryption step, but utilizing a newly received key. The concept of using different keys for different portions of an encrypted profile, or for different stages of access, is a predictable application of cryptographic principles. The patent highlights the desirability for MNOs to "periodically rotate or change" key K for increased security, and that "the continued and extended use of a single key K...can be a security risk."

Motivation to Combine for Claim 1:
A PHOSITA would be motivated to combine ETSI TS 103 383 v12.1 (eUICC requirements), US8635467B2 (secured provisioning of UICC profile), and 3GPP TS 33.401 V12.9.0 (SAE security architecture), along with general knowledge of multi-factor authentication, to address the known problem of MNO control and enhanced security for eUICC profiles.

Given that eUICC profiles contain critical network access credentials (ETSI TS 103 383) and can be remotely provisioned (US8635467B2), a PHOSITA would recognize that the initial provisioning, especially through potentially untrusted channels, might not provide sufficient assurance for the MNO. The explicit problem stated in the patent—the MNO's lack of control over key K distribution when the profile is copied or distributed—would drive a PHOSITA to devise a mechanism for the MNO to assert control over the most secure credentials.

It would be obvious to:

• Allow initial network access using a first set of credentials (which might be less secure, temporary, or even a null key as discussed in the patent) to establish a basic communication channel. This initial authentication is standard practice for mobile networks (3GPP TS 33.401).
• Implement a secondary, MNO-controlled authentication (a "second factor") over this established channel to verify the user or device association. Multi-factor authentication is a common security paradigm.
• Once this higher level of trust is established, the MNO would then provision the more sensitive, long-term, or regularly rotated keys. This would naturally involve sending a key to unlock the remaining, most critical, parts of the eUICC profile.
• Dividing the eUICC profile into two encrypted portions, with the second portion only decryptable after the MNO's second authentication, is a straightforward way to implement this staged release of credentials. This addresses the MNO's need for control and enhanced security, as the final, fully secure keys are only activated after direct MNO verification. This combination of known elements and principles would lead to the claimed method as a predictable improvement to existing secure eUICC provisioning, achieving the desired security and control benefits.

Obviousness Analysis of Independent Claim 11 (Module for securing communications)

Claim 11 Elements and Prior Art Relevance:

1. A physical interface configured to communicate with a wireless network:

   • This is a standard component of any mobile or M2M module. US8219792B2 (M2M services using virtual SIM) describes such a module with a physical interface for wireless communication.

2. A nonvolatile memory configured to store an embedded universal integrated circuit card (eUICC) and an encrypted profile, wherein the encrypted profile includes a first ciphertext portion and a second ciphertext portion:

   • Storing an eUICC in nonvolatile memory is a fundamental requirement for eUICC functionality and persistence, as specified in ETSI TS 103 383 v12.1 and exemplified by US9806950B2 (Embedded SIM with secure element), which describes secure elements typically implemented with nonvolatile memory. The storage of an "encrypted profile" is taught by US8635467B2 (Secured provisioning of UICC profile). As discussed for Claim 1, structuring the profile into two ciphertext portions is a logical design choice for implementing staged access to credentials.

3. A central processing unit (CPU) coupled to the physical interface and the nonvolatile memory, the CPU configured to perform the steps of Claim 1:

   • A CPU is a standard component of any module or device (US8219792B2, US9806950B2). Configuring a CPU to execute a sequence of operations, including cryptographic functions (decryption, key management) and communication protocols (network authentication, 2FA interaction), is a routine task for a PHOSITA. The functional configuration of the CPU to perform the method steps of Claim 1 (which are themselves obvious) would thus be an obvious implementation.

Motivation to Combine for Claim 11:
A PHOSITA would be motivated to combine US8219792B2 (M2M virtual SIM module) with US9806950B2 (embedded SIM with secure element), and general engineering knowledge of implementing cryptographic and communication functions within a module, to create a device capable of executing the security method described in Claim 1.

Given the existence of modules designed for M2M communications with virtual SIM capabilities (US8219792B2), and the knowledge that eUICCs are typically stored in secure elements with nonvolatile memory (US9806950B2), it would be an obvious engineering task to configure such a module's CPU to perform the steps of the two-factor authentication and staged key provisioning method (as described in Claim 1). The specific arrangement of nonvolatile memory to store a profile in two ciphertext portions for sequential decryption, driven by the need for enhanced MNO control and security, is a predictable architectural choice for a PHOSITA designing a robust eUICC system.

Obviousness Analysis of Independent Claim 15 (Method for securing eUICC profile key)

Claim 15 Elements and Prior Art Relevance:

1. Sending, by a module, an embedded universal integrated circuit card (eUICC) identity to an eUICC subscription manager through a first network:

   • The concept of an eUICC communicating its identity to an eUICC subscription manager for provisioning is fundamental to ETSI TS 103 383 v12.1. The "first network" (e.g., WiFi, wired connection, or another mobile network) for initial provisioning is explicitly mentioned in the patent as a known alternative to the target wireless network.

2. Receiving, by the module, an encrypted eUICC profile key, wherein the eUICC profile key is encrypted with an asymmetric ciphering algorithm and an eUICC public key:

   • The patent states that "the eUICC can record an eUICC private key and the eUICC subscription manager could record an eUICC public key", indicating a Public Key Infrastructure (PKI) setup. The use of asymmetric cryptography (PKI) for securely exchanging or distributing keys is a well-established and fundamental security practice. US9077651B2 (System and method for providing security keys) and US8533470B2 (Method for generating a key for authentication and encryption) broadly cover key provision, and a PHOSITA would know PKI as a primary method for securing such transfers in an untrusted environment.

3. Decrypting, by the module, the encrypted eUICC profile key using the asymmetric ciphering algorithm and an eUICC private key to obtain a plaintext eUICC profile key:

   • This is the standard, complementary step to asymmetric encryption, where the corresponding private key decrypts data encrypted with the public key.

4. Receiving, by the module, an encrypted profile, wherein the encrypted profile is encrypted with the plaintext eUICC profile key and a symmetric ciphering algorithm:

   • Receiving an encrypted profile is known from US8635467B2 and ETSI TS 103 383 v12.1. Encrypting the profile data itself with a symmetric key (the "eUICC profile key") is a common and efficient method for bulk data encryption, as noted in the patent ("the eUICC subscription manager 109 can use an eUICC profile key 107 b to cipher portions of an eUICC profile 107 c, such that only module 101 with the same eUICC profile key 107 b could reasonably decipher the portions of the eUICC profile 107 c.")

5. Decrypting, by the module, the encrypted profile using the plaintext eUICC profile key and the symmetric ciphering algorithm to extract a plaintext first key (K) and a plaintext first network module identity:

   • This is a standard decryption step using the symmetric eUICC profile key.

6. Using the plaintext first key and the plaintext first network module identity to perform a first authentication with a wireless network:

   • As discussed for Claim 1, this is a standard mobile network authentication process, well-known in the prior art (3GPP TS 33.401, ETSI TR 102 216).

Motivation to Combine for Claim 15:
A PHOSITA would be motivated to combine ETSI TS 103 383 v12.1 (eUICC requirements and provisioning), US8635467B2 (secured provisioning of UICC profile), and general knowledge of Public Key Infrastructure (PKI) and asymmetric/symmetric cryptography, to achieve secure provisioning of eUICC profiles.

Given the necessity of securely transferring sensitive eUICC profiles and their associated keys to a module, a PHOSITA would recognize the limitations of simple channel encryption or pre-shared symmetric keys for initial provisioning, especially when dealing with potentially untrusted distribution channels or initial network connections. Therefore, it would be obvious to employ the well-known principles of PKI for secure key establishment. Specifically, using asymmetric encryption (public/private key pair) to securely transmit the symmetric "eUICC profile key" that then decrypts the larger, symmetrically encrypted eUICC profile (containing the first key K and network module identity) is a fundamental and common approach in secure communications. This layered encryption strategy (asymmetric for key transport, symmetric for bulk data encryption) is a predictable and effective way for a PHOSITA to ensure the confidentiality and integrity of eUICC profile provisioning, as required by eUICC standards (ETSI TS 103 383) and prior art on secure provisioning (US8635467B2).

To provide details on Patent Term Adjustments (PTA), Patent Term Extensions (PTE), continuation/divisional applications, related family members, and the projected expiration date for US patent 11233780, a direct search of the USPTO database for this specific patent number is necessary. Since I cannot directly access the live USPTO database, I will rely on information available through general patent search mechanisms and my internal knowledge of patent law principles.

Based on the information available for US Patent 11233780:

Patent Term Adjustments (PTA):
Patent Term Adjustment (PTA) can add days to the term of a U.S. patent to compensate for certain delays caused by the USPTO during the patent prosecution process for utility or plant patent applications. This process applies to applications filed on or after May 29, 2000. The calculation of PTA is complex and involves accounting for specific USPTO delays (e.g., failing to issue an office action within 14 months, failing to respond to a reply within four months) and subtracting any applicant-caused delays. The official PTA calculation for a patent is typically included in the Issue Notification Letter mailed to applicants before the patent issues.

Without direct access to the official USPTO patent record for US11233780, the exact PTA for this patent cannot be definitively stated. However, the patent was filed on June 26, 2019, and issued on January 25, 2022. The period of prosecution was approximately 2 years and 7 months (31 months). Given that the USPTO aims to issue a patent within 36 months from the filing date, and issues an office action within 14 months, delays could accrue PTA. Any PTA granted would be added to the standard 20-year patent term.

Patent Term Extensions (PTE):
Patent Term Extension (PTE) is available under the Hatch-Waxman Act (35 U.S.C. § 156) for patents claiming products (human drugs, food or color additives, medical devices, animal drugs, and veterinary biological products) that require premarket regulatory approval from agencies like the FDA. PTE aims to restore a portion of the patent term lost during this regulatory review period, up to a maximum of five years, and the remaining patent term cannot exceed 14 years from the date of marketing approval.

Since US11233780 relates to an "Embedded universal integrated circuit card supporting two-factor authentication" for machine-to-machine (M2M) communications and the Internet of Things (IoT), it does not appear to claim a product that would typically be subject to premarket regulatory approval by agencies like the FDA. Therefore, it is highly unlikely that US11233780 would be eligible for a Patent Term Extension (PTE) under 35 U.S.C. § 156.

Continuation Applications, Divisional Applications, and Related Family Members:
A patent granted on a continuation, divisional, or continuation-in-part application filed on or after June 8, 1995, will have a term that ends 20 years from the filing date of the earliest application for which a benefit is claimed. The USPTO provides "Continuity Data" in its Public Patent Application Information Retrieval (PAIR) system, which shows parent and child applications.

Based on the Google Patents information for US11233780, the "Other versions" section and "Priority date" indicate related applications:

• US20190319937A1 (Publication of a related application on 2019-10-17).
• US16/453,682 (Application number, which is also the application number for US11233780B2, with a priority to US16/453,682 on 2019-06-26).
• US17/547,990 (Priority date of 2021-12-10 to this application). This is likely a continuation or divisional application. The patent US11916893B2 is associated with this priority.
• US18/416,534 (Priority date of 2024-01-18 to this application). This is likely a continuation or divisional application. The patent US12207094B2 is associated with this priority.
• US18/433,683 (Priority date of 2024-02-06 to this application). This is likely a continuation or divisional application. The patent US12490098B2 is associated with this priority.
• US18/435,042 (Priority date of 2024-02-07 to this application). This is likely a continuation or divisional application. The patent US12477340B2 is associated with this priority.
• US18/587,462 (Priority date of 2024-02-26 to this application). This is likely a continuation or divisional application. The patent US12477341B2 is associated with this priority.
• US19/387,056 (Priority date of 2025-11-12 to this application). This is likely a continuation or divisional application. The patent US20260075427A1 is associated with this priority.

These listed priority claims indicate that US11233780 is part of a patent family and has several child continuation or divisional applications that claim priority back to the original filing date of US16/453,682.

Projected Expiration Date:
The standard patent term for utility patents issued from applications filed on or after June 8, 1995, is 20 years from the earliest filing date for which a benefit is claimed under 35 U.S.C. § 120, 121, or 365(c). This term can be adjusted by PTA.

For US11233780:

• Filing Date: 2019-06-26
• Priority Date: 2013-12-06 (This is the earliest priority date listed, which is crucial for calculating the 20-year term).

The "Legal status" section on Google Patents explicitly states: "Active , expires 2034-01-04". This date already reflects any patent term adjustments. Based on the priority date of 2013-12-06, a 20-year term would typically end on 2033-12-06. The stated expiration date of 2034-01-04 suggests that a Patent Term Adjustment (PTA) of approximately 29 days (from December 6, 2033, to January 4, 2034) was granted to compensate for USPTO delays during prosecution. [cite: Google Patents Legal Status, 19, 21]