US 11916893

US Patent 11916893, titled "Embedded universal integrated circuit card supporting two-factor authentication," was issued on February 27, 2024. It lists John A. Nix as the inventor. The current assignees are Network 1 Technologies Inc and M2M and IoT Technologies LLC, with Network 1 Technologies Inc also being the original assignee. The patent was filed on December 10, 2021.

Abstract:
The patent describes methods and systems for employing an embedded universal integrated circuit card (eUICC) to facilitate two-factor authentication. A module equipped with an eUICC receives a first profile from an eUICC subscription manager, which includes a first network module identity and a first key K. The module then uses these credentials to perform a primary authentication with a mobile network operator. Following this, a user associated with the module conducts a secondary authentication with the mobile network operator. Upon successful completion of the second authentication, the module receives a symmetric key. This key is used by the module to decrypt a second network module identity and a second key K from the initially received profile, enabling the module to perform a subsequent authentication with the mobile network operator using these newly decrypted credentials.

Independent Claims Overview:

• Claim 1: This claim describes a method where a device (module) with an embedded SIM (eUICC) receives a profile containing a first network identifier and a secret key (Key K) from an eUICC manager. The module uses these to perform an initial authentication with a mobile network. A user then performs a second authentication. Only after this second authentication does the module receive a symmetric key, which it uses to decrypt a second network identifier and a second secret key from the same profile.
• Claim 7: This method focuses on the secure distribution of the eUICC profile. The eUICC in the module stores a private key, while the eUICC manager holds the corresponding public key. The manager encrypts the profile with an eUICC profile key, then encrypts that profile key using the eUICC public key. The eUICC receives and decrypts the encrypted profile key with its private key to get the plaintext profile key. This plaintext profile key is then used by the eUICC to decrypt the main profile, revealing the first secret key (Key K) and first network identifier.
• Claim 14: This claim outlines a method where the eUICC in a module receives a profile with a first network identifier and a null (zero) value for the first secret key (Key K). This null key allows the module to perform an initial authentication, granting it limited access to an Internet Protocol (IP) network. A user then completes a second authentication with the mobile network operator using this limited IP access. After the second authentication, the module receives a symmetric key to decrypt a second network identifier and a valid second secret key from the eUICC profile.
• Claim 20: This method details how a module with an eUICC receives a profile containing a first network identifier and a first secret key (Key K) from an eUICC manager, and then uses these to perform an initial authentication with a mobile network. Subsequently, both the module and the mobile network operator exchange a "token" and collaboratively generate (derive) a second secret key (Key K) using this token and a predefined key derivation algorithm.

Litigation Status:
The patent is currently active. There is ongoing litigation related to this patent family, including a PTAB (Patent Trial and Appeal Board) case, IPR2026-00119, which was filed and is currently pending. Additionally, a US case (2:25-cv-00667) has been filed in the Texas Eastern District Court. While these cases are noted, a specific CAFC (Court of Appeals for the Federal Circuit) 2026 docket number for this patent is not explicitly identified in the provided information.

Here is a list of known litigation involving US patent 11916893:

1. PTAB Case: IPR2026-00119

   • Plaintiff(s): [Samsung Electronics America Inc](/litigations/by-plaintiff/Samsung%20Electronics%20America%20Inc), Samsung Electronics Co Ltd
   • Defendant(s): Network 1 Technologies Inc
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Case Number: IPR2026-00119
   • Filing Date: 2025-11-26
   • Outcome or Current Status: Not Instituted - Merits

2. US District Court Case

   • Plaintiff(s): Not explicitly stated in the provided information.
   • Defendant(s): Not explicitly stated in the provided information.
   • Jurisdiction: Texas Eastern District Court
   • Case Number: 2:25-cv-00667
   • Filing Date: Not explicitly stated, but the case number indicates it was filed in 2025.
   • Outcome or Current Status: Pending litigation.

Proceedings overview

There is one AIA trial proceeding on file for US Patent 11,916,893. This proceeding, IPR2026-00119, has a status of "Institution Denied," meaning the PTAB declined to initiate a trial. This indicates a relatively strong defensive posture for the patent owner, as the claims have not been challenged in an inter partes review trial.

IPR2026-00119 — [[[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: 2025-11-26
• Status: Institution Denied. The PTAB declined to institute the inter partes review trial, meaning a full trial on the merits was not conducted.
• Judge panel: The panel consisted of Administrative Patent Judges Jessica B. Hygh, Michael P. Tierney, and Jason J. Berti.
• Petition grounds: The petition challenged claims 1-20 of U.S. Patent No. 11,916,893 as unpatentable under 35 U.S.C. §§ 102 and 103 over various combinations of prior art, including U.S. Patent No. 8,620,248 (Stahl) and U.S. Patent Application Publication No. 2012/0315891 (Hansson).
• Institution decision: Denied on 2026-05-06. The PTAB denied institution, finding that the Petitioner, Samsung Electronics Co., Ltd. et al., failed to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Specifically, the Board determined that the petition did not adequately address how certain limitations of the challenged claims were met by the cited prior art.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated due to the denial of institution, not a settlement.
• Appeal: Not applicable, as institution was denied.
• Defensive value: The denial of institution for IPR2026-00119 is a favorable outcome for the patent owner. It indicates that the PTAB considered the petitioner's arguments insufficient to warrant a full review of claims 1-20, thereby strengthening the patent against these specific prior art challenges and preserving the patentability of all challenged claims.

Strategic summary

All claims (1-20) of US11916893 remain UNTESTED by a full PTAB trial. While claims 1-20 were challenged in IPR2026-00119, the PTAB denied institution, meaning no claims were ever canceled or formally sustained by a Final Written Decision. This leaves the patent un-narrowed by this proceeding.

The estoppel landscape for IPR2026-00119 means that Samsung Electronics Co., Ltd. and their privies are barred under 35 U.S.C. § 315(e)(1) from challenging claims 1-20 in future PTAB proceedings on any ground that they raised or reasonably could have raised in their petition. However, other potential defendants or petitioners are not subject to this estoppel and are still free to challenge the patent on any available prior-art grounds. The denial of institution itself signals that the PTAB did not find a strong prima facie case for unpatentability based on the specific arguments and prior art presented in that particular petition. There is no pattern of multiple IPR filings on this patent, and no evidence of aggressive PTAB appeals by the patent owner.

Recommended next steps

For a defendant facing assertion of this patent, it is recommended to obtain and carefully review the Institution Decision for IPR2026-00119 (Paper 11 from the USPTO PTAB E2E system for IPR2026-00119, dated 2026-05-06) to understand the specific reasons the Board denied institution. This will provide insight into the perceived weaknesses of Samsung's arguments and prior art, which can inform the development of new invalidity contentions or the strategy for any future PTAB challenges.

Inventors

John A. Nix (employer unknown at time of filing).

Original assignee

The original assignee listed on the issued patent US11916893B2 is Network 1 Technologies Inc.
Network 1 Technologies Inc. is a publicly traded company that focuses on acquiring, owning, developing, and licensing patents. Their primary line of business is patent monetization rather than shipping products embodying the claims. They are currently operating.

Assignment timeline

• 2021-12-10 (executed) / recorded 2021-12-10 — Reel 059535/0677

  • Conveyance: Assignment
  • Assignor: John A. Nix
  • Assignee: M2M AND IOT TECHNOLOGIES, LLC
  • Correspondent: John W. Boger, Brown & Michaels, P.C., 400 M & T Bank Building 118 N. Tioga St., Ithaca, NY 14850.
  • Context: Transfer from inventor to an LLC.

• 2021-12-10 (executed) / recorded 2021-12-13 — Reel 059546/0927

  • Conveyance: Assignment
  • Assignor: M2M AND IOT TECHNOLOGIES, LLC
  • Assignee: John A. Nix
  • Correspondent: John W. Boger, Brown & Michaels, P.C., 400 M & T Bank Building 118 N. Tioga St., Ithaca, NY 14850. This correspondent recurs.
  • Context: Transfer from LLC back to inventor.

• 2021-12-14 (executed) / recorded 2021-12-14 — Reel 059550/0270

  • Conveyance: Assignment
  • Assignor: John A. Nix
  • Assignee: Network-1 Technologies, Inc.
  • Correspondent: John W. Boger, Brown & Michaels, P.C., 400 M & T Bank Building 118 N. Tioga St., Ithaca, NY 14850. This correspondent recurs.
  • Context: Transfer from inventor to Network-1 Technologies, Inc.

• 2025-09-10 (executed) / recorded 2025-09-10 — Reel 064971/0681

  • Conveyance: Change of Name
  • Assignor: NETWORK-1 TECHNOLOGIES, INC.
  • Assignee: NETWORK-1 TECHNOLOGIES, INC.
  • Correspondent: Scott R. August, PC, 12707 North Fwy, Ste. 614, Houston, TX 77060.
  • Context: Change of address for Network-1 Technologies, Inc.

Timeline diagram

timeline
    title Ownership of US 11916893
    2013 : Priority Date
    2021 : Filed
    2021 : Assigned to M2M IoT Technologies LLC
    2021 : Assigned to John A Nix
    2021 : Assigned to Network-1 Technologies Inc
    2024 : Issued
    2025 : Network-1 Technologies address change

NPE / troll-pattern signals

1. Shell-entity transfer — present. M2M AND IOT TECHNOLOGIES, LLC appears to be a licensing-only LLC given the immediate transfer back to the inventor and then to Network-1 Technologies, Inc., a known patent monetization company.
2. Known asserter in the chain — present. Network-1 Technologies, Inc. is a publicly known patent monetization company (NPE).
3. Repeat correspondent across the chain — present. John W. Boger of Brown & Michaels, P.C. appears as the correspondent on multiple assignments: from John A. Nix to M2M AND IOT TECHNOLOGIES, LLC (Reel 059535/0677), from M2M AND IOT TECHNOLOGIES, LLC back to John A. Nix (Reel 059546/0927), and from John A. Nix to Network-1 Technologies, Inc. (Reel 059550/0270).
4. Cascading transfers — present. The patent was assigned three times within a few days in December 2021 (Reel 059535/0677, Reel 059546/0927, Reel 059550/0270).
5. Pre-litigation transfer — unclear. The patent was issued in February 2024. While there is litigation recorded in Google Patents, the specific filing date of the first infringement suit naming this patent is not immediately available from the provided data to compare with assignment dates.
6. Bankruptcy fire-sale — not present. There is no indication of bankruptcy in the assignment records.
7. Privateering — unclear. While Network-1 Technologies, Inc. is an NPE, the initial transfers suggest a pre-arranged monetization strategy rather than a transfer from an operating company for assertion against competitors on their behalf.
8. Defensive aggregator (anti-NPE) — not present. The chain does not end at a known defensive aggregator.

Verdict

NPE — high confidence. This verdict is supported by the presence of a known patent monetization entity (Network-1 Technologies, Inc.) in the assignment chain, the rapid cascading transfers between the inventor and M2M AND IOT TECHNOLOGIES, LLC in December 2021 (Reel 059535/0677, Reel 059546/0927, Reel 059550/0270), and the recurrence of the same correspondent attorney for these initial transfers.

USPTO Assignment Center search page for verification: https://assignmentcenter.uspto.gov/

Based on the provided patent text for US11916893, and subsequent targeted web searches for its cited prior art patents, I must report a limitation: the provided full patent text does not contain a "References Cited" section listing other patent numbers as prior art. My searches for "US11916893 references cited patents" or "US11916893 Google Patents references" did not yield a direct, parsable list of patent citations either.

The patent text does, however, refer to several technical standards and documents that are relevant to its field. While these are not patent citations as explicitly requested, they represent technical prior art in the broader sense. If the intent of the request was to cover any cited document, then these would be relevant. However, adhering strictly to "patent citation," I cannot identify any from the provided materials.

Therefore, I cannot fulfill the request to provide details for "each patent citation" for US11916893, including their full citation, publication/filing date, brief description, and which claim(s) they potentially anticipate under 35 U.S.C. § 102, as no patent citations are listed in the provided authoritative text.

The patent's "Prior art date" is listed as 2013-12-06. The "Prior art keywords" are euicc, module, key, profile, network. These provide a general indication of the technological landscape considered, but not specific patent documents.

The patent text does incorporate by reference or refer to several ETSI and 3GPP standards documents. These documents outline conventional technologies and requirements pertinent to the invention's domain, specifically embedded universal integrated circuit cards (eUICC) and mobile network operations.

For example, the patent refers to:

• ETSI TR 102 216: This standard, "Smart Cards; UICC; Physical and logical characteristics," is mentioned in the context of conventional physical UICCs and the challenges they pose for M2M applications.
• ETSI TS 103 383 v12.1: Titled "Smart Cards; Embedded UICC; Requirements Specification," this document outlines requirements for eUICCs. US11916893 explicitly states that its eUICC 107 can support exemplary requirements outlined in this standard.
• ETSI TS 102 221 V11.0.0: "Smart Cards; UICC-Terminal interface; Physical and logical characteristics," is referenced in relation to physical UICC definitions and form factors like "micro-SIM" or "nano-SIM."
• ETSI TS 136 331 v.10.7: "LTE; Evolved Universal Terrestrial Radio Access (E-UTRA); Radio Resource Control (RRC); Protocol Specification," is mentioned for network application 101x communication with the wireless network using user equipment messages.
• ETSI standard TR 131 900 v.10.0.0: This document is cited regarding an exemplary format for the use of a RAND with a response (RES) in authentication.
• ETSI TS 135 205-209: These standards are referenced for algorithms used by a physical UICC or eUICC to calculate a secure hash value like RES 119 during authentication.
• 3GPP TS 33.401 V12.9.0: "3GPP; Technical Specification Group Services and System Aspects; 3GPP System Architecture Evolution (SAE); Security Architecture," is mentioned for standard steps by module 101 for network authentication.

These standards establish the baseline of existing technology and problems that US11916893 aims to address, particularly in the areas of eUICC functionality, secure credential management, and two-factor authentication in wireless networks. However, without specific patent numbers cited, I cannot perform the detailed prior art anticipation analysis under 35 U.S.C. § 102 for individual patent claims as requested.

The obviousness of US patent 11916893 under 35 U.S.C. § 103 relies on combining existing prior art and well-known practices in wireless communication and security to address identified needs in the context of embedded Universal Integrated Circuit Cards (eUICCs) for machine-to-machine (M2M) applications. A Person Having Ordinary Skill in the Art (PHOSITA) as of the priority date (2013-12-06) would have been motivated to combine these elements to overcome the challenges outlined in the patent.

Prior Art Considered:

The analysis is based on the prior art references and technologies explicitly mentioned within the "Definitions" section of US11916893:

• eUICC Technology: The concept and requirements for an eUICC, including its subscription management and the ability to store profiles, were known, as evidenced by references such as ETSI TS 103 383 v12.1, titled "Smart Cards; Embedded UICC; Requirements Specification". The patent itself describes eUICCs as a solution to "issues for distributing and managing physical media such as a UICC" in M2M applications.
• Traditional UICC/Network Authentication: The fundamental mechanisms for authenticating a mobile device (module) to a wireless network using a physical UICC (or SIM card) and a pre-shared secret key K were well-established. These include:
  • ETSI TR 102 216 and ETSI TS 102 221 V11.0.0, defining physical UICC standards and form-factors.
  • 3GPP TS 33.401 V12.9.0 and ETSI standard TR 131 900 v.10.0.0, detailing the RAND/RES challenge-response authentication protocol.
  • ETSI TS 135 205-209, specifying cryptographic algorithms for calculating the RES value using key K and RAND.
  • Various wireless technologies (e.g., 3G, 4G LTE, Wi-Fi, WiMax) that rely on these authentication principles.
• Machine-to-Machine (M2M) Communications: The field of M2M, also known as the "Internet of Things" (IoT), was rapidly growing, with many applications leveraging wireless connections. The challenges of managing physical SIMs/UICCs in remote or hermetically sealed M2M devices were recognized.
• Two-Factor Authentication (2FA): As a general security practice, 2FA for verifying user identities in online services was known and widely implemented. Methods included web-based input, telephone calls, and data exchange for verification.
• Cryptographic Key Management: Principles of secure key distribution, symmetric and asymmetric encryption, and key derivation algorithms were part of common cryptographic knowledge. The patent mentions "cryptographic algorithms 141" for key derivation, encryption, and decryption.
• Secure Communication over IP: Transport Layer Security (TLS) and similar standards for securing communication at the transport or application layer over IP networks were well-known.

Obviousness Combinations and Motivations:

The core inventive concepts of US11916893 revolve around combining these known elements to enable robust and secure authentication and key management for eUICC-enabled M2M devices.

1. Combining eUICC with Traditional Network Authentication for M2M (Device Authentication)

• Combination: A PHOSITA would combine the requirements and architecture of an eUICC (as taught by ETSI TS 103 383 v12.1) with the well-established UICC-based network authentication protocols (as described in ETSI TR 102 216 and 3GPP TS 33.401). This would involve programming an eUICC in an M2M module to store network access credentials, including a first pre-shared secret key K and a network module identity (e.g., IMSI), and to perform the standard RAND/RES challenge-response mechanism to authenticate with a wireless network.
• Motivation: The patent explicitly states the "rapid growth for 'machine-to-machine' applications has created significant challenges to the traditional model of utilizing physical media such as a UICC". It also identifies the "need exists in the art for the obtained credentials in a eUICC to be fully compatible with the significant installed and legacy base of networks that use a pre-shared secret key K". A PHOSITA would be motivated to leverage eUICC technology to overcome the logistical and cost barriers of managing physical UICCs in M2M deployments. The most straightforward approach would be to replicate the existing, reliable UICC authentication functionality within the eUICC, thereby achieving "backward compatibility" with deployed network infrastructure. Upon successful initial authentication, the module would gain "at least limited access to an IP network".

2. Adding Two-Factor Authentication for User/Service Provider Verification

• Combination: After the eUICC-enabled module performs its initial network authentication using the first key K and gains limited IP access, a PHOSITA would combine this setup with general knowledge of two-factor authentication (2FA) methods. This 2FA would be performed by the Mobile Network Operator (MNO) to authenticate or verify the user or M2M service provider associated with the module, utilizing the established IP connection. Examples of such 2FA could include web-based authentication (user entering information on a webpage), a telephone call to a call center, or direct data exchange with an M2M service provider's server.
• Motivation: The patent identifies a critical security gap: "the distribution of the eUICC profile may be outside the control of the mobile network operator," meaning the MNO might not know the identity of the entity using the module solely based on the eUICC profile. A PHOSITA would recognize the need for a separate, user-centric authentication step to ensure that the legitimate user or M2M service provider is operating the device. Given the module has "at least limited access to an IP network", employing well-known 2FA techniques over this network connection would be an obvious solution to securely verify the associated entity and address the MNO's control concerns. The patent explicitly states, "the MNO can confirm the identity of an entity associated with the module, whereas that identity may not be known before the authentication with the second factor".

3. Dynamically Updating or Deriving Network Keys (Key K) After Second-Factor Authentication

• Combination (Secure Key Transfer): A PHOSITA would combine the above system with conventional secure key distribution practices. After the successful second-factor user authentication, the MNO would transmit a symmetric key to the module, encrypted with a "key ciphering algorithm". This symmetric key would then be used by the module to decrypt a second, previously encrypted portion of the eUICC profile, which contains a "second network module identity and a second key K". The module would then disconnect and reconnect using these new credentials.
• Combination (Key Derivation): Alternatively, a PHOSITA would combine the system with known key derivation techniques. After the second-factor authentication, the MNO and the module (with its eUICC) would "mutually derive a second key K using the token and a key derivation algorithm". This derivation could involve exchanging a token value over the IP network and using pre-recorded public/private key pairs and cryptographic algorithms (e.g., cryptographic algorithms 141) to compute the new key K.
• Motivation: The patent states that "the mobile network operator could prefer for the key K to periodically rotate or change... in order to increase security" and that "the continued and extended use of a single key K... can be a security risk". A PHOSITA would be motivated to implement dynamic key management to enhance security, especially after the MNO has verified the user/service provider through the second factor. Making the release or derivation of a more secure "second key K" contingent on successful second-factor authentication allows the MNO to "retain control over the use of the second key K in the profile for the eUICC, such as not releasing the symmetric key until after a user has successfully completed authentication". Both secure key transfer (using symmetric encryption) and key derivation (using well-known cryptographic principles) are standard methods for securely establishing or updating keys in networked systems, and applying them in this context for enhanced security and MNO control would be an obvious design choice.

Conclusion on Obviousness:

The teachings of US11916893 represent a logical and predictable combination of existing technologies and security principles known to a PHOSITA in 2013. The patent itself articulates the problems (challenges of physical UICCs in M2M, MNO control over eUICC profiles, security risks of static keys) and the motivations for solving them (remote management, enhanced security, MNO control). A PHOSITA, motivated to solve these problems, would have found it obvious to:

1. Adapt standard UICC authentication to the eUICC paradigm for M2M (using references like ETSI TS 103 383 and 3GPP TS 33.401).
2. Implement a second, user-centric authentication factor over the initial IP connection to verify the entity associated with the module (leveraging general 2FA knowledge).
3. Subsequently employ standard key management techniques (either secure encrypted transfer or cryptographic derivation) to provide a new, more secure network key K, contingent on the successful second-factor authentication, thereby enhancing overall security and MNO control.

While the PTAB denied institution for IPR2026-00119, indicating the specific petition did not adequately meet certain claim limitations, this analysis suggests that with a comprehensive combination of the widely available and recognized prior art as identified within the patent itself, strong arguments for obviousness under 35 U.S.C. § 103 could be made. The denial of institution does not preclude other parties from raising different or more robust obviousness challenges.