DCT

2:25-cv-00667

Network 1 Tech Inc v. Samsung Electronics Co Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-00667, E.D. Tex., 10/22/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Samsung Electronics America, Inc. maintains a permanent and continuous presence, has committed acts of infringement, and maintains a regular and established place of business in the district, including major R&D, engineering, and mobile business unit facilities in Plano, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile devices and other products with eSIM and/or 5G capabilities infringe six U.S. patents related to secure remote provisioning and authentication of devices on mobile networks.
  • Technical Context: The lawsuit concerns Embedded Subscriber Identity Module (eSIM) and 5G authentication technologies, which are foundational to modern telecommunications for enabling remote network selection and secure high-speed connectivity in consumer and machine-to-machine devices.
  • Key Procedural History: The complaint is a First Amended Complaint, indicating it follows an Original Complaint. The willfulness and inducement allegations are predicated on Defendant's alleged knowledge of the patents as of the filing of the Original Complaint.

Case Timeline

Date Event
2013-10-16 Priority Date for ’204 and ’864 Patents
2013-11-19 Priority Date for ’869 Patent
2013-12-06 Priority Date for ’780, ’893, and ’094 Patents
2017-12-29 Asserted Patents assigned to Network-1
2018-03-01 GSMA eSIM Whitepaper Published
2022-01-25 ’780 Patent Issued
2023-03-14 ’204 Patent Issued
2024-02-27 ’893 Patent Issued
2024-04-30 ’864 Patent Issued
2024-12-10 ’869 Patent Issued
2025-01-21 ’094 Patent Issued
2025-10-22 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,233,780 - "Embedded universal integrated circuit card supporting two-factor authentication" (Issued January 25, 2022)

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of securely and remotely provisioning mobile devices that use an embedded SIM (eSIM or eUICC) instead of a physical, swappable SIM card. A core problem was ensuring that network access credentials, particularly a pre-shared secret key (Key K) essential for authentication on legacy networks, could be transferred electronically without compromising security (Compl. ¶30; ’780 Patent, col. 3:28-44). A related privacy issue was that prior mobile network technologies transmitted the subscriber's identity (IMSI) unencrypted during authentication (Compl. ¶32).
  • The Patented Solution: The invention describes a module with an eUICC that securely obtains and manages network profiles containing secret keys. It uses a multi-stage process involving two separate shared secret keys (Key K). The module first receives and decrypts a profile containing a first encrypted secret key using a first decryption key. After authenticating with the network using this first secret key, the user of the module is authenticated through a "second factor." Only after this second-factor authentication can the module receive a second decryption key to decrypt a second secret key, which is then used for subsequent network authentication ('780 Patent, Abstract; Fig. 3). This two-step process is designed to give the Mobile Network Operator control over the final decryption and use of the primary network access key ('780 Patent, col. 4:55-68).
  • Technical Importance: This approach provided a method for network operators to retain control over the secure provisioning of network credentials for eSIMs, a critical security consideration for the industry's transition away from physical SIM cards (Compl. ¶21, 31).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶43).
  • Claim 1 (System): An embedded universal integrated circuit card (eUICC) comprising a processor and memory with instructions to perform steps including:
    • generating and sending a first message to a subscription manager system, the message comprising a first plurality of eUICC keys;
    • deriving a second plurality of eUICC keys;
    • storing a subscription manager public key;
    • deriving a profile key using a key exchange algorithm;
    • receiving an encrypted profile comprising a ciphertext including a first shared secret key K encrypted with a first key;
    • receiving a second key;
    • decrypting at least a portion of the encrypted profile using the profile key;
    • decrypting at least a portion of the ciphertext using the second key; and
    • storing at least the first shared secret key K in the eUICC.

U.S. Patent No. 11,916,893 - "Embedded universal integrated circuit card supporting two-factor authentication" (Issued February 27, 2024)

The Invention Explained

  • Problem Addressed: Similar to the '780 Patent, this invention addresses the secure provisioning of eSIM-enabled devices. The technical problem involves securely establishing network credentials on a device that lacks a removable SIM card, ensuring compatibility with existing network authentication protocols that rely on a pre-shared secret key (Compl. ¶30; ’893 Patent, col. 3:37-4:4).
  • The Patented Solution: The invention describes a mobile device containing an eUICC, a random number generator, and a radio. The device transmits its eUICC identity and a public key, then receives a network profile. The eUICC is configured to derive a "profile key" using an Elliptic Curve Diffie-Hellman (ECDH) key exchange. It then uses this derived key, along with other received keys, to decrypt the profile and generate a response value for authenticating itself on the wireless network using the provisioned secret key K (Compl. ¶52; ’893 Patent, col. 5:6-6:51). The process links the secure derivation of cryptographic keys to the eventual authentication on the network.
  • Technical Importance: The method provides a secure mechanism for an eSIM device to participate in a sophisticated key exchange (ECDH) to obtain and decrypt its network credentials, a necessary function for remote SIM provisioning (Compl. ¶23, 33).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶53).
  • Claim 1 (Device): A mobile device comprising a memory, a random number generator, a radio, and an eUICC, where the components are configured to perform steps including:
    • storing an eUICC identity;
    • generating random numbers for public and private keys;
    • transmitting an eUICC identity and an eUICC public key;
    • receiving an eUICC profile, a key K, a subscriber identity, and a symmetric key;
    • deriving a profile key using an elliptic curve Diffie Hellman key exchange;
    • decrypting the eUICC profile using select keys; and
    • generating a response value for authenticating the mobile device with the wireless network using the key K.

U.S. Patent No. 12,207,094 - "Embedded universal integrated circuit card supporting two-factor authentication" (Issued January 21, 2025)

  • Technology Synopsis: The patent relates to methods for provisioning mobile devices with an eSIM and authenticating the device (Compl. ¶62). The invention involves the eUICC generating and sending a message with its identity and a digital signature, deriving keys, storing a subscription manager public key, and then receiving and decrypting an encrypted profile using multiple keys to securely store a network key K (Compl. ¶65).
  • Asserted Claims: At least independent claim 1 (Compl. ¶63).
  • Accused Features: The complaint alleges that the Accused Products' implementation of GSMA standards for eSIM functionality infringes, including the steps for generating messages, deriving keys, and decrypting profiles (Compl. ¶64-65).

U.S. Patent No. 12,166,869 - "Key derivation for a module using an embedded universal integrated circuit card" (Issued December 10, 2024)

  • Technology Synopsis: The patent relates to a module with an eUICC that receives a profile and authenticates on a wireless network (Compl. ¶71). The invention describes a process where the eUICC stores multiple keys, receives an encrypted profile, generates a shared secret key using an ECDH exchange, decrypts the profile, and then generates and sends an encrypted module identity for 5G authentication (Compl. ¶74-75).
  • Asserted Claims: At least independent claim 1 (Compl. ¶72).
  • Accused Features: The infringement allegations target the Accused Products' capabilities to implement GSMA standards for eUICC functionality and ETSI standards for 5G authentication, including key storage, profile decryption, and key derivation (Compl. ¶73-75).

U.S. Patent No. 11,606,204 - "Systems and methods for 'machine-to-machine' (M2M) communications between modules, servers, and an application using public key infrastructure (PKI)" (Issued March 14, 2023)

  • Technology Synopsis: The patent relates to device authentication in a wireless network using public key infrastructure (Compl. ¶82). The invention describes a device that stores various keys (server public key, pre-shared secret key), derives additional keys (module private key, symmetric ciphering key) using cryptographic algorithms, sends an encrypted message to a server, and authenticates using a message digest with the pre-shared key (Compl. ¶82, 85).
  • Asserted Claims: At least independent claim 1 (Compl. ¶83).
  • Accused Features: The accused functionality is the implementation of ETSI standards for 5G authentication, which allegedly involves the claimed steps of storing keys, deriving cryptographic keys, generating encrypted data, and authenticating to a mobile network (Compl. ¶84).

U.S. Patent No. 11,973,864 - "Systems and methods for “machine-to-machine” (M2M) communications between modules, servers, and an application using public key infrastructure (PKI)" (Issued April 30, 2024)

  • Technology Synopsis: The patent relates to methods for authenticating a device in a wireless network (Compl. ¶91). The technology is substantially similar to the ’204 Patent, involving a device that stores keys, derives further keys using cryptographic algorithms including ECIES and a key derivation function, generates encrypted module data, sends it to a server, and authenticates using a message digest with a pre-shared secret key (Compl. ¶94).
  • Asserted Claims: At least independent claim 1 (Compl. ¶92).
  • Accused Features: The infringement theory targets the Accused Products' implementation of ETSI 5G authentication standards, which allegedly practice the claimed methods of key derivation and device authentication (Compl. ¶93).

III. The Accused Instrumentality

Product Identification

The Accused Products are identified as all Samsung products that support eSIM and/or 5G operation, including but not limited to the Galaxy S-series (S20-S25), Galaxy Z Fold and Flip series, and various Galaxy smart watches and tablets (Compl. ¶38).

Functionality and Market Context

The complaint alleges that the Accused Products are configured to implement and comply with the Global System for Mobile Communications Association (GSMA) standards for eSIM technology and the European Telecommunications Standards Institute (ETSI) standards for 5G authentication (Compl. ¶39, 43, 53). The relevant functionality includes the remote provisioning, downloading, and installation of eUICC profiles, which allows users to activate cellular service without a physical SIM card (Compl. ¶44). This process allegedly involves mutual authentication between the device and a network server (SM-DP+), the use of public and private key pairs, and cryptographic algorithms to securely transfer network credentials (Compl. ¶23). The complaint includes a teardown photograph of a Samsung Galaxy S20 Ultra, highlighting the location of the eSIM chip on the device's mainboard (Compl. ¶39, p. 25). The complaint asserts Samsung was an "early adopter" of eSIM technology and actively promotes the benefits of both eSIM and 5G to consumers (Compl. ¶24, 26).

IV. Analysis of Infringement Allegations

U.S. Patent No. 11,233,780 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an embedded universal integrated circuit card (eUICC) comprising one or more processors and a non-transitory computer-readable memory... having stored thereon machine readable instructions The Accused Products are mobile devices that include an eUICC, one or more processors, and non-transitory computer-readable memory. ¶45 col. 5:6-14
...generate and send a first message to a subscription manager system, the message comprising a first plurality of eUICC keys The eUICC generates and sends messages as part of the GSMA remote SIM provisioning authentication procedure. ¶45 col. 7:1-20
...derive a second plurality of eUICC keys The eUICC derives keys using a random number generator and cryptographic algorithms as specified in the GSMA standards. ¶45 col. 8:50-9:4
...storing a subscription manager public key A subscription manager public key is stored for use in the key exchange algorithm. ¶45 col. 8:50-9:4
...receiving an encrypted profile comprising a ciphertext including a first shared secret key K encrypted with a first key The eUICC receives an encrypted profile containing an encrypted network key K as part of the GSMA profile download procedure. ¶46 col. 5:15-6:2
...decrypting...the encrypted profile using the profile key...decrypting...the ciphertext using the second key The eUICC decrypts portions of the encrypted profile and ciphertext using the derived profile key and the received symmetric key. ¶46 col. 6:3-6:47
...storing at least the first shared secret key K in the eUICC The decrypted key K is stored in the eUICC for future network communications. ¶46 col. 6:48-51

U.S. Patent No. 11,916,893 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a mobile device comprising: a memory...a random number generator...a radio...and an embedded universal integrated circuit card (eUICC) The Accused Products are mobile devices containing memory, processors capable of random number generation, radios, and an eUICC. ¶55 col. 2:8-12
wherein the memory is configured to store an eUICC identity The Accused Products store an eUICC identity (EID) as part of the GSMA standard. ¶55 col. 5:10-12
wherein the random number generator is configured to generate random numbers for public and private keys The random number generator is used to create key pairs for the authentication and profile download procedures. ¶55 col. 8:2-4
wherein the radio is configured to: (1) transmit an eUICC identity and an eUICC public key; and (2) receive an eUICC profile, a key K... The radio transmits device identity and public keys during authentication and receives the encrypted profile from the subscription manager. ¶55 col. 7:1-20
wherein the eUICC is configured to: (1) derive a profile key using an elliptic curve Diffie Hellman key exchange... The eUICC performs an ECDH key exchange to derive a session key for decrypting the profile, as specified in the GSMA standards. ¶56 col. 5:6-24
(2) decrypt the eUICC profile using select keys... The eUICC uses the derived profile key and a received symmetric key to decrypt portions of the received profile. ¶56 col. 6:35-47
(3) generate a response value for authenticating the mobile device with the wireless network using the key K The eUICC uses the decrypted key K to generate an authentication response (RES) value to authenticate on the cellular network. ¶56 col. 6:48-51

Identified Points of Contention

  • Scope Questions: A central question may be whether compliance with the cited GSMA and ETSI standards is sufficient to meet every limitation of the asserted claims. The defense may argue that its specific implementation of the standards deviates from the claimed methods or that the standards allow for non-infringing alternatives. The complaint's infringement theory appears to rest on an assertion that practicing the standards necessarily results in infringement (Compl. ¶43, 53). The complaint introduces the patented inventions in the context of tracking shipping containers, which may raise questions about whether claim terms should be interpreted in light of this context, although the claims themselves are not so limited (Compl. ¶30).
  • Technical Questions: A key technical question will be whether the cryptographic processes as claimed map directly onto the processes defined in the standards. For the ’780 Patent, a point of contention may be whether the GSMA procedure actually involves decrypting a "second shared secret key K" with a "second key" received after a "second factor" authentication, or if the complaint's mapping mischaracterizes the standard's operation. For the ’893 Patent, the analysis will focus on whether the accused devices perform every step of the claimed ECDH key exchange and response generation in the manner required by the claim.

V. Key Claim Terms for Construction

For the ’780 Patent

  • The Term: "two-factor authentication" (from patent title) and the related process of using a "first key" and a "second key" to decrypt a "first shared secret key K" and a "second shared secret key K" ('780 Patent, Abstract).
  • Context and Importance: The patent's title and abstract frame the invention around "two-factor authentication." The claims detail a multi-stage decryption process. Practitioners may focus on how this claimed process maps to the accused functionality, which involves device authentication to a network and, separately, user interaction to activate a profile. The dispute may turn on whether this combination of device and user actions constitutes the claimed "two-factor" process for key provisioning.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discusses authenticating "the user of the module using a second factor" separately from the initial device authentication, suggesting a broad concept of two distinct authentication events ('780 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The detailed description and figures illustrate a specific sequence where a first key K is used for initial network access, followed by a second-factor authentication (e.g., user verification), which then enables the decryption and use of a second key K ('780 Patent, Fig. 3; col. 6:3-51). This could support a narrower construction requiring this exact sequence.

For the ’893 Patent

  • The Term: "derive a profile key using an elliptic curve Diffie Hellman key exchange" (from Claim 1).
  • Context and Importance: This term is central to the infringement allegation, as the complaint explicitly maps it to procedures in the GSMA RSPv22 standard (Compl. ¶56). The dispute will likely focus on the precise steps required to "derive" this key and whether the accused products' implementation of the standard's ECDH procedure meets all implicit and explicit steps of the claimed "key exchange."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the key exchange in general terms as a method for two parties to establish a shared secret, which could support a view that any standard ECDH implementation meets the limitation ('893 Patent, col. 2:1-40).
    • Evidence for a Narrower Interpretation: The patent may disclose specific parameters or steps for the ECDH exchange that could be argued to limit the claim scope. The complaint's citation to specific figures in the RSPv22 standard suggests the analysis will be highly technical and granular (Compl. ¶56).

VI. Other Allegations

Indirect Infringement

The complaint alleges active inducement of infringement for all six asserted patents. The basis for this allegation is that Samsung manufactures and sells the Accused Products with knowledge and intent that its customers will use them in an infringing manner. This intent is allegedly evidenced by Samsung’s advertising of eSIM and 5G capabilities and its publication of instructions, user manuals, and support websites that instruct customers on how to enable and use these features (Compl. ¶47-48, 57-58, 66-67, 76-78, 86-87, 95-96).

Willful Infringement

The complaint alleges that Samsung’s infringement has been and continues to be willful. The basis for willfulness is alleged knowledge of the Asserted Patents "as of the date of filing of Network-1's Original Complaint" (Compl. ¶98). The complaint also pleads objective recklessness and willful blindness, alleging Samsung proceeded to infringe with a high probability of infringement while taking "deliberate action to avoid learning further details" (Compl. ¶99-100).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of standards equivalence: does implementing the GSMA RSP and ETSI 5G authentication standards, as the Accused Products allegedly do, necessarily result in practicing every limitation of the asserted claims? The case may depend on whether the standards mandate the specific multi-stage key derivation and decryption sequences claimed in the patents or if non-infringing alternatives exist within the standards.
  • A key evidentiary question will be one of technical implementation: what is the precise operational sequence of Samsung's hardware and software when provisioning an eSIM or authenticating on a 5G network? The dispute will likely move beyond the text of the standards to a granular, code-level analysis of whether the accused devices perform the exact functions—such as deriving a profile key via ECDH or generating an authentication response—in the manner required by the claims.
  • A core issue will be one of definitional scope: can the patents' concept of "two-factor authentication," which involves a sequence of device and user authentication to unlock different secret keys, be construed to cover the process of device authentication followed by user interaction to download and enable a profile in the accused systems? The interpretation of this and other key terms will be critical to mapping the claims onto the accused functionality.