TurboCode LLC v. Thales DIS USA: SIM Patent Suit Dismissed With Prejudice
TurboCode LLC brought a patent infringement action against Thales DIS USA in the Western District of Texas, asserting US6813742B2 against Thales’s Plug 105, Plug 85, Quad SIM, and eSIM products. The parties jointly stipulated to dismiss all claims and counterclaims with prejudice in 234 days, each side bearing its own costs.
SIM Patent Assertion Against Thales Ends in Prejudiced Dismissal
TurboCode LLC, an entity holding US6813742B2, filed suit against Thales DIS USA, Inc. on June 7, 2024, in the Western District of Texas (Case No. 6:24-cv-00311). The complaint alleged infringement of the asserted patent by Thales’s Plug 105, Plug 85, Quad SIM, and eSIM product lines — a portfolio central to Thales’s connected-device and IoT SIM business. Direction IP Law represented TurboCode, while Thales retained Addyhart, PC.
The case closed on January 27, 2025, via a joint stipulation under Fed. R. Civ. P. 41(a)(1)(A)(ii) and (c), dismissing all claims and counterclaims with prejudice. The with-prejudice designation is significant: TurboCode is permanently barred from reasserting the same patent claims against Thales on these products. Notably, the parties agreed that each side would bear its own attorneys’ fees and costs, suggesting a negotiated resolution rather than a capitulation by either party.
At 234 days, the case resolved well before any trial date would have been set, consistent with a confidential settlement or cross-licensing arrangement reached after initial claim mapping. The public record does not disclose financial terms or licence terms, if any. The mutual cost-bearing clause and the absence of a damages award leave the commercial outcome between the parties undisclosed — a pattern commonly associated with negotiated business resolutions in the SIM and IoT connectivity patent space.
Filing to Dismissed with Prejudice in 234 days
234 days — resolved before trial, faster than the W.D. Texas median for patent cases
Dismissed with prejudice: what the stipulation means for both parties
Rule 41 stipulated dismissal with prejudice explained
A dismissal under Fed. R. Civ. P. 41(a)(1)(A)(ii) requires agreement from all parties who have appeared. The ‘with prejudice’ designation operates as a final adjudication on the merits — TurboCode LLC is permanently barred from filing the same infringement claims against Thales DIS USA based on US6813742B2 and the accused products. No court merits ruling was issued; the parties themselves agreed to this finality.
Permanent bar on re-filingTurboCode forfeits the right to re-assert against Thales
By accepting a with-prejudice dismissal, TurboCode LLC permanently surrendered its infringement claims against Thales’s Plug 105, Plug 85, Quad SIM, and eSIM products. While the patent US6813742B2 remains valid and enforceable against other defendants, TurboCode’s enforcement rights against Thales specifically are extinguished. This outcome suggests either a confidential settlement payment or a strategic decision to conserve litigation resources.
Claims against Thales extinguishedThales secures permanent protection from this patent claim
Thales DIS USA, Inc. exits the litigation with a permanent shield against re-assertion of US6813742B2 for the accused SIM and eSIM product lines. The mutual cost-bearing clause means Thales did not recover its legal fees, which is consistent with a negotiated exit rather than a clear victory on the merits. Thales’s SIM and eSIM product roadmap is no longer encumbered by this specific patent threat, absent any undisclosed licence terms.
SIM/eSIM products clearedUS6813742B2 remains a live threat for other SIM/eSIM players
The with-prejudice dismissal resolves the Thales dispute but leaves US6813742B2 fully enforceable against the broader SIM, eSIM, and IoT connectivity market. Other manufacturers and distributors of removable and embedded SIM modules should note that TurboCode retains enforcement rights. The 234-day resolution timeline and mutual cost clause are consistent with a licensing model that may be replicated against other targets in the sector.
Patent still live vs. third partiesFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | TurboCode, LLC | Company | Patent assertion entity — holder of US6813742B2 covering SIM/eSIM connectivity technologySearch in Eureka ↗ |
| Defendant | Thales DIS USA, Inc | Company | Thales DIS USA, Inc. — U.S. arm of Thales Group, provider of SIM, eSIM, and IoT connectivity solutionsSearch in Eureka ↗ |
| Plaintiff counsel | David R. Bennett, Esq., | Attorney | Counsel for TurboCode, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Direction IP law | Law Firm | Representing TurboCode, LLCSearch in Eureka ↗ |
| Defendant counsel | Robert Patrick Hart | Attorney | Counsel for Thales DIS USA, IncSearch in Eureka ↗ |
| Defendant law firm | Addyhart, PC | Law Firm | Representing Thales DIS USA, IncSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Texas Western District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulation invokes Rule 41(a)(1)(A)(ii), requiring joint agreement, and Rule 41(c), extending the dismissal to counterclaims — meaning Thales’s defensive counterclaims are equally extinguished. The ‘with prejudice’ language is legally dispositive: it forecloses future litigation between these specific parties on these claims. The mutual cost-bearing clause is notable for its symmetry, suggesting neither party secured a dominant litigation position prior to resolution, and is consistent with a negotiated commercial outcome undisclosed in the public record.
US6813742B2 — SIM and eSIM subscriber identity module technology
US6813742B2, filed under application number US09/681093, protects technology in the subscriber identity module domain — the foundational layer enabling mobile devices and IoT endpoints to authenticate with carrier networks. The patent’s claims, as asserted, were mapped against Thales’s removable SIM form factors (Plug 105, Plug 85, Quad SIM) and its eSIM platform. The application date context places the invention in an era when multi-form-factor SIM architectures were emerging as a commercial priority.
Thales DIS USA is a significant global supplier of SIM, eSIM, and IoT connectivity modules to MNOs and enterprise IoT platforms, making it a commercially meaningful litigation target. The assertion of this patent against both legacy plug-in SIM formats and modern eSIM underscores the breadth of the claimed technology. For competitors and adjacent players — including SIM OS vendors, eSIM RSP platform operators, and IoT module OEMs — this patent represents an ongoing enforcement risk that warrants active monitoring, particularly given TurboCode’s apparent willingness to litigate in W.D. Texas.
Should you run an FTO analysis against US6813742B2?
Any company developing, manufacturing, or distributing SIM modules, eSIM solutions, iSIM chipsets, or IoT connectivity platforms that interact with subscriber identity management should treat US6813742B2 as a live risk. The Thales dismissal resolves only the Thales-specific exposure — the patent remains fully enforceable against the rest of the market. R&D teams working on eSIM RSP (Remote SIM Provisioning), GSMA SGP-compliant platforms, or multi-IMSI SIM architectures are particularly advised to assess claim overlap.
PatSnap Eureka’s FTO Search Agent can map the claim language of US6813742B2 against your product specifications, surface the full patent family including any continuation or divisional applications, and flag prior art that may inform a validity challenge. Eureka’s litigation analytics layer also identifies TurboCode LLC’s broader assertion history, helping in-house counsel and product teams prioritise clearance work before product launch or investment decisions in the SIM and eSIM connectivity space.
Run a freedom-to-operate analysis on US6813742B2 to assess your product’s exposure
Run FTO in Eureka →Similar SIM and eSIM patent infringement cases in W.D. Texas
Cases involving SIM, eSIM, and IoT connectivity patents filed in the Western District of Texas, including comparable PAE assertion patterns and Rule 41 outcomes.
What this case signals for the SIM and eSIM IP landscape
A rapid, prejudiced dismissal in W.D. Texas often signals a licensing resolution — and US6813742B2 remains enforceable.
W.D. Texas remains a preferred venue for SIM/eSIM patent assertions
TurboCode’s choice of the Western District of Texas is consistent with the venue’s continued popularity for patent assertion entities targeting technology companies. IP teams at SIM and IoT connectivity firms should maintain active docket monitoring in W.D. Texas even as NDCA and EDTX also attract filings in this sector.
With-prejudice mutual dismissal often signals a confidential licence
The combination of a with-prejudice stipulation and mutual cost-bearing — without any public settlement admission — is a strong indicator of an undisclosed financial resolution. In-house IP teams facing similar assertions should factor in licence royalty benchmarks when assessing early settlement, particularly when the asserted patent covers core standards-adjacent SIM functionality.
TurboCode v Thales — key questions answered
The with-prejudice dismissal means TurboCode LLC is permanently barred from bringing the same patent infringement claims under US6813742B2 against Thales DIS USA for the accused Plug 105, Plug 85, Quad SIM, and eSIM products. It operates as a final adjudication, though no merits ruling was issued by the court. The patent remains enforceable against other parties.
The accused products were Thales DIS USA’s Plug 105, Plug 85, Quad SIM, and eSIM product lines. These span traditional removable SIM form factors and modern embedded SIM platforms, suggesting TurboCode asserted broad applicability of US6813742B2 across Thales’s SIM and IoT connectivity portfolio.
The public record does not disclose the reason for the mutual cost-bearing arrangement. However, this clause — where each party bears its own attorneys’ fees and costs — is commonly associated with negotiated commercial resolutions such as a confidential licence or cross-licence agreement. It suggests neither party secured a dominant position on the merits before settlement was reached.
Yes. The dismissal with prejudice only extinguishes TurboCode’s claims against Thales DIS USA specifically. US6813742B2 remains a valid and enforceable patent against all other parties. SIM module manufacturers, eSIM platform operators, and IoT connectivity vendors outside the Thales group should treat the patent as an active enforcement risk.
The case lasted 234 days, from filing on June 7, 2024, to closure on January 27, 2025. This timeline — well before any trial or claim construction hearing would typically conclude in W.D. Texas — is consistent with early-stage settlement negotiations following initial claim mapping and pre-Markman discussions. It suggests the parties reached a commercial resolution without extensive merits litigation.
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