THOMSON LICENSING

Patent Trials and Appeals BoardMar 19, 2021

2019006727 (P.T.A.B. Mar. 19, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/177,067 06/08/2016 Antoine MONSIFROT PF150111 8787 157360 7590 03/19/2021 InterDigital CE Patent Holdings 4 Research Way 3rd Floor Princeton, NJ 08543 EXAMINER DOAN, TRANG T ART UNIT PAPER NUMBER 2431 NOTIFICATION DATE DELIVERY MODE 03/19/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PatentOPs.US@interdigital.com donna.foligno@interdigital.com patricia.verlangieri@interdigital.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTOINE MONSIFROT and CHARLES SALMON-LEGAGNEUR Appeal 2019-006727 Application 15/177,067 Technology Center 2400 Before CAROLYN D. THOMAS, JASON V. MORGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies INTERDIGITAL CE PATENT HOLDINGS as the real party in interest. Appeal Brief filed April 4, 2019 (“Appeal Br.”) at 3. Appeal 2019-006727 Application 15/177,067 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter relates to an application provider that “provid[es] an application package including two versions of a module: one version to be executed on devices that are not jailbroken (hereinafter called ‘genuine devices’) and one version to be executed on jail broken devices. Each version implements the same functionality but are protected using different software protection mechanisms.” Spec. 7:6–10.2 The “version of the module intended to be executed on a jailbroken device . . . implement[s] a second software protection technique not allowed by the operating system on the genuine device.” Id. at 2:17–20. The application package also includes “a jailbreak detection function [that] is capable of determining if the device is . . . a genuine device or a jailbroken device.” Id. at 8:35–9:1. Illustrative Claim Claims 1, 6, 11, and 12 are independent. Claim 1, reproduced below with certain dispositive limitations at issue italicized, illustrates the claimed subject matter: 1. An application provider device for protecting a module configured to be executed by an executing device that has an operating system and that is either genuine or jailbroken, the application provider device comprising: 2 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed June 8, 2016 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed November 15, 2018; (3) the Examiner’s Answer (“Ans.”) mailed July 18, 2019; and (4) the Reply Brief filed September 11, 2019 (“Reply Br.”). Appeal 2019-006727 Application 15/177,067 3 - a processing unit configured to: obtain a first version of the module configured to be executed on a genuine executing device, the first version implementing a first software protection technique allowed by the operating system on the genuine device; obtain a second version of the module configured to be executed on a jailbroken device, the second version implementing a second software protection technique not allowed by the operating system on the genuine device; obtain a jailbreak detection function configured to determine whether the executing device is genuine or jailbroken, and to call the first version of the module in case the executing device is genuine and call the second version of the module in case the executing device is jail broken; and generate an application package comprising the jailbreak detection function, the first version of the module and the second version of the module; and - an interface configured to output the application package. Appeal Br. 21 (Claims Appendix). REFERENCES The Examiner relies on the following prior art references:3 Name Reference Date Swaminathan US 2014/0040630 A1 Feb. 6, 2014 Yacoub US 8,826,169 B1 Sept. 2, 2014 YE US 2016/0286030 A1 Sept. 29, 2016 REJECTIONS The Examiner rejects claims 1, 6, 11, and 12 under 35 U.S.C. § 103 as being unpatentable over Swaminathan and YE. Final Act. 5–7. 3 All citations to the references use the first-named inventor only. Appeal 2019-006727 Application 15/177,067 4 The Examiner rejects claims 2–5 and 7–10 under 35 U.S.C. § 103 as being unpatentable over Swaminathan, YE, and Yacoub. Id. at 7–9. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner finds that Swaminathan discloses most of the limitations of independent claim 1, but finds that “Swaminathan does not explicitly disclose the following limitations which are disclosed by YE, to call the first version of the module in case the executing device is genuine and call the second version of the module in case the executing device is jail broken,” and “the application package comprising the jailbreak detection function, the first version of the module and the second version of the module,” as recited in claim 1. Final Act. 6–7. The Examiner finds YE teaches these limitations and that motivation existed to combine the teachings of the references. Id. (citing YE ¶¶ 34, 59–63, Figs. 3, 4). Appellant argues (Appeal Br. 12) that Swaminathan does not teach or suggest “obtain a second version of the module configured to be executed on a jailbroken device, the second version implementing a second software protection technique not allowed by the operating system on the genuine device,” as recited in claim 1 (Id. at 21). Specifically, Appellant argues: claim 1 recites “a second software protection technique not allowed on the genuine device.” The final Office Action appears to interpret Swaminathan’s invalid signature as this software protection technique. This, however, does not work. An invalid (or no) signature does not provide any protection whatsoever and hence cannot be interpreted as a software protection technique. Appeal 2019-006727 Application 15/177,067 5 Id. at 12 (emphasis omitted). We find Appellant’s arguments persuasive. The portions of Swaminathan (¶¶ 30, 35–37) cited by the Examiner to teach the limitation at issue discuss “content consumption application 200 [that] may be configured to provide decryption key(s) 250 for encrypted content 210 to a media component 230 if the content consumption application 200 determines that a security compromise has not occurred on client system 155” (id. ¶ 30). Media component 230 is “responsible for decryption and playback of the content” using the key(s) 250 provided by content consumption application 200. Id. ¶ 30. To prevent unauthorized playback of the encrypted content 210, “[c]ontent consumption application 200 may determine that the operating system has been jail broken by attempting to launch a test application having an invalid signature. If [the] OS is jail-broken, content consumption application 200 may withhold the content decryption keys from media component 230 (thereby preventing content from being played).” Id. ¶ 35. Accordingly, the rejection relies on Swaminathan’s withholding of content decryption keys from media component 230 when content consumption application 200 determines, based on an invalid signature, that the operating system of client system 155 has been jail broken. We find Appellant’s argument persuasive because the Examiner does not sufficiently explain how Swaminathan’s withholding of content decryption keys from media component 230 based on an invalid signature teaches or suggests “implementing a second software protection technique not allowed by the operating system on the genuine device,” as recited in claim 1. Final Act. 5– 6; Ans. 6. Appeal 2019-006727 Application 15/177,067 6 Accordingly, the Examiner has not demonstrated that the combination of Swaminathan and YE teaches or suggests “obtain a second version of the module configured to be executed on a jailbroken device, the second version implementing a second software protection technique not allowed by the operating system on the genuine device,” as recited in claim 1. Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. For the reasons discussed above, and constrained by the record before us, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103. For similar reasons, we do not sustain the Examiner’s rejection of independent claims 6, 11, and 12, which recite limitations similar to those at issue in claim 1. In addition, we do not sustain the Examiner’s rejections of claims 2–5 and 7–10, which depend directly or indirectly from claims 1, 6, 11, and 12. DECISION SUMMARY In summary: REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 6, 11, 12 103 Swaminathan, YE 1, 6, 11, 12 2–5, 7–10 103 Swaminathan, YE, Yacoub 2–5, 7–10 Overall Outcome 1–12