THOMSON LICENSING

Patent Trials and Appeals Board

Mar 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

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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

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- 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.
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Application 15/177,067

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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.
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Application 15/177,067

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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.
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Application 15/177,067

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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