Apple, Inc. v. Motorola, Inc. et al

Filing 92

Declaration of Christine Saunders Haskett filed by Plaintiffs Apple, Inc., NEXT SOFTWARE, INC. re: 90 Motion Requesting Claims Construction (Attachments: # 1 Ex. 1 Moto Infring. Cont. Ex. A, # 2 Ex. 2 '157 patent, # 3 Ex. 3 '179 patent, # 4 Ex. 4 '329 patent, # 5 Ex. 5 '230 file history, # 6 Ex. 6 Oxford dictionary definition, # 7 Ex. 7 '559 file history, # 8 Ex. 8 The OSI Model, # 9 Ex. 9 ISO Standard, # 10 Ex. 10 Japanese file history, # 11 Ex. 11 Japanese prosecution appeal, # 12 Ex. 13 Moto Infring. Cont. Ex. E, # 13 Ex. 14 IEEE Standard, # 14 Ex. 15 '333 patent, # 15 Ex. 16 '721 file history, # 16 Ex. 17 '193 file history, # 17 Ex. 18 Moto Infring. Cont. Ex. F, # 18 Ex. 19 Merriam Webster Dictionary, # 19 Ex. 20 Webster's Dictionary) (Haslam, Robert)

EXHIBIT 10

2

Response to Office Action

Accepted
October 30, 2003 (H.15)

Dear Mr. Shigenori Aoki
Commissioner of the Japan Patent Office
1. Case

Patent Office
15.10.31
Applicant Support
Division
Tanaka

Patent Application H7-507561
(PCT/US 94/07672)

2. Title of the Invention
Method and Apparatus for Providing Cryptographic Protection of a Data Stream
in a Communication System
3. Applicant
Address

1303 East Algonquin Road
Shaumburg, Illinois 60196
United States of America

Name
(Nationality)
4. Agent

Motorola Incorporated
United States of America

Address

Ikeuchi International Patent Office
Sekiuchi Kawashima Building
1-4-2 Ohta-cho, Chuo-ku
Yokohama, Kanagawa 231-0011
Tel: [phone]

Name of the Agent

(8357) Yoshiaki Ikeuchi

Yoshiaki
Ikeuchi
Patent
Attorney

5. Date Office Action was received
April 17, 2003 (H15) (sent on April 30, 2003)

Examination

Illegible

92

6. Reasons
(1)

We received the Office Action dated on April 17, 2003 (H15) (sent on April 30,

2003 (H15)) regarding the above referenced application. Claims 1-4, 9 and 10 were
rejected on the ground in which they do not meet the requirements for patentability
stipulated in the main clause of the Article 29(1) of the Patent Law (Reason A).
Furthermore, the claims were rejected due to the inaccuracy of the Specification
and Drawings in the application, which failed to meet the requirements for patentability
stipulated in the Patent Law Article 36(4) (Reason B).
Additionally the following references,:
1. D. W. Davies and W. L. Price authors / Tadahiro Uwazono,
“Network Security” Japan, Nikkei, McGraw Hill.
December 5, 1985, 1st Ed. 1st Printing, pg. 307-312
2.

Publication of Japanese Laid Open Patent Application S63-167588

were cited in the Office Action, and the invention in relation to Claims 1-10 in this
application was denied under the Patent Law Article 29 (2) (Reason C).
Therefore, the Applicant has amended the Claims, Specification and Drawings in
the application in order to clarify the nature of this invention by submitting this response
and the amendment. Depending on the amended Claims, it is believed to resolve the
reasons for rejection; thus, the detailed explanation will be provided in the following
paragraphs.
(2)

All the Claims in the previously submitted application were reexamined in this

response and the amendment, and Claims 1-3 and 9-10 were corrected based upon the
Specification and Drawings in the previously submitted application in order to response
to Reasons A and C in the Office Action. Further, in order to match the description with
the drawing in the Specification to respond to Reason B

93

the reference number 158 indicating “RX ARQ Buffer” in Figure 1 was corrected to
168 .

(3)

It is thought that the aforementioned amended Claims should directly respond to

the rejection reasons in the Office Action.

First of all, Reason A were amended in order to explain clearly methods of
invention relating to each of Claims 1, 9 and 10 which occur at a transmitting or receiving
communication unit. The terminology used for these corrections are based upon those
seen in Claims 5-8, Abstract, the Detail Description of the Invention and Figure 1 in the
original Claims.
It is believed that those corrections have clarified how specific apparatus, in other
words hardware resources, should be applied in order to solve technical problems.
Therefore, Claims 1-4, 9 and 10 should be considered an invention defined in the Patent
Law Article 2 and it meets the patentability requirements defined in the Patent Law
Article 29.

Second, the following paragraphs response to Reason B.
First, paragraph (1) includes “…as seen in Figure 1, …is performed,” which is
found on lines 14-19 on page 7 of the Specification and Figure 1 itself do not agree.
Thus, “on Layer 3” on line 18 on page 7 of the Specification was corrected to “within
Layer 3” for further clarification.

94

As clearly drawn in Figure 1, a data stream 108 on Layer 3 is transferred to Layer 2
(102) by Layer 3 (110) and encryption (102) occurs at Layer 2 (102) to a data stream
received from Layer 3 (a data stream on Layer 3). Therefore, the corrections match the
figure with the description.
Second, regarding paragraph (2), all the radio communications meet radio
communication protocols. By meeting an appropriate protocol (this protocol depends on
a type of communication systems, such as cdma 2000 communication system, GSM
communication system, or UMTS communication system.), it makes a cellular phone
manufactured by a company such as Motorola Incorporated possible to communicate
with a base unit manufactured by another company such as Lucent Technologies, and
all such devices must function in accordance with the protocols. All the radio protocols
define bits transmitted by a radio, including identification of what bit corresponds to the
one on Layer 2 and what bit corresponds to the one on Layer 3. In other words, the
protocols identify where bits on Layer 2 should be embodied and where bits on Layer 3
should be embodied. Further, identifying where on Layer 2 bits are located and where on
Layer 3, including higher Layers, the ones should be located enables all the receiving
communication units to extract bits on Layer 2 from a receiving data packet prior to
transmitting the remaining packet to Layer 3.
The protocols do not require encryption. Encryption skills are owned properties,
which means it belongs to a manufacturer of the device and it should never be controlled
by the protocols. Consequently, even if a data is encrypted, it must still meet the
appropriate radio protocols,

95

and accordingly bits on an encrypted Layer 3 or higher layers still remain the ones on
Layer 3 or higher Layers respectively, and they are also embodied in a data packet on
Layer 3 or the one on higher Layers. Therefore, even if bits are encrypted, how to
distinguish bits on higher Layers from the ones on Layer 2 is well known so that it is
followed by all the cellular systems. Hence, despite encryption, the method for
separating bits on Layer 3 or the higher from the ones on Layer 2 is well known and it is
perceived that those skilled in the art should easily achieve.
Moreover, the reference number 158 indicating the “RX ARQ Buffer” in Figure 1
has been corrected to 168 as seen in paragraph (3). This is believed to solve the
discrepancy between the Detail Explanation of the Invention and Figure 1. Further, the
reference number 158 corresponds to the data stream which flows from Layer 2 (104) to
Layer 130 (160).

Next, a response to Reason C in the Office Action will be given below.
It is described in the Office Action that “the reference 1 (network security)
mentions an encryption method for encrypting only the data field (data link service data
unit).” Further, as an input to a random sequence generator, it describes a transmission
unit which applies a value by converting an initial value data which is updated
intermittently by a key data as an input to a random sequence generator, and it outputs a
random signal which is used to scramble and descramble a video signal. It is a matter of
design choice as to whether what data should be adopted as an intermittently updated
key data.

96

However, it should be addressed that deciding a function used during the data
encryption process is not merely a matter of design choice. Specifically, because a radio
transmission is extremely vulnerable to intrusion, a function to make search more
complicated is always sought. Typically, the key must be selected and transmitted to
each of the terminals of the communication path in order to encrypt information with the
key. In other words, prior to exchanging data, it must be transmitted to both the
transmitting and receiving communication units. Even if the key can be updated during
the transmission process, it needs to be initialized to some value and the initial value
must be transmitted to the terminals of each of the receiving portions prior to transmitting
the encrypted data. For instance, as described in the Background of the Invention in this
application, the encryption technology which was proposed to prove cellular at the time
of this invention includes exchange in special messages between communication units,
and the messages were used to generate the shared secret data. Because the key or
the data used to generate keys must be divided among communication units which are
involved in communications prior to the data exchange, it is critical that a secret key is
only provided to an authorized user during encryption. This is specifically said to a radio
communication because it can be intercepted by similar communication units and the
division of the key was also intercepted by any units with a radio receiver.
In order to solve the problem related to the key management, an encryption
technology utilizing the packet sequence number, the transmit overflow sequence
number and the session key for data encryption will be provided in Claim 1 of this
application. The packet sequence number and transmit overflow sequence number are
not the keys. They are neither identified nor divided by the communication units at each
of the terminals of the communication path, nor they are derived from the divided data.

97

The packet sequence number is a data which is embodied in each of the
exchanged data packets and which can be modified but not repeated by the data
packets. Therefore, it is not necessary to exchange a key or a message to establish the
key prior to communication and it also results in saving bandwidth as well as improving
the stability.
Additionally, the overflow sequence number is never transmitted to the terminals
of the communication path. They are neither embodied in the data packet nor derived
from the data embodied in the data packet. The overflow sequence number is
determined by the transmitting communication unit and the receiving communication unit.
Unlike the key or the packet sequence number, there is no chance to intercept the
overflow sequence number; thus, it provides a higher level of security.
Therefore, the use of the packet sequence number and the overflow sequence
number to encrypt/decrypt data cannot be easily achieved by those skilled in the art, and
it is merely not a choice to select a variable as a key among from many others. Thus, it
is obvious that those skilled in the art cannot easily invent Claim 1 and relating Claims 24 in this application based upon the citations.
Furthermore, Claims 5, 7 and 9 in this application also disclose the
encryption/decryption skills utilizing the packet sequence number, the transmit overflow
sequence number and the session key. Thus, it also cannot be easily invented by those
skilled in the art on the same ground as the above. Moreover, since Claim 6 relates to
Claim 5 and so as Claims 8 and 7, it is perceived that Claims 6 and 8 have patentability.

98

(4)

As seen above, all the Claims amended by this response and the amendment

should be recognized an invention as defined by the Patent Law Article 2 and they also
clarify the Specification and Drawings. Further, it cannot be easily invented by those
skilled in the art by relaying on the citations. Therefore, it is perceived that this invention
should not be rejected under the scope of the main clause of the Article 29(1), 36(4) and
29(2) of the Patent Law. The Applicant requests a decision to grant a patent in this
application.

99

Patent Application H07-507561

Dispatch No.: 435917
Dispatch Date: December 16, 2003 (H15)

Office Action
Patent Application Number
Drafting Date
Patent Examiner
Applicant’s Agent
Applicable Article

1/

7th Year of Heisei (1995)
Patent No. 507561
December 5
15th year of Heisei (2003)
AOKI, Shigenori
4229 5M00
IKEUCHI, Yoshiaki (and 1 other)
No. 36

The present application should be rejected for the reason given below. If the applicant
has any objection against this notice, it should be submitted within three months from the date
this notice was sent.
Reason
The present application does not comply with the requirements stipulated in the Patent
Law Article 36(4) with respect to the following points described in the Specification and
Drawings.
Note
In the invention according to Claims 1~10 of the Specification of the present application,
a method for encrypting a packet at the transmitting communication unit as a function of a
packet sequence number and a transmit overflow sequence number and a method for
decrypting the encrypted packed as a function of the packet sequence number and the
receiving overflow sequence number at the receiving communication unit.
Here, it is mentioned in the Detailed Description of the Invention of the Specification of
the present application that a pseudo random bit stream used to encrypt and decrypt packetized
data stream segments must be identical to the one used at the transmitting communication unit
and the receiving communication unit, and the packet sequence number is transmitted to the
receiving communication unit as unencrypted header information.
However, the pseudo random bit streams consist of values that depend on transmitting
overflow sequence numbers and receiving overflow sequence numbers at the transmitting side
and the receiving side respectively, and for example, according to the response to the Office
Action submitted on October 30th of Heisei 15 (2003), the overflow sequence numbers are never
transmitted to the terminals of the communication path without being embedded into the data
packet and deriving from data embedded in the data packet, and judging from the description of
the independent determination of the overflow sequence numbers by the respective transmitting
and receiving communication units (see especially page 7 lines 6-13), the transmitting
communication unit and the receiving communication unit generally take respective independent
values;

109

Patent Application H07-507561

Dispatch No.: 435917
Dispatch Date: December 16, 2003 (H15)

2/E

therefore, the pseudo random bit streams at the sending and receiving sides cannot generate
the same value.
Upon further examination, the method described in the Specification of the present
application makes decryption impossible so that it cannot provide a method and apparatus for
cryptographically protecting data stream in a communication system, which is the purpose of the
invention of the present application.
Therefore, a description is not provided to the extent those skilled in the art can achieve
based on the Drawings and Specification of the present application.
In the event that further reasons for rejection are discovered, you will be notified of such
reasons.
-------------------------------------------------------Prior Art Examination Results
-

Fields Searched:
H0 4L9 / 22

-

Prior Art

IPC 7th Edition

None in particular
The prior art examination results do not constitute the grounds for rejection.

Director / Agent

Chief Examiner / Agent
INOUE, Tadashi
8120

Examiner
Asst. Examiner
AOKI, Shigenori
4229

110

Response to Office Action

Accepted
June 14, 2004 (H.16)

Dear Mr. Shigenori Aoki
Commissioner of the Japan Patent Office
1. Case

Patent Application H7-507561
(PCT/US 94/07672)

2. Title of the Invention
Method and Apparatus for Providing Cryptographic Protection of a Data Stream
in a Communication System
3. Applicant
Address

1303 East Algonquin Road
Shaumburg, Illinois 60196
United States of America

Name
(Nationality)
4. Agent

Motorola Incorporated
United States of America

Address

Ikeuchi International Patent Office
Sekiuchi Kawashima Building
1-4-2 Ohta-cho, Chuo-ku
Yokohama, Kanagawa 231-0011
Tel: [phone]

Name of the Agent

(8357) Yoshiaki Ikeuchi

Yoshiaki
Ikeuchi
Patent
Attorney

5. Date Office Action was Received
December 5, 2003 (H15) (sent on December 16, 2003)
Patent Office
16.6.15
Applicant Support
Division
Miyawaki

Formality
Examination

Illegible

112

6. Reasons
(1) We received the Office Action dated on December 5, 2003 (H15) (sent on December
16, (H15)) regarding the above referenced application. It states that the insufficiency
in the Specification and the description about the Drawing failed to meet the
requirements stipulated in the Patent Law Article 36 (4).
Thus, the Applicant will provide the following explanation regarding the previously
submitted response as it is believed to solve the reasons for rejection.

(2)

First, lines 6-13 on page 7 of the response submitted on October 30, 2003 will be
given as follows. It describes that overflow sequence number is neither transmitted to
the terminals of the communication paths, nor they are embodied in a data packet
nor derived from a data embodied in the data packet. It is believed not to raise any
issues. However, the description of the overflow sequence number being
independently determined by either the transmitting communication unit or the
receiving communication unit may be misleading; therefore, it will be explained in the
following paragraphs.
Regarding the claims, for example Claim 1, amended on October 30, 2003 (H15),

it updates the transmit overflow sequence number as a function of the packet sequence
number at the transmitting communication unit. Further, the packet sequence number is
transmitted to the receiving communication unit. Also, it extracts the packed sequence
number from the receiving communication unit and updates the receiving overflow
sequence number as a function of the packet sequence number.
Therefore, it is considered that the transmitting overflow sequence number and
the receiving overflow sequence number are not independent of each other

113

in a sense that they should be determined by the same packet sequence number
and they are the same at a specific receiving packet. Yet, it is understood that the
transmitting communication unit and the receiving communication unit are able to
determine independently the overflow sequence number in a sense that each of the
transmitting communication unit and the receiving communication unit implements
algorithms in order to determine the overflow sequence number while independent from
an output of the algorithms implemented by other communication units without knowing
the output.
The Applicant meant in the response that the overflow sequence number is not
derived from data embodied in a data packet because, unless the packet sequence
number roles over, the overflow sequence number is neither embodied in the data
packet nor derived from the data embodied in the data packet; thus, even if it intercepts
a specific packet, the packet itself fails to detect the overflow sequence number used to
encrypt and decrypt a packet. In other words, during the rollover of the packet sequence
number, the overflow sequence number used to encrypt and decrypt a packet is
independent from data embodied in a packet, and it is not a function of the data of the
packet; therefore, it is not derived from data in the packet.
Each of the transmitting overflow sequence number and the receiving overflow
sequence number is a function of the packet sequence number of a packet. As
described in the original Specification of this application, the overflow sequence number
is the number which is incremented by each of the transmitting communication unit and
the receiving communication unit each time the packet sequence number rolls over. For
instance, for the purpose of providing an illustrative example,

114

if 100 is the maximum packet sequence number, each of the transmitting communication
unit and the receiving communication unit increments the overflow sequence number
each time the preceding transmit/receiving packets have a packet sequence number 100
and the following transmit/receiving packets have a sequence number 1.
As a result, by examining the sequence numbers of each of the
transmit/receiving packets, each of the transmitting communication unit and the
receiving communication unit can determine independently whether or not the overflow
sequence number should be incremented, and meanwhile, it keeps the overflow
sequence numbers synchronized. This can be achieved without transmitting the overflow
sequence number from one terminal of the communication path to another. Further,
determining the overflow sequence number by the role over of the packet sequence
number enables the overflow sequence number to determine and to maintain at the
inside of each of the communication units so that it does not need to communicate
outside of each of the communication units. It enables to prevent interception.

(3)

As seen above, the explanation and allegations are believed to solve the issues

listed in the Office Action. Moreover, it is also believed that the Claims in the present application
clearly state the purpose of this invention, which is to provide a method and apparatus for
protecting data stream encryption in a communication system. Therefore, this application meets
the requirements stipulated in the Patent Law 36(4). The applicant requests that a patent be
granted.

115

1/

Decision of Refusal
Patent Application Number
Drafting Date
Patent Examiner

Applicant
Agent

7th Year of Heisei (1995)
Patent No. 507561
16th year of Heisei (2004)
October 13
AOKI, Shigenori
4229 5M00
Title of Invention
METHOD AND DEVICE TO PROVIDE
ENCRYPTED PROTECTION OF A DATA STREAM IN A
COMMUNICATION SYSTEM
Motorola Incorporated
IKEUCHI, Yoshiaki (and 1 other)

The present application should be rejected according to Reason [C] described in the Office Action
dated April 17, 2003 (H15).
Moreover, despite reviewing the response and the amendment no sufficient basis to overturn the earlier
rejections has been found.
Remarks
1.

The Applicant asserts in the response submitted on October 30, 2003 (H15) that the invention

regarding Claims 1-10 of the present application (hereinafter referred to as “the invention of the present
application”) has patentability and by relying on D. W. Davies and W. L. Price authors / Uwazono supervisor of
translation, “Network Security”, Japan, Nikkei, McGraw Hill, December 5, 1985, 1st Ed. 1st Printing, pg. 307-312
(hereafter referred to as Citation 1”) and Publication of Japanese Laid Open Patent Application S63-167588
(hereafter referred to as “Citation 2”) which are cited in the aforementioned Office Action, the use of a packet
sequence number and an overflow sequence number to encrypt and decrypt data is not a simple selection of
one from among plurality and variety used as keys.
Therefore, the following examination was conducted on the reason and the assertion.
2.

First, the validity of the reason and the assertion will be examined.
The response submitted on October 30, 2003 states that the packet sequence number is data

embedded in each of the converted data packet, and the data are not transformed or repeated by the packet.
Meanwhile, the initial value data in the scrambling process described in Citation 2 is data superimposed on the
scrambled source video signal and is regularly modified. Upon further examination, the packet sequence
number and the initial value data are both used as the data to generate a pseudo random bit stream, and
additionally they also resemble in data modification and a method for exchanging with the other side so that
the packet sequence
SN 2/E
‖
Initial Value2/E
Data

(Handwritten)

116

2/E
number of the invention of the present application corresponds to the initial value data described in Citation 2,
with respect to the cryptographic protection of a data stream.
Furthermore, in the response submitted on October 30, 2003, the overflow sequence number in the
invention of the present application is [not] 1 transmitted to the terminal of the communication path, and they are
neither embedded into the data packet nor derived from data embedded in the data packet, and are
determined independently by the transmitting communication unit and the receiving communication unit
respectively. On the other hand, with the scrambling process described in Citation 2, methods for controlling
and counting total transmissions count and increment a vertical sync signal of a source video signal, and
configuration settings for timing increments are determined independently by counting the vertical sync signal
both at encoding and decoding sides without appearing in the communication path. Upon further examination,
the overflow sequence number and the total transmissions are also used as data to create a pseudo random
bit stream in addition to their similarities in which the information itself does not appear in the communication
path but is independently detected and determined by the units so that the overflow sequence number of the
invention of the present application concerning the cryptographic protection of a data stream corresponds to
the total transmissions as described in Citation 2.
Looking further, as I Field Encrypting Method for encrypting a packet described in Citation 1, the use of
a functional composition in order to encrypt and decrypt information that corresponds to a packet sequence
number, information which corresponds to an overflow sequence number and data by adopting technology to
create a pseudo random bit stream described in Citation 2 does not surpass the category which could be easily
achieved by those skilled in the art as indicated in the aforementioned Office Action.
Therefore, since the above Reason states a functional composition which could be easily achieved by
those skilled in the art based upon the descriptions given in Citation 1 and 2, it is not sufficient to validate the
assertion.
3.

Due to the foregoing, the above assertion, to the effect that the invention of the present application has

patentability stated by the Applicant in the response submitted on October 30, 2003, is not based on a valid
reason and therefore cannot be granted .
END
Director / Agent

Examiner

MIZUNO, Shigeo

AOKI, Shigenori

8220
1

Chief Examiner / Agent

Asst. Examiner

OF.SN
‖
Total transmissions
(Handwritten)

4229

Translator’s note: Office Action dispatch no.: 435917 from Dec 5, 2003 citing the same lines from the October 30, 2003 response

states “the overflow sequence numbers are not transmitted to the terminal of the communication path” in contradiction to this citation
of the October 2003 response.

117