`Case 2:17-cv-00514—JRG Document 162-23 Filed 02/13/19 Page 1 of 3 PageID #: 14531
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` EXHIBIT 23
`EXHIBIT 23
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`Case 2:17-cv-00514-JRG Document 162-23 Filed 02/13/19 Page 2 of 3 PageID #: 14532
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`IPR2018-00817
`U.S. Patent No. 9,445,251
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________________
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`APPLE INC.,
`Petitioner,
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`v.
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`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
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`Patent No. 9,445,251
`Issue Date: September 13, 2016
`Title: METHOD TO PROVIDE AD HOC AND PASSWORD PROTECTED
`DIGITAL AND VOICE NETWORKS
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`_________________________________________________________________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case No. IPR2018-00817
`_________________________________________________________________________
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`Case 2:17-cv-00514-JRG Document 162-23 Filed 02/13/19 Page 3 of 3 PageID #: 14533
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`I.
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`INTRODUCTION
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`On March 22, 2018, Apple Inc. (“Apple” or “Petitioner”) submitted a
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`Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent No.
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`9,445,251 (Ex. 1001, “the ’251 Patent”), challenging claims 1–35 (the “Challenged
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`Claims”).
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`The Petition challenges all of the claims with only a single ground––that the
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`The Petition challenges all of the claims with only a single ground––that the –
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`claims are obvious over AGIS’s own patent, U.S. Patent No. 7,630,724 (“the ‘724
`claims are obvious over AGIS’s own patent, U.S. Patent No. 7,630,724 (“the ‘724
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`Patent”) to which the ‘251 Patent claims priority. However, the Petition fails for at
`Patent”) to which the ‘251 Patent claims priority. However, the Petition fails for at
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`least three reasons: (1) the Petition fails to properly construe the claims; (2) the
`least three reasons: (1) the Petition fails to properly construe the claims; (2) the
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`Petition does not establish that the ‘724 Patent is prior art; and (3) the Petition does
`Petition does not establish that the ‘724 Patent is prior art; and (3) the Petition does
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`not demonstrate that the Challenged Claims are obvious over the ’724 Patent.
`not demonstrate that the Challenged Claims are obvious over the ’724 Patent.
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`First, the Petition is deficient because Petitioner fails to meet its burden
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`under 37 C.F.R. § 42.104(b)(3). Petitioner proffered conflicting claim
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`constructions in the co-pending District Court litigation including an identification
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`of numerous claims that it believes are governed by 35 U.S.C. § 112(f). Ex. 2001
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`at 38–55. However, in this Petition, Petitioner does not allege that any of the
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`Challenged Claims are governed by 35 U.S.C. § 112(f) and only seeks construction
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`of a single term: “georeferenced.” Notably, Petitioner has conceded in the District
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`Court Litigation that this term should be afforded its plain and ordinary meaning.
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`Additionally, Petitioner’s substantive arguments are rife with narrow
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