`Case 2:17-cv-00514—JRG Document 162-25 Filed 02/13/19 Page 1 of 3 PageID #: 14537
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` EXHIBIT 25
`EXHIBIT 25
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`Case 2:17-cv-00514-JRG Document 162-25 Filed 02/13/19 Page 2 of 3 PageID #: 14538
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`IPR2018-00819
`U.S. Patent No. 9,467,838
`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. 9,467,838
`Issue Date: October 11, 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. IPR2018-00819
`_________________________________________________________________________
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`Case 2:17-cv-00514-JRG Document 162-25 Filed 02/13/19 Page 3 of 3 PageID #: 14539
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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” or “Pet.”) (Paper 1) to institute inter partes review (“IPR”)
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`of U.S. Patent No. 9,467,838 (Ex. 1001, “the ’838 Patent”), challenging claims 1–
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`84 (the “Challenged 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 ‘838 Patent claims priority. Pet. at 5. However, the Petition
`Patent”) to which the ‘838 Patent claims priority. Pet. at 5. However, the Petition
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`fails for at least three reasons: (1) the Petition fails to properly construe the claims;
`fails for at least three reasons: (1) the Petition fails to properly construe the claims;
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`(2) the Petition does not establish that the ‘724 Patent is prior art; and (3) the
`(2) the Petition does not establish that the ‘724 Patent is prior art; and (3) the
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`Petition does not demonstrate that the Challenged Claims are obvious over the
`Petition does not demonstrate that the Challenged Claims are obvious over the
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`’724 Patent.
`’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 20–38; Ex. 2003 at 13–31. However, in this Petition, Petitioner does not allege
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`that any of the Challenged Claims are governed by 35 U.S.C. § 112(f) and only
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`seeks construction of two terms: “georeferenced map” and georeferenced map
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`data.” Notably, Petitioner has conceded in the District Court Litigation that this
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`1
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