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`Filed on behalf of:
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`Patent Owner SightSound Technologies, LLC
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`By: David R. Marsh, Ph.D.
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`Kristan L. Lansbery, Ph.D.
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`ARNOLD & PORTER LLP
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`555 12th Street, N.W.
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`Washington, DC 20004
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`Tel: (202) 942-5068
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`Fax: (202) 942-5999
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`APPLE INC.,
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`Petitioner,
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`v.
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`SIGHTSOUND TECHNOLOGIES, LLC,
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`Patent Owner.
`_______________
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`Case CBM2013-00020
`Patent 5,191,573
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`_______________
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`PATENT OWNER SIGHTSOUND TECHNOLOGIES, LLC’S REPLY IN
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
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`TABLE OF CONTENTS
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`Page
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`I.
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`Exhibit 4255 (Declaration of Jeffrey Robbin) ................................................. 1
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`II.
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`Exhibit 4258 (Declaration of Tom Weyer) ..................................................... 2
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`III. Exhibits 4209-4210 (U.S. Patent Nos. 4,567,359 and RE32,115) .................. 2
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`IV. Exhibit 4256 (Declaration of Lawrence Kenswil) .......................................... 3
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`V.
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`Exhibit 4262 (Second Declaration of Dr. John P.J. Kelly) ............................. 4
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`(a) Dr. Kelly's unsupported opinions concerning ITMS ............................ 4
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`(b) Dr. Kelly ignores relevant materials concerning CompuSonics ........... 4
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`VI. Exhibit 4212-4250 (Various U.S. Patents) ...................................................... 5
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`-i-
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`Patent Owner submits this reply in support of its Motion to Exclude
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`Evidence Pursuant to 37 C.F.R. § 42.64(c) (“Mot.”).
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`I.
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`Exhibit 4255 (Declaration of Jeffrey Robbin)
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`Petitioner does not dispute that Mr. Robbin was in high school in the mid-
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`1980s, and thus cannot opine upon what was prevalent in the industry. Mot. at 1-3.
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`The rejoinder that “young people” generally have interest in “different ways of
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`obtaining music,” Opp. at 2-3, is woefully insufficient to show that Mr. Robbin had
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`personal knowledge. Petitioner also says Mr. Robbin has personal knowledge of
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`technological features of ITMS and Petitioner’s patents, but never addresses that
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`“Mr. Robbin only lists the patents . . . without any discussion of their claims.”
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`Mot. at 2-3. At deposition, Mr. Robbin did not recall when he last reviewed the
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`patents, and did not know what it means to practice a patent or whether Petitioner
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`was practicing any of the claims. Ex. 2176 (Robbin Dep.) at 41:18-42:8, 74:23-
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`76:15.
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`In an effort to deflect from its lack of admissible evidence, Petitioner seeks
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`to improperly shift the burden to Patent Owner by mischaracterizing the relevant
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`legal standard. Patent Owner has made a prima facie case of nexus by showing
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`that the commercially successful product is coextensive with the claims, making it
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`Petitioner’s burden to rebut this presumption. See DeMaco Corp. v. F. Von
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`-1-
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`Langsdorff Licensing Ltd., 851 F.2d 1387, 1392-93 (Fed. Cir. 1988); see also
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`Paper 80 (Patent Owner’s Opp. to Motion to Exclude), pp. 3-5.1
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`II. Exhibit 4258 (Declaration of Tom Weyer)
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`Petitioner’s arguments do not refute allegations of copying, as the
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`information obtained at Petitioner’s meeting with Patent Owner was conveyed
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`directly to Steve Jobs, the architect of ITMS. Ex. 2117 (1/15/99 Letter from S.
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`Sander to S. Jobs); Ex. 2176 (Robbin Dep.), 54:1-6. Further, Mr. Weyer cannot
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`admit he does not recall the discussions at issue, yet speculate about what
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`Petitioner “would have” done. Mot. at 3-4.
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`III. Exhibits 4209-4210 (U.S. Patent Nos. 4,567,359 and RE32,115)
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`Petitioner feebly defends its improper reference to patents to shore up new
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`arguments first made on reply by suggesting that it “simply provided the Board
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`with copies of the two patents at issue” in a cited case. Opp. at 6. Petitioner in fact
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`“provided” the patents to support its untimely argument that “[i]n similar
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`1 Petitioner improperly relies on decisions where the patent covered only a
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`component. Opp. at 3 (citing Kyocera Corp. v. Softview, LLC, IPR2013-00007,
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`Paper 51 at 32 (omitting sentence that “[w]here the patent is said to cover a feature
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`or component of a product, the patent owner has the burden . . . .”)).
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`-2-
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`circumstances involving electronic payment, courts have found obviousness.”
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`Reply, Paper No. 52, p. 9.
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`IV. Exhibit 4256 (Declaration of Lawrence Kenswil)
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`Petitioner concedes Mr. Kenswil is not a person of ordinary skill, but now
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`contends Mr. Kenswil relied solely on Dr. Kelly for his opinions on how the patent
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`claims compare with the prior art and ITMS. Opp. at 6. In fact, Mr. Kenswil
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`repeatedly opined on what persons of ordinary skill “often discussed and
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`recognized,” Ex. 4256 ¶¶ 51-65, and what features are covered by the patent, id.
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`¶ 33.2 Petitioner then shifts to claiming for the first time that Mr. Kenswil is an
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`expert on “what makes an online music business a success or a failure.” Opp. at 6.
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`But Petitioner hasn’t shown that Mr. Kenswil has experience with online
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`businesses, either. Ex. 4256 ¶¶ 6-18. Thus, the witness has no basis to offer wide-
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`ranging opinions on issues such as bandwidth constraints, storage of digital data,
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`compression and encryption, the prevalence of personal computers and
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`telecommunications lines, and technical problems. Mot. at 5-6.
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` Petitioner again deflects its lack of evidence that non-patented features
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`drove commercial success by ignoring its burden and ignoring the fact that Mr.
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`2 To the extent that Mr. Kenswil is doing nothing more than repeating Dr. Kelly’s
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`opinions, his declaration is not proper evidence.
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`-3-
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`Kenswil failed to consider the best source of evidence on why customers choose to
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`purchase content from ITMS, because he did not ask for internal surveys or
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`customer information. Mot. at 8.
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`V. Exhibit 4262 (Second Declaration of Dr. John P.J. Kelly)
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`(a) Dr. Kelly’s unsupported opinions concerning ITMS: Petitioner again
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`attempts to deflect its own expert’s failure by trying to reverse the burden of proof.
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`Moreover, Petitioner’s assertion that Dr. Kelly “testified that he relied on his own
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`experience using iTMS and . . . public information,” Opp. at 12, misses the point.
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`Petitioner never explains, for example, how Dr. Kelly can testify regarding the role
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`played by Akamai Technologies based on his own experience unless his
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`experience was with Petitioner’s confidential information which should have been
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`cited and disclosed. Petitioner concedes Dr. Kelly did not consider information in
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`Dr. Tygar’s report, which reached the opposite conclusion about whether ITMS
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`practices the challenged claims, but suggests Patent Owner did not identify any
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`“inconsistent information.” Opp. at 13. But it is Petitioner that has withheld the
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`inconsistent information incorporated into Dr. Tygar’s report.
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`(b) Dr. Kelly ignores relevant materials concerning CompuSonics:
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`Petitioner seeks to re-write history and excuse Dr. Kelly’s failure to consider the
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`Declaration of John Stautner (who testified that (1) “telerecording capability never
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`existed on any DSP that was sold or commercially available by CompuSonics,”
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`-4-
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`Ex. 2121 ¶ 15, (2) that the slide reflecting CompuSonics’ experimental
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`transmission of data (Ex. 4112) was never provided to the public, id. ¶ 23, and (3)
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`that the image of a device supposedly demonstrating the “CompuSonics System”
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`presented by Apple to the Board (Ex. 4131) was a “mock up” for “promotional
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`purposes only,” id. ¶ 26), by suggesting that Dr. Kelly only relied upon
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`CompuSonics’ “public disclosures.” This is false. Dr. Kelly’s testimony is
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`predicated on the fallacy that “CompuSonics produced and sold a line of digital
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`recording and playback devices . . . capable of . . . receiving and storing a digital
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`recording from another computer over a communications interface,” Ex. 4132 ¶ 33,
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`and that the diagram of the (empty) box presented to the Board as Figure 4
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`“illustrates CompuSonics system’s ‘telerecording.’” Id. ¶ 37. Dr. Kelly’s opinions
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`are premised on facts revealed by Mr. Stautner to be false (testimony which Apple
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`never refuted) and should be excluded.
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`VI. Exhibits 4212-4250 (Various U.S. Patents)
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`Petitioner provides no evidence that the inventions are or were utilized by
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`ITMS, apart from conclusory statements that “various features and various aspects
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`of [I]TMS . . . are covered by the various patents.” Ex. 2175 at 70:6-8. That is
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`insufficient to establish that the patents are admissible under F.R.E. 402 and 37
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`C.F.R. § 42.61(c).
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`-5-
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`Dated: April 25, 2014
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` By:
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`Respectfully submitted,
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`/David R. Marsh/
`David R. Marsh, Ph.D.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`Attorneys for Patent Owner
`SightSound Technologies, LLC
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`-6-
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PATENT OWNER
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`SIGHTSOUND TECHNOLOGIES, LLC’S REPLY IN SUPPORT OF
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`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`was served on April 25, 2014 to the following Counsel for Petitioner via e-mail,
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`pursuant to the parties’ agreement concerning service:
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`J. Steven Baughman, Lead Counsel
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`Steven.Baughman@ropesgray.com
`Ching-Lee.Fukuda@ropesgray.com
`ApplePTABServiceSightSound@ropesgray.com
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`Attorneys for Petitioner Apple Inc.
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`/David R. Marsh/
`David R. Marsh (Atty. Reg. No. 41,408)
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, D.C. 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
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`-7-
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