`
`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
`
`Attorney Docket No.:
`104677-5008-825
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz et al.
`
`United States Patent No.: 7,334,720
`Formerly Application No.: 11/ 336,758
`issue Date: Iiebruary 26, 2008
`Filing Date: January 19, 2006
`Former Group Art Unit: 2876
`Former Examiner: Steven S. Paik
`
`ifliilfitfltfiififi
`
`For: Data Storage and Access Systems
`
`i\/L"\l]. STOP 13A'l‘HN’1‘ BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`DECLARATION OF MICHAEL P. DUFFEY IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 7,334,720
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`I, Michael
`
`P. Duffey, make
`
`the
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`following Declaration pursuant:
`
`to
`
`28 U.S.C. § 1746:
`
`1.
`
`I
`
`am 21 Litigation
`
`Paralegal
`
`Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes 8:: Gray LI .1’.
`
`2.
`
`I provide this Declaration in connection with the above-identified
`
`Covered Business Method Patent Review proceeding that is being requested at the
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`United States Patent and Trademark Office by Apple Inc. under 35 U.S.C. § 321, 37
`
`Apple Exhibit 1021
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`Page 00001
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`Page 00001
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`Apple Exhibit 1021
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`
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`C.F.R.. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`Covered Business i\/lethod Patent Review
`
`United States Patent No. 7,334,720
`
`on my personal knowledge.
`
`3.
`
`Exhibit 1001 hereto is a true and correct copy of United States Patent
`
`No. 7,334,720 to Her-men—ard Hulst and Patrick Sander Racz, which I downloaded on
`
`January 31, 2014 from the United States Patent and Trademark Office (“USP’l‘O”)
`
`Patent Application Information Retrieval (“PAIR”) website and which is a record of
`
`the USPTO to which all parties have access. An exhibit label on the first page and
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`page numbers on all pages have been added to the bottom of this document but no
`
`other alterations have been made.
`
`4.
`
`lixhibit 1002 hereto is
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`a true and correct Copy of Plaintiffs’
`
`I-first
`
`Arnended Complaint
`
`for Patent Infringement
`
`(“Amended Complaint”),
`
`filed in
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`fmargflar/9 LLC, at ad 22. Apple Inc,
`
`63‘ c2!., Civil Action No. 6:13—cV-447, befo.te the
`
`District Court of the Eastern District of Texas, which I downloaded on February 24,
`
`2014 from the Public Access to Court Electronic Records (“13;'\C.l-QR”) website and is
`
`a record of the aforementioned District Court (Dkt. No. 72) to which all parties have
`
`access. The Amended Complaint contains markings at the top of each page indicating
`
`the PACER fling information. An exhibit label on the first page and page numbers
`
`on all pages have been added to the bottom of this document but no other alterations
`
`have been made.
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`Page 00002
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`Page 00002
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`5.
`
`lrlxhibit 1006 hereto is a true and correct copy of United States Patent
`
`No. 4,999,806 to Fred Chernow and Randy J. Peterson, which I downloaded on
`
`February 3, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`6.
`
`Exhibit 1007 hereto is a true and correct copy of United States Patent
`
`No. 5,675,734 to Arthur R. Hair, which I downloaded on liebruary 3, 2014 from the
`
`USPTO PATR website and which is a record of the US13’1"O to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of tl1is document but no other alterations have been made.
`
`7.
`
`Exhibit 1008 hereto is a true and correct copy of United States Patent
`
`No. 4,878,245 to Graham C. Bradley, Alton O. Stretten, john P. Stretten, and Rex B.
`
`Wentzel, which I downloaded on February 3, 2014 from the USPTO PAIR website
`
`and which is a record of the USPTO to which all parties have access. An exhibit label
`
`on the first page and page numbers on all pages have been added to the bottom of
`
`this document but no other alterations have been made.
`
`8.
`
`Exhibit 1009 hereto is a true and correct copy of the tile history for
`
`United States Patent No. 7,334,720 to I-lermen—ard Hulst and Patrick Sander Racz,
`
`which I downloaded on January 29, 2014 from the USPTO l3All{ website and which
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`Page 00003
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`Page 00003
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`
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`is a record of the USPTO to which all parties have access. An exhibit label on the
`
`first page and page numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`9.
`
`Jixhibit 1010 hereto is a true and correct copy of United States Patent
`
`No. 7,942,317 to Patrick Racz and Her-men—ard Hulst, wh.ich I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`10.
`
`Exhibit 1011 hereto is a true and correct copy of United States Patent
`
`No. 5,103,392 to Ryoichi Mori, which I downloaded on March 10, 2014 from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`11.
`
`Exhibit 1012 hereto is a true and correct copy of United States Patent
`
`No. 5,530,235 to Mark j. Stefik, Daniel G. Bobrow, Stuart K. Card, Michalene M.
`
`Casey, Richard Goldstein, Michael G. Lamrning, jock D. Macltinlay, Roy Want,
`
`George G. Robertson, Mark D. Weiser, and Daniel M. Russell, which I downloaded
`
`on February 24, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`Page 00004
`
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`Page 00004
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`
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`12.
`
`Exhibit 1013 hereto is a true and correct copy of United States Patent
`
`No. 5,629,980 to Mark J. Stefik and Michalene M. Casey, which I downloaded on
`
`February 24, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`13.
`
`Exhibit 1014 hereto is a true and correct copy of United States Patent
`
`No. 5,915,019 to Karl L. Gintcr, Victor I-I. Shear, Francis J. Spahn, and David M. Van
`
`\X«’ie, which "I downloaded on February 24, 2014 from the USPTO PAIR website and
`
`which is a record of the USPTO to which all parties have access. An exhibit label on
`
`the first page and page numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`14.
`
`l"',xhibit 1015 hereto is a true and correct copy of European Patent
`
`Application EP 0 809 221 A2, filed on May 6, 1997 by Sun Mierosystems, Inc., and
`
`published on November 26, 1997, which I downloaded on February 24, 2014 from
`
`the European Patent Office’s Espacenet search page to which all parties have access.
`
`An exhibit label on the first page and page numbers on all pages have been added to
`
`the bottom of this document but no other alterations have been made.
`
`U1
`
`Page 00005
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`Page 00005
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`
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`15.
`
`Iixhibit 1016 hereto is a true and correct copy of the International
`
`Publication No. W0 99/ 43136,
`
`filed on January 11., 1999 by Ericsson, Inc, and
`
`published on August 26, 1999, which I downloaded on February 24, 2014 from the
`
`Iiuropean Patent Office’s Espacenet search page to which all parties have access. Ari
`
`exhibit label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`16.
`
`Exhibit 1017 hereto is a true and correct copy of the Japanese Patent
`
`Application Publication No. H11-164058 filed on November 26, 1997 by Hitachi
`
`Hlectton Service Co, Ltd, and published on June 18, 1999, which _I downloaded on
`
`March 11, 2014 from the European Patent Office’s Espacenet search page to which
`
`all parties have access, and which is accompanied by a true and correct copy of a
`
`translation of the text of that document and a declaration of accuracy regarding that
`
`translation provided by l\/lultiLing Corporation. An exhibit label on the first page and
`
`page numbers on all pages have been added to the bottom of this document but no
`
`other alterations have been made.
`
`17.
`
`Exhibit 1020 hereto is a true and correct copy of United States Patent
`
`No. 8,033,458 to Herrnen-ard Hulst and Patrick Racz, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access.
`
`r"\n exhibit label on the first page and page
`
`Page 00006
`
`
`Page 00006
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`
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`Coveted Business Method Patent Review
`
`"United States Patent No. 7,334,720
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`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`18.
`
`Exhibit 1029 hereto is a true and correct copy of the file history for
`
`United States Patent No. 7,942,317 to Patrick Racz and Hermen—ard Hulst, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`19.
`
`lfixlubit 1030 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,033,458 to I-Iermen—ard I-lulst and Patrick Racz, which I
`
`downloaded on January 29, 2014 from the USPTO -PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`20.
`
`Exhibit. 1031 hereto is a true and correct copy of United States Patent
`
`No. 8,061,598 to Patrick Racz and Hermen—ard Hulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`Page 00007
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`Page 00007
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`
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`21.
`
`Exhibit 1032 hereto is a true and correct copy of United States Patent
`
`No. 8,118,221 to Patrick Racz and l-lermer1—ard I-lulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`22.
`
`Exhibit 1033 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,118,221 to Patrick Racz and I~Iermen—ard I-lulst, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`23.
`
`Exhibit 1034 hereto is a true and correct copy of United States Patent
`
`No. 8,336,772 to Patrick Racz and l~Iermen—ard I---lulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`24.
`
`Exhibit 1035 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,336,772 to Patrick Racz and Herrnen-ard P-Iulst, which I
`
`Page 00008
`
`
`Page 00008
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`
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`25.
`
`Exhibit 1037 hereto is a true and correct copy of United States Patent
`
`No. 5,953,005 to James C. Liu, which I downloaded on April 21, 2015 from the
`
`USPTO PAIR website and which .is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`26.
`
`lixbibit 1038 hereto is a true and correct copy of United States Patent
`
`No. 5,970,479 to Patrick Racz and Hei:men—ard Hulst, which I downloaded on April
`
`29, 2015 from the USPIO PAIR website and which is a record of the USPTO to
`
`which all parties have access. An exhibit label on the first page and page numbers on
`
`all pages have been added to the bottom of this document but no other alterations
`
`have been made.
`
`27.
`
`lixhibit 1039 hereto is a true and correct copy of an article by Rakesh
`
`Mohan, john R. Smith and Chung-Sheng Li entitled “Adapting Multimedia Internet
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`Content for Universal Access”, published March 1999 by The Institute of Electrical
`
`and
`
`Electronics
`
`Engineers,
`
`Inc.,
`
`- which
`
`I
`
`downloaded
`
`from
`
`http: / / iviziabs fu.caX arya/ Papers / I lillill X'l'ransactl\/[MK CD /DA'l'.-"X / 007481 75.PDl"'
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`Page 00009
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`Page 00009
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`on April 21, 2015. Page numbers and an exhibit label have been added to the bottom
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`of this document but no other alterations have been made
`
`28.
`
`Exhibit 1040 hereto is a true and correct copy of the transcript of the
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`April 8th & 9th, 2015 Deposition of Jonathan Katz, Ph.D., taken in connection with
`
`the above identified Covered Business Method Patent Review proceeding, which was
`
`transcribed and certified by Cappy Hallock, RPR, CRR, CLR, Certified Shorthand
`
`Reporter,
`
`licensed in the District of Columbia, of Gregorylldwards LLC, and
`
`delivered to me on April 14, 2015. An exhibit label on the first page and pages
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`29.
`
`Exhibit 1041 hereto is a true and correct copy of an article by Jim 'l'ay'lor
`
`entitled “DVD—Video: Multimedia for the Masses”, published july-September 1999 by
`
`The Institute of Electrical and Electronics Hngineers, Inc, which I downloaded from
`
`http: / /ivizlab.sfu.ca X arya / Papers / "IREE / Multimedia/ 1999 /_IulyXDVD—Video.pdf on
`
`April 29, 2015. Page numbers and an exhibit label have been added to the bottom of
`
`this document but no other alterations have been made.
`
`30.
`
`Exhibit 1042 hereto is a true and correct copy of United States Patent
`
`No. 5,903,721 to Timothy Sixtus, which I downloaded on April 21., 2015 from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`10
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`Page 00010
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`Page 00010
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`Covered Business Method Patent Review
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`United States Patent No. 7,334,720
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`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`31.
`
`l’*‘.xhibit 1043 hereto is a true and correct copy of United States Patent
`
`No. 5,761,485 to Daniel E. Munyan, which I downloaded on April 21, 2015 from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`32.
`
`Exhibit 1044 hereto is a true and correct copy of International
`
`Publication No. W0 99/ 13398, filed on June 14, 1995 by Peterson, Harold L. and
`
`\Williams, James B., and published on December 21, 1995, which I downloaded on
`
`April 21, 2015 from the liuropean Patent Office’s lilspacenet search page to which all
`
`parties have access. An exhibit label on the first page and pages numbers on all pages
`
`have been added to the bottom of this document but no other alterations have been
`
`made.
`
`33.
`
`"Exhibit" 1045 hereto is an excerpt of a true and correct copy of the
`
`Transcript of Trial, Afternoon Session, February 16, 2015, filed in fmargflai‘/5 LLC, 82'
`
`all y. A}:pZe lam, Civil Action No. 6:13—CV-447 before the District Court of the [iastern
`
`District of Texas, which 1 received on February 16, 2015 from Shea Sloan, Court
`
`Reporter. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`11
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`Page 00011
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`Page 00011
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`Covered Business 1\«1eth0d Patent Review
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`United States Patent No. 7,334,720
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`34.
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`l have been informed that willfully false statements are punishable by
`
`fine or imprisonment, or both.
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`I make this declaration of my own personal
`
`knowledge, and all statements are true.
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`If called to testify as to the truth of the
`
`matters stated herein, 1 could and would testify competently.
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`35.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`Mn...-_
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`Executed this : day of May, 2015, at East Palo Alto, CA.
`
`LkA
`Michael P. Duf-fey
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`it
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`12
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