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`Covered Business Method Patent Review
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`United States Patent No. 8,336,772
`
`:'\ttorney Docket No.:
`104677-5008-830
`
`Customer N 0. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz ct al.
`
`United States Patent No.: 8,336,772
`Formerly Application No.: 13/212,047
`"Issue Date: December 25, 2012
`Filing Date: August 17, 2011
`Former Group Art Unit: 2887
`Fonner lixatniner: Thien M. Le
`
`Efitfilfifif/".‘-t.//"’Jtf§£§1
`
`lior: Data Storage and Access Systems
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`MAIL STOP l’r"\'1"F,N’I‘ BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
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`Alexandria, Virginia 22313-1450
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`DECLARATION OF MICHAEL P. DUFFEY IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,336,772
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`1, Michael
`
`1’. Duffey, make
`
`the
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`following Declaration pursuant
`
`to
`
`28 U.s.<:. § 1740;
`
`1.
`
`I
`
`am a Litigation
`
`Paralegal
`
`Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes & Gray L] .P.
`
`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 Method Patent Review
`
`United States Patent No. 8,336,772
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`on my personal knowledge.
`
`3.
`
`Exhibit 1001 hereto is a true and correct copy of United States Patent
`
`No. 8,336,772 to Patrick Sander Racz and l-Iermen—ard I-Iulst, 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
`
`page numbers on all pages have been added to the bottom of this document but no
`
`other alterations have been made.
`
`4.
`
`Exhibit 1002 hereto is a true and correct copy of Plaintiffs’ First
`
`Amended Complaint
`
`for Patent Infringement
`
`(“Amended Complaint”),
`
`tiled in
`
`fzfzartflar/7 LLC,
`
`62‘ ad.
`
`12. Apple Inc,
`
`32‘ ai, Civil Action No. 6:13-cv-447, before the
`
`District Court of the Eastern District of Texas, which I downloaded on February 24,
`
`2014 from the Public Access to Court Electronic Records (“PACER”) 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 tiling 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.
`
`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. 8,336,772
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`5.
`
`Exhibit 1005 hereto is a true and correct copy of an article by jim Taylor
`
`entitled “DVD—Video: Multimedia for the Masses”, published july—September 1999 by
`
`The lnstitute of Electrical and Electronics Engineers, Inc., which I downloaded from
`
`http: / /ivizlab.sfu.ca/ arya / Papers / 'I_l...£JLl'£ / Multimedia/ 1 999/] uly /DVD-Videopdf 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.
`
`6.
`
`Exhibit 1006 hereto is a true and correct copy of United States Patent
`
`No. 4,999,806 to Fred Chernow and Randy Peterson, which I downloaded on
`
`February 3, 201.4 from the USP’l'O 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.
`
`7.
`
`Exhibit 1007 hereto is a true and correct copy of United States Patent
`
`No. 5,675,734 to Arthur R. I-lair, 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 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
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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. 8,336,772
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`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.
`
`9.
`
`Exhibit 1009 hereto is a true and correct copy of the tile history for
`
`United States Patent No. 8,336,772 to Patrick Racz and Hermen-ard Hulst, which T
`
`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.
`
`10.
`
`Exhibit 1010 hereto is a true and correct copy of United States Patent
`
`No. 7,942,317 to Patrick Racy, and I-iermen—ard Hulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`U-Sl3’l‘(") 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.
`
`11.
`
`Exhibit 1011 hereto is a true and correct copy of United States Patent
`
`No. 5,103,392 to Ryoichi Mori, which l 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.
`
`Page 00004
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`Page 00004
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`Covered Business Method Patent Review
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`United States Patent No. 8,336,772
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`12.
`
`Exhibit 1012 hereto is a true and correct copy of United States Patent
`
`No. 5,530,235 to Mark Stefik, Daniel G. Bobrow, Stuart K. Card, Michalene M.
`
`Casey, Richard Goldstein, Michael G. Lamming, Jock D. Mackinlay, Roy Want,
`
`George G. Robertson, Mark D. Weiser, and Daniel M. Russell, which "I downloaded
`
`on February 24, 2014 from the USPTO P,.r'\IR 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 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.
`
`14.
`
`lixhibit 1014 hereto is a true and correct copy of United States Patent
`
`No. 5,915,019 to Karl L. Ginter, Victor H. Shear, Francis j. Spahn, and David M. Van
`
`Wie, 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.
`
`Page 00005
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`Page 00005
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`Covered Business Method Patent: Review
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`United States Patent‘ No. 8,336,772
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`15.
`
`Exhibit 1015 hereto is a true and correct copy of European Patent
`
`Application EP 0 809 221 A2, filed on May 6, 1997 by Sun Microsystems, 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.
`
`16.
`
`Exhibit 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
`
`European Patent Office’s Espacenct 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.
`
`17.
`
`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
`
`Electron Service Co., Ltd, and published on June 18, 1999, which I downloaded on
`
`March 11, 2014 from the European Patent Off1ce’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 MultiI.ing Corporation. An exhibit label on the first page and
`
`Page 00006
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`Page 00006
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`
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`Covered Business Method Patent Review
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`United States Patent No. 8,336,772
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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.
`
`18.
`
`Exhibit 1020 hereto is a true and correct copy of United States Patent
`
`No. 8,033,458 to I-lermen-ard Hulst and Patrick Racz, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USP'l'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 this document but no other
`
`alterations have been made.
`
`19.
`
`Exhibit 1029 hereto is 21 true and correct copy of the file history for
`
`United States Patent No. 7,942,317 to Patrick Racz and I-lermen-ard Hulst, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is 21
`
`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 1030 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,033,458 to Hermen-ard Hulst 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.
`
`Page 00007
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`Page 00007
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`Covered Business Method Patent Review
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`United States Patent No. 8,336,772
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`21.
`
`lilxhibit 1031 hereto is a true and correct copy of United States Patent
`
`No. 8,061,598 to Patrick Racz and Hermen—ard I-Iulst, which I downloaded on
`
`January 31, 2014 from the USPTO P:'\IR 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 a.ll pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`22.
`
`Exhibit 1032 hereto is a true and correct copy of United States Patent
`
`No. 8,118,221 to Patrick Racz and I-Iermen—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.
`
`23.
`
`li'.xhibit 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-lei'men~ard llulst, 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.
`
`24.
`
`Exhibit 1034 hereto is a true and correct copy of United States Patent
`
`No. 7,334,720 to Patrick Racz and I-lermen—ard Hulst, which I downloaded on
`
`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. 8,336,772
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`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.
`
`25.
`
`Exhibit 1035 hereto is a true and correct copy of the file history for
`
`United States Patent No. 7,334,720 to Patrick Racz and I-lermen-ard liulst, which l
`
`downloaded on January 29, 2014 from the USPTO 13.-MR 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.
`
`ljlxliibit 1038 hereto is a true and correct copy of International
`
`Publication No. W0 99/ 13398, filed on September 11, 1998 by "Peterson, I-larold L.
`
`and Williams, James 13., and published on March 18, 1999, which I downloaded on
`
`April 21, 2015 from the liuropean Patent Office’s Hspacenet 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.
`
`27.
`
`Exhibit 1039 hereto is a true and correct copy of the transcript of the
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`April 8th 8: 9th, 2015 Deposition of Jonathan Katz, Ph.D., taken in connection with
`
`the above identified Covered Business Method Patent Review proceeding, which was
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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. 8,336,772
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`transcribed and certified by Cappy Hallock, RPR, CRR, CLR, Certified Shorthand
`
`Reporter,
`
`licensed in the District of Columbia, of G.tegoryF,dwards LLC, and
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`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.
`
`28.
`
`Exhibit 1040 hereto is a true and correct copy of United States Patent
`
`No. 5,761,485 to Daniel 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.
`
`29.
`
`Exhibit 1041 hereto is a true and correct copy of an article by Rakesh
`
`Mohan, john R. Smith and Chung-Sheng lqi entitled “Adapting Multimedia Internet
`
`Content for Universal Access”, published March 1999 by The Institute of Izilcctrical
`
`and
`
`Electronics
`
`Engineers,
`
`lnc.,
`
`which
`
`I
`
`downloaded
`
`from
`
`http: X Xivizl.ab.sfu.ca/ arya/’ Papers / IEEE /’l‘rar1sactlV.lMX CD /D./\T..-‘V 007-48175.PDF
`
`on April 21, 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. 5,953,005 to James C. I in, 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. 8,336,772
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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.
`
`Exhibit 1043 hereto is an excerpt of a true and correct copy of the
`
`Transcript of Trial, Afternoon Session, February 16, 2015, filed in 577:/a7;7‘Za.rr5 LLC, 92‘
`
`at/. a Appie Imz, Civil Action No. 6:13—cv-447 before the District Court of the Eastern
`
`District of Texas, which I 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.
`
`32.
`
`Exhibit 1044 hereto is a true and Correct copy of U-r1ite.d 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
`
`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.
`
`33.
`
`ljixliibit 1045 hereto is a true and correct copy of United States Patent
`
`No. 5,632,681 to I-lalil Bakoglu, Inching Chen, Andy Lean, Kiyoshi Maruyama, and
`
`Chung-wai Yue, which I downloaded on May 11, 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
`
`11
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`Page 00011
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`Page 00011
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`Covered Business Method Patent Review
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`United States Patent No. 8,336,772
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`34.
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`I have been informed that willfully false statements are punishable by
`
`fine or imprisonment, or both.
`
`I make this declaration of my own personal
`
`knowledge, and all statements are true.
`
`If called to testify as to the truth of the
`
`matters stated herein, I could and would testify competently.
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`35.
`
`I declare under penalty of perjury that the foregoing is true and Correct.
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`Executed this 11* day of May, 2015, at EastPa1o Alto, CA.
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`l}oK¢l{\c>42£2
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`Michael P. Duffey
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`12
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`Page00012
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