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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`CBS INTERACTIVE INC., THE NEW
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`YORK TIMES COMPANY G4 MEDIA,
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`LLC, BRAVO MEDIA, LLC, AND
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`PHOENIX NEWSPAPERS, INC.,
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` Petitioners,
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`- vs - No. IPR2013-00033 (JYC)
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`HELFERICH PATENT LICENSING, Patent 7,155,241
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`LLC AND WIRELESS SCIENCE, LLC,
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`Exclusive Licensee and
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` Patent Owner.
`
`______________________________
`
` REPORTER'S TRANSCRIPT OF TELEPHONIC HEARING
`
` October 22, 2013
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` lipka.com, inc.
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` 888.lipka.com
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` info@lipka.com
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`www.lipka.com
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`lipka.com, inc.
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`Page 1
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`WIRELESS SCIENCE 2074
`CBS v. HELFERICH
`Case No. IPR2013-00033
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`Volume I
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`10/22/2013
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` TELEPHONIC APPEARANCES
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`ADMINISTRATIVE PATENT JUDGES: JAMESON LEE
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` JONI Y. CHANG
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` KEVIN F. TURNER
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`FOR THE PETITIONERS:
`
` COVINGTON & BURLING, LLP.
`
` BY: ANDREA G. REISTER, ESQ.
`
` GREGORY DISCHER, ESQ.
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` 1201 Pennsylvania Avenue NW
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` Washington, D.C. 20004-2401
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` 202-662-6000; FAX 202-662-6291
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` areister@cov.com
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` gdischer@cov.com
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`FOR THE PATENT OWNER:
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` STEVEN G. LISA, LTD.
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` BY: JON E. KAPPES, ESQ.
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` 55 West Monroe Street, Suite 3210
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` Chicago, Illinois 60603
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` 312-752-4357; FAX 312-896-5633
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` jonkappes@patentit.com
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` AND
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` TELEPHONIC APPEARANCES CONTINUED
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` PATTERSON THUENTE PEDERSEN, P.A.
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` BY: BRAD D. PEDERSEN, ESQ.
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` 4800 IDS Center, 80 South 8th Street
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` Minneapolis, Minnesota 55402-2100
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` 612-349-5774; FAX 612-349-9266
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` pedersen@ptslaw.com
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` JUDGE LEE: Let me know -- this should be a
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`conference call for IPR 2013-00033. The case should be
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`CBS Interactive versus Helferich Patent Licensing.
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` Is that correct?
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` MS. REISTER: That is correct, Your Honor.
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` MR. PEDERSEN: That is correct, Your Honor.
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` JUDGE LEE: Let me know who's representing
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`petitioner and who's representing the patent owner,
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`please.
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` MS. REISTER: Yes, Your Honor. This is Andrea
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`Reister and Greg Discher for the petitioners.
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` JUDGE LEE: Thank you.
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` MR. PEDERSEN: And, Your Honor, this is Brad
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`Pedersen and Jon Kappes for the patent owner, and we
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`have a court reporter on the line.
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` If you'd like to introduce yourself.
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` THE REPORTER: Hi. This is Lynn Penfield.
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` JUDGE LEE: That's great. Who's arranged for
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`the court reporter?
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` MR. PEDERSEN: Your Honor, the patent owner has
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`arranged for the court reporter.
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` JUDGE LEE: Thank you. Wonderful. I think
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`we're going to need that.
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` Will you be kind enough to give the Board a
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`copy of the transcript?
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` MR. PEDERSEN: Absolutely, and we'll try to get
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`that filed as quickly as we can, Your Honor.
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` JUDGE LEE: And I don't know what you normally
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`do with the transcript, but the copy that you give us,
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`can you make sure that is an uncorrected copy that's as
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`produced by the court reporter with no changes, no
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`erratas from anybody?
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` MR. PEDERSEN: Certainly, Your Honor.
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` JUDGE LEE: Thank you. We appreciate that.
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` So, we are here today because we have a final
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`hearing in the case tomorrow, and we received an e-mail
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`from Mr. Pedersen asking for guidelines about
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`demonstratives to be used at the final hearing.
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` It's about 3:00 p.m., so we don't have too much
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`time, but we're going to give you as much as we can as
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`far as guidelines goes, and the call will go this way:
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`We'll give you the guidelines, and then -- we have
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`reviewed both parties' demonstrative slides -- and then
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`we will tell you our conclusion based on our review of
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`each party's slides.
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` We don't contemplate much going back and forth.
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`Pretty much we'll say what the guideline is, we'll tell
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`you our conclusions, and that's pretty much it.
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` So about demonstratives, the important thing to
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`note is that there is a big difference between a
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`District Court trial and a trial at the Board. A
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`District Court trial is conducted in a courtroom before
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`a judge or a jury, whereas before the Board, the trial
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`is really all on paper. The trial before the Board is
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`already done through the papers each party has filed;
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`for instance, your petition, your exhibits, your expert
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`testimony which is presented on paper, the patent
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`owner's response, the reply, the observations, so on and
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`so forth.
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` So whatever you wanted to present for whatever
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`reason should have already been presented in those
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`papers. It is from that perspective that we read the
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`prohibition in our Patent Trial Practice Guide against
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`having new evidence or new arguments in the
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`demonstratives.
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` New evidence, I think we all know what's new
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`evidence.
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` What is a new argument? If you argued that
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`something was red in your papers and you now say it is
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`green, well, that's clearly new argument. I think not
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`many would disagree.
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` Or if you now argue that it's pink, from our
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`perspective, it is still a new argument. What if you
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`now argued that it's slightly less than red? That is
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`still a new argument. What if you say the red actually
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`covers many different spectrums? Well, it's new, unless
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`you already made that contention somewhere in your
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`papers.
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` It's just unfair to the other party to spring a
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`new twist or a new angle onto the scene at the last hour
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`at the final hearing. These twists and new angles have
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`different characterizations, different perspectives, and
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`different summaries, and if the testimony is of record
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`but not previously developed or explained in your
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`papers, it shouldn't be developed for the first time,
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`summarized for the first time, explained for the first
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`time at final hearing.
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` By that I'm referring to lengthy declarations
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`not all of which are discussed in a party's paper. If
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`you don't discuss it in your pleadings -- say, the
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`patent owner's response -- there should be no
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`expectation to be able to develop that testimony at oral
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`hearing during the final argument.
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` The practice guide says that the -- it's been
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`the Board's experience that elaborate replies are more
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`likely to impede than to help. For demonstrative
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`slides, they are visual aids to your oral presentation;
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`for instance, figures and charts and diagrams and large
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`captions as headings of topics. They are very good and
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`helpful, but when you have written text setting forth
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`various statements, characterizations, and assertions,
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`they really are no longer visual aids. They become
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`debriefing themselves and they become the show, and what
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`counsel says in oral argument becomes not as important,
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`especially if we are to keep demonstratives in the
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`record. We will not allow such extra briefings.
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` Finally, we want to say that the burden on
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`showing that a slide does not present something new is
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`on the party presenting the slide, and it also cannot be
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`made overly cumbersome to make that determination
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`whether something is new. By that, we mean if your
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`alleged basis for a slide is 10 to 15 pages of testimony
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`or 20 pages in the record, that's too vague and
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`cumbersome.
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` The statute wants it -- to finish the trial
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`within a year, and it says everything in our rules
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`should be construed from the perspective of an efficient
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`and expedient, inexpensive point of view. So you cannot
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`make your slides in such a way that it becomes overly
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`cumbersome for the Board and for the other party to
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`determine whether it is presenting something new. You
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`should be able to point specifically to a sentence, a
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`line or two or a couple of sentences that includes
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`whatever you're showing in your slide.
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` If your alleged basis is multiple pages and you
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`need to perform mental conversion from one idea to
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`another, then you have something new and you have not
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`shown that it is the same.
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` So we have looked at the patent owner's slides,
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`all 55 pages. We have looked at the petitioner's
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`slides, all 38 pages, and we find that both parties have
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`questionable slides under the guidelines I've just
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`articulated. Some are more egregious than the other,
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`but both parties have bad slides, and we're not going to
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`spend a lot of time to go into exactly which one is
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`which. That's just counterproductive. And we're not
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`just talking about one or two. In the patent owner's
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`case, there are just way too many slides to go into on a
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`one-by-one basis.
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` So the Board has concluded to disallow all of
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`the demonstratives from both parties based on the
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`guidelines I have articulated. I believe -- we believe
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`that in light of those guidelines, it is readily
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`apparent why some of the slides from both parties are
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`noncompliant.
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` If -- if the parties still want to be able to
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`bring something from the record, you can bring it in
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`paper form. We will provide a projector from which you
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`can project the paper image onto a screen, but those
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`papers should be copies of your pleadings or copies from
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`your -- the presentations that are already of record.
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`And if you want to do that, please let us know by the
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`end of the day today, before 5:00 p.m., so we can make
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`arrangements for your projector.
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` I'm going to go on mute for 30 seconds to
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`confer with my colleagues, and I'll be right back.
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` (Brief recess taken.)
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` JUDGE LEE: We're back, and the panel has
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`conferred, and we don't have anything else to offer.
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` Unless you have some critical questions about
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`tomorrow's hearing, I think that's it on the subject of
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`demonstratives.
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` MR. PEDERSEN: Your Honor, this is
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`Mr. Pedersen.
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` And, you know, obviously for the record we
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`would, you know, preserve our objection that we find
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`that -- you know, while the trial practice guidelines
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`are certainly guidelines, the issue of the fundamental
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`fairness of the hearing and the opportunity to present a
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`full and fair case appears to be severely constrained by
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`the Board's ruling.
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` Obviously we won't be presenting any of the
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`demonstratives here, but we do have in particular a
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`question for which the Board's guidance would be very
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`helpful.
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` In this particular situation, the patent owner
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`has submitted a paper attempting to swear behind the
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`primary and only reference being used to support the two
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`grounds. As part of that, a declaration was submitted
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`and then cross-examination of the inventor occurred, and
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`the question that we would have is whether or not we are
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`entitled to affirmatively use any of the testimony in
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`that cross-examination as part of our oral argument.
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` JUDGE LEE: Obviously, based on the guidelines,
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`if you have discussed that testimony somewhere in your
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`papers, then you should be able to.
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` MR. PEDERSEN: The issue of the swearing behind
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`was raised in pages 1 through 4 of the patent owner
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`response; however, the deposition and cross-examination
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`of the inventor occurred obviously after the patent
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`owner response was filed, and there has been no
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`subsequent opportunity for the patent owner to point to
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`those observations or point to that testimony as part of
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`an observation because the observation process is
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`limited only to the party taking the cross-examination,
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`not the party offering the witness.
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` JUDGE LEE: I'm going to put you on mute for a
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`second.
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` (Recess was taken.)
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` JUDGE LEE: The panel has conferred and we're
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`not understanding your problem here, because it's your
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`witness. It seems like you just want to get more
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`testimony out of your own witness.
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` You had your opportunity at cross-examination
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`to redirect so, you know, based on what you just said,
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`we don't see a basis for you to bring in and talk about
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`testimony that was never discussed by you in your
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`previous papers now for the first time in oral argument.
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` MR. PEDERSEN: Well, Your Honor, if I follow up
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`with the question --
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` JUDGE LEE: You know, this is not meant to be a
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`back-and-forth. You ought to be looking into the merits
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`of your case. You know, if you insist on talking about
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`it, you know, it's just not going to do you any good
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`because when we write up our decision, we're not going
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`to be looking at the transcript of the oral argument;
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`we're going to be looking at the testimony that was
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`properly developed, meaningfully developed, and
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`presented in your papers. So, you know, any effort to
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`bring in new discussions of the testimony is actually
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`going to be fruitless.
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` MR. PEDERSEN: Well, Your Honor, in your
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`hypothetical, you said if we had elicited testimony on
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`redirect. The question I would have for Your Honors is
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`how and what mechanism would we bring that testimony to
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`the Board once our patent owner response had been filed?
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` This is testimony that occurred after the
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`patent owner response was filed.
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` JUDGE LEE: Okay. I need to confer with my
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`colleagues. Please be patient with me. I'll put you on
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`mute.
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` MR. PEDERSEN: Certainly.
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` (Brief recess taken.)
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` JUDGE LEE: The panel is back. I think we
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`understand your question, but since it is your own
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`witness, whatever you need from the witness should have
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`already been presented in the declaration.
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` Assuming on cross-examination the petitioner
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`was able to bring out something that's only
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`extraordinary and totally unpredictable and entirely
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`surprising to you and they used it in a reply, you
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`certainly had the opportunity to call the Board at that
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`time and say, Look, whatever came out at
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`cross-examination was totally unexpected. I had no
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`reason to anticipate that. This is really an
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`extraordinary situation. We'd like an opportunity to
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`file a sur-reply, if you do have such an extraordinary
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`situation.
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` But, absent that, whatever you have from your
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`own witness should have been presented in your own
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`declaration.
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` MR. PEDERSEN: So that I'm understanding the
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`Board correctly, that there really is no opportunity to
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`use cross-examination or redirect testimony from a
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`declarant that the patent owner offered to support or
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`expand the affirmative case without petitioning for a
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`sur-reply?
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` JUDGE LEE: I think that's so, because whatever
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`you want to say should be in your initial declaration.
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` If you have second thoughts and you want to
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`expand on it, that's not fair to the other party, you
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`know, absent extraordinary circumstances.
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` If you asked me what kind of extraordinary
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`circumstance, I can't tell you any on the fly, but
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`absent extraordinary circumstances, you have to make
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`your case in your petition.
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` Okay. I think that answers the question.
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` MS. REISTER: Your Honor, this is petitioners.
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` I had just one question, if I may, about the --
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`the exhibits that have already been filed.
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` Will they be expunged from the record?
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` JUDGE LEE: Yes, we will. I'm not sure when
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`that will happen --
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` MS. REISTER: Okay.
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` JUDGE LEE: -- but we will expunge both.
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` MS. REISTER: Thank you.
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` JUDGE LEE: All right.
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` MR. PEDERSEN: Your Honor, if I could have one
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`follow-up question on Ms. Reister's question.
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` For purposes of potential appeal, the
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`expungement from the record, will that be allowed to be
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`reintroduced by supplemental evidence in the appeal?
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` JUDGE LEE: If you're asking do they get into
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`our official record, no. But I don't -- if you want to
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`go on appeal and you submit to the Federal Circuit, This
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`is what we submitted, that's not really something I'm
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`addressing, but the panel is not allowing those papers
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`into the record of this case.
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` MR. PEDERSEN: Understood. Thank you.
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` JUDGE LEE: Okay. We'll see you tomorrow at
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`10:00 a.m.
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` MR. PEDERSEN: This is Mr. Pedersen for the
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`patent owner, and we would like the projector to project
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`the paper slides.
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` JUDGE LEE: All right. A projector will be
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`made available. Thank you.
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` MR. PEDERSEN: Thank you, Your Honor.
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` MS. REISTER: Thank you.
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` (The Proceedings concluded at 12:20 p.m. PST.)
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` * * *
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`I, Lynn Penfield, a Certified Shorthand Reporter
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`No. 8589, State of California, RPR, CRR, hereby
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`certify:
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` That the foregoing proceeding was reported by me
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`and was thereafter transcribed with Computer-Aided
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`Transcription; that the foregoing 15 pages is a full,
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`complete and true record of said proceeding.
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` I further certify that I am not of counsel or
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`attorney for either or any of the parties in the
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`foregoing proceeding and caption named or in any way
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`interested in the outcome of the cause in said caption
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` The dismantling, unsealing, or unbinding of the
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`original transcript will render the reporter's
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`certificate null and void.
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` IN WITNESS WHEREOF, I have hereunto set my hand
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`this 22nd day of October, 2013.
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` (Signed Electronically)
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` Lynn Penfield, CSR No. 8589, RPR, CRR
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