`Docket No. 0100157-00244
`Filed on behalf of EMC Corporation and VMware, Inc.
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`By: Peter M. Dichiara, Reg. No. 38,005
`David L. Cavanaugh, Reg. No. 36,476
`WILMER CUTLER PICKERING HALE AND DORR LLP
`peter.dichiara@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`Tel.: 617-526-6466
`Fax: 617-526-5000
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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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`EMC CORPORATION and VMWARE, INC.,
`Petitioners
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`v.
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`Patent Owner of
`U.S. Patent No. 6,415,280 to Farber et al.
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`IPR Case No. IPR2013-00083
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
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`MOTION TO EXCLUDE EVIDENCE
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
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`TABLE OF CONTENTS
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`I.
`II.
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`Introduction ...................................................................................................... 1
`Dr. Clark’s Statements Referencing Langer, and Langer Itself, Should Not
`Be Excluded ..................................................................................................... 1
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`A. Dr. Clark’s Statements Should Not Be Excluded ................................. 1
`B.
`Langer Should Not Be Excluded ........................................................... 2
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`Langer has been authenticated .................................................... 2
`1.
`Langer is not hearsay and falls within hearsay exceptions ......... 4
`2.
`III. Dr. Clark’s References to Woodhill’s Claim Language Should Not Be
`Excluded .......................................................................................................... 5
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`I.
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`Introduction
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
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`Patent Owner moves to exclude various statements in Dr. Clark’s Reply
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`Declaration. The challenged statements are relevant to the instituted grounds and
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`are admissible to respond to the arguments in Patent Owner’s Response. Patent
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`Owner further claims that Langer (Ex. 1003) is non-authenticated hearsay, but it
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`has been authenticated under multiple provisions of FRE 901 and 902 and falls
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`under multiple hearsay exceptions. Patent Owner’s motion to exclude should
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`therefore be denied.
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`II. Dr. Clark’s Statements Referencing Langer, and Langer Itself, Should
`Not Be Excluded
`A. Dr. Clark’s Statements Should Not Be Excluded
`Dr. Clark’s reference to Langer in ¶ 10 – offered in response to Patent
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`Owner’s new argument that Woodhill does not disclose a “client request”
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`including a hash of the contents of a data file (Resp. 3-6; Dewar Decl. ¶102; Ex.
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`2013) – are relevant and admissible. Contrary to Patent Owner’s contentions, Dr.
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`Clark’s testimony is directly relevant to an instituted ground (invalidity based on
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`Woodhill) and confirms that it was well-known at the time of Woodhill to request
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`a file using a hash-based identifier and is directly relevant to how much detail one
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`would expect Woodhill to state within this context. (See Ex. 1078 ¶10.) Indeed,
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`Patent Owner appears to concede this point in a related IPR, where it states that
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`“Langer appears to disclose accessing a standalone file by employing an MD5 of
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`the file contents.” (IPR2013-00085, Resp. 41; Ex. 1079.) Dr. Clark is not relying
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`on Langer as prior art per se but as evidence concerning the state of the art and
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`requisite detail needed for a basic computer operation.
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`B.
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`Langer Should Not Be Excluded
`1.
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`Langer has been authenticated
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`Patent Owner contends that Langer (Ex. 1003) cannot be authenticated
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`without direct testimony from a witness with “personal knowledge” that the
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`manual existed prior to the critical date. But this argument rests on a faulty legal
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`premise. Petitioners need only produce evidence “sufficient to support a finding”
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`that the reference “is what the proponent claims it is.” See Fed. R. Evid. 901(a).
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`This burden is “not high” and requires only a “prima facie showing” that the
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`evidence is what the proponent claims it to be. U.S. v. Vidacak, 553 F.3d 344, 349
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`(4th Cir. 2009). As one court explained, “There is no single way . . . to
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`authenticate evidence. . . . [T]he direct testimony of a custodian or a percipient
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`witness is not a sine qua non to the authentication of a writing.” U.S. v. Garcia,
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`452 F.3d 36, 40 (1st Cir. 2006) (internal quotations omitted); see also Moleculon
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`Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (“It is hornbook
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`law that direct evidence of a fact is not necessary. ‘Circumstantial evidence is not
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`only sufficient, but may also be more certain, satisfying and persuasive than direct
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`evidence.’”) (citations omitted). Langer (Ex. 1003) easily meets the requirements
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`for authentication under multiple provisions of FRE 901 and 902.
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`First, Petitioners have submitted sworn testimony from Keith Moore, a
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`person skilled in the art of Usenet formatting and distribution during the timeframe
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`surrounding Langer’s August 7, 1991 posting date, and who authenticated Langer
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`under FRE 901(b)(1) and (4). (Ex. 1048 at 5-7.) Mr. Moore testified that, during
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`the 1991-1992 timeframe and while working at the University of Tennessee’s
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`Computer Science Department, his responsibilities included maintaining the
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`department’s local Usenet node, developing Usenet-related software, and studying
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`in detail the standards specifying Usenet article formatting. (Id. at 6-7.) Based on
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`this knowledge and experience, Mr. Moore observed that the distinctive markings
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`on Langer (Ex. 1003) were consistent with those found on Usenet newsgroup
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`periodicals posted in the 1991-1992 timeframe and verified Langer’s authenticity
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`as a 1991 Usenet periodical on that basis. (Ex. 1048 at 7-11.) For example, he
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`confirmed that Langer’s distinctive header fields contained unique 1991-era Usenet
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`formatting and content. (Id. at 7-8.) Patent Owner has not offered any testimony
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`to the contrary.
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`Second, Langer (Ex. 1003) also has been independently authenticated under
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`FRE 901(b)(3) by Mr. Moore’s testimony comparing it with an equivalent version
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`(the “Langer Authentication Specimen”) he obtained from the “Google Groups”
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`website, a reputable Usenet archive that contains compilations of Usenet
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`periodicals dating back to the 1980s. (Ex. 1048 at 10.)
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`Third, Langer (Ex. 1003) has been authenticated under 901(b)(8) because it
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`is more than 20 years old and Mr. Moore’s testimony as described above precludes
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`any reasonable suspicion regarding its authenticity.
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`Finally, Langer (Ex. 1003) is self-authenticating under FRE 902(6) and (7)
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`because, as detailed above, it contains various inscriptions indicating its origin as a
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`Usenet newsgroup periodical and Usenet’s control over its distribution. (See, e.g.,
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`Ex. 1048 at 7-8; see also id. at 11.)
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`2.
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`Langer is not hearsay and falls within hearsay exceptions
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`Langer (Ex. 1003) is not hearsay because it is being offered for what it
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`describes, and not for the truth of its disclosure. See, e.g, Coolidge v. Efendic,
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`Interference No. 105,457, 2008 WL 2080735, at * 30 (BPAI May 16, 2008)
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`(confirming that prior art was not hearsay because it was offered to prove what it
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`describes); Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990)
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`(same), judgment aff’d, 959 F.2d 226 (Fed. Cir. 1992); FRE 801(c) 1972 Adv.
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`Comm. Note (“If the significance of an offered statement lies solely in the fact that
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`it was made, no issue is raised as to the truth of anything asserted, and the
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`statement is not hearsay.”) Additionally, the August 7, 1991 posting dates on
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`Langer’s header and URL were both automatically generated by the hosting
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`computer (and not “statements” by an out-of-court “declarant”) and therefore are
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`admissible as non-hearsay to prove Langer’s 1991 publication. (Ex. 1048 at 7.)
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`See, e.g., United States v. Hamilton, 413 F.3d 1138, 1142-43 (10th Cir. 2005)
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`(affirming finding that header information automatically generated by hosting
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`computer was not hearsay).
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`Moreover, even if any portion of Langer (Ex. 1003) were hearsay (which it
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`is not), it would still be admissible under multiple exceptions to the hearsay rule
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`including the ancient document exception (FRE 803(16)) and the residual
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`exception (FRE 807). Langer is more than 20 years old. Petitioners have
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`submitted extensive testimony by Mr. Moore verifying its authenticity, origin, and
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`trustworthiness, and Patent Owner has not (and cannot) offer any evidence casting
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`doubt on its trustworthiness.
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`III. Dr. Clark’s References to Woodhill’s Claim Language Should Not Be
`Excluded
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`PersonalWeb also moves to exclude Dr. Clark’s references to Woodhill’s
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`claim language – referring to Woodhill’s binary object identifiers as “the name of
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`the associated binary object” (Woodhill 22:3-4; Ex. 1005) – on the ground that
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`Woodhill added this claim language after April 11, 1995. However, Dr. Clark’s
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`testimony is responsive to PersonalWeb’s argument that Woodhill’s “binary
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`objects” are not “named data items.” (Resp. at 6-7 (emphasis in original).)
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`Petitioners do not contend that Woodhill’s claim amendment is prior art.
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`However, Woodhill’s specification is indisputably prior art, and the claims serve to
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`corroborate the disclosures in the specification and how that specification would be
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`understood by a person skilled in the art, because the claims and claim
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`amendments must have support in the specification itself. Woodhill’s specification
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`is clear that, in requests for binary objects, the binary object is “identified by a
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`Binary Object Identification Record 58” including a Binary Object Identifier 74
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`with hash field 70. (Woodhill 18:16-23; see also Fig. 3, 7:60-8:65; Ex. 1005.)
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`Consequently, the claim amendment corroborates that the specification’s
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`references to Binary Object Identifiers would be understood by a person skilled in
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`the art as “names.”
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`For these reasons, Patent Owner’s Motion to Exclude should be denied.
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`Respectfully Submitted,
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`Dated: November 21, 2013
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`/Peter M. Dichiara/
`
`Peter M. Dichiara
`Registration No. 38,005
`Cynthia Vreeland
`Admitted pro hac vice
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, Massachusetts 02109
`peter.dichiara@wilmerhale.com
`Tel.: 617-526-6466
`Fax: 617-526-5000
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`CERTIFICATE OF SERVICE
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`I hereby certify that on November 21, 2013, I caused a true and correct copy
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`of the following materials:
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` Petitioners’ Opposition to Patent Owner’s Motion to Exclude Evidence
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`to be served via email on the following counsel of record for Patent Owner:
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`Joseph A. Rhoa, Lead Counsel
`USPTO Reg. No. 37,515
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`jar@nixonvan.com
`Tel.: 703-816-4043
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`Updeep S. Gill, Backup Counsel
`USPTO Reg. No. 37,344
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`usg@nixonvan.com
`Tel.: 703-816-4030
`
`/Heather M. Petruzzi/
`Heather M. Petruzzi
`Reg. No. 71,270
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