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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION,
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`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES,
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`Patent Owner
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`Patent No. 6,738,697
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`Issue Date: May 18, 2004
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`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`____________
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`JOINT MOTION TO TERMINATE PROCEEDING
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 317
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`Case No. IPR2013-00412
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`IPR2013-00412
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner
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`Toyota Motor Corporation (“Toyota”) and Patent Owner American Vehicular
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`Sciences LLC (“AVS”) jointly request termination of the Inter Partes Review of
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`U.S. Patent No. 6,738,697, Case No. IPR2013-00412. Toyota and AVS agree
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`that each party bear its own fees and expenses.
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`Toyota filed its petition for inter partes review on July 8, 2013. AVS filed
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`a preliminary response on October 17, 2013. The inter partes review was
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`subsequently instituted on January 13, 2014. The Parties have agreed to settle
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`their dispute and have reached agreement to terminate this inter partes review.
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`The Settlement Agreement has been made in writing and is filed separately as
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`Exhibit 2001 (filed concurrently with Joint Request to Treat Agreement as
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`Business Confidential Information Under 35 U.S.C. §317 (b) and 37 C.F.R. §
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`42.74 (c)). There are no collateral agreements referred to in the Parties’
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`Settlement Agreement.
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`The parties desire that the Board terminate this IPR in its entirety. If,
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`however, the Board elects to independently continue the IPR in its entirety, then
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`under the terms of the Parties’ Settlement Agreement, Toyota will not receive a
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`covenant not to sue from AVS regarding this patent, nor will AVS dismiss with
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`prejudice its litigation claims relating to this patent.
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`As stated in 35 U.S.C. § 317(a), because Toyota and AVS request this
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`termination, no estoppel under 35 U.S.C. § 315(e) shall attach to Petitioner
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`IPR2013-00412
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`Toyota. As provided in 37 C.F.R. § 42.73(d)(3), because no adverse judgment
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`has been entered, as to Patent Owner AVS, no estoppel under 37 C.F.R. §
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`42.73(d)(3) shall attach to AVS.
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`A conference call in this proceeding was held on March 21, 2014, between
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`counsel for the Parties and Judges Lee, Jefferson, and Parvis. The Parties advised
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`the Board that they have agreed to settle, and sought authorization to file a joint
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`motion to terminate the proceeding and to file the Parties' Settlement Agreement
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`as business confidential information.
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`On March 24, 2014, the Board issued an order authorizing the Parties to file
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`a joint motion to terminate this proceeding, and to file a separate paper requesting
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`that the Settlement Agreement be treated as business confidential information as
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`specified in 37 C.F.R. § 42.74(c).
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`Termination of this proceeding is appropriate as the Parties have agreed to
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`settle their dispute.
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`U.S. Patent No. 6,738,697 is (or was) being litigated in the following civil
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`actions, which are at the stages described below:
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` American Vehicular Sciences v. Toyota Motor Corp., et al., No. 6:12-
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`cv-00405 (E.D. Tex.), filed June 25, 2012 (consolidated into 6:12-cv-
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`00404). On February 19, 2014, the district court stayed this civil
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`IPR2013-00412
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`action as to Toyota in view of this IPR2013-00412. The Parties’
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`Settlement Agreement provides for dismissal of this litigation and a
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`covenant not to sue under the U.S. Patent No. 6,738,697 under
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`certain circumstances. As noted above, if the Board elects to
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`independently continue the IPR in its entirety, then under the terms
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`of the Parties’ Settlement Agreement, Toyota will not receive a
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`covenant not to sue from AVS regarding this patent, nor will AVS
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`dismiss with prejudice its litigation claims relating to this patent.
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`Accordingly, the parties desire that the Board terminate this IPR in
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`its entirety.
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` American Vehicular Sciences LLC v. BMW Grp. A/K/A BMW AG et
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`al., No. 6:12-CV-412 (E.D. Tex.), filed Jun. 25, 2012. This case
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`was dismissed on November 15, 2013.
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` American Vehicular Sciences LLC v. Hyundai Motor Co. et al., No.
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`6:12-CV-776 (E.D. Tex.), filed Oct. 15, 2012. On March 13, 2014,
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`the parties filed a Joint Submission Regarding Amended Docket
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`Control Order, as instructed by the Court due to the changed Claim
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`Construction Hearing date. While an Amended Docket Control
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`Order has not yet been entered, a Claim Construction Hearing will be
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`held on February 19, 2015. The Hyundai defendants were served on
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`IPR2013-00412
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`November 13, 2012. In considering the motion to stay filed by
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`Toyota in Civil Action No. 6:12-cv-00404, the district court inquired
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`whether the Hyundai defendants would agree to “(1) stipulate to the
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`same estoppel effect that will apply against Toyota resulting from the
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`IPRs or some variation thereof, and (2) stipulate to be bound as soon
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`as the PTO issues its decisions on the IPRs rather than waiting until
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`the appeal process is completed.” The Hyundai defendants did not
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`agree to the district court’s conditions and the case against the
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`Hyundai defendants was not stayed.
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` American Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-
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`CV-148 (E.D. Tex.), filed Feb. 13, 2013. On March 13, 2014, the
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`parties filed a Joint Submission Regarding Amended Docket Control
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`Order, as instructed by the Court due to the changed Claim
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`Construction Hearing date. While an Amended Docket Control
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`Order has not yet been entered, a Claim Construction Hearing will be
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`held on February 19, 2015. The last Kia defendant was served April
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`17, 2013. In considering the motion to stay filed by Toyota in Civil
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`Action No. 6:12-cv-00404, the district court inquired whether the Kia
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`defendants would agree to “(1) stipulate to the same estoppel effect
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`that will apply against Toyota resulting from the IPRs or some
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`IPR2013-00412
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`variation thereof, and (2) stipulate to be bound as soon as the PTO
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`issues its decisions on the IPRs rather than waiting until the appeal
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`process is completed.” The Kia defendants did not agree to the
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`district court’s conditions and the case against the Kia defendants
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`was not stayed.
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` American Vehicular Sciences LLC v. American Honda Motor Co.,
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`Inc. et al., No. 6:13-CV-226 (E.D. Tex.), filed Mar. 8, 2013. On
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`March 13, 2014, the parties filed a Joint Submission Regarding
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`Amended Docket Control Order, as instructed by the Court due to the
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`changed Claim Construction Hearing date. While an Amended
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`Docket Control Order has not yet been entered, a Claim Construction
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`Hearing will be held on February 19, 2015. The last Honda
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`defendant was served April 23, 2013. In considering the motion to
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`stay filed by Toyota in Civil Action No. 6:12-cv-00404, the district
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`court inquired whether the Honda defendants would agree to “(1)
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`stipulate to the same estoppel effect that will apply against Toyota
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`resulting from the IPRs or some variation thereof, and (2) stipulate to
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`be bound as soon as the PTO issues its decisions on the IPRs rather
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`than waiting until the appeal process is completed.” The Honda
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`defendants did not agree to the district court’s conditions and the
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`IPR2013-00412
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`case against the Honda defendants was not stayed.
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` American Vehicular Sciences LLC v. Mercedes-Benz U.S. Intl., Inc.,
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`No. 6:13-CV-310 (E.D. Tex.), filed Apr. 3, 2013. On March 13,
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`2014, the parties filed an Agreed Motion to Amend Docket Control
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`Order, as instructed by the Court due to the changed Claim
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`Construction Hearing date. While an Amended Docket Control
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`Order has not yet been entered, a Claim Construction Hearing will be
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`held on February 19, 2015. The last Mercedes Defendant was served
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`April 17, 2013. In considering the motion to stay filed by Toyota in
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`Civil Action No. 6:12-cv-00404, the district court inquired whether
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`the Mercedes defendants would agree to “(1) stipulate to the same
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`estoppel effect that will apply against Toyota resulting from the IPRs
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`or some variation thereof, and (2) stipulate to be bound as soon as the
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`PTO issues its decisions on the IPRs rather than waiting until the
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`appeal process is completed.” The Mercedes defendants did not
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`agree to the district court’s conditions and the case against the
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`Mercedes defendants was not stayed.
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`Furthermore, U.S. Patent No. 6,738,697 is the subject of IPR2013-00413,
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`which Toyota filed simultaneously with the instant proceeding and which
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`remains pending. The Parties are filing a joint motion to terminate that
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`IPR2013-00412
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`proceeding as well.
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`No litigation or proceeding involving U.S. Patent No. 6,738,697 other than
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`that identified above is contemplated in the foreseeable future.
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` Wherefore, AVS and Toyota respectfully request termination of the Inter
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`Partes Review of U.S. Patent No. 6,738,697, Case No. IPR2013-00412.
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`Date: March 26, 2014
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`Respectfully submitted
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`/s/ Thomas J. Wimbiscus
`Thomas J. Wimbiscus (Reg. No. 36,059)
`Scott P. McBride (Reg. No. 42,835)
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison, 34th Floor
`Chicago, Il 60661
`(312) 775-8000
`Attorney for Patent Owner,
`American Vehicular Sciences LLC
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`/s/ A. Antony Pfeffer
`Matthew Berkowitz (Reg. No. 57,215)
`A. Antony Pfeffer (Reg. No. 43,857)
`Thomas R. Makin
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Attorney for Petitioner,
`Toyota Motor Corporation
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`IPR2013-00412
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`CERTIFICATE OF SERVICE
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`I hereby certify that the JOINT MOTION TO TERMINATE
`PROCEEDING FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,738,697 PURSUANT TO 35 U.S.C. § 317 was served on this 26th day of
`March by electronic mail to the following:
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`Matt Berkowitz
`mberkowitz@kenyon.com
`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`MCANDREWS HELD & MALLOY
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`CUSTOMER NUMBER: 23446
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`Date: March 26, 2014