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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`-----------------------------------------x
`
`FACEBOOK,
`
`INC.
`
`LINKEDIN CORP., and
`
`TWITTER, INC.
`
`Petitioners,
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`
`Patent Owner,
`
`10
`11 Case IPR2013-00478(Patent 5,544,352)
`Case IPR2013-00479(Patent 5,832,494)
`12 Case IPR2013-00480(Patent 5,832,494)
`Case IPR2013-00481(Patent 6,233,571)
`-----------------------------------------x
`February 26, 2014
`3:00 p.m.
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`T E L E C 0 N F E R E N C E
`H E A R
`I N G
`
`Before:
`
`SALLY C. MEDLEY, ESQ.
`CHRISTOPHER L. CRUMBLEY
`BARBARA A. PARVIS
`Administrative Patent Judges
`
`212-267-6868
`
`VERITEXT REPORTING COMPANY
`www.veritext.com
`
`EXHIBIT 2010
`Facebook, Inc. et aL
`v.
`Software Rights Archive, LLC
`CASE IPR2013-00479
`
`516-608-2400
`
`
`
`Page 2
`
`A P P E A R A N C E S:
` COOLEY LLP
` Attorneys for Petitioners
` 3175 Hanover Street
` Palo Alto, California 94304-1130
` BY: HEIDI KEEFE, ESQ.
` BY: LOWELL MEAD, ESQ.
`
` KEKER & VAN NEST LLP
` Attorneys for Petitioners
` 633 Battery Street
` San Francisco, California 94111
` BY: SHARIF JACOB, Esq.
`
` ROTHWELL, FIGG, ERNST & MANPECK, P.C.
` Attorneys for Patent Owner
` 607 14th Street, NW, Suite 800
` Washington, D.C. 20005
` BY: MARTIN ZOLTICK, ESQ.
` BY: ZOUM PANDA, ESQ.
` DINOVO, PRICE, ELLWANGER & HARDY, LLP
` Attorneys for Patent Owner
` 400 South Zang Boulevard
` Suite 1202
` Dallas, Texas 75208
` BY: VICTOR HARDY, ESQ.
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` Proceedings
` HON. MEDLEY: This is Sally
` Medley. On the line with me is Judges
` Crumbley and Parvis. This is the
` initial call for IPR2013-00478, 479,
` 480 and 481. I understand we have a
` court reporter on the line and that we
` are now on the record. First I would
` like to take a roll call for
` petitioner.
` MS. KEEFE: Good morning. This
` is Heidi Keefe from Cooley on behalf
` of petitioner and with me is Lowell
` Mead from my office.
` MR. JACOB: Good morning. This
` is Sharif Jacob from Keker and Van
` Nest on behalf of Twitter.
` HON. MEDLEY: Okay. Anybody
` else for petitioner?
` MS. KEEFE: No, ma'am.
` HON. MEDLEY: Thank you. And
` then for patent owner?
` MR. ZOLTICK: Good afternoon,
` Judge Medley, Marty Zoltick from
` Rothwell, Figg for patent owner SRA
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` and with me I have Mike Jones and Zoum
` Panda.
` MR. HARDY: There's also Victor
` Hardy on the line for SRA as well.
` HON. MEDLEY: Okay. The Board
` received the parties' motion lists for
` each of the four proceedings, and I'd
` like to begin with the petitioner's
` list. It appears to be identical for
` each case, so we will go through just
` the one listed -- we can begin with
` the one listed for the 478 case. That
` is one I will be looking at.
` And first, I just want to make a
` general comment because the Board sees
` this often with the parties reserve
` right to seek authorization or to file
` a motion and to not file a motion. I
` don't know if you have heard that from
` other judges, but the Board does not
` construe such statements to mean
` perhaps what a party thinks that it
` should mean. The Board does not give
` deference to such statements. It's
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` not a stake in the ground that the
` party may later rely on. So there is
` no right for the parties' needs to
` preserve or reserve. It's not
` necessary to put that in a paper.
` MS. KEEFE: I understand. Thank
` you.
` HON. MEDLEY: So there are no
` proposed motions at this time at least
` that are ripe for consideration from
` the standpoint of petitioner's list.
` I would like to make a few comments
` however with respect to your list.
` With respect to bullet item one, you
` list as motion to submit supplemental
` information under 123 and then you
` refer to Rule 64B2. Those two
` requirements are separate and distinct
` so just to alert you to that. One has
` made reference to information,
` supplemental information that perhaps
` you didn't file and you seek to file
` at a later time. The other is
` supplemental evidence you may serve in
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` response to an objection made.
` MS. KEEFE: We understand, Your
` Honor and I appreciate that. We were
` actually just trying to be overly
` careful. At this point, the only
` thing that we are contemplating is the
` 37 CFR Section 42.64(b)(2) evidence,
` and we're actually working the patent
` owner to try to resolve those issues.
` HON. MEDLEY: Okay. Wonderful.
` The Board, we don't want you to
` file -- our rule says reserve. We
` don't need you to file your
` supplemental evidence before it's
` necessary to do so.
` MS. KEEFE: Fantastic.
` HON. MEDLEY: So we don't want
` to see -- and in actuality we
` shouldn't have even seen the
` objections that were filed by the
` patent owner.
` MS. KEEFE: Your Honor, I very
` much appreciate that clarification.
` We had understood it that way but
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` because the first had been filed, we
` wanted to make sure there was nothing
` missing in the record. So we very
` much appreciate the clarification.
` HON. MEDLEY: So if there's any
` doubt and you think okay, I want to
` file this on the record, you should
` always have a conference call unless,
` of course, it's something that you
` automatically can file because it's a
` paper, for example, that you are
` authorized to file or an exhibit with
` a paper that you are authorized to
` file.
` MS. KEEFE: We appreciate that.
` HON. MEDLEY: Sure, and I want
` to switch gears here for a second
` because we are on that topic to ask
` counsel for patent owner, as I said
` earlier, the objections should have
` been served but not filed.
` MR. ZOLTICK: Yes, Your Honor,
` and we appreciate that.
` HON. MEDLEY: And the Board
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` really is trying -- I know at first
` maybe you see cases where they are
` filed and you don't kick it, but we
` are really trying to keep control of
` the record. So at this point, I
` will -- we will expunge those
` objections from the record.
` MR. ZOLTICK: Understood.
` HON. MEDLEY: Okay. So no
` objection there. So going back to
` petitioner's list, motion for
` sanction. I realized that you are
` still in flux discussing what is
` objected to and what you are going to
` respond to, so it seems premature at
` this point.
` MS. KEEFE: Agreed with you,
` absolutely. And I would like to state
` the comment for the record that patent
` owner has been working very nicely
` with us to try to resolve these
` issues, so we appreciate that.
` HON. MEDLEY: Okay. All right.
` I think that does it with respect to
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` your list. Now we move on to the
` patent owner's list. The patent
` owner's list it also appears that
` there is also sort of maybe none are
` teed up for us really to consider at
` this point; however, I would like to
` make a few comments with respect to
` your list also.
` MR. ZOLTICK: Sure.
` HON. MEDLEY: You have this --
` First of all, I'm looking at your 479
` list. You have that you want to
` possibly file additional discovery to
` obtain production of documents and
` things referred to in the Fox
` declaration. To us the panel will
` discuss anything that the declarant
` relies on in a declaration that we
` would consider routine discovery.
` That is something that the person
` proffering the declaration, that is
` the declarant, relies on such
` information they should give that
` information to the opposing party. So
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` that is what we consider routine. We
` would get involved to the extent that
` the person submitting the declaration
` has said that they are not going to
` give such evidence over to the other
` side and then we would get involved.
` MR. ZOLTICK: Okay. I mean I
` appreciate the clarification on that.
` There were lots of documents and
` things that were discussed by Dr. Fox
` in his declaration, many had exhibit
` numbers and copies of the documents
` were provided. There were others
` which are listed in our list of
` proposed motions that did not have
` exhibit numbers and copies were not
` provided with the declaration which is
` what prompted us to list them. And
` prior to or I guess in connection with
` the list of proposed motions, we
` previously had identified the list to
` petitioner's counsel and we have been
` working together. They have already
` provided copies of some of the
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` documents, and we have been working
` together to try and resolve that as
` well. So I'm hopeful that we can get
` that resolved and not have to bother
` the Board with that.
` HON. MEDLEY: Okay, fair enough.
` We did just want to know that with
` respect to your 481 case, you list the
` same -- it looks like the same list
` here; however you refer to Claims 26,
` 28 and 31 which are not part of the
` trial.
` MR. ZOLTICK: Okay.
` HON. MEDLEY: So just if you do
` come to us and request, say we need
` discovery of certain exhibits, you
` know, we will look to the declaration.
` If it's to a claim, for example, that
` is not even part of the trial then it
` is sort of --
` MR. ZOLTICK: The intent -- and
` I apologize if that was an error, but
` the intent for each of these separate
` lists of proposed motions was to limit
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` the scope of any type of discovery
` that we were asking for only on claims
` and testimony and documents on the
` instituted claims. I think that was
` just indicating what petitioners had
` requested in part as their review of
` their petition.
` HON. MEDLEY: Understood. We
` are all on the same page I think
` there.
` MR. ZOLTICK: Yes, absolutely.
` HON. MEDLEY: With respect to
` the 480 case, you indicate patent
` owner is contemplating. So if you
` can't amend any of these patents
` because they are all expired, but
` you've indicated you may cancel one or
` more of the pending claims 8, 10, 11,
` 35 and 40 and we were curious if you
` had made a determination to cancel any
` of those at this point?
` MR. ZOLTICK: Your Honor, we
` have not made that determination. In
` part we wanted some clarification
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` which I think you provided that we
` have the right to cancel those claims.
` And the consideration I think it's
` spelled out in the list of proposed
` motions is that if we choose to cancel
` those dependant claims 8, 10, 11, 35
` and 40 that then would eliminate
` obviousness from the proceeding, and
` we would be left with the one or
` two -- anticipation of grounds one and
` two, but we haven't made a final
` determination yet as to whether we are
` going to do that.
` HON. MEDLEY: Okay. Well, I
` think sooner is better than later.
` MR. ZOLTICK: Yes.
` HON. MEDLEY: If you find that
` out, we would love to know that
` because that does simplify things for
` the trial.
` MR. ZOLTICK: We hear you loud
` and clear.
` HON. MEDLEY: Okay. I'm looking
` through my notes here. Bear with me.
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` You also mentioned possible discovery
` from third party depending on whether
` or not they are cooperative. That
` would fall under 42.52 compelling
` testimony from a third party. And, of
` course, if you pursue such action, we
` would have to discuss trying to obtain
` a subpoena --
` MR. ZOLTICK: Yes.
` HON. MEDLEY: -- for such
` compelled testimony. So if that
` happens, you should just have a call
` with us and we can discuss it at a
` later time.
` MR. ZOLTICK: Okay.
` HON. MEDLEY: The motion to seal
` I think too is always good to let us
` know if you are planning on filing
` that, although I know that it's
` certainly one that you have to have
` authorization for but if you do want
` to file one, we would give you
` guidance.
` Are there any issues with
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` respect to either parties' list or
` issues that they have discussed for
` either side, any questions or comments
` with respect to just the lists?
` MR. ZOLTICK: I don't think
` there are from the patent owner's side
` at this point in time.
` MS. KEEFE: None that I can
` think of from petitioners. Thanks for
` asking.
` HON. MEDLEY: Sure. We are
` moving on. Before we talk about the
` rehearing request that was filed in
` the one case, just to wrap up, are
` there any other issues with the
` scheduling order?
` MS. KEEFE: Potentially.
` MR. ZOLTICK: Yes. We had
` indicated when we had a call a couple
` of days ago, and I wanted to get this
` out as soon as possible, that our
` expert witness is unavailable from
` June 13th to July 31st I believe is
` the time period. He's completely
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` unavailable during that time period.
` We raised it right away to see if it
` was going to create an issue for
` cross-examination after our patent
` owner response had been filed. And so
` we in the letter we received last
` night there was a proposal to move
` some of the time periods by several
` weeks. I have not sat down with the
` schedule at this point to see whether
` or not that will work. I think Ms.
` Keefe and I had talked about it, and I
` think we are going to have another
` discussion. We certainly don't have
` any problem with moving the schedule.
` My concern is that if we move time
` periods -- if we agree to move two and
` three by several weeks then we are
` going to have some issues with the
` later time periods which we can't
` move. So we would want to come back
` to Your Honor to discuss whether it's
` feasible to move the other two dates.
` HON. MEDLEY: Okay. The Board
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` is -- just to give you a general feel
` for it, we are not amenable almost
` never to move the hearing just because
` there's a lot that goes into planning
` our resources and the judge's
` schedules, and we feel like we give
` you plenty of warning, plenty of
` notice and you can stipulate to change
` due dates one, two, three. So having
` said that, four, five and six we have
` adjusted those for the parties to help
` them out if we can and if it's
` necessary but just know, for example,
` if the parties decide they are not
` going to file any motions to exclude,
` then certainly that gives you some
` extra wiggle room you can collect.
` There's not going to be a motion to
` amend. So there is play here in the
` schedule. So if the parties come to
` an impasse, you can always talk to us
` and we can work something out. I
` appreciate that patent owner is
` alerting petitioner at such an early
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` time that there will be the potential
` conflict or that the witness may not
` be available because that really is
` courteous and it's helpful to everyone
` because we know right away it's a
` potential problem.
` MS. KEEFE: We agree and that is
` why we are trying to work with them to
` come up with a schedule that will
` accommodate both the witnesses'
` schedule, as well as make sure we have
` enough time to digest what happens
` during cross-examination and file our
` reply.
` HON. MEDLEY: Okay. I
` appreciate that. All right. So the
` status of the rely on litigation, the
` rely on litigation in those cases are
` stayed; is that correct?
` MS. KEEFE: That's correct.
` HON. MEDLEY: So have the
` parties had any settlement
` discussions?
` MS. KEEFE: Yes.
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` HON. MEDLEY: Has there been --
` Do you have anything to report to us?
` MS. KEEFE: Not really. We are
` talking.
` HON. MEDLEY: Okay, good enough.
` The Board is here as a resource for
` you too if you have things that you
` need to discuss so that we can
` facilitate settling these proceedings,
` of course we are here available for
` that purpose also, so let us know if
` we can help you.
` MS. KEEFE: We appreciate that.
` MR. ZOLTICK: Thanks.
` MR. HARDY: This is Victor
` Hardy. In that regard, what does the
` Board do to assist in this kind of
` discussion?
` HON. MEDLEY: Well, you know,
` the parties sometimes they are not
` willing to maybe meet on certain
` things, but if you have someone who is
` sort of a mediator or someone that is
` neutral as we would be. We are not
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` advocate obviously for either side. I
` think it can open up discussions maybe
` some. That is one reason. Perhaps
` the parties are not sure about certain
` things, you know, like estoppel or
` certain things like that, so they have
` questions for us, you know, what is
` the ramification of us settling, as
` far as what does it mean, will the
` Board continue on for a written
` decision. You know I think any time
` you wait late in a proceeding there's
` the risk that we would possibly go
` ahead and issue a final written
` decision. So these things are just
` maybe we just offer our services that
` it might help the parties agree.
` MR. HARDY: Thank you.
` MR. ZOLTICK: Thank you.
` HON. MEDLEY: You're welcome.
` Okay, so back to the -- is either
` party going to file any other
` rehearing requests? We are just
` curious. I know the time is not
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` completely expired for doing so. We
` have the one from the petitioner in
` the 78 case.
` MS. KEEFE: The petitioner
` doesn't currently contemplate filing
` anything else.
` HON. MEDLEY: How about the
` patent owner?
` MR. ZOLTICK: No, Your Honor, we
` are not contemplating filing any type
` of rehearing request.
` HON. MEDLEY: Okay. So with
` respect to the rehearing request, the
` reason we want to talk about it here
` is because the rehearing request sort
` of asks for a rehearing, but it also
` says by the way, we are filing a
` motion to correct your position which
` that really was not the proper
` procedure or vehicle for doing that.
` I mean you should have had a
` conference call with us and requested
` to file a motion, but having said
` that, we have it before us. You've
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` already moved to do that, to correct
` your position. I think the panel is
` under the impression that your
` petition, although it's not crystal
` clear, it's clear that you did address
` Claim 32 in your petition. You left
` it out of the header with respect to
` the Tapper papers, but you did have it
` in your claim chart. To us it's
` pretty clear it was on the table.
` MS. KEEFE: Thank you.
` HON. MEDLEY: So we just wanted
` to get patent owner's views on that.
` Would that be something that you would
` object to or you think it's not clear
` that we may need further briefing?
` MR. ZOLTICK: We don't oppose
` whatever it is the Board is likely to
` do relative to the request for
` rehearing. We recognize that it was
` addressed in the claim chart.
` HON. MEDLEY: Okay. All right.
` So we will have a decision shortly
` with respect to that one claim and
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` with respect to the other errors I
` suppose or that was pointed out with
` respect to the three Fox references.
` Obviously the Board in our decision we
` discuss the three Fox references. We
` just listed only two of them at the
` end and we will correct that and that
` decision too. We are still
` contemplating as to the merits of 32
` exactly what we will do, but you
` should receive a decision from us very
` shortly.
` MS. KEEFE: We appreciate that,
` Your Honor, so very much, and we
` apologize for not following the
` correct procedure.
` HON. MEDLEY: Okay, no problem.
` And just one last thing, I know just
` something we noted, we have quite a
` few attorneys admitted pro hac and for
` the petitioner and some say they are
` representing Facebook or Linkedin or
` Twitter and that is fine, but we just
` want to reiterate to the petitioner,
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` you are speaking as one voice, you are
` one entity as far as the Board is
` concerned.
` MS. KEEFE: We understand that,
` Your Honor, and we do speak that way.
` HON. MEDLEY: Okay, great.
` Well, that is it for us. I don't
` think we have anything further. Are
` there any questions or comments?
` MR. ZOLTICK: None from the
` patent owner, Your Honor. Thank you.
` MS. KEEFE: None from
` petitioner. We appreciate the time
` and effort that went into this call.
` Thank you.
` HON. MEDLEY: You're welcome and
` we appreciate the parties willingness
` to work out some of these potential
` issues that have been raised. So
` without anything else, we are
` adjourned. Thank you.
` MS. KEEFE: Thank you very much.
` MR. ZOLTICK: Thank you.
` [Time noted: 3:32 p.m.]
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` CERTIFICATION
`
` I, Lisa Sansone, a Notary Public for
`and within the State of New York, do
`hereby certify:
` That the within transcript is a true
`record of my stenographic notes.
` I further certify that I am not
`related to any of the parties to this
`action by blood or marriage, and that I am
`in no way interested in the outcome of
`this matter.
` IN WITNESS WHEREOF, I have hereunto
`set my hand this 26th day of February, 2014.
`
` _____________________
` LISA SANSONE
` * *
`
`212-267-6868
`
`VERITEXT REPORTING COMPANY
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`34
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`[& - continue]
`
`&
`& 2:7,11,16
`1
`10 12:19 13:7
`11 12:19 13:7
`1202 2:17
`123 5:17
`13th 15:24
`14th 2:12
`2
`
`2 6:8
`20005 2:13
`2014 1:14 25:15
`26 1:14 11:11
`26th 25:15
`28 11:12
`
`3
`
`31 11:12
`3175 2:4
`31st 15:24
`32 22:7 23:10
`35 12:20 13:7
`37 6:8
`3:00 1:15
`3:32 24:25
`4
`40 12:20 13:8
`400 2:17
`42.52 14:5
`42.64 6:8
`478 4:13
`479 3:5 9:12
`480 3:6 12:14
`481 3:6 11:9
`5
`5,544,352 1:11
`5,832,494 1:11,12
`6
`6,233,571 1:12
`607 2:12
`633 2:8
`
`64b2 5:18
`7
`75208 2:18
`78 21:4
`
`8
`8 12:19 13:7
`800 2:12
`
`9
`94111 2:9
`94304-1130 2:4
`a
`absolutely 8:19
`12:12
`accommodate 18:11
`action 14:7 25:11
`actuality 6:19
`additional 9:14
`address 22:6
`addressed 22:22
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`adjusted 17:12
`administrative 1:21
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`advocate 20:2
`afternoon 3:23
`ago 15:21
`agree 16:18 18:8
`20:18
`agreed 8:18
`ahead 20:15
`alert 5:20
`alerting 17:25
`alto 2:4
`amenable 17:3
`amend 12:16 17:20
`anticipation 13:11
`anybody 3:18
`apologize 11:23
`23:16
`appeal 1:3
`appears 4:10 9:4
`appreciate 6:4,24
`7:5,16,24 8:23 10:9
`
`17:24 18:17 19:14
`23:14 24:14,18
`archive 1:8
`asking 12:3 15:11
`asks 21:17
`assist 19:18
`attorneys 2:3,8,12
`2:16 23:21
`authorization 4:18
`14:22
`authorized 7:13,14
`automatically 7:11
`available 18:4 19:11
`b
`
`b 6:8
`back 8:11 16:22
`20:22
`barbara 1:20
`battery 2:8
`bear 13:25
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`believe 15:24
`better 13:16
`blood 25:11
`board 1:3 4:6,16,21
`4:24 6:12 7:25 11:6
`16:25 19:7,18 20:11
`22:19 23:5 24:3
`bother 11:5
`boulevard 2:17
`briefing 22:17
`bullet 5:15
`c
`c 1:17,17,19 2:2
`california 2:4,9
`call 3:5,9 7:9 14:13
`15:20 21:23 24:15
`cancel 12:18,21 13:3
`13:6
`careful 6:6
`case 1:11,11,12,12
`4:11,13 11:9 12:14
`15:15 21:4
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`Page 1
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`cases 8:3 18:19
`certain 11:17 19:22
`20:5,7
`certainly 14:21
`16:15 17:17
`certification 25:2
`certify 25:6,9
`cfr 6:8
`change 17:9
`chart 22:10,22
`choose 13:6
`christopher 1:20
`claim 11:19 22:7,10
`22:22,25
`claims 11:11 12:3,5
`12:19 13:3,7
`clarification 6:24
`7:5 10:9 12:25
`clear 13:23 22:6,6
`22:11,16
`collect 17:18
`come 11:16 16:22
`17:21 18:10
`comment 4:16 8:20
`comments 5:13 9:8
`15:4 24:10
`compelled 14:12
`compelling 14:5
`completely 15:25
`21:2
`concern 16:17
`concerned 24:4
`conference 7:9
`21:23
`conflict 18:3
`connection 10:20
`consider 9:6,20 10:2
`consideration 5:11
`13:4
`construe 4:22
`contemplate 21:6
`contemplating 6:7
`12:15 21:11 23:10
`continue 20:11
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`create 16:4
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`crumbley 1:20 3:4
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`curious 12:20 20:25
`currently 21:6
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`
`d.c. 2:13
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`decision 20:12,16
`22:24 23:5,9,12
`declarant 9:18,23
`declaration 9:17,19
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`expired 12:17 21:2
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`f 1:17
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