`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`GOOGLE INC.
`Petitioner
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`v.
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`AT HOME BONDHOLDERS' LIQUIDATING TRUST
`Patent Owner
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`_____________________
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`Case IPR: Unassigned
`U.S. Patent 6,286,045
`_____________________
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`DECLARATION OF PAUL J. LEACH
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`Google Inc.
`GOOG 1005
`IPR of U.S. Patent No. 6,286,045
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`I, Paul J. Leach, hereby declare as follows.
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`I.
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`Overview
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`1.
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`I have been retained as an expert witness on behalf of Google Inc. for
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`the above-captioned inter partes review (IPR).
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`2.
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`I am over the age of eighteen (18) and otherwise competent to make
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`this declaration. I am being compensated for my time in connection with this IPR
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`at my standard consulting rate, which is $300 per hour. I understand that the
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`petition for inter partes review involves U.S. Patent No. 6,286,045 ("the '045
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`patent"), GOOG 1001, which resulted from U.S. Application No. 08/858,650 ("the
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`'650 application"), filed on May 19, 1997, naming Michael John Griffiths and
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`James David McElhiney as the inventors. The '045 patent issued on September 4,
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`2001, from the '650 application. I further understand that, according to USPTO
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`records, the '045 patent is currently assigned to At Home Bondholders' Liquidating
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`Trust ("Patent Owner").
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`3.
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`In preparing this Declaration, I have reviewed the '045 patent and
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`considered each of the documents cited herein, in light of general knowledge in the
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`art. In formulating my opinions, I have relied upon my experience in the relevant
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`art and have also considered the viewpoint of a person of ordinary skill in the art.
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`4.
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`I am familiar with the technology at issue as of the May 19, 1997
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`filing date of the '045 patent. I am also familiar with a person of ordinary skill in
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`the art with respect to the technology at issue as of the May 19, 1997 filing date of
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`the '045 patent.
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`II. My Background and Qualifications
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`5.
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`I have extensive experience in network architecture and information
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`delivery, including advertisements, since at least 1997. Throughout the remainder
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`of this declaration, I will refer to the field of network architecture and information
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`delivery as the relevant field or the relevant art. In formulating my opinions, I have
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`relied upon my training, knowledge, and experience in the relevant art. A copy of
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`my current curriculum vitae is provided as GOOG 1006, and it provides a
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`comprehensive description of my academic, employment, research and
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`professional history.
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`6. With my extensive experience in the field of network architecture and
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`information delivery prior to 1997, I am qualified to provide an opinion as to what
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`a person of ordinary skill in the art would have understood, known or concluded as
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`of 1997.
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`7.
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`Since 1972, I have accumulated significant experience in the field of
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`network architecture and information delivery over the Internet, including being a
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`named inventor on 70 issued U.S. Patents. I attended the Massachusetts Institute of
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`Technology from 1969-1972 and from 1977-1978. I was a Distinguished Engineer
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`at the Microsoft Corporation and an Apollo Fellow at Apollo Computer/Hewlett-
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`Packard. I am currently an Affiliate Professor at the University of Washington and
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`have held this position since 1992. I was also a member of the Adjunct Faculty at
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`Boston University from 1979 to 1980.
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`8.
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`I have been a Member of numerous Program Committees for ACM
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`Conferences, Symposiums and Workshops, including being a Member of
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`numerous IEEE Workshops and USENIX Conferences. I was a contributor to both
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`the HTTP 1.0 and HTTP 1.1 specifications. Prior to the finalization of an HTTP
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`specification there are multiple drafts that are published, mailed to the HTTP
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`working group and an announcement mailing list, and also made available to the
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`general public. For example, the HTTP 1.0 draft v10, spec-05, referred to in this
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`declaration as GOOG 1008, is dated February 19, 1996 and was mailed to the
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`HTTP working group and published to the general public on February 20, 1996.
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`Similarly, the HTTP 1.1 draft v11, spec-03, referred to in this declaration as
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`GOOG 1026, is dated May 2, 1996 and was mailed to the HTTP working group
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`and published to the general public on May 3, 1996.
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`9.
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`I have authored or co-authored over 14 technical publications in the
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`areas of network architecture, distributed computing, operating systems, HTTP
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`protocol and authentication, and Hit-Metering. I was a co-author of two books on
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`Network Computing and authored or co-authored another five refereed
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`publications on distributed systems and network architecture.
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`10. Additional contributions of mine to the field are set forth in my
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`current curriculum vitae (GOOG 1006).
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`11.
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`I have been asked to opine on the state of the art as of the May 19,
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`1997 filing date of the '045 patent.
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`III. Person of Ordinary Skill in the Art
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`12.
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`I understand that a person of ordinary skill in the art is one who is
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`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
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`art, and is a person of ordinary creativity. A person of ordinary skill in the art
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`("POSA") would have had knowledge of Internet advertisement, including
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`knowledge of banner display counting, cache usage, and various HTTP-related
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`technologies as of 1997.
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`13.
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`In my opinion a POSA typically would have had at least (a) a
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`Bachelor of Science degree in computer science and/or a similar field or (b) at least
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`3 years of experience in web-based information management and delivery systems.
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`14. Based on my education and experience, I would have easily exceeded
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`these criteria in 1997, and I still exceed them today.
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`IV. State of the Art as of May 19, 1997
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`A.
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`'045 File History
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`15.
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`I was asked to review the '045 patent file history to determine what
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`the applicants described as being the inventive aspect of the application. I found
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`that in a reply dated September 3, 1999, that was received by the Patent Office on
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`September 13, 1999, the applicants outlined "at least four of the fundamental
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`principles of the applicants' invention." (GOOG 1002, p. 149.)
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`16. The first "fundamental principle" was "directed to the serving of
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`banners or other information from a server device to a client device via a computer
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`network and the accurate counting of such display of banners or other information
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`on the terminal or client device." (GOOG 1002, pp. 149-50.) The applicants further
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`stated that "applicants' invention reduces the inaccurate display counting caused by
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`caching of the banners by making or causing request signals generated or
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`transmitted by a client device unblockable by the client device or proxy server,
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`even though the banners may have been previously stored on the client device or
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`proxy server." (GOOG 1002, p. 150.)
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`17. The second "fundamental principle" was that "applicants' invention
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`allows such serving and counting to occur without significantly increasing data
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`traffic on the computer network or unnecessarily delaying the display of the
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`banners." (GOOG 1002, p. 151.)
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`18. The third "fundamental principle" was that "applicants' invention
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`allows banners or advertisements to be targeted to users to increase the banners' or
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`advertisements' effectiveness…[A]pplicants' invention allows advertisements to be
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`selected for display to a user based on demographic or other information known
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`about the user." (GOOG 1002, p. 151.)
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`19. And, the fourth "fundamental principle" was that "applicants'
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`invention increases fault tolerance and reliability for information and banner
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`delivery and storage systems." (Id.) As discussed below, each of these fundamental
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`principles was well known to a POSA at the time of the filing of the '045 patent
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`application.
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`1.
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`Serving and Counting of Banners Was Well Known
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`20. The concept and concern for accurately counting the number of times
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`a banner was displayed on a client device was a well known issue at the time of the
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`filing of the '045 patent. Advertisers paid for the display of their advertising
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`banners and also for the number of "click-throughs" where a user would click on a
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`banner ad to request additional information. As discussed in a research paper
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`published in September 1996, this counting or "measurement process involves
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`counting and summarizing the visitor transactions on a Web site," where
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`"[m]easurement and analysis products tell managers who is accessing their site,
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`when, and what is being accessed." (GOOG 1022, p. 7.) Based on these
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`measurements, an advertiser would be charged utilizing "exposure models, based
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`upon CPM [clicks per thousand] or Flat Fees applied to site exposure or banner ad
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`exposure, [that] are the dominant approach to Web media pricing." (GOOG 1022,
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`p. 5.)
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`21.
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`It was also well known that the use of cache would cause an
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`underreporting of the counting of banners. As explained in the New Metrics for
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`New Media research paper, "[a] request is a connection to an Internet site (i.e., hit)
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`that successfully retrieves content," but undercounting could result "because
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`browser software and many Internet gateways intercept some requests before
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`reaching the server, and these cached requests are never logged." (GOOG 1022, p.
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`13.)
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`22. Given that advertisers wanted accurate counts of their displayed ads,
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`they utilized a number of different methods to either disable caching completely or
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`to only disable caching of the request for an ad.
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`23. For example, it was well known that the use of a cache-control header
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`such as "cgi-bin" and "?" would disable the use of cache. This method is discussed
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`in the original specification where the specification explained that "caching proxy
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`servers exist which will specifically avoid caching content related to any URL
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`address containing the strings 'cgi-bin' and '?' which are strings conventionally used
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`in the construction of URL addresses for which responses are dynamically
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`generated and, therefore, are unsuitable for caching." (GOOG 1002, p. 41.)
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`24. The disabling of cache to reliably determine page views was well
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`known in early 1997. For example, in my co-authored HTTP Working Group
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`paper, we noted that "[f]or a variety of reasons, content providers want to be able
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`to collect information on the frequency with which their content is accessed. This
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`desire leads to some of the "cache-busting" done by existing servers. ('Cache-
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`busting' is the use by servers of techniques intended to prevent caching of
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`responses; it is unknown exactly how common this is.)" (GOOG 1024, pp. 2-3.)
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`25.
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`In addition, as was discussed in the Sixth International WWW
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`Conference, "[a] common resource intensive solution to the problem of reliably
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`determining pages [sic] views and users is to use the cache specific headers in
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`HTTP to effectively defeat all attempts at caching pages. Despite the reasons for
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`employing such an approach, this technique is commonly referred to as cache-
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`busting. This is accomplished in several ways including sending 'Cache-control:
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`proxy-revalidate', or 'Expires: <past date> headers.'" (GOOG 1023, p. 5.)
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`26. The use of HTTP for cache-busting was well known at the time of the
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`filing of the '045 patent application. In my co-authored HTTP Working Group
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`paper of January 1997, we noted that "HTTP/1.1 already allows origin servers to
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`prevent caching of responses, and we have evidence that at least some of the time,
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`this is being done for the sole purpose of collecting counts of the number of
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`accesses of specific pages." (GOOG 1016, pp. 2-3, see also GOOG 1008.)
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`27. Therefore, in my opinion, and given the above supporting references,
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`it was well known by a POSA at the time of the filing of the '045 patent that
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`caching distorted the accurate counting of the display of advertising banners and
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`web pages and that there were known "cache-busting" methods that could be used
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`to prevent caching and thus allow for a more accurate method of counting the
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`delivery and display of Internet based advertisements.
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`2.
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`Serving and Counting Banners Without Significantly
`Increasing Network Traffic Was Well Known
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`28. The disabling of cache resulted in increased loads on servers as a
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`server would have to resend a web page that otherwise could have been served by
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`cache memory on a local user device or from a proxy server. This drawback was
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`well known at the time of the filing of the '045 patent. As discussed at the
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`International World Wide Web conference in April 1997, "[i]n the earlier days of
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`the Web, the tracking of visitors was often accomplished by inserting identifiers
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`into the URLs issued by the server and channeling all subsequent requests through
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`a CGI script" and "[n]ot only was this method expensive computationally to the
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`sever, but it defeated intermediary caching and did not correctly handle the
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`exchanging of URLs between people." (GOOG 1023, p. 2.)
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`29. The '045 patent's specification discloses a method that "allows the
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`web pages and the banner information to be cached or stored in the terminals and
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`proxy servers, [and] there is no unnecessary retransmission of the web pages or
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`banners from the computer or web sites or the information or ad servers to the
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`terminals which would significantly increase the data traffic and overhead on the
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`computer network 30." (GOOG 1002, p. 45.) Methodologies to allow for the
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`serving and counting of banner advertisements without significantly increasing
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`data traffic were well known at the time of the filing of the '045 patent application.
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`30.
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`I am of the opinion that the cache disabling method discussed above
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`involving "cgi-bin" and "?" would result in additional transmissions of information
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`from a server when the same information could have been more readily obtained
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`through cache. However, this was a known problem with multiple known
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`solutions.
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`31. At issue is a method to allow a request for information, such as an
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`advertising banner, not to be cached and therefore "counted" while allowing for
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`that request to either allow the requested information to be sent from a server, or to
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`allow the request to be fulfilled through the use of cache that contains the
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`requested information.
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`32. One of ordinary skill in the art at the time of the filing of the '045
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`patent would have known that HTTP cache control mechanisms such as If-
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`Modified-Since or If-NoneMatch headers would result in not blocking the request
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`signal from reaching the intended server, but avoiding a refetch of the requested
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`information if that information existed in cache.
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`33. The HTTP 1.0 specification, published on February 20, 1996,
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`discusses the "If-Modified-Since" request header whereby the request signal is
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`allowed to reach the server, where "if the requested resource has not been modified
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`since the time specified in this field, a copy of the resource will not be returned
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`from the server; instead, a 304 (not modified) response will be returned without
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`any Entity-Body." (GOOG 1008, p. 34.) Further, the "purpose of this feature is to
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`allow efficient updates of cached information with a minimum amount of
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`transaction overhead." (Id.)
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`34. The May 2, 1996 draft of the HTTP 1.1 specification, published on
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`May 3, 1996, discusses the "If-NoneMatch" request header. (GOOG 1026, p. 85.)
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`"The If-NoneMatch request-header field is used with a method to make it
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`conditional." (Id.) Similar in nature to the "If-Modified-Since" request header
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`discussed above, the purpose of the "If-NoneMatch" command "is to allow
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`efficient updates of cached information with a minimum amount of transaction
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`overhead." (Id. at p. 86.) The "If-NoneMatch" request allows a request signal to
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`reach the server and be counted, and when the entity tag of the command matches
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`the entity tag at the server, the server returns "a 304 (Not Modified) response
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`without any Entity-Body" and the client device then fetches the requested
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`information from cache. (Id. at p. 85.) However, if the tags do not match the server
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`returns the requested information.
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`35.
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`In addition, the "hit-metering" method developed by Jeffrey Mogul
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`and myself, published on March 25, 1997, outlines a method of counting requests,
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`or "hit counts" without defeating the use of cache where appropriate. Our hit-
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`metering approach allowed content providers to be able to collect information on
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`the frequency with which their content is accessed, but without resorting to "cache-
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`busting" techniques discussed above that defeat the use of cache. (See, GOOG
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`1024.)
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`36. Therefore, in my opinion, and given the above supporting references,
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`it was well known by a POSA at the time of the filing of the '045 patent that
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`multiple methods existed that would allow for the accurate counting of banner
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`advertisement requests without significantly increasing data traffic and allowing
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`for the efficient use of cache.
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`3.
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`Advertisement Targeting Based on Demographics Was Well
`Known
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`37. The concept of targeting advertisements to particular users to increase
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`advertising effectiveness was a well known issue at the time of the filing of the
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`'045 patent. As discussed in my Hit-Metering paper, some advertisers employed
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`the use of "cache-busting" to "collect demographic information" so that advertising
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`images could be tailored and targeted to those demographics, e.g., "each retrieval
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`of the page sees a different ad." (GOOG 1024, p. 3.)
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`38. The World Wide Web Consortium ("W3C"), an international
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`community that develops open standards for the Internet, also discussed various
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`methodologies for gathering consumer demographics, creating a balance between
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`advertisers' desire to gather personal information and the privacy rights of
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`consumers, e.g., "[t]he desire to unobtrusively gather demographical information
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`about consumers and to build user profiles, balanced with the privacy rights of
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`consumers." (GOOG 1025, p. 3.) In addition, "[s]ome representatives from the
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`advertising side of the fence said the key is to use the same kinds of tracking
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`devices already used in broadcast and print." (Id.) While, advertisers agreed that
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`demographic data was needed for more effective web-based advertising, "media
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`planners, advertising agency representatives, and researchers agreed on one point:
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`no one Internet tracking standard is likely to emerge in the near future." (Id.)
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`39. Therefore, in my opinion, and given the above supporting references,
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`it was well known by a POSA at the time of the filing of the '045 patent that
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`advertisers were developing methods using demographics to increase advertising
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`effectiveness, but that no single standard had yet emerged.
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`4.
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`Fault Tolerance and Reliability Were Well Known
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`40. The concept of fault tolerant computing for increased reliability was a
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`well known concept at the time of the filing of the '045 patent. As can be seen in
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`my curriculum vitae (GOOG 1006), I have participated in Association for
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`Computing Machinery ("ACM") conferences and committees directed
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`to
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`distributed computing, replication and fault tolerance as early as 1985. I published
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`papers on the theories and principles of distributed computing in 1982, 1985 and
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`1987. Mirroring and redundancy were common fault tolerant methods at the time.
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`For example, in 1982 Xerox operated a distributed, redundant, multicomputer
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`system on the Internet. As explained in an ACM paper from Xerox Research
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`Center on distributed computing, "Grapevine is a system that provides message
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`delivery, resource location, authentication, and access control services in a
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`computer internet." (GOOG 1027, pp. 1-2.) "The implementation of Grapevine is
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`distributed and replicated," where "[b]y distributed we mean that some of the
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`services provided by Grapevine
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`involve
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`the use of multiple computers
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`communication through the internet; [and] by replicated we mean that some of the
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`services are provided equally well by any of several distinct computers." (GOOG
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`1027, p. 2, emphasis in original.) In other words, the ACM Xerox Research Center
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`paper taught the use of multiple servers to increase fault tolerance and reliability.
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`41. Therefore, in my opinion, and given the above supporting references,
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`it was well known by a POSA at the time of the filing of the '045 patent that the
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`fault tolerant solutions in distributed computing existed and provided increased
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`reliability in computer delivery and storage systems.
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`V.
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`Conclusion
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`Inter Partes Review of USPN 6,286,045
`Declaration of Paul J. Leach (Exhibit 1005)
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`42.
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`In signing this declaration, I recognize that the declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
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`the United States Patent and Trademark Office. I also recognize that I may be
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`subject to cross-examination in the case and that cross-examination will take place
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`within the United States. If cross-examination is required of me, I will appear for
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`cross-examination within the United States during the time allotted for cross-
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`examination.
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`43.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true, and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Respectfully submitted,
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`Paul J. Leach
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`Date:
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`1/31/2015