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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`INTEL CORP., CAVIUM, INC.,
`WISTRON CORPORATION, and DELL INC.
`Petitioners,
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`v.
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`ALACRITECH, INC.,
`Patent Owner
`________________
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`Case IPR2017-014061
`U.S. Patent No. 7,673,072
`________________
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`1 Cavium, Inc., which filed a Petition in Case IPR2017-01718, Wistron
`Corporation, which filed a Petition in Case IPR2018-00327, and Dell Inc., which
`filed a Petition in Case IPR2018-00371, have been joined as petitioners in this
`proceeding.
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`06973-00001/10168699.1
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner requests exclusion of
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`Exhibits 1006 and 1011 proffered by Petitioner, and all Petitioner’s arguments
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`based thereon according to the Federal Rules of Evidence. These objections were
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`timely made in IPR2017-01391 (Paper 10), IPR2017-01392 (Paper 15), IPR2017-
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`01393 (Paper 11), and IPR2017-01406 (Paper 14).
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`I. Ex. 1006 (Tanenbaum96)
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`Exhibit 1006 should be excluded because it is irrelevant, as Petitioner has
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`failed to establish that Ex. 1006 is prior art under 35 U.S.C. §§102 and 103. Patent
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`Owner also moves to exclude Ex. 1011, Declaration of Rice Majors regarding
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`Tanenbaum, Andrew S., Computer Network (“Majors Declaration”), as it is
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`inadmissible hearsay and inadmissible layman opinion.
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`Petitioner has failed to prove that Tanenbaum96 was publicly available
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`before the priority date of the patent at issue. Public availability requires a
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`showing by the Petitioner that the document had been disseminated before the date
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`such “that persons of ordinary skill in the art could locate it.” Kyocera Wireless
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`Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Petitioner has
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`provided no evidence that a person of ordinary skill in the art had located
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`Tanenbaum96 before October 14, 1997, the filing date of the supporting
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`provisional application U.S. Prov. App. No. 60/061,809 (The ’809 provisional
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`application).
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`Petitioner concludes from the “1996” date appearing on Tanenbaum96 that it
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`was a printed publication prior to October 14, 1997 provisional application to
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`which the Patent claims priority. Petitioner, however, does not explain the
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`significance of this date. When the significance of these dates are taken in context,
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`it is plain that they fail to establish public availability.
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` The year “1996” appears on Tanenbaum96 in two places:
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`INTEL Ex.1006.005.
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`U.S. Patent No. 7,673,072
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`INTEL Ex.1006.005
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`The first instance relates to the Library of Congress’s “Cataloging in
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`Publication record.” However, as stated by Library of Congress, “A Cataloging in
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`Publication record (aka CIP data) is a bibliographic record prepared by the Library
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`of Congress for a book that has not yet been published. When the book is
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`published, the publisher includes the CIP data on the copyright page thereby
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`facilitating book processing for libraries and book dealers. ” Ex. 2500.001. On the
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`FAQ page, the Library of Congress further states, under the question “How can I
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`get cataloging for a book which is already published,” that “CIP [“Cataloging in
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`Publication”] data is available only for works that are not yet published. Published
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`works are not eligible for CIP data.” Ex. 2500.002. Therefore, the year 1996 in the
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`Library of Congress Cataloging in Publication Data only shows that Tanenbaum
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`was not published at that time.
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`Petitioner further relies on the “1996” date printed at the bottom of Exhibit
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`1006.005, which it alleges is a copyright date. Copyright dates, however, are not
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`evidence of public availability. For example, in Microsoft Corporation v. Corel
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`Software, LLC, the Board expressly stated that “a copyright notice, alone, sheds
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`virtually no light on whether the document was publicly accessible as of that date,
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`therefore additional evidence is typically necessary to support a showing of public
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`accessibility.” Microsoft Corporation v. Corel Software, LLC, Case IPR2016-
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`01300, Paper 13 at 14 (Jan. 4, 2017). In addition, the Board has found that the
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`copyright date was inadmissible hearsay. See Standard Innovation Corp. v. Lelo,
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`Inc., Case IPR2014-00148, Paper 41 at 13-16 (Apr. 23, 2015) (determining that to
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`the extent that the dates presented in [the] Exhibit [] are relied upon as proof of
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`dates relevant to the creation or publication date of [the] Exhibit[] itself, those
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`dates are inadmissible hearsay).
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`Petitioner further argues that the ’072 patents citation to Tanenbaum96
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`establishes public availability. It does not. The ‘072 patent cites Tanenbaum96 in
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`the non-provisional application filed on June 25, 2007, which is after the critical
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`date. Ex. 1001.001.
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`Petitioner attempts to remedy these deficiencies through its service of
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`supplemental evidence. This supplemental evidence, however, only further
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`underscores that Tanenbaum96 was not publicly available in 1996 . Specifically,
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`Petitioner cites five other patents (U.S. Patent Nos. 6,119,230, 6,401,127,
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`6,334,153, 7,496,689, 7,337,241) that purportedly cite Tanenbaum96. However,
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`none of these patents cite Tanenbaum96 before the critical date.
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`The priority dates of U.S. Patent Nos. 6,401,127 and 7,496,689 are in 1999
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`and 2002 respectively, years after the critical date, and therefore establish only that
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`Tanenbaum96 was available no early than 1999.
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`U.S. Patent Nos. 7,337,241 and 6,334,153 also trace back to the ’809
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`provisional application. As already established, Tanenbaum96 was cited for the
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`first time in their non-provisional application, well-after the critical date.
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`And in the remaining patent on which Petitioner relies, U.S. Patent No.
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`6,119,230, Tanenbaum96 was not cited until November 18, 1997 in an IDS. See
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`Ex. 2502.001.
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` Thus, none of the patents Petitioner cites establish the public availability of
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`Tanenbaum96 before the critical date. To the contrary, Petitioner’s supplemental
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`evidence establishes only that Tanenbaum96 was cited in various publications
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`after the priority date.
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`II. Ex. 1011 (Majors Declaration)
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`Petitioner also relies on Ex. 1011, Majors Declaration, to establish the
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`publication date of Tanenbaum96. According to his Declaration, Mr. Majors is an
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`Associate University Librarian at Santa Clara University Library (“SCU Library”).
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`Mr. Majors testified that Tanenbaum96 “would have been available” a few weeks
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`after November 1, 1996. Ex. 1011.001. However, he fails to provide any support
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`or explanation for his statement. He does not testify, for example, that he was
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`made aware of the practices and procedures of the library in 1996, or that he had
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`personal knowledge of those practices. Nor could he, as he was not employed by
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`the library in 1996. His Conclusory statement that the reference would have been
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`available, without any support or analysis, is simply insufficient. Therefore, his
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`testimony is not helpful “to clearly understanding the witness’s testimony or to
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`determining a fact in issue” under FRE 701, and hence is not admissible as lay
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`witness’s opinion.2
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`Even if Ex. 1011 is admissible, it is not sufficient to show Tanenbaum was
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`publicly available before the critical date. Mr. Majors never testified that
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`Tanenbaum96 was actually available before the critical date. He is not the one
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`who catalogued Tanenbaum96. Rather, he simply stated that it “would have been
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`available.” Ex. 1011.001. The possibility of public accessibility is not enough to
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`meet the burden of proof by a preponderance of the evidence. See MC Corp. v.
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`Acqis, IPR2014-01469, Paper 56 at 17 (Mar 8, 2016) (“Although it is possible that
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`2 Nor is Majors qualified to testify on this as an expert. Indeed, Petitioner has not
`even attempted to establish him as a qualified expert under rule 702
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`U.S. Patent No. 7,673,072
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`[the reference] was available in the CERN Library at or around the same time,
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`Petitioner has not shown that by a preponderance of the evidence.”).
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`a. Exhibit A of Majors Declaration
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`The Exhibit A attached to Majors Declaration is also inadmissible because it
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`is hearsay, does not fall within any hearsay exceptions, and is not authenticated.
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`Rules 802-807 of the Federal Rules of Evidence govern the admissibility of
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`hearsay, which Rule 801 defines as, a statement that: (1) the declarant does not
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`make while testifying at the current trial or hearing; and (2) the party offers in
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`evidence to prove the truth of the matter asserted in the statement. FRE 801(c).
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`Absent the applicability of an exception to the rule against hearsay, it is not
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`admissible. FRE 802. Exhibit A is an out of court statement offered to prove the
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`truth of the content, and it does not fall within in any hearsay exceptions.
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`Petitioner also fails to authenticate Exhibit A. To satisfy the requirement of
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`authenticating, the proponent must produce evidence sufficient to support a finding
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`that the item is what the proponent claims it is. FRE 901(a). Petitioner cannot meet
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`this requirement because Petitioner has not provided testimony of any witness who
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`has personal knowledge of this exhibit.
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`Moreover, the top of the document shows that it has been updated at least 26
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`times, with the produced version being Revisions: 26, and the last updated date
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`being 02-24-2015. No evidence has been submitted that establishes when the
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`information on Exhibit A was entered, in which revision it was entered, or the
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`reliability of such information. Therefore, the unauthenticated Exhibit A should be
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`excluded with Mayor’s declaration.
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`In sum, Patent Owner requests exclusion of Exhibits 1006 and 1011
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`proffered by Petitioner and all Petitioner’s arguments based thereon.
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`Date: June 13, 2018
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` Respectfully submitted,
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`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`Email: jimglass@quinnemanuel.com
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`Lead Attorney for Patent Owner –
`Alacritech, Inc.
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE was served on
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`June 13, 2018 by filing it through the Patent Review Processing System, as well as
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`by e-mailing copies to:
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`Garland T. Stephens (Reg. No. 37,242)
`garland.stephens@weil.com
`intel.alacritech.ipr@weil.com
`WEIL, GOTSHAL & MANGES LLP
`700 LOUISIANA, SUITE 1700
`HOUSTON, TX 77002-2784
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`Anne M. Cappella (Reg. No. 43,217)
`Adrian Percer (Reg. No. 46,986)
`Jeremy Jason Lang (Reg. No. 73,604)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3141
`Fax: (650) 802-3100
`anne.cappella@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
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`Patrick McPherson (Reg. No. 46,255)
`David T. Xue
`Karineh Khachatourian
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`DTXue@duanemorris.com
`karinehk@duanemorris.com
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`Christopher TL Douglas (Reg. No. 56,950)
`Kirk Bradley
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`christopher.douglas@alston.com
`kirk.bradley@alston.com
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`Benjamin E. Weed
`Erik J. Halverson
`K&L GATES LLP
`benjamin.weed.ptab@klgates.com
`erik.halverson@klgates.com
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`Date: June 13, 2018
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`Respectfully submitted,
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`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
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`Lead Attorney for Patent Owner –
`Alacritech, Inc.
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`06973-00001/10168699.1
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