Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: May 30, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00959
`Patent 7,848,439 B2
`____________
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 30, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00959
`Patent 7,848,439 B2
`____________
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner” or “Apple”) filed a petition (Paper 1, “Pet.”)
`seeking inter partes review of claim 8 of U.S. Patent No. 7,848,439 B2 (Ex.
`1001, “the ’439 patent” or “the challenged patent”). On the same day,
`Petitioner filed a Motion for Joinder with HTC Corp. v. INVT SPEC LLC,
`IPR2018-01581 (“the HTC IPR”). Paper 3 (“Mot.”). Patent Owner, INVT
`SPE LLC, filed a Preliminary Response and Response in Opposition to
`Petitioner’s Motion for Joinder. Paper 7 (“Prelim. Resp.”).
`For the reasons described below, we institute an inter partes review of
`claim 8 of the challenged patent and grant Petitioner’s Motion for Joinder.
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 1; Paper 5 (Patent Owner’s Mandatory
`Notice), 2–3. The parties identify several district court proceedings and a
`U.S. International Trade Commission Investigation involving the challenged
`patent. Pet. 1; Paper 5, 2. Patent Owner additionally identifies various
`proceedings involving petitions for inter partes review. Paper 5, 2–3.
`
`B. The Asserted Ground of Unpatentability
`Petitioner challenges claim 8 of the ’439 patent as unpatentable under
`35 U.S.C. § 1031 over the following references:
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`
`2
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`U.S. Patent No. 6,904,283 B2, filed April 17, 2001, issued June
`7, 2005 (Ex. 1003, “Li”);
`U.S. Patent No. 7,221,680 B2, filed September 1, 2004, issued
`May 22, 2007 (Ex. 1004, “Vijayan”);
`U.S. Patent No. 6,721,569 B1, filed September 29, 2000, issued
`April 13, 2004 (Ex. 1005, “Hashem”); and
`U.S. Patent No. 5,596,604, filed August 17, 1993, issued
`January 21, 1997 (Ex. 1006, “Cioffi”).
`Pet. 3. In its challenges, Petitioner cites to the references and declaration
`testimony from Zhi Ding, Ph.D. (Exhibit 1007). Pet. 3, 15–63.
`
`II. DISCUSSION
`
`A. Three Petitions Challenging Claims of the ’439 Patent
`In addition to the instant Petition challenging claim 8 of the ’439
`Patent, Petitioner and ZTE (USA) Inc. filed a petition in IPR2018-01477
`challenging claims 1–11 of the ’439 Patent and relying on Li, Vijayan, and
`U.S. Patent No. 7,885,228 B2 (“Walton”). IPR2018-01477, Paper 1 (“1477
`Dec.”), 9.2 On March 7, 2019, we denied institution after concluding that
`the information presented in the petition did not show a reasonable
`likelihood that Petitioner would prevail with respect to claims 1–11.
`1477 Dec. 37. A few weeks later on April 1, 2019, we instituted an inter
`partes review of claim 8 of the ’439 patent under 35 U.S.C. § 103 over Li,
`Vijayan, Hashem, and Cioffi in IPR2018-01581 (“the HTC IPR”) based on a
`
`
`2 Specifically, Apple and ZTE (USA) Inc. asserted claims 1, 3, and 5–11
`would have been obvious under 35 U.S.C. § 103 over Li and Walton and
`claims 2 and 4 would have been obvious over Li, Walton, and Vijayan.
`1477 Dec. 9.
`
`3
`
`
`
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`
`IPR2019-00959
`Patent 7,848,439 B2
`
`petition filed by HTC Corp. and HTC America, Inc. (collectively, “the HTC
`Petitioner”). IPR2018-01581, Paper 1 (“HTC Petition” or “HTC Pet.”),
`Paper 9 (“HTC Dec.”).
`
`B. Reasonable Likelihood of the Instant Petition
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R § 42.4(a) (delegating authority to institute trial to the Board).
`We address whether the Petition in this proceeding reaches the institution
`threshold before turning to Petitioner’s Motion for Joinder and considering
`whether to exercise our discretion under 35 U.S.C. § 314(a).
`The Petition in this proceeding asserts the same ground of
`unpatentability as the ground on which we instituted review in the HTC IPR.
`Compare Pet. 3, 15–63, with HTC Pet. 3, 17–68; see also HTC Dec. 7–8,
`12–43 (discussing asserted grounds). The Petition relies on the same expert
`declaration relied on in the HTC Petition. Mot. 4; Pet. 3 (relying on
`declaration testimony of Zhi Ding, Ph.D. (Ex. 1007)); HTC Dec. 8 (noting
`petition relies on declaration testimony of Zhi Ding, Ph.D. (Ex. 1007)).
`Indeed, Petitioner contends that the Petition “is substantively identical to the
`HTC Petition, containing only minor differences related to formalities of a
`different party filing the petition as well as” arguments related to
`discretionary denial of the Petition. Mot. 4.
`Patent Owner’s Preliminary Response does not address Petitioner’s
`prior art, arguments, or evidence. See generally Prelim. Resp.
`
`
`
`4
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`For the reasons set forth in our institution decision in the HTC IPR,
`we determine the information presented in the instant Petition shows a
`reasonable likelihood that Petitioner would prevail in showing claim 8
`would have been obvious over Li, Vijayan, Hashem, and Cioffi. See HTC
`Dec. 12–43.
`
`C. Petitioner’s Motion for Joinder
`We have authority under 35 U.S.C. § 315(c) to join a properly filed
`inter partes review petition to an instituted inter partes review. A motion
`for joinder must be filed “no later than one month after the institution date of
`any inter partes review for which joinder is requested.” 37 C.F.R. § 122(b).
`The Petition in this proceeding was accorded a filing date of April 8,
`2019. Paper 4 (Notice of Filing Date Accorded). The HTC IPR was
`instituted on April 1, 2019. HTC Dec. 1. We agree with Petitioner that its
`Motion for Joinder is timely. Mot. 3.
`Both parties recognize, as do we, that the one-year bar set forth in 35
`U.S.C. § 315(b) and 37 C.F.R. § 42.101(b) would bar institution of the
`Petition except for the request for joinder. Mot. 3 (“Further, the one-year
`bar set forth in 37 C.F.R. § 42.101(b) does not apply to the Apple Petition
`because this Motion for Joinder is filed concurrently with the Apple Petition.
`37 C.F.R. § 42.122(b).”); Prelim. Resp. 2; see 35 U.S.C. § 315(b) (“The time
`limitation . . . shall not apply to a request for joinder under subsection (c).”);
`37 C.F.R. § 42.122(b) (“The time set forth in §42.101(b) shall not apply
`when the petition is accompanied by a request for joinder.”).
`In its Motion, Petitioner contends that its narrowly tailored petition
`would “not unduly burden or prejudice the parties to the HTC IPR while
`
`
`
`5
`
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`
`IPR2019-00959
`Patent 7,848,439 B2
`
`efficiently resolving the question of the ’439 Patent’s validity in a single
`proceeding.” Mot. 1. In opposition, Patent Owner contends that Petitioner’s
`Motion for Joinder should be denied “because it is predicated upon Apple’s
`own strategic choices and Apple has not articulated any prejudice it may
`suffer in the absence of a joinder.” Prelim. Resp. 12 (capitalization altered);
`see Prelim. Resp. 12–15.
`As noted previously, Petitioner asserts the same unpatentability
`ground on which we instituted review in the HTC IPR. See Mot. 4 (“Joinder
`with the HTC IPR is appropriate because the Apple Petition involves the
`same patent, challenges the same claim[], relies on the same expert
`declaration, and is based on the same grounds and combinations of prior art
`submitted in the HTC Petition.”). Petitioner relies on the same prior art
`analysis and expert declaration as presented in the HTC Petition. See Mot. 4
`(“Other than these mere differences related to formalities, there are no
`changes to the facts, citations, evidence, or arguments presented in the HTC
`Petition.”); Mot. 4–5 (“The Apple Petition is substantively identical to the
`HTC Petition. The Apple Petition presents the unpatentability of the same
`claim[] of the same patent in the same way as the HTC Petition.”).
`Accordingly, this inter partes review does not present any ground or
`matter not already at issue in the HTC IPR. Furthermore, if joinder is
`granted, Petitioner anticipates participating in the proceeding in a limited
`capacity absent termination of HTC Corp. and HTC America Inc. as parties.
`Mot. 6–7 (“Petitioner explicitly agrees to take an ‘understudy’ role, as
`described by the Board” in IPR2014-00550, Paper 38, 5). Petitioner
`proposes its participation be limited to being an “understudy” as defined in a
`
`
`
`6
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`prior Board decision. See Mot. 6–7 (Petitioner’s block quote). Petitioner
`thus proposes its understudy role to be the following:
`(a) all filings by Petitioner in the joined proceeding would be
`consolidated with the filings of the petitioner in the HTC IPR
`unless a filing solely concerns issues that do not involve the
`original petitioner in the HTC IPR;
`(b) Petitioner shall not be permitted to raise any new grounds not
`already instituted by the Board in the HTC IPR, or introduce any
`argument or discovery not already introduced by the petitioner in
`the HTC IPR;
`(c) Petitioner shall be bound by any agreement between Patent
`Owner and the petitioner in the HTC IPR concerning discovery
`and/or depositions; and
`(d) Petitioner at deposition shall not receive any direct, cross-
`examination or redirect time beyond that permitted for the
`petitioner in the HTC IPR alone under either 37 C.F.R. § 42.53
`or any agreement between Patent Owner and the petitioner in the
`HTC IPR.
`See Mot. 6–7. Petitioner represents that it would “assume the primary role
`only if HTC ceases to participate in the HTC IPR.” Mot. 7.
`Patent Owner contends that if we grant Petitioner’s Motion we should
`limit Petitioner’s role in the manner proposed by Petitioner and Petitioner
`“should be required to seek permission from the Board first before making
`any . . . filings” “as to matters that solely concern itself.” Prelim. Resp. 15.
`We agree with Patent Owner’s request.
`Because Petitioner expects to participate only in this limited capacity,
`Petitioner submits that joinder will not impact the trial schedule for the HTC
`IPR. Mot. 7 (“By Petitioner accepting an ‘understudy’ role, Patent Owner
`and Petitioner Apple can comply with the current trial schedule and avoid
`any duplicative efforts by the Board or the Patent Owner.”).
`7
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`Petitioner represents that Petitioner HTC “takes no position as to
`Petitioner Apple joining in IPR2018-01581 in an ‘understudy’ role.” Mot. 7.
`In view of the particular circumstances of this case, we agree with
`Petitioner that joinder is appropriate in these circumstances because joinder
`will not unduly burden the parties to the HTC IPR while efficiently
`resolving the question of the unpatentability of claim 8 of the ’439 patent in
`a single proceeding. See, e.g., Mot. 1.
`
`D. Discretionary Denial under 35 U.S.C. § 314(a)
`Patent Owner requests that we exercise the Board’s discretion under
`35 U.S.C. § 314(a) to deny institution of an inter parties review in the
`particular circumstances of this proceeding. See Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
`petition is a matter committed to the Patent Office’s discretion.”); Harmonic
`Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“The PTO is
`permitted, but never compelled, to institute an IPR proceeding.”).
`In General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`the Board enumerated non-exhaustive factors that the Board would consider
`in exercising discretion on instituting inter partes review, especially as to
`“follow-on” petitions challenging the same patent as challenged previously
`in an inter partes review. Case IPR2016-01357, slip op. at 16 (PTAB
`Sept. 6, 2017) (Paper 19) (§ II.B.4.i precedential); see Office Trial Practice
`Guide, August 2018 Update, 83 Fed. Reg. 39989 (Aug. 13, 2018) (Notice of
`
`
`
`8
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`update); Trial Practice Guide Update (August 2018),3 9–10 (Considerations
`in Instituting a Review (discussing General Plastic)). The non-exhaustive
`General Plastic factors are
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, slip op. at 9–10.4 The General Plastic factors
`generally have been used to analyze situations in which the same party files
`multiple petitions challenging the same patent. As the Office Trial Practice
`Guide explains, the General Plastic factors are not dispositive, but are part
`
`3 Trial Practice Guide Update (August 2018) is available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf.
`4 See also NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134
`(PTAB May 4, 2016) (Paper 9) (cited by General Plastic).
`9
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`of a balanced assessment of the relevant circumstances in a particular case.
`Office Trial Practice Guide Update (August 2018), 10.
`Petitioner contends that the General Plastic factors are inapplicable to
`the circumstances here because Petitioner requests to join an ongoing
`proceeding without expanding the scope of the proceeding and participating
`in a limited understudy role. Mot. 7–8; see Pet. 2. Petitioner reasons that its
`understudy role in joining an instituted review would not impact the Board’s
`finite resources and “is not the type of serial petition to which General
`Plastic applies.” Mot. 8.
`Patent Owner contends that “General Plastic applies to follow-on
`petitions like this one, by the same Petitioner and directed to the same claims
`of the same patent.” Prelim. Resp. 4–5, 6 (General Plastic factor 1). Patent
`Owner argues that Petitioner knew about two of the three asserted prior art
`references when it filed its 1477 Petition, because it asserted them in its prior
`petition, and Petitioner should have known “with reasonable diligence” of
`Hashem and Cioffi, the other two prior art references asserted in the Petition.
`Prelim. Resp. 6–7 (General Plastic factor 2). Patent Owner further argues
`that Petitioner filed the Petition in this proceeding to cure the deficiencies in
`its earlier petition in IPR2018-01477 (General Plastic factor 3) and has not
`provided any explanation for the time elapsed between the petition in
`IPR2018-01477 and the Petition in this proceeding (General Plastic factors
`4 and 5). Prelim. Resp. 7–11. Patent Owner contends that “instituting a new
`proceeding, or adding another party in the case of an ultimate joinder”
`typically reduces efficiency and increases costs. Prelim. Resp. 11 (General
`Plastic factors 6 and 7) (“At the very least, Factors 6 and 7 moderately
`weigh in favor of denial of this IPR. Certainly, it is true that instituting a
`10
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`new proceeding, or adding another party in the case of an ultimate joinder,
`seldom inherently screams greater efficiency or fewer costs. Indeed, it more
`typically indicates the opposite.”).
`Petitioner argues that, even if the General Plastic factors are applied
`to this proceeding, the factors do not weigh against institution because
`Petitioner filed its subsequent petition to seek joinder with an ongoing
`proceeding in the role of an understudy and without seeking to expand the
`scope of the ongoing review. Mot. 11 (“Thus, none of the General Plastic
`factors weigh against institution and joinder in this situation.”); see Mot. 8–
`11 (discussing each General Plastic factor).
`We do not agree with Patent Owner that the General Plastic factors
`weigh against institution in the particular circumstances of this case. Patent
`Owner does not adequately address an important circumstance here—
`Petitioner only seeks to join an ongoing proceeding as an understudy without
`expanding the scope of the review. See generally Prelim. Resp. 6–12. In
`August 2018, both Petitioner and Petitioner HTC submitted separate,
`independent petitions that were filed one day apart. On March 7, 2019, we
`denied Petitioner’s first petition (IPR2018-01477) and a few weeks later on
`April 1, 2019, we instituted an inter partes review based on HTC’s petition
`(IPR2018-01581). A week later on April 8, 2019, Petitioner filed the
`Petition in this proceeding, seeking to join the HTC IPR in a limited
`“understudy” role without expanding the scope of the ongoing proceeding.
`Moreover, in these particular circumstances, we do not agree with
`Patent Owner that Petitioner engaged in “unreasonable delay and
`questionable tactics” (Prelim. Resp. 11) or that “[t]his is an improper and
`belated attempt by Apple to remedy the deficiencies in its first filed petition”
`11
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`(Prelim. Resp. 12). Rather, in view of our decision not to institute a review
`in IPR2018-01477, Petitioner seeks to avail itself of the joinder provision
`provided by statute and regulation without expanding the scope or unduly
`burdening the parties of the ongoing proceeding.
`For these reasons, we do not choose to exercise our discretion under
`§ 314(a) to deny institution of an inter partes review in these particular
`circumstances.
`
`E. Summary
`Having determined the Petition meets the threshold of institution and
`that we will not exercise our discretion to deny institution, we institute an
`inter partes review on the same grounds as the ones on which we instituted
`review in the HTC IPR: whether claim 8 would have been obvious over Li,
`Vijayan, Hashem, and Cioffi. Having instituted review and having
`determined joinder of Petitioner to the HTC IPR is appropriate in these
`circumstances, we grant Petitioner’s Motion for Joinder and terminate the
`newly instituted review of the instant proceeding IPR2019-00959.
`
`
`
`III. ORDER
`For the reasons given, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claim 8 of the ’439 patent is instituted with respect to the only
`ground set forth in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01581 is granted, and Apple Inc. is joined as a petitioner in IPR2018-01581;
`
`
`
`12
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`FURTHER ORDERED that IPR2019-00959 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2018-
`01581;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-01581 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-01581 (Paper 10) remains unchanged;
`FURTHER ORDERED that in IPR2018-01581, the HTC Petitioner
`and Petitioner will file each paper, except for a motion that does not involve
`the other party, as a single, consolidated filing, subject to the Conduct of the
`Proceeding Order issued April 22, 2019 (Paper 12) or otherwise set forth in
`37 C.F.R. § 42.24, and shall identify each such filing as a consolidated filing
`of the petitioners;
`FURTHER ORDERED that subject to Petitioner’s “understudy role”
`as defined herein, the HTC Petitioner and Petitioner shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by the
`HTC Petitioner and Petitioner, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that subject to Petitioner’s “understudy role,”
`the HTC Petitioner and Petitioner shall collectively designate attorneys to
`present at the oral hearing, if requested and scheduled, in a consolidated
`argument;
`FURTHER ORDERED that the case caption in IPR2018-01581 shall
`be changed to reflect joinder of Apple Inc. as a petitioner in accordance with
`the below example; and
`
`
`
`13
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01581.
`
`
`
`
`
`
`
`
`14
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`
`
`
`EXAMPLE CAPTION
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC.
`and APPLE INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-015815
`Patent 7,848,439 B2
`____________
`
`
`
`
`
`
`5 Apple Inc., who filed a petition in IPR2019-00959, has been joined as a
`petitioner in this proceeding.
`
`15
`
`
`
`
`
`IPR2019-00959
`Patent 7,848,439 B2
`
`FOR PETITIONER:
`Adam Seitz
`Paul Hart
`ERISE IP, P.A.
`Adam.seitz@eriseip.com
`Paul.hart@erisiep.com
`
`FOR PATENT OWNER:
`Cyrus Morton
`Bryan Vogel
`Derrick Carman
`Stephanie Diehl
`Shui Li
`Li Zhu
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`sdiehl@robinskaplan.com
`sli@robinskaplan.com
`izhu@robinskaplan.com
`
`
`
`16
`
`
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