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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
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`Case IPR2020-01344
`Patent RE46,116
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`PATENT OWNER’S CONSOLIDATED RESPONSE TO PETITIONER’S
`OPENING BRIEF ON COLLATERAL ESTOPPEL
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`PETITIONER’S BRIGHT LINE RULE FOR FINALITY IS
`WRONG .......................................................................................................... 1
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`PETITIONER’S BRIGHT LINE RULE FOR IDENTITY HAS
`BEEN SQUARELY REJECTED BY THE FEDERAL CIRCUIT ................ 3
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`III. SEVERAL ISSUES ARE IDENTICAL AND COULD BE
`RESOLVED VIA COLLATERAL ESTOPPEL ............................................ 3
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`A.
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`Conception and Reduction to Practice .................................................. 3
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`B. Anticipation and Obviousness Grounds ................................................ 5
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`i
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`TABLE OF AUTHORITIES
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`Cases
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`Page
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`B & B Hardware, Inc. v. Hargis Indus., Inc.,
`135 S. Ct. 1293 (2015) ............................................................................................ 5
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`Mobile Tech, Inc. v. Invue Security Prods. Inc.,
`IPR2018-00481, Paper 29 (PTAB July 16, 2019) .................................................. 3
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`Nestlé USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2018) .............................................................................. 3
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`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .............................................................................. 3
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`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc.,
`170 F.3d 1373 (Fed. Cir. 1999) .............................................................................. 2
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`Trustid, Inc. v. Next Caller Inc.,
`2021 U.S. Dist. LEXIS 134010 .............................................................................. 2
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`Statutes
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`35 U.S.C. § 318 .......................................................................................................... 2
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`ii
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`Petitioner portrays the application of collateral estoppel as a series of bright
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`line rules that come out in its favor. This is incorrect. Whether the prior, related
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`IPRs are sufficiently final so as to trigger collateral estoppel is not nearly so clear.
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`Petitioner’s citations to an unrelated statute and non-binding district court decision
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`(which itself admits of ambiguity), do not support Petitioner’s bright line.
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`Some issues are the same and could be decided on the basis of collateral
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`estoppel. For example, on conception and reduction to practice, Petitioner does not
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`challenge conception, and does not argue that the issue of constructive reduction to
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`practice is any different than in the prior IPRs.
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`Nonetheless, because of ambiguity in the law Patent Owner requests that the
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`Board not rely solely on collateral estoppel and, as other Board panels have done,
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`also address the arguments on the merits and/or substantively adopt its prior
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`findings where appropriate. And whether or not collateral estoppel applies, the
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`Board may and should view the prior Final Written Decisions as highly relevant,
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`persuasive authority.
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`I.
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`PETITIONER’S BRIGHT LINE RULE FOR FINALITY IS
`WRONG
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`Petitioner argues that because it appealed the prior IPRs, they are not final
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`and cannot be the basis for collateral estoppel. Pet. Br., 2-4. This bright line rule
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`is wrong. Such a rule would mean a party could always prevent the application of
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`collateral estoppel simply by appealing a related decision. That runs counter to
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`1
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`general principles and purposes of collateral estoppel. E.g., Pharmacia & Upjohn
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`Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1381 (Fed. Cir. 1999) (“The law is well
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`settled that the pendency of an appeal has no effect on the finality or binding effect
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`of a trial court's holding.”).
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`Petitioner cites 35 U.S.C. § 318 for the proposition that IPRs are not final
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`until the time for appeals has expired or any appeals have terminated. Pet. Br., 3.
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`But the language Petitioner cites simply explains when the Director should issue a
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`certificate cancelling or confirming claims. 35 U.S.C. § 318(b). Clearly a
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`certificate does not issue from an IPR until appeals have been exhausted, but the
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`statute says nothing about the finality of fully litigated and decided issues for the
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`purpose of collateral estoppel.
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`Petitioner also cites the non-binding Trustid case from the District of
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`Delaware, for an apparent bright line rule that “the Board’s final written decisions
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`‘do[] not have preclusive effect until that decision is either affirmed or the parties
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`waive their appeal rights.” Pet. Br., 3 (quoting 2021 U.S. Dist. LEXIS 134010, at
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`*8-9 (D. Del. July 6, 2021)). But Petitioner did not provide the whole quotation—
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`the District of Delaware acknowledged ambiguity when it found Federal Circuit
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`case law only “suggests” such a rule. 2021 U.S. Dist. LEXIS 134010, at *8-9.
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`Beyond the one (inapplicable) statute and one (misquoted and non-binding)
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`district court case, Petitioner only provides a list of “see” cites. Pet. Br. 3-4.
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`2
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`Clearly, no such bright line rule exists. Rather, as Patent Owner explained, while
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`there is some ambiguity the weight of authority suggests the Final Written
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`Decisions in the prior IPRs can trigger collateral estoppel. PO Br., 1-5. Indeed,
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`the Board itself has stated that “[t]he fact that an appeal is pending does not
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`prevent the application of collateral estoppel.” Mobile Tech, Inc. v. Invue Security
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`Prods. Inc., IPR2018-00481, Paper 29 at 33 (PTAB July 16, 2019) (but reaching
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`the merits out of an “abundance of caution”).
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`II.
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`PETITIONER’S BRIGHT LINE RULE FOR IDENTITY HAS BEEN
`SQUARELY REJECTED BY THE FEDERAL CIRCUIT
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`Petitioner proposes another (incorrect) bright line rule that prior decisions on
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`different patents or claims cannot trigger collateral estoppel. Pet. Br., 4. But this
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`has been squarely rejected by the Federal Circuit. Nestlé USA, Inc. v. Steuben
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`Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018). “Our precedent makes clear
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`that collateral estoppel is not limited ‘to patent claims that are identical. Rather, it
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`is the identity of the issues that were litigated that determines whether collateral
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`estoppel should apply.’” Id. (quoting Ohio Willow Wood Co., 735 F.3d at 1342)
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`(emphasis in original).
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`III. SEVERAL ISSUES ARE IDENTICAL AND COULD BE RESOLVED
`VIA COLLATERAL ESTOPPEL
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`A. Conception and Reduction to Practice
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`Petitioner does not challenge conception in the present IPRs, and in its
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`3
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`estoppel brief, does not argue that constructive reduction to practice presents any
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`new issues. Pet. Br., 5-7. These issues are thus clearly ripe for collateral estoppel.
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`Regarding actual reduction to practice, Petitioner argues that it requires
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`“limitation-by-limitation performance of the claimed method.” Id., 6. Patent
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`Owner submitted limitation-by-limitation analysis specifically for the patents
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`challenged in the current IPRs. E.g., IPR2020-01341, Paper 67 at 12-13; Ex-2118,
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`App’x A-B. But Petitioner submitted a declaration from its expert that
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`incorporated a limitation-by-limitation rebuttal of the prior, related patents. E.g.,
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`IPR2020-01341, Paper 51 (citing Ex-1755, which resubmits claim-by-claim
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`rebuttals for the prior, related patents). Either Petitioner thought this limitation-by-
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`limitation analysis of the prior, related patents was sufficient (in which case
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`Petitioner’s present estoppel argument is contradictory), or Patent Owner’s
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`evidence on the current patents stands unrebutted and the Board should reach that
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`decision on the merits.
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`Regarding in vivo testing, as explained in Patent Owner’s brief, the issues on
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`reduction to practice are nearly identical to those litigated and adjudicated in the
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`prior IPRs, with the possible exception being whether actual reduction to practice
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`of the method claims requires that the testing have been done in vivo, rather than in
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`a heart model. PO Br., 7-8. On this particular issue, the Board at a minimum
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`should view its prior Final Written Decisions as highly relevant, persuasive
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`4
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`authority and find in Patent Owner’s favor.
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`Finally, Petitioner argues that the Board’s prior decisions “provide no basis”
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`for determining whether the rapid exchange GuideLiner prototypes were tested to
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`meet their intended purpose of provided increased backup support. Pet. Br., 6-7.
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`Petitioner is wrong. While the particular patents and claims are different in the
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`present IPRs, the issue of testing for increased backup support is materially
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`identical to the prior IPRs, in which the Board already found the prototypes were
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`tested and understood to work for their intended purpose of providing increased
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`backup support. E.g., IPR2020-00126, Paper 129 at 52-62.
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`B. Anticipation and Obviousness Grounds
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`Patent Owner does not dispute that there are some new issues in the present
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`IPRs that should be analyzed on the merits.
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`However, on the issue of whether Petitioner should be permitted tore-argue
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`issues that the Board found unpersuasive in the prior IPRs (see Pet. Br., 8), this is
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`exactly the kind of second chance litigation that collateral estoppel is meant to
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`prevent. E.g., B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303
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`(2015)) (“a losing litigant deserves no rematch after a defeat fairly suffered”). The
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`Board should not indulge this second chance litigation tactic, and should adopt its
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`prior decisions where appropriate, and at a minimum view its prior decisions as
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`highly relevant, persuasive authority.
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`5
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`Dated: November 17, 2021
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`Respectfully submitted,
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`/J. Derek Vandenburgh /
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`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
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`Lead Counsel for Patent Owner
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`6
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on November 17, 2021, a true and correct copy of the
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`foregoing Patent Owner’s Consolidated Response to Petitioner’s Opening Brief on
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`Collateral Estoppel was served via electronic mail upon the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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`7
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