UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF CHRISTINE
`M. MORGAN PURSUANT TO 37 C.F.R. § 42.10(c)
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`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION OF CHRISTINE
`M. MORGAN PURSUANT TO 37 C.F.R. § 42.10(c)
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c), and as authorized in the Board’s Notice of
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`I.
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`Filing Date (Paper 5), Petitioner Qualcomm Incorporated (“Qualcomm” or
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`“Petitioner”) respectfully requests the pro hac vice admission of Christine M.
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`Morgan in this proceeding.
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`II.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE
`The Board may recognize counsel pro hac vice subject to the condition that
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`lead counsel be a registered practitioner and upon a showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter of the proceeding. See 37 C.F.R. 42.10(c); see also Unified Patents v. Parallel
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`Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013). The following facts establish
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`good cause for the Board to recognize Christine M. Morgan pro hac vice in this
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`proceeding:
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`A. Petitioner’s lead counsel, Jonathan I. Detrixhe, is a registered
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`practitioner. Petitioner’s back-up counsel, Peter J. Chassman, is also a registered
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`practitioner.
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`B. Accompanying this motion as Exhibit 1031 is a Declaration of
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`Christine M. Morgan in Support of this Motion for Pro Hac Vice Admission.
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`C. Ms. Morgan is a partner with the law firm Reed Smith LLP and a
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`member in good standing of the State Bar of California. See Exhibit 1031 ¶ 2.
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`D. Ms. Morgan is admitted to practice before the United States District
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`Court for the Northern of California, the United States District Court for the Central
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`District of California, the United States District Court for the Eastern District of
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`Texas, and the United States Court of Appeals for the Federal Circuit. Id.
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`E. Ms. Morgan has never been suspended or disbarred from practice
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`before any court or administrative body. Id. ¶ 3.
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`F.
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`No court or administrative body has imposed sanctions or contempt
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`citations on Ms. Morgan. Id. ¶ 4.
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`G. No court or administrative body has denied an application for
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`admission to practice filed by Ms. Morgan. Id. ¶ 5.
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`H. Ms. Morgan is an experienced litigation attorney. Ms. Morgan has been
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`practicing law since 1993 and has over 15 years of experience litigating patent
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`infringement cases. Id. ¶ 6. Ms. Morgan has litigated patent cases in many different
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`district courts across the United States and before the International Trade
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`Commission (“ITC”). Ms. Morgan’s district court patent litigation experience
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`includes arguing Markman hearings, dispositive motions, and many other patent-
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`related hearings. In addition, Ms. Morgan has participated in patent trials in several
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`different venues, including the Northern District of California, the Eastern District
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`of Texas, the Eastern District of Virginia, and the ITC. Among other responsibilities,
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`Ms. Morgan’s involvement in those trials included presenting lay and technical
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`expert witness testimony. Id. Ms. Morgan also presented oral argument in the
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`following two Covered Business Method Review trials: Miami International
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`Holdings, Inc. et al v. Nasdaq, Inc. et al, CBM2018-00030, 00032. Id.
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`I. Ms. Morgan has also appeared before the Court of Appeals for the
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`Federal Circuit in connection with appeals of judgments entered in district court
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`patent litigation, and was principal author of the appellate briefs in two such matters.
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`Id. at ¶ 7.
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`J. Ms. Morgan has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
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`title 37 of the Code of Federal Regulations. Id. ¶ 8.
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`K. Ms. Morgan understands that she will be subject to the USPTO Code
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`of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 9.
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`L. Ms. Morgan has an established familiarity with U.S. Patent No.
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`8,265,096 (“the ’096 Patent”) and the subject matter of this inter partes review
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`proceeding. Ms. Morgan has gained this familiarity through reviewing papers filed
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`in this proceeding and through her role as counsel for Petitioner’s customers Dell
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`Technologies Inc., Dell Inc., and EMC Corporation (collectively, “Dell”), in the co-
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`pending district court proceeding captioned UNM Rainforest Innovations v. Dell
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`Technologies Inc. et al., No. 6:20-cv-00468 (W.D. Tex.) (“the Dell litigation”),
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`which also involves the ’096 Patent.
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`M. Ms. Morgan is in the process of seeking pro hac vice admission in
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`IPR2021-00377 and IPR2021-00582 directed to two other patents asserted in the
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`Dell litigation, and IPR2021-00734, IPR2021-00739, and IPR2021-00741 brought
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`by Zyxel Communications Corporation. Id. ¶ 11. Ms. Morgan has previously sought
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`pro hac vice admission in CBM2018-00029, CBM2018-00030, and CBM2018-
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`00032.
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`N.
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`This motion was filed no sooner than 21 days after service of the
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`Petition in this proceeding.
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`O.
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`Counsel for Patent Owner has indicated that Patent Owner does not
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`oppose this motion.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests pro hac vice
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`admission of Ms. Morgan in this proceeding.
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`IV. PETITIONER’S UPDATED EXHIBIT LIST
`Pursuant to 37 C.F.R. § 42.63(e), Petitioner hereby submits its current exhibit
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`list:
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`- 5 -
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`
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Description
`U.S. Patent No. 8,265,096 (“the ’096 patent”)
`Declaration of Dr. Sumit Roy (“Roy”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Eleventh Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Dec. 10, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL., FUNDAMENTALS OF
`WIMAX (2007)
`Five Criteria Statement for P802.16m PAR Proposal, IEEE 802.16-
`06/055r3 (Nov. 15, 2006)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Oct. 19, 2007)
`Listing of Challenged ’096 Patent Claims
`U.S. Provisional App. No. 60/929,798
`Excerpts from ’096 Patent File History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20-cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69 (“Markman Order”)
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`U.S. Provisional Application No. 60/956,031
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`Ex. 1014
`Ex. 1015 WIPO Handbook on
`Industrial Property
`Information and
`Documentation, “Examples and Kinds of Patent Documents” (May
`2016)
`U.S. Pub. No. 2007/0155387 A1 (“Li”)
`U.S. Pub. No. 2007/0104174 A1 (“Nystrom”)
`U.S. Pub. No. 2008/0095195 (“Ahmadi”)
`Excerpts from William Stallings, WIRELESS COMMUNICATIONS AND
`NETWORKS (2D ED. 2005)
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`
`Ex. 1004
`
`Ex. 1005
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`Ex. 1006
`
`Ex. 1007
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`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
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`Ex. 1012
`Ex. 1013
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`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
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`Ex. 1020
`Ex. 1021
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`
`(“Talukdar
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`- 6 -
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`of
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`Description
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (November 2005)
`Ex. 1023 Mohammad Azizul Hasan, Performance Evaluation
`WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)
`U.S. Patent No. 7,710,910 B2 (“Ode”)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4 (Jan.
`12, 2007)
`U.S. Pub. No. 2004/0037215 A1 (“Hwang”)
`Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile
`Systems (IEEE, Vol. 4, No. 2, Mar. 2005)
`Declaration of Dr. Robert Akl
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post Grant (available at:
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-
`slip-after-ptab-discretionary-denials/)
`Declaration of Jonah D. Mitchell in Support of Petitioner’s Motion
`for Pro Hac Vice Admission
`Declaration of Christine M. Morgan in Support of Petitioner’s
`Motion for Pro Hac Vice Admission
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`Exhibit
`Ex. 1022
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`Ex. 1024
`Ex. 1025
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`Ex. 1026
`Ex. 1027
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`Ex. 1028
`Ex. 1029
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`Ex. 1030
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`Ex. 1031
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`
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`Dated: September 27, 2021
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`Respectfully submitted,
`
`
`/Jonathan I. Detrixhe/
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`
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`Back-up Counsel
`Jonah D. Mitchell (will seek pro hac
`vice admission)
`Christine M. Morgan (will seek pro hac
`vice admission)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Ismail C. Kuru (will seek pro hac vice
`admission)
`Reed Smith LLP
`10 S. Wacker Dr. 40th Floor
`Chicago, IL, 60606
`Tel: 312.207.1000
`Fax: 312.207.6400
`ikuru@reedsmith.com
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`Attorneys for QUALCOMM
`Incorporated
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`CERTIFICATE OF SERVICE
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`- 8 -
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`IPR2021-00375
`Petitioner’s Motion for PHV Admission of Christine M. Morgan
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
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`that on September 27, 2021, a complete copy of Petitioner’s Motion For Pro Hac
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`Vice Admission Of Christine M. Morgan Pursuant To 37 C.F.R. § 42.10(c) was filed
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`electronically through the Patent Trial and Appeal Board’s PTABE2E System and
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`provided, via electronic service, to the Patent Owner by serving the correspondence
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`address of record.
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`Dated: September 27, 2021
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`
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`Respectfully submitted,
`/ Jonathan I. Detrixhe /
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
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`Counsel for Petitioner
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