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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 CORPORATION.
`Petitioner
`v.
`DEMARAY LLC
`Patent Owner
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`Patent No. 7,544,276
`IPR2021-01030
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`Petitioner’s Motion for Joinder of IPR2021-00103
`Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
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`I.
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`INTRODUCTION
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`Intel Corporation files the present petition for inter partes review IPR2021-
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`01030 (the “Intel IPR”) and moves for joinder of IPR2021-00103, filed by Applied
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`Materials, Inc. (the “Applied IPR”). The Intel IPR is identical to the Applied IPR in
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`all substantive respects, includes identical exhibits, and relies upon the same expert
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`declarants. Petitioner does not seek to alter the grounds upon which the Board has
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`already instituted the Applied IPR, and seeks no change in the existing schedule for
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`that IPR proceeding. Petitioner respectfully requests an opportunity to join with the
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`Applied IPR solely as an “understudy,” where Petitioner would only assume an
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`active role in the event Applied Materials settles with Patent Owner Demaray LLC
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`and moves to terminate the Applied IPR.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`Demaray is the owner of U.S. Patent No. 7,544,276 (the “’276 Patent”) and
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`has asserted infringement of this patent in the following cases: Demaray LLC v.
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`Samsung Electronics Co., Ltd. et al., Case No. 6-20-cv-00636 (W.D. Tex.)
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`(“Samsung Litigation”); Demaray LLC v. Intel Corporation, Case No. 6-20-cv-
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`00634 (W.D. Tex.) (“Intel Litigation”); Applied Materials, Inc. v. Demaray LLC,
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`Case No. 5-20-cv-05676 (N.D. Cal.) (terminated); Applied Materials, Inc. v.
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`Demaray LLC, 5-20-cv-09341 (N.D. Cal). The ’276 Patent is also at issue in Applied
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`1
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`Materials, Inc. v. Demaray LLC, IPR2021-00105 (PTAB) (institution denied under
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`314(a)).
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`On October 23, 2020, Applied Materials filed a Petition requesting an inter
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`partes review of claims 1–13 of the ’276 Patent. Demaray filed a Preliminary
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`Response to the Petition, Petitioner filed a Reply, and Demaray filed a Sur-reply.
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`Applied Materials also filed a Petitioner’s Notice Regarding Multiple Petitions to
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`which Demaray filed a Response. The Board instituted the Applied IPR on May 11,
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`2021.
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`III. DISCUSSION
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`Petitioner respectfully requests that the Board exercise its discretion to grant
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`joinder of the Intel IPR and the Applied IPR proceedings pursuant to 35 U.S.C. §
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`315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). In support of this motion,
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`Petitioner proposes consolidated filings and other procedural accommodations
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`designed to streamline the proceedings.
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`A. Reasons Why Joinder Is Appropriate
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`Joinder is appropriate in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the Intel IPR is substantively
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`identical to the corresponding Applied IPR in an effort to avoid multiplication of
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`issues before the Board. Given the duplicative nature of these petitions, joinder of
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`2
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`the related proceedings is appropriate. Further, Petitioner will agree to consolidated
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`filings and discovery, and procedural concessions, which Applied Materials does not
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`oppose.
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`1.
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`Substantively Identical Petitions
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`Petitioner represents that the Intel IPR is identical to the Applied IPR in all
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`substantive respects. It includes identical grounds, analysis, and exhibits and relies
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`upon the same expert declarants and declarations. Accordingly, if instituted,
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`maintaining the Intel IPR proceeding separate from that of Applied Materials would
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`entail needless duplication of effort.
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`2.
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`Consolidated Filings and Discovery
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`Because the grounds of unpatentability in the Intel IPR and Applied IPR are
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`the same, the case is amenable to consolidated filings. Petitioner will agree to
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`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for Observation
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`on Cross Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
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`Opposition to Motion to Exclude Evidence and Reply). Specifically, Petitioner will
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`agree to incorporate its filings with those of Applied Materials in a consolidated
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`filing, subject to the ordinary rules for one party on page limits. Applied Materials
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`and Petitioner will be jointly responsible for the consolidated filings.
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`3
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`Petitioner agrees not to be permitted any arguments separate from those
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`advanced by Petitioner and Applied Materials in the consolidated filings. These
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`limitations avoid lengthy and duplicative briefing.
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`Consolidated discovery is also appropriate given that Petitioner and Applied
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`Materials are using the same expert declarants who has submitted the same, identical
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`declarations in the two proceedings. Petitioner and Applied Materials will designate
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`an attorney to conduct the cross-examination of any given witness produced by
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`Demaray and the redirect of any given witness produced by Petitioner or Applied
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`Materials within the timeframe normally allotted by the rules for one party.
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`Petitioner will not receive any separate cross-examination or redirect time.
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`Petitioner will agree to the foregoing conditions regarding consolidated filings and
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`discovery even in the event other IPRs filed by other, third-party petitioners are
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`joined with the Applied IPR.
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`B. No New Grounds Of Patentability
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`The Intel IPR raises no new grounds of unpatentability from those of the
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`Applied IPR because, in fact, the petitions are identical.
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`C. No Impact On IPR Trial Schedule
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`The small difference between the filing date of the Intel IPR and the Applied
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`IPR is without consequence should the proceedings be joined. The trial schedule for
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`the Applied IPR would not need to be delayed to effect joinder based on Demaray’s
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`4
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
`preliminary response and later-filed Intel IPR. The joint proceeding would allow
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`the Board and parties to focus on the merits in one consolidated proceeding without
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`unnecessary duplication of effort, and in a timely manner.
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`D. Briefing And Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because Petitioner seeks an order
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`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and Applied
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`Materials will engage in consolidated filings and discovery, which will simplify the
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`briefing and discovery process.
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`E. No Prejudice To Demaray If Proceedings Are Joined
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`Petitioner proposes joinder to streamline the proceedings and reduce the costs
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`and burdens on the parties. Petitioner believes joinder will achieve these goals for
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`several reasons. First, joinder will most certainly decrease the number of papers the
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`parties must file, by eliminating a duplicative proceeding. Second, joinder will also
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`reduce by half the time and expense for depositions and other discovery required in
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`separate proceedings. Third, joinder creates case management efficiencies for the
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`Board and parties without any prejudice to Demaray.
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`IV. PROPOSED ORDER
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`Petitioner proposes a joinder order for consideration by the Board as follows,
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`which Applied Materials does not oppose:
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`5
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
` If review is instituted on any grounds in the Applied IPR, the Intel IPR
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`will be instituted and will be joined with the Applied IPR on the same
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`grounds. Grounds not instituted because the Applied IPR failed to
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`establish a reasonable likelihood of prevailing, if any, will be similarly
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`denied in the Intel IPR.
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` The scheduling order for the Applied IPR will apply for the joined
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`proceedings.
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` Throughout the proceedings, Applied Materials and Intel will file
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`papers as consolidated filings, except for motions that do not involved
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`the other party, in accordance with the Board’s established rules
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`regarding page limits. So long as they both continue to participate in
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`the joined proceedings, Applied Materials and Petitioner will identify
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`each such filing as Consolidated Filing and will be responsible for
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`completing all consolidated filings.
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` Applied Materials and Petitioner will designate an attorney to conduct
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`the cross examination of any given witness produced by Demaray and
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`the redirect of any given witness produced by Applied Materials or
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`Petitioner within the timeframe normally allotted by the rules for one
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`party. Petitioner will not receive any separate cross-examination or
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`redirect time.
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`6
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
` Demaray will conduct any cross examination of any given witness
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`jointly produced by Applied Materials or Petitioner and the redirect of
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`any given witness produced by Demaray within the timeframe normally
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`allotted by the rules for one cross-examination or redirect examination.
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`V. CONCLUSION
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`For the foregoing reasons, if the Director institutes inter partes review,
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`Petitioner respectfully requests that the Board grant joinder of the Intel IPR and the
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`Applied IPR proceedings.
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`Dated: June 4, 2021
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`By:
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`Respectfully submitted,
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`/David L. Cavanaugh/
`David L. Cavanaugh (Reg. No. 36,476)
`Counsel for Petitioner
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`7
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`Motion for Joinder of IPR2021-00103
`Patent No. 7,544,276
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`CERTIFICATE OF SERVICE
`I hereby certify that on June 4, 2021, I caused a true and correct copy of the
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`foregoing “PETITIONER’S MOTION FOR JOINDER OF IPR2021-00103
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`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)” to be served
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`via express mail on the Patent Owner at the following correspondence address of
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`record as listed on PAIR:
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`HAYNES AND BOONE, LLP
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`IP Section
`2323 Victory Avenue
`Suite 700
`Dallas TX 75219
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`By:
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`/David L. Cavanaugh/
`David L. Cavanaugh (Reg. No.
`36,476)
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