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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC
`Petitioner
`v.
`
`
`ECOFACTOR, INC.
`(record) Patent Owner
`
`Inter Partes Review No.: (Unassigned)
`
`Patent No. 8,596,550
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2022-00969
`
`
`
`TABLE OF CONTENTS
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` TABLE OF CONTENTS ............................................................................................ 2
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ............................ 3
`I.
`STATEMENT OF MATERIAL FACTS .......................................................... 4
`II.
`III. REASONS FOR REQUESTED RELIEF ......................................................... 5
`A.
`Legal Standard ........................................................................................ 5
`B.
`The Motion for Joinder is Timely ........................................................... 6
`C.
`The Factors Weighs in Favor of Granting the Motion for Joinder ......... 6
`1.
`Joinder with the ecobee IPR Is Appropriate ........................................... 6
`2.
`Petitioner Does Not Propose New Grounds ........................................... 7
`3.
`Joinder Will Not Negatively Impact the ecobee IPR Trial Schedule 9
`4.
`Procedures to Simplify Briefing and Discovery ................................... 10
`IV. CONCLUSION ............................................................................................... 11
`CERTIFICATE OF SERVICE .................................................................................. 13
`
`
`
`
`
`i
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`
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`Motion for Joinder with
`IPR2022-00969
`
`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Google LLC respectfully submits this Motion for Joinder, with a Petition
`
`(“the Petition”) for inter partes review of U.S. Patent No. 8,596,550 (“the ‘550
`
`patent”), filed concurrently herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Petitioner
`
`requests institution of an inter partes review and joinder with ecobee Technologies
`
`ULC f/k/a ecobee Technologies ULC v. EcoFactor, Inc., IPR2022-00969 (“the
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`ecobee IPR”), which the Board instituted on November 15, 2022, concerning the
`
`same claims (17-23) of the ‘550 patent at issue in the current Petition. This request
`
`is being submitted within the one-month time limit set forth in 37 C.F.R. §
`
`42.122(b).
`
`Petitioner submits that the request for joinder is consistent with the policy
`
`objectives surrounding inter partes reviews, as it is the most expedient way “to
`
`secure the just, speedy, and inexpensive resolution of every proceeding.” See 37
`
`C.F.R. § 42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC.,
`
`IPR2017-00512, Paper No. 12 at 5-6 (June 1, 2017). The present Petition and the
`
`ecobee IPR Petition are substantially identical with respect to the asserted grounds,
`
`are based on the same prior art combinations and supporting evidence, and asserted
`
`against the same claims. Further, upon joining the ecobee IPR, Petitioner will act
`
`as an “understudy” and will not assume an active role unless the current petitioner
`
`
`
`3
`
`
`
`
`
`Motion for Joinder with
`IPR2022-00969
`
`ceases to actively prosecute the instituted IPR. Accordingly, the proposed joinder
`
`will not unduly complicate the ecobee IPR nor adversely impact its schedule. As
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`such, the requested joinder will promote judicial efficiency in determining the
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`Patentability of the ‘550 patent without prejudice to Patent Owner. Moreover,
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`Petitioner has spoken with ecobee’s counsel of record in IPR2022-00969, and
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`ecobee does not oppose this requested joinder.
`
`II.
`
`
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The ‘550 patent has been asserted in the following cases: (i)
`
`Emerson Electric Co. v. EcoFactor, Inc., 1-21-cv-00317 (D. Del.
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`Mar. 1, 2021); (ii) Google, LLC f/k/a Google Inc. v. EcoFactor,
`
`Inc., 3-21-cv-01468 (N.D. Cal. March 1, 2021); (iii) ecobee, Inc. v.
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`EcoFactor, Inc., 1-21-cv-00323 (D. Del. March 2, 2021); (iv)
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`Carrier Global Corp. v. EcoFactor, Inc., 1-21-cv-00328 (D. Del.
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`March 3, 2021); (v) EcoFactor, Inc. v. Google, LLC, 6-22-cv-
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`00350 (W.D. Tex. April 1, 2022); and (vi) Certain Smart
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`Thermostat Systems, Smart HVAC Systems, Smart HVAC Control
`
`Systems, And Components Thereof, Inv. No. 337-TA-1258
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`(“Certain Smart Thermostat Systems").
`
`2.
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`Cases (i), (iv), and (v) have been voluntarily terminated. Case
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`(vi) terminated on July 19, 2022 with a finding of no violation of
`
`
`
`4
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`
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`
`
`
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`Motion for Joinder with
`IPR2022-00969
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`section 337 by any of the Respondents with respect to any
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`asserted claim of the Asserted Patents.
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`3.
`
`ecobee filed a Petition for inter partes review of claim 17-23 of
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`the ‘550 patent on May 5, 2022. The Board instituted review of
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`the ‘550 patent as to claims 17-23 and all grounds on November
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`15, 2022 in IPR2022-00969.
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`4.
`
`The present Petition asserts the same ground of unpatentability
`
`against the same claims, and relies on the same expert declaration
`
`and evidence as asserted and relied upon on in the ecobee IPR.
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`III. REASONS FOR REQUESTED RELIEF
`
`A.
`
`Legal Standard
`
`The Board may grant a motion for joining an inter partes review petition
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`with another inter partes review proceeding. 35 U.S.C. § 315(c). A petitioner may
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`request joinder up to one month after the institution date of the proceeding to
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`which joinder is requested, without prior authorization. 37 C.F.R. § 42.122(b). The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
`
`explains what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) addresses specifically how briefing and discovery may be
`
`
`
`5
`
`
`
`
`
`
`
`Motion for Joinder with
`IPR2022-00969
`
`simplified. Central Security Group – Nationwide, Inc. d/b/a Alert360 v.
`
`Ubiquitous Connectivity, LP, IPR2019-01610, Paper No. 12, p. 6.
`
`B.
`
`The Motion for Joinder is Timely
`
`Pursuant to 37 C.F.R. § 42.122(b), joinder can be requested without prior
`
`authorization no later than one month after the institution date of the proceeding to
`
`which joinder is requested. This motion is being filed no later than one month
`
`from the November 15, 2022, institution date of IPR2022-00969. This motion is
`
`timely.
`
`
`
`C.
`
`The Factors Weighs in Favor of Granting the Motion for Joinder
`
`All four factors weigh in favor of granting the motion for Petitioner. The
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`Petition is substantively identical to the petition in the ecobee IPR. Petitioner does
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`not present any new grounds of unpatentability. Additionally, as all issues are
`
`substantively identical and Petitioner will act as an “understudy,” joinder will have
`
`no impact on the pending schedule of the ecobee IPR. See LG v. Memory
`
`Integrity, LLC., IPR2015-01353, Paper No. 11, p. 6 (granting motion for joinder
`
`where petitioner requested an “understudy” role). Moreover, the briefing and
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`discovery will be simplified by resolving all issues in a single proceeding.
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`Accordingly, joinder is appropriate.
`
`1.
`
`Joinder with the ecobee IPR Is Appropriate
`
`The Board “routinely grants motions for joinder where the party seeking
`
`6
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`
`
`
`
`
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`Motion for Joinder with
`IPR2022-00969
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`joinder introduces identical arguments and the same grounds raised in [an] existing
`
`proceeding.” Central Security, IPR2019-01610, Paper No. 12, p. 6 (internal
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`citations omitted). Here, joinder with the ecobee IPR is appropriate because the
`
`present Petition introduces the same arguments and the same grounds raised in the
`
`existing ecobee IPR (i.e., challenges the same claims of the same patent, relies on
`
`the same expert declaration, and is based on the same grounds and combinations of
`
`prior art submitted in the granted ecobee Petition). Although there are minor
`
`differences related to the mandatory notices and grounds for standing, there are no
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`substantive changes to the facts, citations, evidence, or arguments relied upon to
`
`assert unpatentability of the claims relative to the ecobee Petition. Exhibit 1022
`
`(redline comparison of petitions). Because these proceedings are substantively
`
`identical, good cause exists for joining this proceeding with the ecobee IPR so that
`
`the Board, consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just,
`
`speedy, and inexpensive resolution” of the present Petition and ecobee’s Petition in
`
`a single proceeding, as compared with two separate proceedings.
`
`Petitioner Does Not Propose New Grounds
`2.
`As noted above, the Petition challenges the same claims of the ‘550 patent,
`
`relying on the same expert declaration, and on the same grounds and combinations
`
`of prior art submitted in the ecobee Petition. See LG, IPR2015-01353, Paper No.
`
`11 at 5-6 (granting institution of IPR and motion for joinder where petitioner relied
`
`
`
`7
`
`
`
`
`
`Motion for Joinder with
`IPR2022-00969
`
`“on the same prior art, same arguments, and same evidence, including the same
`
`
`
`8
`
`
`
`
`
`Motion for Joinder with
`IPR2022-00969
`
`
`expert and a substantively identical declaration”); see also Central Security,
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`IPR2019-01610, Paper No. 12, p. 8 (granting motion for joinder where the Petitions
`
`challenge the same claims on the same grounds using the same prior art).
`
`3.
`
`Joinder Will Not Negatively Impact the ecobee IPR
`Trial Schedule
`Joinder should have no meaningful impact on the ecobee IPR trial schedule
`
`because the present Petition presents no new issues or grounds of unpatentability.
`
`See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”). Further,
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`Petitioner explicitly consents to the existing IPR2022-00969 trial schedule. There
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`are no new issues for the Board to address, and Patent Owner will not be required
`
`to present any additional responses or arguments upon joinder. It is noted that, in
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`the ecobee IPR (IPR2022-00969), the Patent Owner filed a Patent Owner’s
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`Preliminary Response, on August 17, 2022, and already presented certain
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`arguments against the same grounds presented in the present Petition. Patent
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`Owner is under no obligation to file a Preliminary Response in response to the
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`Present Petition. Presumably, Patent Owner has also already been actively
`
`analyzing the same ground presented in the present Petition in connection with its
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`Patent Owner’s Response due in the ecobee IPR.
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`
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`9
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`
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`Motion for Joinder with
`IPR2022-00969
`
`Accordingly, joinder with the ecobee IPR does not unduly burden or
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`negatively impact the trial schedule.
`
`Procedures to Simplify Briefing and Discovery
`4.
`Petitioner explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Petitioner explicitly agrees, upon joining the
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`ecobee IPR, that the following conditions shall apply so long as the current lead
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`petitioner in IPR2022-00969 does not enter into a settlement of its dispute with
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`Patent Owner and remains an active party:
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`a) Petitioner shall not make any substantive filings and shall be
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`bound by the filings of ecobee, unless a filing concerns
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`termination and settlement;
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`b) Petitioner shall not present any argument or make any presentation
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`at oral hearing;
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`c) Petitioner shall not seek to cross-examine or defend the
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`cross- examination of any witness; and
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`d) Petitioner shall not seek discovery from Patent Owner.
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`
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`See, e.g., Central Security, IPR2019-01610, Paper No. 12, p. 8 (“Petitioner avers it
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`will take an ‘understudy’ role in the [joined] IPR by consolidating all filings,
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`refraining from advancing new arguments, binding itself to any discovery
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`
`
`10
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`
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`Motion for Joinder with
`IPR2022-00969
`
`agreements, and limiting its deposition time to the time already allotted . . . Thus,
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`joinder would result in the just, speedy, and inexpensive resolution of the instant
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`Petition as well as the petition filed in the [joined] IPR.”). Unless and until the
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`current petitioner ceases to participate in the instituted IPR proceeding, Petitioner
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`will not assume an active role therein.
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`Thus, by Petitioner accepting an “understudy” role, Patent Owner and the
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`current petitioner in the ecobee IPR can comply with the existing trial schedule
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`without requiring any duplicative efforts by the Board or the Patent Owner. These
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`steps will minimize any potential complications or delay that potentially may result
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`by joinder. Petitioner is further amenable to any other reasonable conditions the
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`Board deems necessary.
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`IV. CONCLUSION
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`Based on the factors discussed above, Petitioner respectfully requests that
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`the Board grant the Petition and grant this motion for joinder with the ecobee IPR.
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`Date: December 15, 2022
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`Respectfully submitted,
`
`/Matthew A. Smith/ (RN 49,003)
`Matthew A. Smith
`SMITH BALUCH LLP
`700 Pennsylvania Ave. SE
`Second Floor
`Washington, D.C. 20003
`smith@smithbaluch.com
`
`Counsel for Petitioner Google LLC
`
`11
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`
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`Motion for Joinder with
`IPR2022-00969
`
`12
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing MOTION FOR
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`JOINDER TO INTER PARTES REVIEW IPR2022-00969, was served by
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`Priority Mail Express on December 15, 2022, on the Patent Owner’s counsel of
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`record at the United States Patent & Trademark Office having the following
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`address:
`
`Tanner IP, PLLC
`149 West Gilpin Avenue
`Norfolk, VA 23503
`UNITED STATES
`
`Courtesy copies of the above-mentioned documents were also provided to
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`counsel of record for Patent Owner in IPR2022-00969 via email correspondence
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`to the following recipients:
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`pwang@raklaw.com
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`jlink@raklaw.com
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`rmirzaie@raklaw.com
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`kdavis@raklaw.com
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`rak_ecofactor@raklaw.com
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`Date: December 15, 2022
`
`/Matthew A. Smith/
`Matthew A. Smith
`(Reg. No. 49,003)
`
`
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