`Trials@uspto.gov
`Entered: November 17, 2016
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`SOCKEYE LICENSING TX, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01053
`Patent 8,879,987 B1
`_______________
`
`
`
`Before BRYAN F. MOORE, ROBERT J. WEINSCHENK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2016-01053
`Patent 8,879,987 B1
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`
`INTRODUCTION
`I.
`RPX Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–5, 12–17, and 19 of U.S.
`Patent No. 8,879,987 B1 (Ex. 1101, “the ’987 patent”). Sockeye Licensing
`TX, LLC (“Patent Owner”) did not file a preliminary response to the
`Petition. An inter partes review may not be instituted “unless . . . 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).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1–5, 12–17,
`and 19 of the ’987 patent. Accordingly, we institute an inter partes review
`as to claims 1–5, 12–17, and 19 of the ’987 patent on the grounds specified
`below.
`Related Proceedings
`A.
`The parties indicate that the ’987 patent is the subject of several cases
`in the United States District Court for the Northern District of Illinois.
`Pet. 1–2; Paper 5, 2–3. The parties also indicate that the following petitions
`for inter partes review are related to this case:
`Case No.
`Involved U.S. Patent No.
`IPR2016-00985
`U.S. Patent No. 8,879,987
`IPR2016-00989
`U.S. Patent No. 8,135,342
`IPR2016-01052
`U.S. Patent No. 8,135,342
`IPR2016-01054
`U.S. Patent No. 8,879,987
`Pet. 1; Paper 5, 2.
`The ’987 Patent
`B.
`The ’987 patent relates to establishing a connection between a
`wireless device and a peripheral device. Ex. 1101, col. 1, ll. 25–30. The
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`’987 patent explains that, although previous products allowed a wireless
`device to project images onto a wall or nearby surface, those products did
`not allow a wireless device to transmit browser-based content to a full-size
`digital display device, such as a computer monitor. Id. at col. 2, ll. 1–9. To
`address this deficiency, the ’987 patent describes connecting a wireless
`device to one or more peripheral devices, such as a desktop monitor or
`printer, using one or more wireline or wireless connections. Id. at col. 6, ll.
`55–63. The wireless device uses a cell phone network and Transmission
`Control Protocol/Internet Protocol (“TCP/IP”) network to access one or
`more browser-based applications. Id. at col. 6, ll. 63–67. The data received
`by the wireless device from the browser-based applications is communicated
`through a peripheral communications interface to the one or more peripheral
`devices. Id. at col. 7, ll. 9–18.
`Illustrative Claim
`C.
`Claims 1 and 12 are independent. Claim 1 is reproduced below.
`1. A communication system for facilitating user
`connectivity, said system comprising:
`a communications network, said network comprising at
`least one server with user information thereon, said user
`information being remote to a user;
`a peripheral device, said peripheral device being
`associated with said user;
`a wireless device, said wireless device wirelessly
`interconnected within said communications network to said
`server and said peripheral device; and
`said user controlling said peripheral device from said
`wireless device, said user information being transmitted to said
`peripheral device from said wireless device, and employed at
`the control of said user,
`
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`
`Exhibit No.
`Ex. 1102
`
`Ex. 1103
`
`Ex. 1104
`
`Ex. 1105
`
`Ex. 1106
`
`Ex. 1108
`Ex. 1110
`
`wherein said peripheral device comprises one or more
`components of personal equipment of said user,
`wherein two users interconnect to said peripheral device,
`said two users controlling said user information,
`whereby said user information is employed by said one
`or more components.
`Ex. 1101, col. 15, ll. 14–33.
`Evidence of Record
`D.
`Petitioner relies on the following references and declarations (Pet. 4,
`8–9, 30–31, 50):
`Reference or Declaration
`Tee et al., U.S. Patent Application Pub. No. 2006/0203758
`A1 (published Sept. 14, 2006) (“Tee”)
`Acharya et al., U.S. Patent Application Pub. No.
`2005/0036509 A1 (published Feb. 17, 2005) (“Acharya”)
`Soin et al., U.S. Patent Application Pub. No. 2005/0091359
`A1 (published Apr. 28, 2005) (“Soin”)
`Wang et al., U.S. Patent Application Pub. No.
`2006/0077310 A1 (published Apr. 13, 2006) (“Wang”)
`Benco et al., U.S. Patent Application Pub. No.
`2005/0135393 A1 (published June 23, 2005) (“Benco”)
`Declaration of Peter Rysavy (“Rysavy Declaration”)
`Second Declaration of Peter Rysavy (“Second Rysavy
`Declaration”)
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 4):
`Claim(s)
`Basis
`1–5, 12–17, and 19 35 U.S.C. § 103(a)
`1–3, 5, 12–17, and
`35 U.S.C. § 103(a)
`19
`4
`
`Reference(s)
`Soin and Wang
`Tee and Acharya
`
`35 U.S.C. § 103(a)
`
`Tee, Acharya, and Benco
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`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016). Petitioner proposes construing several claim
`terms in the ’987 patent. Pet. 5–8. On this record and for purposes of this
`decision, we determine that no claim terms require express construction. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`Asserted Grounds of Unpatentability
`B.
`Obviousness of Claims 1–5, 12–17, and 19 Over Soin
`1.
`and Wang
`Petitioner argues that claims 1–5, 12–17, and 19 would have been
`obvious over Soin and Wang. Pet. 4. We have reviewed Petitioner’s
`assertions and supporting evidence. For the reasons discussed below, we
`determine that Petitioner demonstrates a reasonable likelihood of prevailing
`in showing that claims 1–5, 12–17, and 19 would have been obvious over
`Soin and Wang.
`
`Claim 1 recites “a communications network, said network comprising
`at least one server with user information thereon, said user information being
`remote to a user.” Ex. 1101, col. 15, ll. 16–18. Petitioner identifies
`evidence indicating that Soin teaches a communications network, such as a
`local area network (“LAN”) or a wide area network (“WAN”), that includes
`a server with remote storage containing user information. Pet. 11 (citing
`Ex. 1104 ¶¶ 33, 44, 56; Ex. 1108 ¶ 177). On this record, Petitioner has
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`shown sufficiently that the combination of Soin and Wang teaches the above
`limitation of claim 1.
`Claim 1 recites “a peripheral device, said peripheral device being
`associated with said user.” Ex. 1101, col. 15, ll. 19–20. Petitioner identifies
`evidence indicating that Soin teaches that a user can connect to and control a
`peripheral device, such as a laptop, a projector, or a monitor. Pet. 11–12
`(citing Ex. 1104 ¶¶ 8, 24, 112, 115). On this record, Petitioner has shown
`sufficiently that the combination of Soin and Wang teaches the above
`limitation of claim 1.
`Claim 1 recites “a wireless device, said wireless device wirelessly
`interconnected within said communications network to said server and said
`peripheral device.” Ex. 1101, col. 15, ll. 21–23. Petitioner identifies
`evidence indicating that Soin teaches a computing device, such as a
`handheld computer or a gaming console, that is wirelessly connected to the
`server and the peripheral device. Pet. 12–13 (citing Ex. 1104 ¶¶ 8, 33–34,
`40, 44, 58, 181; Ex. 1108 ¶¶ 95–105). Petitioner also identifies evidence
`indicating that a person of ordinary skill in the art would have known to use
`Wang’s cellular phone as the computing device in Soin. Pet. 13 (citing
`Ex. 1105 ¶¶ 26–27; Ex. 1108 ¶¶ 100, 122, 127). On this record, Petitioner
`has shown sufficiently that the combination of Soin and Wang teaches the
`above limitation of claim 1.
`Claim 1 recites “said user controlling said peripheral device from said
`wireless device, said user information being transmitted to said peripheral
`device from said wireless device, and employed at the control of said user.”
`Ex. 1101, col. 15, ll. 24–27. Petitioner identifies evidence indicating that
`Soin teaches an interface that allows the user of the wireless computing
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`device to remotely control the peripheral device. Pet. 13–14 (citing
`Ex. 1104 ¶¶ 8, 109, 112; Ex. 1108 ¶¶ 95–100, 131, 182–183). Petitioner
`also identifies evidence indicating that, in Soin, the user can transmit content
`or data from the wireless computing device to the peripheral device. Pet. 14
`(citing Ex. 1104 ¶ 98). Petitioner additionally identifies evidence indicating
`that, in Soin, the user can control the content or data transmitted to the
`peripheral device, such as by changing slides in a presentation being
`transmitted to and displayed on the peripheral device. Pet. 14–15 (citing
`Ex. 1104 ¶ 163). On this record, Petitioner has shown sufficiently that the
`combination of Soin and Wang teaches the above limitation of claim 1.
`Claim 1 recites “wherein said peripheral device comprises one or
`more components of personal equipment of said user.” Ex. 1101, col. 15, ll.
`28–29. Petitioner identifies evidence indicating that a person of ordinary
`skill in the art would have known that the peripheral device in Soin can
`include personal equipment of the user or a third party.1 Pet. 15–16 (citing
`Ex. 1104 ¶¶ 103–104; Ex. 1108 ¶¶ 150–151). On this record, Petitioner has
`shown sufficiently that the combination of Soin and Wang teaches the above
`limitation of claim 1.
`Claim 1 recites “wherein two users interconnect to said peripheral
`device, said two users controlling said user information.” Ex. 1101, col. 15,
`ll. 30–31. Petitioner identifies evidence indicating that Soin teaches that
`multiple users can transfer control of the peripheral device to one another.
`
`
`1 Petitioner argues alternatively that ownership of the peripheral device is
`neither structural nor functional, and, thus, cannot distinguish the challenged
`claims from the prior art. Pet. 15–16 (citing Ex Parte Nehls, 88 USPQ2d
`1883 (BPAI 2008)).
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`Pet. 16–17 (citing Ex. 1104 ¶¶ 99, 167; Ex. 1108 ¶¶ 156–160, 174).
`Petitioner also identifies evidence indicating that a person of ordinary skill in
`the art would have understood that multiple users can control the peripheral
`device in Soin simultaneously, such as in the multi-user gaming scenario
`described in Soin. Pet. 16–18 (citing Ex. 1104 ¶ 181; Ex. 1108 ¶ 191;
`Ex. 1110 ¶ 58). On this record, Petitioner has shown sufficiently that the
`combination of Soin and Wang teaches the above limitation of claim 1.
`Claim 1 recites “whereby said user information is employed by said
`one or more components.” Ex. 1101, col. 15, ll. 32–33. Petitioner identifies
`evidence indicating that the peripheral device in Soin displays the user
`information. Pet. 18 (citing Ex. 1104 ¶¶ 74, 98, 171; Ex. 1108 ¶ 185). On
`this record, Petitioner has shown sufficiently that the combination of Soin
`and Wang teaches the above limitation of claim 1.
`
`In sum, on this record, Petitioner has shown sufficiently that the
`combination of Soin and Wang teaches the limitations in claim 1. Claim 12
`recites limitations similar to those recited in claim 1. See Pet. 23–24.
`Claims 2–5 depend from claim 1, and claims 13–17 and 19 depend from
`claim 12. Petitioner identifies evidence indicating that the combination of
`Soin and Wang also teaches the limitations in claims 2–5, 13–17, and 19.
`See id. at 19–29. For example, claim 4 further recites that the peripheral
`device is a hub device. Ex. 1101, col. 15, ll. 41–45. Petitioner identifies
`evidence indicating that Wang teaches a hub device. Pet. 20–21 (citing
`Ex. 1105 ¶¶ 32, 34). Petitioner also identifies evidence indicating that it
`would have been obvious to use the hub device in Wang with the wireless
`computing device in Soin in order to provide additional flexibility. Pet. 10–
`11 (citing Ex. 1105 ¶ 51; Ex. 1108 ¶¶ 120–122); Pet. 21–22 (citing Ex. 1108
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`¶¶ 187–189). Therefore, on this record, Petitioner has shown sufficiently
`that the combination of Soin and Wang teaches the limitations in claims 2–5,
`12–17, and 19.
`For the foregoing reasons, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 1–5, 12–17, and
`19 would have been obvious over Soin and Wang.
`Obviousness of Claims 1–3, 5, 12–17, and 19 Over Tee
`2.
`and Acharya
`Petitioner argues that claims 1–3, 5, 12–17, and 19 would have been
`obvious over Tee and Acharya. Pet. 4. We have reviewed Petitioner’s
`assertions and supporting evidence. For the reasons discussed below, we
`determine that Petitioner demonstrates a reasonable likelihood of prevailing
`in showing that claims 1–3, 5, 12–17, and 19 would have been obvious over
`Tee and Acharya.
`
`Claim 1 recites “a communications network, said network comprising
`at least one server with user information thereon, said user information being
`remote to a user.” Ex. 1101, col. 15, ll. 16–18. Petitioner identifies
`evidence indicating that Tee teaches a communications network, such as a
`WAN, a wireless local area network (“WLAN”), or a personal area network
`(“PAN”), that includes a remote server containing user information, such as
`video data. Pet. 33 (citing Ex. 1102 ¶¶ 18, 22, 30; Ex. 1108 ¶¶ 58–59). On
`this record, Petitioner has shown sufficiently that the combination of Tee
`and Acharya teaches the above limitation of claim 1.
`Claim 1 recites “a peripheral device, said peripheral device being
`associated with said user.” Ex. 1101, col. 15, ll. 19–20. Petitioner identifies
`evidence indicating that Tee teaches that a user can connect to and control a
`peripheral device, such as a computer or projector. Pet. 33 (citing Ex. 1102
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`¶¶ 16, 23). On this record, Petitioner has shown sufficiently that the
`combination of Tee and Acharya teaches the above limitation of claim 1.
`Claim 1 recites “a wireless device, said wireless device wirelessly
`interconnected within said communications network to said server and said
`peripheral device.” Ex. 1101, col. 15, ll. 21–23. Petitioner identifies
`evidence indicating that Tee teaches a mobile terminal that is wirelessly
`connected to the server and the peripheral device. Pet. 33–34 (citing
`Ex. 1102 ¶¶ 17, 24, Abstract; Ex. 1108 ¶¶ 50–51). On this record, Petitioner
`has shown sufficiently that the combination of Tee and Acharya teaches the
`above limitation of claim 1.
`Claim 1 recites “said user controlling said peripheral device from said
`wireless device, said user information being transmitted to said peripheral
`device from said wireless device, and employed at the control of said user.”
`Ex. 1101, col. 15, ll. 24–27. Petitioner identifies evidence indicating that
`Acharya teaches an interface that allows a user of a computing device to
`remotely control a peripheral device. Pet. 34–36 (citing Ex. 1103 ¶¶ 84,
`117). Petitioner further identifies evidence indicating that, in Acharya, the
`user can transmit information, such as a presentation, from the computing
`device to the peripheral device. Pet. 34–36 (citing Ex. 1103 ¶¶ 84, 117).
`Petitioner also identifies evidence indicating that, in Acharya, the user can
`control the information transmitted to the peripheral device, such as by
`starting or hiding a presentation being transmitted to and displayed on the
`peripheral device. Pet. 34–36 (citing Ex. 1103 ¶¶ 84, 117; Ex. 1108 ¶ 63).
`Petitioner additionally identifies evidence indicating that it would have been
`obvious to use the interface in Acharya with the mobile terminal in Tee in
`order to “improv[e] users’ experience by allowing them to better control
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`presentations and other media being displayed on the external display
`device.” Pet. 36 (citing Ex. 1108 ¶¶ 62–63). On this record, Petitioner has
`shown sufficiently that the combination of Tee and Acharya teaches the
`above limitation of claim 1.
`Claim 1 recites “wherein said peripheral device comprises one or
`more components of personal equipment of said user.” Ex. 1101, col. 15, ll.
`28–29. Petitioner identifies evidence indicating that a person of ordinary
`skill in the art would have known that the peripheral device in Tee can
`include personal equipment of the user or a third party.2 Pet. 36–37 (citing
`Ex. 1108 ¶¶ 75–77). On this record, Petitioner has shown sufficiently that
`the combination of Tee and Acharya teaches the above limitation of claim 1.
`Claim 1 recites “wherein two users interconnect to said peripheral
`device, said two users controlling said user information.” Ex. 1101, col. 15,
`ll. 30–31. Petitioner identifies evidence indicating that Acharya teaches that
`multiple users can transfer control of the peripheral device to one another.
`Pet. 37 (citing Ex. 1103 ¶¶ 56, 94–95). Petitioner identifies evidence
`indicating that Acharya also teaches that multiple users can control the
`peripheral device simultaneously, such as by making edits or annotations to
`another user’s presentation. Pet. 37–38 (citing Ex. 1103 ¶¶ 94–95).
`Petitioner additionally identifies evidence indicating that it would have been
`obvious to use the multi-user feature in Acharya with the mobile terminal in
`Tee in order “to handle common user scenarios,” such as “a conference
`
`
`2 Petitioner argues alternatively that ownership of the peripheral device is
`neither structural nor functional, and, thus, cannot distinguish the challenged
`claims from the prior art. Pet. 15–16 (citing Ex Parte Nehls, 88 USPQ2d
`1883 (BPAI 2008)).
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`room meeting with many users taking the podium in sequence.” Ex. 1108
`¶ 90. On this record, Petitioner has shown sufficiently that the combination
`of Tee and Acharya teaches the above limitation of claim 1.
`Claim 1 recites “whereby said user information is employed by said
`one or more components.” Ex. 1101, col. 15, ll. 32–33. Petitioner identifies
`evidence indicating that the peripheral device in Tee displays the user
`information. Pet. 39 (citing Ex. 1102 ¶¶ 18, 35). On this record, Petitioner
`has shown sufficiently that the combination of Tee and Acharya teaches the
`above limitation of claim 1.
`In sum, on this record, Petitioner has shown sufficiently that the
`combination of Tee and Acharya teaches the limitations in claim 1.
`Claim 12 recites limitations similar to those recited in claim 1. See Pet. 43–
`44. Claims 2, 3, and 5 depend from claim 1, and claims 13–17 and 19
`depend from claim 12. Petitioner identifies evidence indicating that the
`combination of Tee and Acharya also teaches the limitations in claims 2, 3,
`5, 13–17, and 19. See id. at 40–49. Therefore, on this record, Petitioner has
`shown sufficiently that the combination of Tee and Acharya teaches the
`limitations in claims 2, 3, 5, 12–17, and 19.
`
`For the foregoing reasons, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 1–3, 5, 12–17,
`and 19 would have been obvious over Tee and Acharya.
`Obviousness of Claim 4 Over Tee, Acharya, and Benco
`3.
`Petitioner argues that claim 4 would have been obvious over Tee,
`Acharya, and Benco. Pet. 4. We have reviewed Petitioner’s assertions and
`supporting evidence. For the reasons discussed below, we determine that
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`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claim 4 would have been obvious over Tee, Acharya, and Benco.
`Claim 4 recites “wherein said peripheral device is a hub device, and
`wherein one or more components of said peripheral device are connected to
`said hub device and interconnected to said wireless device.” Ex. 1101,
`col. 15, ll. 41–45. Petitioner identifies evidence indicating that Benco
`teaches a hub device that interconnects a plurality of components of a
`peripheral device with a wireless device. Pet. 51–52 (citing Ex. 1106 ¶¶ 7,
`19). Petitioner also identifies evidence indicating that it would have been
`obvious to use the peripheral hub in Benco with the mobile terminal in Tee
`in order to allow “users to connect to a wider variety of peripheral devices.”
`Pet. 51 (citing Ex. 1108 ¶¶ 55–56, 71, 73–74). Thus, on this record,
`Petitioner has shown sufficiently that the combination of Tee, Acharya, and
`Benco teaches the limitations in claim 4.
`For the foregoing reasons, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claim 4 would have been
`obvious over Tee, Acharya, and Benco.
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of claims 1–5, 12–17, and 19 of the ’987 patent.
`At this stage in the proceeding, we have not made a final determination with
`respect to the patentability of any of the challenged claims.
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`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1–5, 12–17, and 19 of the ’987 patent
`on the following grounds:
`A. Claims 1–5, 12–17, and 19 as unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Soin and Wang;
`Claims 1–3, 5, 12–17, and 19 as unpatentable under 35 U.S.C.
`B.
`§ 103(a) as obvious over Tee and Acharya; and
`Claim 4 as unpatentable under 35 U.S.C. § 103(a) as obvious
`C.
`over Tee, Acharya, and Benco;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter
`partes review of the ʼ987 patent is hereby instituted commencing on the
`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`identified, and no other grounds are authorized.
`
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`PETITIONER:
`Andrew M. Mason
`John D. Vandenberg
`Jeffrey S. Love
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`john.vandenberg@klarquist.com
`jeffrey.love@klarquist.com
`
`PATENT OWNER:
`Gregory S. Donahue
`DINOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`
`Jeffrey W. Salmon
`JEFFREY W. SALMON LAW LLC
`jeff@jeffreywsalmonlawllc.com
`
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