`571-272-7822
`
`Paper 57
`Date: April 27, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARKEMA INC. AND ARKEMA FRANCE,
`Petitioner,
`v.
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`
`
`PGR2016-00011
`PGR2016-000121
`Patent 9,157,017 B2
`
`
`
`
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`GRACE KARAFFA OBERMANN, and KRISTI L. R. SAWERT,
`Administrative Patent Judges.
`SAWERT, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Motion for Leave to File a Certificate of
`Correction
`37 C.F.R. §§ 1.323, 42.20
`
`
`
`
`
`1 We exercise our discretion to issue a single Order to be entered in each
`case using a joint caption. The parties are not permitted to use this caption
`unless authorized by the Board. For convenience, and unless otherwise
`indicated, we use the paper and exhibit numbers from PGR2016-00011.
`
`
`
`
`
`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
`
`
`I.
`INTRODUCTION
`These proceedings are on remand from the United States Court of
`Appeals for the Federal Circuit. See Honeywell Int’l Inc. v. Arkema Inc.,
`939 F.3d 1345 (Fed. Cir. 2019) (vacating the Board’s Final Written Decision
`and remanding the proceedings to the Board). Following issuance of the
`Federal Circuit’s mandate, the panel held a teleconference with counsel for
`the parties on January 12, 2020, to discuss remand procedure. A transcript
`of that conference call has been entered into the record. Ex. 1189. On our
`authorization, Patent Owner filed a Motion for Leave to Request a
`Certificate of Correction. Paper 61 (“Motion” or “Mot.”); see also Ex. 1198,
`24:8–12 (authorizing briefing on remand). Petitioner filed an Opposition to
`Patent Owner’s Motion. Paper 71 (“Opposition” or “Opp.”). Patent Owner
`filed a Reply in Support of its Motion, Paper 74 (“Reply”), and Petitioner
`filed a Sur-Reply in Opposition, Paper 76 (“Sur-Reply”). For the reasons
`provided below, Patent Owner’s Motion is granted.
`II. BACKGROUND
`Petitioner filed two Corrected Petitions for post-grant review of
`claims 1–20 of U.S. Patent No. 9,157,017 B2 (“the ’017 patent”). See
`PGR2016-00011 (“PGR11”), Paper 3; PGR2016-00012 (“PGR12”),
`Paper 7. On September 2, 2016, pursuant to 35 U.S.C. § 324, we instituted
`post-grant reviews of claims 1–20 of the ’017 patent on certain grounds of
`unpatentability alleged in the Petitions. See PGR11, Paper 13; PGR12,
`Paper 13.
`Following institution, Patent Owner requested a conference call with
`the Board to seek authorization to file a motion for leave to petition the
`Director for a Certificate of Correction to correct the priority claim for the
`
`2
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`’017 patent. The Board conducted conference calls on November 28, 2016,
`and November 29, 2016, transcripts of which were entered into the record as
`Exhibits 2040 and 2041, respectively. At the conclusion of the second
`conference call, we denied Patent Owner’s request to file a motion for leave.
`Ex. 2041, 32:12–33:6. In particular, we stated:
`The panel has conferred and has determined at this juncture there
`has been a failure to show that [the] requirements of 255 have
`been met. This is not a typographical or clerical error. It’s been
`also failed [sic] to show that the minor character prong has been
`met. We do not need to reach the issue of whether there is a good
`faith effort here. Furthermore, we believe that to the extent of
`showing prejudice in this case, it would be improper to allow
`such a motion to be filed at this juncture, due to the prejudice that
`would arise to Petitioner.
`Id. at 32:12–33:2.
`We issued a Final Written Decision on August 31, 2017, concluding
`that Petitioner had shown by a preponderance of evidence that all claims of
`the ’017 were unpatentable under 35 U.S.C. § 102(a) for prior public use.
`Paper 54 at 56. Patent Owner appealed to the Federal Circuit. Paper 55.
`The Federal Circuit vacated our Final Written Decision and remanded.
`Honeywell, 939 F.3d at 1351. The court “conclude[d] that the Board abused
`its discretion by assuming the authority that 35 U.S.C. § 255 expressly
`delegates to the Director: to determine when a Certificate of Correction is
`appropriate.” Id. at 1348. The court explained that a patent owner with a
`patent subject to a post-grant proceeding must take the following three steps
`to seek a Certificate of Correction:
`(1) seek authorization from the Board to file a motion, 37 C.F.R.
`§ 42.20(b);
`
`3
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`(2) if authorization is granted, file a motion with the Board,
`asking the Board to cede its exclusive jurisdiction so that the
`patentee can seek a Certificate of Correction from the Director,
`37 C.F.R. § 1.323; MPEP § 1485; and
`(3) if the motion is granted, petition the Director for a Certificate
`of Correction under 35 U.S.C. § 255.
`Id. at 1349. The court further explained that, “[a]fter those three steps are
`completed, the Director—not the Board—will evaluate the merits of the
`patentee’s petition, including whether the mistake is of ‘minor character’ or
`‘occurred in good faith.’” Id. (citing 35 U.S.C. § 255).
`The court continued that “[s]ection 255 does not grant the Board
`authority to determine whether a mistake in an issued patent is of ‘minor
`character’ or ‘occurred in good faith.’” Id. Rather, the Board’s role is “to
`‘determine whether there is sufficient basis supporting Patent Owner’s
`position that the mistake may be correctable.’” Id. (quoting Plastic Dev.
`Grp., LLC v. Maxchief Investments, Ltd., IPR2017-00846, Paper 16 at 2
`(PTAB Nov. 13, 2017)). The court determined that we abused our discretion
`“[b]y requiring that [Patent Owner] show that the requirements of [§] 255
`have been met before authorizing [Patent Owner] to file a motion for leave
`to seek a Certificate of Correction from the Director.” Id. at 1350 (internal
`quotation omitted). We also abused our discretion “by assuming the
`authority that § 255 delegates to the Director and deciding the merits of
`[Patent Owner’s] petition for a Certificate of Correction.” Id.
`The Federal Circuit concluded that “nothing in the record, or in the
`Board’s conclusory decision, . . . warrants denying [Patent Owner’s] request
`to file a motion for leave.” Id. And, although “unable to meaningfully
`review the parties’ prejudice arguments,” the court “express[ed] doubt over
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`PGR2016-00012
`Patent 9,157,017 B2
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`[Petitioner’s] assertion that [Patent Owner] knew about the mistake in
`priority for at least nine months but, to obtain a strategic advantage, declined
`to pursue correction of the mistake.” Id. Thus, on remand, the court ordered
`us to “authorize Honeywell to file a motion seeking leave to petition the
`Director for a Certificate of Correction,” and review that “motion for leave
`in accordance with 37 C.F.R. § 1.323 and MPEP § 1485, including to
`evaluate whether prejudice to [Petitioner] requires accommodation.” Id. at
`1351.
`
`III. ANALYSIS
`Patent Owner has fulfilled steps (1) and (2) of the three-step process
`for seeking a Certificate of Correction. Honeywell, 939 F.3d at 1349; see
`also 37 C.F.R. § 1.323; MPEP § 1485 (where necessary, requiring motion to
`Board to cede jurisdiction). Under the Federal Circuit’s guidance, we must
`now “determine whether there is sufficient basis supporting Patent Owner’s
`position that the mistake may be correctable.” Honeywell, 939 F.3d at 1349
`(quotation omitted). We must also determine whether granting Patent
`Owner’s Motion would cause Petitioner prejudice that requires
`accommodation. Id. at 1351.
`Patent Owner, through its proposed Certificate of Correction, seeks to
`add three applications to the ’017 patent’s chain of priority: (1) U.S.
`Provisional Application No. 60/693,853, filed June 24, 2005 (“the ’853
`application”); (2) U.S. Application No. 11/475,605, filed June 26, 2006 (“the
`’605 application”); and (3) U.S. Application No. 11/850,025 (“the ’025
`application”), filed September 4, 2007. Mot. 4. The following illustration
`depicts Patent Owner’s proposed correction:
`
`5
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`See Ex. 2168, 5 (Patent Owner’s proposed Request for a Certificate of
`Correction Under 35 U.S.C. § 255 and 37 C.F.R. § 1.323); see also Mot. 4.
`In the above illustration, the patent applications listed in the gray boxes
`represent the ’017 patent’s current priority chain; the patent applications
`listed in the blue boxes represent those that Patent Owner seeks to add to the
`’017 patent’s priority chain with a Certificate of Correction. Mot. 4.
`Pursuant to § 255,
`Whenever a mistake of a clerical or typographical nature, or of
`minor character, which was not the fault of the Patent and
`Trademark Office, appears in a patent and a showing has been
`made that such mistake occurred in good faith, the Director may,
`upon payment of the required fee, issue a certificate of
`correction, if the correction does not involve such changes in the
`patent as would constitute new matter or would require re-
`examination.
`
`6
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`35 U.S.C. § 255. Patent Owner asserts that it “can amend its priority claim
`through a certificate of correction” because it satisfies these requirements—
`i.e., “a mistake . . . of minor character . . . appears in the patent,” that
`mistake “occurred in good faith,” and “the correction does not involve such
`changes as would constitute new matter or would require reexamination.”
`Mot. 7 (quoting 35 U.S.C. § 255).
`Specifically, as to the mistake of “minor character” requirement,
`Patent Owner asserts that its failure to claim priority to the proposed chain of
`applications is the type of minor mistake that “[r]egulations, court decisions,
`and over forty years of PTO practice confirm” is correctable with a
`Certificate of Correction. Id. at 7–9 (citing, e.g., MPEP §1481.03(II)(A)(1),
`Honeywell, 939 F.3d at 1350; United Servs. Auto Ass’n v. Asghari-Kamrani,
`CBM2016-00063, Paper 10 at 5 (PTAB Aug. 4, 2016)); see also Reply 1–4
`(asserting that failure to claim priority to proposed chain of patent
`applications was a “mistake” of “minor character”).
`As to the “good faith” requirement, Patent Owner asserts that it “did
`not intentionally ‘delay’ seeking a certificate of correction after it discovered
`its mistake.” Mot. 10 (citing 37 C.F.R. §1.78(c)(3), (e)(3)); Reply 7–8.
`Patent Owner points out that the examiner examining the application leading
`to the ’017 patent never rejected the claims for lack of written description
`under 35 U.S.C. § 112, and accordingly, Patent Owner “did not believe that
`the claims had any § 112 problems when they issued.” Mot. 10. Patent
`Owner asserts that it “has pursued its requested correction with undisputed
`diligence,” since our institution decisions preliminarily finding a lack of
`written description support for the challenged claims. Id. at 11. Patent
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`7
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`Patent 9,157,017 B2
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`Owner also asserts that it “could not have intentionally delayed seeking its
`correction before it discovered its mistake in the first place.” Reply 7–8.
`Finally, as to the requirement that the correction not add new matter
`or require reexamination, Patent Owner asserts that its correction meets this
`requirement because it “would only add references to the ‘Related
`Applications’ section of the ’017 patent” and “‘reexamination’ in § 255 self-
`evidently refers to the PTO’s reexamination procedures—i.e., to re-
`examination of the patent.” Mot. 11. And here, Patent Owner asserts, “there
`is a sufficient basis to conclude that the Director may decide [Patent
`Owner’s] correction does not merit reexamination.” Reply 5.
`Patent Owner also asserts that granting its Motion will not prejudice
`Petitioner. Mot. 13–15; Reply 9–10. In particular, Patent Owner asserts that
`by “taking the benefits of the choice Congress offered through PGR,”
`Petitioner has “necessarily accepted the consequences, including that [Patent
`Owner] could take advantage of Congress’s option to correct minor-
`character mistakes in chains of priority under § 255.” Mot. 14. But even if
`Petitioner is prejudiced, Patent Owner asserts, that prejudice could be
`accommodated by, for example, allowing additional briefing while the
`Director considers Patent Owner’s petition for a Certificate of Correction.
`Id. at 15.
`Petitioner argues that the Board should deny Patent Owner’s Motion
`because Patent Owner has failed to show “mistake, good faith, unintentional
`delay, inadvertence, and minor character, not to mention the absence of
`prejudice to Petitioner.” Opp. 1–2. Petitioner argues that Patent Owner’s
`failure to show a sufficient basis for any one of these elements is fatal to its
`Motion. Id.
`
`8
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`Petitioner first argues that Patent Owner’s failure to claim priority is
`no “mistake,” because Patent Owner “never intended to claim priority to the
`’025 and ’605 applications” during prosecution. Id. at 2; see also Sur-
`Reply 1. Instead, Petitioner argues, Patent Owner made a deliberate choice
`to claim priority to some applications, but not to others. Opp. 3–4. As
`support, Petition points to cross-examination testimony of Patent Owner’s
`prosecution attorney, who “testified that ‘it was never [his or Honeywell’s]
`intent [n]or [his] law firm’s intent during the prosecution of the ’017 patent
`to claim priority to any alternate priority chain.’” Id. at 4 (quoting Ex. 1197,
`25:3–26:16, 71:8-20 (brackets in original)). Petitioner also argues that
`Patent Owner cannot “rely on the absence of a § 112 rejection during
`prosecution” to claim mistake, because Patent Owner “alone had the burden
`of presenting a correct priority claim.” Id. at 6. Petitioner argues that Patent
`Owner cannot establish unintentional delay for essentially the same reasons,
`i.e., that Patent Owner “made deliberate, strategic, and repeatedly reaffirmed
`choices reflecting its intent to claim and rely on the [another] application for
`priority.” Id. at 12–13.
`Next, Petitioner argues that, even if the ’017 patent has a mistake, that
`mistake is not of “minor character.” Id. at 6–8; Sur-Reply 2–4. Instead,
`Petitioner argues, “the changes [Patent Owner] seeks have major, not minor
`case-dispositive consequences” and “will require reexamination.” Opp. 6.
`As to the latter, Petitioner argues that Patent Owner’s correction would
`require reexamination because it “would significantly expand the universe of
`applicable prior art.” Id. at 8. Petitioner points out that, during prosecution,
`the Examiner relied on only pre-2002 prior art to examine the claims, but the
`proposed priority chain dates to 2005, three years later. Id. at 9–10.
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`9
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`Petitioner argues the Certificate of Correction, therefore, would “require
`reexamination to consider the nearly three additional years of prior art not
`considered during prosecution.” Id. at 10.
`Petitioner argues that, in any event, Patent Owner’s Motion is “futile
`and a waste of the Office’s resources” because a Certificate of Correction
`“cannot be applied retroactively to this proceeding.” Id. at 13. Relying on
`the Board’s reasoning in Emerson Electric Co. v. SIPCO, LLC, IPR2016-
`00984, Paper 52 at 17–26 (PTAB Jan. 24, 2020), Petitioner argues that
`Patent Owner’s proposed Certificate of Correction “would have no effect in
`this PGR even if granted.” Id.; see also Sur-Reply 5 (arguing that “[t]he
`ultimate futility of [Patent Owner’s Certificate of Correction] does not . . .
`alleviate the prejudice to [Petitioner] of further drawing out the
`proceeding”).
`Finally, Petitioner argues that granting Patent Owner’s Motion would
`be prejudicial because Petitioner can no longer assert, e.g., intervening art in
`a new post-grant or inter partes review proceeding. Opp. 14. And further
`delaying these post-grant review proceedings, Petitioner argues,
`“contravenes [Petitioner’s] statutory right to file PGRs and have them
`decided within the statutory time frame.” Id. at 15. In particular, Petitioner
`argues that “[g]ranting [Patent Owner’s] unmeritorious request will
`unnecessarily delay the already long-stalled but inevitable invalidation of the
`’017 patent.” Id.
`As the Federal Circuit recognized, the Office “has previously allowed
`patentees to correct priority claims through Certificates of Correction.” Id.
`at 1350; see MPEP § 1481.03(II)(A)(1). We defer to the Director’s
`judgment as to whether Patent Owner’s proposed request should be granted.
`
`10
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`See Honeywell, 939 F.3d at 1350 (stating that “the Director—not the
`Board—will evaluate the merits of the patentee’s petition” for a Certificate
`of Correction).
`Although we have carefully considered Petitioner’s Opposition and
`Sur-Reply, we find Petitioner’s arguments unpersuasive, or determine that
`those arguments are outside our authority to consider. Id. For example, we
`are not persuaded, on this record, by Petitioner’s argument that Patent
`Owner could not have committed a “mistake” because neither Patent Owner
`nor its prosecuting attorney intended to claim an alternative priority chain of
`applications. See Opp. 2–6, 12–13; Sur-Reply 1–2. On the law, Petitioner
`does not provide us with persuasive authority that a “mistake” in the context
`of § 255 is necessarily limited to an “unintentional” mistake. On the facts,
`we are not persuaded that Patent Owner’s failure to claim priority to the
`’853, ’605, and ’025 applications was a deliberate and knowing choice. See
`Ex. 1197, 10:12–11:2 (testimony of prosecuting attorney that, after going
`“through [the] files very carefully,” he “found no information relating in any
`way to a decision to, to make a claim or not make a claim”). We lack
`authority to determine whether that mistake is of minor character or occurred
`in good faith. Honeywell, 939 F3d at 1349.
`Whether Patent Owner’s request constitutes new matter or would
`require reexamination is another question reserved for the Director under
`§ 255. See id. (stating that “[t]he Director has not delegated its Section 255
`authority to the Board”). We note, however, that § 255’s reference to
`“reexamination” is not limited to the reexamination statutes in Chapter 30 of
`the patent law, but also includes, for example, further examination under
`35 U.S.C. § 131. See In re Arnott, 19 U.S.P.Q.2d 1049, 1052 (Comm’r Pat.
`
`11
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`1991) (explaining that the term “reexamination” in § 255 triggers a question
`of examination under § 131, even for reissue applications). And, in some
`cases, “if the correction sought would require further examination, the filing
`of a reissue application may be appropriate to pursue the desired correction
`of the patent for benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or
`386(c).” MPEP § 1481.
`As to Petitioner’s futility argument (Opp. 13, Sur-Reply 5), we need
`not decide now whether Patent Owner’s request for a Certificate of
`Correction, if granted, would apply to these proceedings. We note that these
`proceedings are distinguishable from those in Emerson Electric, on which
`Petitioner relies, in that our Final Written Decisions in these proceedings
`have been vacated, see Honeywell, 939 F.3d at 1351, whereas in Emerson
`Electric, the Board’s Final Written Decision was not vacated. Indeed, in
`Emerson Electric, the Federal Circuit remanded the proceeding to the Board
`specifically for the purpose of “issu[ing] an order addressing what, if any,
`impact the certificate of correction has on its final written decision in this
`case.” Emerson Elec., Paper 52 at 3–4 (citing Order on Mot. for Remand,
`SIPCO, LLC v. Emerson Elec. Co., No. 2018-1364, slip op. at 4 (Fed. Cir.
`June 27, 2018)).
`Finally, we recognize that granting Patent Owner’s Motion will
`necessarily result in some prejudice to Petitioner in terms of time to final
`judgment. At this point in the proceedings, however, we find that any
`prejudice to Petitioner is outweighed by prejudice that Patent Owner will
`experience should it not be allowed to pursue its request for a Certificate of
`Correction with the Director. Indeed, the Federal Circuit “express[ed]
`
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`doubt” that Patent Owner’s actions were designed to “obtain a strategic
`advantage.” Honeywell, 939 F.3d at 1345.
`To accommodate prejudice to Petitioner, we instruct Patent Owner to
`submit copies of the documents submitted to, or generated from, the Board
`in connection with this matter—including, but not limited to, Patent Owner’s
`Motion, Petitioner’s Opposition, Patent Owner’s Reply, Petitioner’s Sur-
`Reply, Exhibit 1197 (Deposition of Joseph Posillico, Esq.), and this Order—
`with its request for a Certificate of Correction. “Other Board panels faced
`with similar or analogous circumstances have determined that such
`instructions were appropriate.” Intuitive Surgical, Inc. v. Ethicon LLC,
`IPR2020-00050, -00051, Paper 13 at 5 (PTAB Feb. 6, 2020); see also ASM
`IP Holding B.V. v. Kokusai Elec. Corp., IPR2019-00378, Paper 17 at 5–6
`(PTAB July 5, 2019) (requiring a patent owner seeking a Certificate of
`Correction to provide briefing submitted in an inter partes review to the
`Director “in the interests of transparency”).
`We further find that requiring Patent Owner to file its request for a
`Certificate of Correction and accompanying papers quickly will lessen any
`prejudice to Petitioner, and, thus, order Patent Owner to file its request and
`accompanying documents within seven (7) business days from the date of
`this Order.
`
`IV. CONCLUSION
`Upon consideration of the Motion for Leave to Request a Certificate
`of Correction, the Opposition, the Reply, the Sur-Reply, and the evidence
`before us, Patent Owner’s Motion is granted.
`
`
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`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion for Leave to Request a
`Certificate of Correction in each proceeding (PGR11, Paper 61; PGR12,
`Paper 41) is granted;
`FURTHER ORDERED that Patent Owner shall file with the Director
`its request for a Certificate of Correction and accompanying documents, as
`outlined above, within seven (7) business days of the entry of this Order and
`shall file a copy of the request as an exhibit in each of these proceedings;
`and
`
`FURTHER ORDERED that when a decision is rendered on Patent
`Owner’s request for a Certificate of Correction, Patent Owner shall file,
`within five (5) business days of the date of such decision, a copy of the
`document as an exhibit in each proceeding.
`
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`PGR2016-00011
`PGR2016-00012
`Patent 9,157,017 B2
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`FOR PETITIONER:
`Mark Sweet
`Mark Feldstein
`Erin Sommers
`Charles Mitchell
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
`mark.sweet@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`charles.mitchell@finnegan.com
`
`FOR PATENT OWNER:
`Gregg LoCascio
`Noah Frank
`KIRKLAND & ELLIS LLP
`glocascio@kirkland.com
`noah.frank@kirkland.com
`
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