`571.272.7822
`
` Paper No. 10
`
` Entered: September 24, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMPASS BANK, COMMERCE BANCSHARES, INC., and
`FIRST NATIONAL BANK OF OMAHA,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00786
`Patent 6,826,694 B1
`____________
`
`
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and,
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`I. INTRODUCTION
`A. Background
`Compass Bank, Commerce Bancshares, Inc., and First National Bank
`of Omaha (collectively, “Petitioner”) filed a Petition requesting inter partes
`review of claim 1 of U.S. Patent No. 6,826,694 B1 (Ex. 1004, “the ’694
`patent”) pursuant to 35 U.S.C. § 311–319. Paper 1 (“Pet.”). Intellectual
`Ventures II LLC (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 8 (“Prelim. Resp.”). We have jurisdiction under
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted “unless . . . the information presented in the petition . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” Petitioner contends
`that claim 1, the sole claim of the ’694 patent, is unpatentable under
`35 U.S.C. §§ 102, 103. We conclude that Petitioner has demonstrated that
`there is a reasonable likelihood that it would prevail with respect to the
`challenged claim. For the reasons described below, we institute an inter
`partes review of claim 1.
`
`
`B. Related Proceedings
`Petitioner states that the ’694 patent is involved in numerous district
`
`court cases, including Intellectual Ventures II LLC v. BBVA Compass
`Bancshares, Inc., No. 2:13-cv-01106 (N.D. Ala.), Intellectual Ventures II
`LLC v. Commerce Bancshares, Inc., No. 2:13-cv-04160 (W.D. Mo.), and
`Intellectual Ventures II LLC v. First National Bank of Omaha, No. 8:13-cv-
`00167-LSC (D. Neb). Pet. 1–2; Paper 7, 2–3.
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`Additionally, the ’694 patent is the subject of two additional Petitions
`
`for inter partes review, Int’l Bus. Machs. Corp. v. Intellectual Ventures II
`LLC, Case IPR2014-00587 (PTAB) and Int’l Bus. Machs. Corp. v.
`Intellectual Ventures II LLC, Case IPR2014-01465 (PTAB).
`
`
`C. The ’694 patent (Ex. 1004)
`The ’694 patent is titled “High Resolution Access Control,” and
`
`issued on November 30, 2004. Ex. 1004, 1. The ’694 patent claims priority
`to Provisional Patent Application No. 60/105,188, which was filed on
`October 22, 1998. Id. The ’694 patent discloses a system and method of
`filtering data packets at a firewall. See id. at col. 1, ll. 11–12. The packet
`includes a header and a payload. Id. at col. 1, ll. 16–17. The header
`includes header parameters, such as source address, destination address, port
`number, and protocol number. Id. at col. 1, ll. 16–26; col. 2, ll. 27–29. The
`payload includes data intended to be conveyed to the destination, such as a
`connection request or document data. Id. at col. 1, ll. 26–28; col. 2, ll. 28–
`31. Figure 1, reproduced below, is a flow chart illustrative of the method.
`
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`Figure 1 is a flow chart depicting the method of the ’694 patent.
`When a packet is received at the firewall, the system determines a rule
`
`based upon header parameters. Id. at col. 3, ll. 9–12; Fig. 1, steps 101–102.
`Depending on whether the packet satisfies the rule, the packet is then either
`dropped or passed to an access control proxy. Id. at col. 3, ll. 12–18; Fig. 1,
`steps 103–105. The access control proxy, then, selects an access rule based
`upon the content of the payload of the packet and the access rule is
`implemented for that packet and any related packets. Id. at col. 3, ll. 18–37;
`Fig. 1, steps 106–108. In a preferred embodiment, the packet may be passed
`or dropped based upon the content of the payload. Id. at col. 3, ll. 32–38.
`
`In another embodiment, the access rule is selected based upon a
`combination of the content and the header parameters of the packet. Id. at
`col. 4, ll. 36–38. In yet another embodiment, the access rule is selected
`based upon the contents of one or several packet payloads. Id. at col. 3,
`ll. 22–29; col. 4, ll. 38–40; col. 5, ll. 1–26.
`
`Claim 1, reproduced below, is the sole claim of the ’694 patent.
`
`1. A method for filtering a packet, including the steps of:
`a. receiving a packet having at least one header parameter and a
`payload;
`b. selecting an access rule based upon the contents of the
`payload of the packet received in step a;
`c. implementing the access rule for a packet, wherein the access
`rule is selected based upon a combination of the contents of the
`packet received in step a and the contents of at least one other
`packet.
`
`
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`
`
`Ground Prior Art
`Abraham1 and Rubin2
`§ 103
`§ 102(b) Rubin
`Norman3 and Rubin
`§ 103
`§ 102(e) Cunningham4
`
`II. ANALYSIS
`A. Real Party-In-Interest
`Patent Owner argues that we should not institute inter partes review
`
`of claim 1 of the ’694 patent because the Petition does not list all of the real
`parties-in-interest, as required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 1–7.
`According to Patent Owner, Banco Bilbao Vizcaya Argentaria, S.A.
`(“BBVA”) is a real party-in-interest “because it controls BBVA Compass
`[Bancshare][5] and Petitioner Compass Bank.” Prelim. Resp. 4 (internal
`footnote added).
`
`
`1 Abraham et al., U.S. Patent No. 5,983,270 (issued Nov. 9, 1999)
`(Ex. 1008).
`2 Aviel D. Rubin, et al., Blocking Java Applets at the Firewall, IEEE, 1–11
`(1997) (Ex. 1009).
`3 Norman Data Defense Systems, AN INTRODUCTION TO THE NORMAN
`FIREWALL: THE SECURE WAY TO CONNECT TO THE INTERNET AND OTHER
`TCP/IP-BASED NETWORKS, vol. 12, Firewalls & Internet Security, 1–10,
`(Oct. 1995) (Ex. 1010).
`4 Cunningham et al., U.S. Patent No. US 6,219,786 B1 (issued Apr. 17,
`2001) (Ex. 1011).
`5 The Petition lists BBVA Compass Bancshare, Inc. as a real party-in-
`interest. Pet. 1.
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`5
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`On this record, we are not persuaded that BBVA is a “real party-in-
`
`interest” with respect to this proceeding. Whether a non-party is a “real
`party-in-interest” or “privy” for purposes of an inter partes review
`proceeding is a “highly fact-dependent question” that takes into account how
`courts generally have used the terms to “describe relationships and
`considerations sufficient to justify applying conventional principles of
`estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). The Trial Practice
`Guide provides guidance regarding factors to consider in determining
`whether a party is a real party-in-interest. A primary consideration includes
`whether a non-party exercises control over a petitioner’s participation in a
`proceeding. Id. at 48,75960. Other considerations may include whether a
`non-party, in conjunction with control, funds the proceeding and directs the
`proceeding. Id. at 48,760.
`Patent Owner argues that BBVA is a real party-in-interest because
`Compass Bank is a wholly-owned subsidiary of BBVA Compass Bancshare,
`Inc., which is a wholly-owned subsidiary of BBVA. Prelim. Resp. 4–5.
`Patent Owner further argues that BBVA Compass Bancshare, Inc.’s Form
`10-K Annual Report (Ex. 2001), filed with the Securities and Exchange
`Commission, contains statements that allegedly show that BBVA, through
`BBVA Compass Bancshare, Inc., controls some aspects of Compass Bank’s
`banking operations and financial operations that are not related, directly, to
`this proceeding. See id. at 4–6.
`Upon review of Patent Owner’s evidence, we determine that Patent
`Owner has not shown that BBVA controls, directs, or funds Compass
`Bank’s participation in this proceeding. We conclude on the present record
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`that Petitioner has identified all of the real parties-in-interest, as required by
`35 U.S.C. § 312(a)(2).
`
`
`B. Claim Construction
`We interpret claims using the broadest reasonable construction in light
`of the Specification of the patent in which they appear. 37 C.F.R. §
`42.100(b). Under the broadest reasonable construction standard, claim terms
`are given their ordinary and customary meaning, as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`“contents of the packet”
`Claim 1’s step c recites “wherein the access rule is selected based
`
`upon a combination of the contents of the packet received in step a and the
`contents of at least one other packet.” Ex. 1004, col. 6, ll. 4144. Petitioner
`proposes that the broadest reasonable interpretation of “contents of the
`packet” is the contents of “the header and/or payload of the packet.” Pet. 5–
`6. Patent Owner argues that Petitioner’s proposed interpretation is
`unreasonably broad, and proposes a narrower interpretation: “contents of the
`header and the payload of the packet.” Prelim. Resp. 9–17. According to
`Patent Owner, its proposed interpretation requires that the access rules must
`be selected based on both the contents of the header and the contents of the
`payload of the packet. Id.
`
`Patent Owner has not persuaded us, at this stage of the proceeding,
`that Petitioner’s proposed interpretation is unreasonably broad, or that it is
`inconsistent with the term’s ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
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`disclosure.6 See Pet. 5–6. We are not persuaded that the term “contents of
`the packet,” itself, necessarily refers to both the header and the payload,
`rather than just the header or just the payload. In addition, we are not
`persuaded that Petitioner’s proposed interpretation is inconsistent with the
`’694 patent, which discloses using different information from the packet’s
`payload and header. See Ex. 1004, col. 2, ll. 40–43 (describing analyzing
`header information); col. 3, ll. 4–8 (describing analyzing contents of the
`payload); col. 3, ll. 39–42 (describing analyzing payload and header
`parameters).
`
`Further, we are not persuaded by Patent Owner’s argument that
`Petitioner’s proposed interpretation conflicts with claim 1’s step b, which
`requires that the access rule be selected based upon the contents of the
`payload of the packet received in step a. See Prelim. Resp. 10–13. We are
`not persuaded that Petitioner’s proposed interpretation prevents step b from
`further requiring that the access rule be selected based upon the contents of
`the payload of the packet received in step a.
`For these reasons and on this record, we are persuaded by Petitioner
`that the broadest reasonable interpretation in light of the Specification of
`“contents of the packet” is the “contents of the header and/or payload of the
`packet.”
`
`
`C. Grounds Under 35 U.S.C. § 102
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`
`
`6 Neither Petitioner nor Patent Owner asserts that the ’694 patent contains a
`lexicographic definition of this limitation.
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`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987) (citations omitted).
`
`
`i. Anticipation By Rubin
`
`Petitioner argues that Rubin anticipates claim 1, and, in particular, that
`Rubin’s description of implementing a blocking strategy based upon the
`payloads of Internet Protocol (“IP”) packets reassembled into a
`Transmission Control Protocol (“TCP”) stream meets step c’s requirement
`that the access rule is selecting based on the contents of multiple packets.
`Pet. 33–40 (citing Ex. 1001 ¶ 58, “Kesidis Decl.”).
`
`Patent Owner, however, argues that claim 1’s step c requires selecting
`the access rule based on both the headers and the payload of multiple
`packets and, therefore, Rubin does not anticipate claim 1 because Rubin
`describes using only the payloads, and not both the headers and payloads of
`multiple packets, to select the access rule. Prelim. Resp. 19.
`
`From the outset, we find Patent Owner’s argument unpersuasive
`because it is not based upon the broadest reasonable interpretation of
`“contents of the packet.” As discussed above, we determined, for purposes
`of this decision, that the broadest reasonable interpretation of “contents of
`the packet” is the “contents of the header and/or payload of the packet.”
`
`When “contents of the packet” is given the broadest reasonable
`interpretation, we are persuaded by Petitioner that there is a reasonable
`likelihood that claim 1 is anticipated by Rubin. Rubin is a paper titled
`“Blocking Java Applets at the Firewall.” Ex. 1009, 2.7 Rubin describes a
`firewall scheme that routes relevant data packets to a secure proxy host, via
`
`7 We refer to the pagination inserted by Petitioner to Ex. 1009 not to the
`original pagination of Rubin and Norman.
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`a TCP session, and the proxy host reassembles the packets into TCP streams.
`Id. The proxy host applies a block strategy based on the content of the TCP
`streams. Id. at 6–9. Rubin describes three types of blocking strategies:
`rewriting <applet> tags in HTML documents (id. at 7), blocking files having
`the 4-byte hex signature CA, FE, BA, BE found in Java Class files (id. at 8),
`and blocking browser requests for files having the .class. or .zip. suffixes (id.
`at 8–9). Each blocking strategy is applied based on information found in the
`payloads of the IP packets in the reassembled TCP stream. For example,
`Rubin states:
`blocking CA FE BA BE — the simplest scheme — requires
`searching IP packets for that four byte signature. However,
`those four bytes need not arrive in the same IP packet, and if
`split up, the individual packets may arrive out of order.
`Id. at 10. Given this, we determine that Petitioner has demonstrated that
`there is a reasonable likelihood that claim 1 is anticipated under 35 U.S.C.
`§ 102(b) by Rubin.
`
`
`
`ii. Anticipation By Cunningham
`
`Petitioner argues that Cunningham anticipates claim 1, and, in
`particular, that Cunningham’s description of applying rules from a rules base
`based upon the payloads of assembled IP packets meets step c’s requirement
`that the access rule is selected based on the contents of multiple packets.
`Pet. 54–60 (citing Kesidis Decl. ¶ 69).
`
`Patent Owner, however, argues that “Petitioner argues only that
`Cunningham discloses selecting an access rule based on the payload of
`multiple packets,” and not based upon both the header and payload of
`multiple packets, as required by claim 1. Prelim. Resp. 22 (citations and
`emphasis omitted). Patent Owner, further, argues that the Petition’s textual
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`argument spanning pages 54–55, as opposed to the six page claim chart, is
`not sufficiently detailed to explain how Cunningham anticipates claim 1. Id.
`at 21–22 (citing 37 C.F.R. §§ 42.22(a)(2) and 42.104(b)(4)).
`
`As to Patent Owner’s first argument, we find this argument
`unpersuasive because it is not based upon the broadest reasonable
`interpretation of “contents of the packet.” As discussed above, we
`determined, for purposes of this decision, that the broadest reasonable
`interpretation of “contents of the packet” is the “contents of the header
`and/or payload of the packet.”
`
`When “contents of the packet” is given the broadest reasonable
`interpretation, we are persuaded by Petitioner that there is a reasonable
`likelihood that claim 1 is anticipated by Cunningham. Cunningham is titled
`“Method and System for Monitoring and Controlling Network Access.” Ex.
`1011, col. 1, ll. 1–2.
`
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`Cunningham’s Figure 7 is reproduced below.
`
`
`Figure 7 depicts a process flow for operating an access control device
`Cunningham’s Figure 7 depicts “the steps of providing access
`control.” Id. at col. 10, ll. 52–53. At step 94, multiple packets of a
`particular node-to-node transmission are assembled, and, at step 96, it is
`determined whether the assembled packs contain enough information to
`apply rules from a rules base. Id. at col. 10, ll. 55–59. When enough
`information has been acquired, it is determined which rules from the rules
`base match the packet information, and the matching rules are then applied.
`Id. at col. 10, l. 60–col. 11, l. 3; Fig. 7, steps 98, 100, 102.
`Cunningham describes that the rules are matched based on
`information contained in the data field (i.e., the payload) of the packets. Id.
`at col. 8, ll. 9–19. Given this, and on this record, we determine that
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`Petitioner has demonstrated that there is a reasonable likelihood that claim 1
`is anticipated under 35 U.S.C. § 102(e) by Cunningham.
`As to Patent Owner’s second argument, we are not persuaded that the
`Petition contains insufficient analysis in relation to Cunningham to satisfy
`37 C.F.R. §§ 42.22(a)(2) and 42.104(b)(4). Patent Owner’s argument
`narrowly focuses on only the textual paragraph that spans pages 54–55 of
`the Petition and does not account for the six page claim chart that
`sufficiently maps each step of claim 1 to Cunningham.
`
`
`D. Grounds Under 35 U.S.C. § 103
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art, (2) any differences
`between the claimed subject matter and the prior art, and (3) the level of skill
`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
`U.S. at 407 (“While the sequence of these questions might be reordered in
`any particular case, the [Graham] factors continue to define the inquiry that
`controls.”).
`
`
`i. Unpatentability Over Norman and Rubin
`
`Petitioner argues claim 1 is unpatentable over the combination of
`Norman and Rubin, and, in particular, that the combination’s teaching of
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`blocking data packets based upon the payloads of multiple packets meets the
`requirement of claim 1 step c that the access rule is selected based on the
`contents of multiple packets. Pet. 40–55 (citing Kesidis Decl. ¶¶ 61–67).
`Patent Owner, however, argues that claim 1’s step c requires selecting the
`access rule based on both the headers and the payload of multiple packets
`and, therefore, the combination of Norman and Rubin does not teach claim
`1, because both Norman and Rubin disclose using only the payloads, and not
`both the headers and payloads. Prelim. Resp. 19–21.
`
`We again find Patent Owner’s argument unpersuasive because it is not
`based upon the broadest reasonable interpretation of “contents of the
`packet.” As discussed above, we determined, for purposes of this decision,
`that the broadest reasonable interpretation of “contents of the packet” is the
`“contents of the header and/or payload of the packet.”
`
`When “contents of the packet” is given the broadest reasonable
`interpretation, we are persuaded by Petitioner that there is a reasonable
`likelihood that claim 1 is unpatentable over the combination of Norman and
`Rubin. Norman is a paper titled “An Introduction to The Norman Firewall.”
`Ex. 1010, 5.8 The Norman Firewall uses a proxy service to pass data packets
`from one network to another. Id. at 13. The Norman Firewall includes an
`anti-virus scanning engine that scans files or emails for known viruses or
`hotwords, so that data transactions that include known viruses or hotwords
`can be blocked. Id. at 15.
`
`Petitioner argues that, although not expressly disclosed by Norman,
`one of ordinary skill in the art would know that a single file is often received
`in multiple packets due to, for example, packet fragmentation, and that,
`
`8 We refer to the pagination inserted by Petitioner to Ex. 1010 and not to the
`original pagination of Rubin and Norman.
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`therefore, there is a need to scan for the virus or hotwords that may span
`more than one packet payload. Pet. 46 (citing Kesidis Decl. ¶ 66).
`
`As discussed above, Rubin discloses a similar system to Norman’s
`system that blocks IP packets based on a signature found in a file and
`discloses that, because of packet fragmentation, it is desirable in
`reassembling a stream of related data packets in a proxy application to
`search the payloads of multiple IP packets for the signature in a file. See Ex.
`1009, 6–9. On this record, we are persuaded by Petitioner that one of
`ordinary skill in the art would have been motivated to combine Norman with
`Rubin in order to secure a network by scanning for files that contain viruses
`or hotwords that may span the payloads of multiple data packets. See Pet.
`45–47.
`Given this, we determine that Petitioner has demonstrated that there is
`a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103(a)
`over Norman and Rubin.
`
`
`ii. Unpatentability Over Abraham and Rubin
`We do not institute inter partes review of claim 1 of the ’694 patent as
`
`unpatentable under 35 U.S.C. § 103(a) over Abraham and Rubin. See
`37 C.F.R. § 42.108. Exercise of our discretion in declining to institute on
`the ground based on Abraham and Rubin is consistent with the authority
`granted under 35 U.S.C. § 315(d) to manage inter partes proceedings and
`with the objective of “secur[ing] the just, speedy, and inexpensive resolution
`of every proceeding.” 37 C.F.R. § 42.1.
`
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`III. CONCLUSION
`On this record, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing on the grounds of:
`claim 1 as anticipated under 35 U.S.C. § 102(b) by Rubin;
`claim 1 as anticipated under 35 U.S.C. § 102(e) by Cunningham; and
`claim 1 as obvious under 35 U.S.C. § 103(a) over Norman and Rubin.
`The Board has not yet made a final determination as to the patentability of
`claim 1.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
`the ’694 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 of:
`claim 1 as anticipated under 35 U.S.C. § 102(b) by Rubin;
`claim 1 as anticipated under 35 U.S.C. § 102(e) by Cunningham; and
`claim 1 as obvious under 35 U.S.C. § 103(a) over Norman and Rubin.
`
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`PETITIONER:
`
`Jason S. Jackson
`Sean P. Connolly
`Geoffrey K. Gavin
`Marc Vander Tuig
`jason.jackson@kutakrock.com
`sean.connolly@kutakrock.com
`ggavin@jonesday.com
`MVanderTuig@senniger.com
`
`PATENT OWNER:
`
`Herbert D. Hart III
`Aaron F. Barkoff
`Donald J. Coulman
`hhart@mcandrews-ip.com
`abarkoff@mcandrews-ip.com
`dcoulman@intven.com
`
`17