Paper No. 11
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`APPLE INC.
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`Petitioner,
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`v.
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`VIRNETX, INC.,
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`Patent Owner.
`____________________
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`Case No. IPR2015-00866
`Patent No. 8,458,341
`____________________
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`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`APPLE INC.
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`Petitioner,
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`v.
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`VIRNETX, INC.,
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`Patent Owner.
`____________________
`
`Case No. IPR2015-00866
`Patent No. 8,458,341
`____________________
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`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
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`IPR2015-00866
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`Petitioner, Apple Inc. (“Apple”) respectfully requests that the Board
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`recognize Scott M. Border, Esq. as pro hac vice counsel for this proceeding.
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`I.
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`BACKGROUND
`Apple’s Motion for Pro Hac Vice Admission is being filed pursuant to and
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`in compliance with the Notice of Filing Date Accorded to Petition and Time Period
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`for Filing Patent Owner Preliminary Response, which was filed April 3, 2015
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`(Paper 3) (the “Notice”). The Notice authorizes the parties to file motions for pro
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`hac vice admission under 37 C.F.R. § 42.10(c). Further to the Notice, such
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`“motions shall be filed in accordance with the ‘Order – Authorizing Motion for
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`Pro Hac Vice Admission’ in Case IPR2013-00639 ” (the “Order”).
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`II. TIME OF FILING
`This Motion for Pro Hac Vice admission is being filed in accordance with
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`the Notice Authorizing the Filing of a Motion for Pro Hac Vice admission, and is
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`filed greater than 21 days after that Notice.
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`III. STATEMENT OF FACTS
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`As required by the Order, the following statement of facts, supported by the
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`attached Declaration of Scott M. Border in Support of Motion for Pro Hac Vice
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`Admission (Ex. 1056), shows that there is good cause for the Patent Trial and
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`Appeal Board (“Board”) to recognize Mr. Border pro hac vice in this proceeding.
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`As required by 37 C.F.R. § 42.10(c), lead counsel, Jeffrey P. Kushan, is a registered
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`IPR2015-00866
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`practitioner experienced in proceedings before the USPTO.
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`Mr. Border is an experienced litigation attorney. Mr. Border has been a
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`litigating attorney for more than seven years, and has been involved in numerous
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`patent litigation cases in federal courts and matters before the Board. Mr. Border’s
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`experience includes representing a wide range of clients in complex intellectual
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`property litigation, and he has appeared as counsel for Apple in a number of
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`litigation matters before the International Trade Commission, and various District
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`Courts. Mr. Border has also appeared pro hac vice in other matters before the
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`Board.1 Mr. Border is a member in good standing of the Virginia State Bar and
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`the District of Columbia Bar, with no suspensions or disbarments from practice,
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`nor any application for admission to practice denied, nor any sanctions or
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`contempt citations, and is admitted to practice in the United States Court of
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`Appeals for the Federal Circuit, as well as the United States District Courts for
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`the Northern District of Florida, Eastern District of Texas, and Eastern District of
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`Virginia. His mailing address is at Sidley Austin LLP, 1501 K Street, N.W.,
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`Washington, D.C. 2005, his email address is sborder@sidley.com, and his direct
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`dial is (202) 736-8818.
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`1 Mr. Border was admitted pro hac vice in IPR2013-00292, IPR2014-00039,
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`IPR2014-00040, IPR2014-00481, IPR2014-00482, IPR2015-00074, IPR2015-
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`00810, IPR2015-00811, and IPR2015-00812.
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`IPR2015-00866
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`Mr. Border has worked with lead counsel in most aspects of his
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`participation in this proceeding. As such, he has reviewed and is very familiar
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`with (i) U.S. Patent No. 8,458,341, the patent at issue in this proceeding, (ii) the
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`prior art relied upon in Apple’s Petition, (iii) the legal and factual arguments
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`that have been addressed by Apple, and (iv) the developments in this proceeding
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`since the filing of Apple’s Petition, as well as the developments in related
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`matters before the Board. Mr. Border has also been involved in a number of
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`other proceedings before the Board, has been admitted pro hac vice as backup
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`counsel in other matters before the Board, and is familiar with its established
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`practices. Accordingly, he has established familiarity with the subject matter
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`at issue in these proceedings and the conduct of these proceedings to date.
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`Mr. Border has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37 C.F.R,
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`and he agrees to be subject to the USPTO Rules of Professional Conduct set forth
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`in 37 C.P.R. §§11.01 et seq., and to disciplinary jurisdiction under 37 C.P.R.
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`§11.19(a).
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
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`Border Declaration, establish that there is good cause to admit Mr. Border pro hac
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`vice in this proceeding under 37 C.F.R. § 42.10(c). Lead counsel is a registered
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`IPR2015-00866
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`practitioner, Mr. Border is an experienced litigating attorney, and Mr. Border has
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`an established familiarity with the subject matter at issue in these proceedings.
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`V. CONCLUSION
`Therefore, Apple respectfully submits that there is good cause for the Board
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`to recognize Mr. Border as Pro Hac Vice during these proceedings.
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`Apple’s Motion for Pro Hac Vice Admission is accompanied by a
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`Declaration of Scott M. Border as required by the Order.
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`Dated: October 7, 2015
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
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`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
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`IPR2015-00866
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`1009
`1010
`1011
`1012
`1013
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`1014
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`1015
`1016
`1017
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`1018
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`Exhibit # Reference Name
`1001
`U.S. Patent 8,458,341
`1002
`U.S. Patent 8,458,341 File History
`1003
`U.S. Patent 8,516,131
`1004
`U.S. Patent 8,516,131 File History
`1005
`Declaration of Roberto Tomassia
`1006
`Curriculum Vitae of Roberto Tomassia
`1007
`U.S. Patent 6,496,867 to Beser
`1008
`Kent, S., et al., RFC 2401, “Security Architecture for the Internet
`Protocol” (November 1998)
`Aventail Connect v3.01/v2.51 Administrator’s Guide (1996-1999)
`Aventail Connect v3.01/v2.51 User’s Guide (1996-1999)
`Aventail ExtraNet Center v3.0 Administrator’s Guide (NT and UNIX)
`U.S. Patent 5,237,566 to Brand
`Handley, M., et al., RFC 2543, SIP: Session Initiation Protocol
`(March 1999)
`RFC 793, DARPA Internet Program Protocol Specification
`(September 1991)
`U.S. Patent Number 6,430,176 to Christie
`U.S. Patent Number 6,930,998 to Sylvain
`Patent Owner Preliminary Response, IPR2014-00237, Paper 12
`(March 6, 2014)
`Leech, M., et al., RFC 1928, SOCKS Protocol Version 5 (March
`1996)
`Microsoft Computer Dictionary (4th Ed.)
`U.S. Patent Number 6,408,336 to Schneider
`U.S. Patent Number 5,633,934 to Hember
`Declaration of James Chester, Reexamination 95/001,697
`Declaration of Chris Hopen, Reexamination 95/001,697
`U.S. Patent 6,557,037 to Provino
`Gunter, M., “Virtual Private Networks Over the Internet” (1998)
`Patent Owner Preliminary Response, IPR2014-00404, Paper 9 (May
`19, 2014)
`von Sommering, S., Space Multiplexed-Electrochemical Telegraph
`Licklider, J.C.R., Memorandum for Members and Affiliates of the
`Intergalactic Computer Network (December 11, 2001)
`BBN Report No. 1822, Interface Message Processor (January 1976)
`Koblas, D., et al., “SOCKS-Usenix Unix Security Symposium III”
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`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
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`1027
`1028
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`1029
`1030
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`IPR2015-00866
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`1033
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`1034
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`1035
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`1036
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`Exhibit # Reference Name
`1031
`Windows NT for Dummies
`1032
`Mockapetris, P., RFC 882, “Domain Names – Concepts and
`Facilities” (November 1983)
`Mockapetris, P., RFC 883, “Domain Names – Implementation and
`Specification” (November 1983)
`Mockapetris, P., RFC 1034, “Domain Names – Concepts and
`Facilities” (November 1987)
`Mockapetris, P. RFC 1035, “Domain Names – Implemenation and
`Specification” (November 1987)
`Bradner, S., RFC 2026, “The Internet Standards Process – Revision 3”
`(October 1996)
`Rosen, E., et al., RFC 2547, “BGP/MPLS VPNs” (March 1999)
`W3C and WAP Forum Establish Formal Liason Relationship
`(December 8, 1999)
`Wireless Application Protocol (WAP) Architecture Specification
`(April 30, 1998)
`H.323 ITU-T Recommendation (February, 1998)
`Kiuchi, T., et al., “C-HTTP – The Development of a Secure, Closed
`HTTP-Based Network on the Internet” (IEEE 1996) LOC Stamped
`VirnetX’s Opening Claim Construction brief, VirnetX, Inc. v. Cicso
`Systems, Inc., et al., Civil Action No. 6:10-cv-417 (EDTX)
`(November 4, 20111)
`Declaration of Michael Fratto, Reexamination 95/001,682
`U.S. Patent 5,898,830 to Wesinger
`Steiner, J., et al., “Kerberos: An Authentication Service for Open
`Network Systems” (January 12, 1988)
`Harkins, D., et al., RFC 2409, “The Internet Key Exchange (IKE)
`(November 1998)
`Maughan, D., et al., “Internet Security Association and Key
`Management Protocol (ISAKMP)” (November 1998)
`Data-Over-Cable Interface Specifications (DOCIS), Radio Frequency
`Interface Specification (March 26, 1997)
`U.S. Patent 6,886,095 to Hind et al.
`U.S. Patent 8,560,705
`U.S. Patent 8,560,705 File History
`U.S. Patent 6,609,148 to Salo et al.
`Dell Computer Corp., Fiscal 1999 in Review (1999)
`Charlie Scott et al., Virtual Private Networks (2nd ed. 1999)
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`1037
`1038
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`1039
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`1040
`1041
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`1042
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`1043
`1044
`1045
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`1046
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`1047
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`1048
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`1049
`1050
`1051
`1052
`1053
`1054
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`IPR2015-00866
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`Petitioner’s Motion for Pro Hac Vice of Scott M. Border
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`Exhibit # Reference Name
`1055
`Deposition of Fabien Newman Monrose, PhD., IPR2014-00237,
`Exhibit 1083 (October 23, 2014)
`Declaration of Scott M. Border
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`1056
`[NEW]
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 7th day of
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`October, 2015, I caused to be served a true and correct copy of the foregoing
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`Petitioner’s Motion for Pro Hac Vice Admission of Scott M. Border Under 37
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`C.F.R. § 42.10 on the following counsel for Patent Owner:
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`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
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`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
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`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
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`Dated:
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`October 7, 2015
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
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`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
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