`571-272-7822 Date: September 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLER MASTER CO., LTD.,
`Petitioner,
`v.
`AAVID THERMALLOY LLC,
`Patent Owner.
`
`IPR2019-00144
`Patent 7,066,240 B2
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`
`Before LINDA E. HORNER, KEN B. BARRETT, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`HORNER, Administrative Patent Judge.
`
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`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)(2)
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`IPR2019-00144
`Patent 7,066,240 B2
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`I.
`INTRODUCTION
`Cooler Master Co., Ltd., (“Petitioner”) filed a Petition requesting inter
`partes review of U.S. Patent No. 7,066,240 B2 (“the ’240 patent,”
`Ex. 1001). Paper 2 (“Pet.”). The Petition challenged the patentability of
`claims 9‒13 of the ’240 patent (“the challenged claims”) on the grounds of
`obviousness under 35 U.S.C. § 103. Petitioner asserted two grounds of
`unpatentability. Id. at 5. Aavid Thermalloy LLC (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”). On June 6,
`2019, the Board instituted inter partes review of all the challenged claims on
`all of the asserted grounds. Paper 9 (“Inst. Dec.”), 40.
`Subsequently, Patent Owner filed a Response (Paper 29, “PO Resp.”)
`to the Petition, Petitioner filed a Reply (Paper 35, “Pet. Reply”) to the Patent
`Owner Response, and Patent Owner filed a Sur-Reply (Paper 41, “PO Sur-
`Reply”). An oral hearing was held on March 5, 2020, and a transcript of the
`hearing is included in the record. Paper 54 (“Tr.”).
`We entered a Final Written Decision pursuant to 35 U.S.C. § 318(a).
`Paper 55 (“Final Dec.”). We determined that Petitioner had not shown by a
`preponderance of the evidence that claims 9–12 of the ’240 patent are
`unpatentable, but Petitioner had shown by a preponderance of the evidence
`that claim 13 of the ’240 patent is unpatentable. Final Dec. 74.
`On July 6, 2020, Petitioner filed a Request for Rehearing (Paper 56)
`and on July 14, 2020, Petitioner filed a Corrected Request for Rehearing
`(Paper 57, “Request” or “Req. Reh’g”) of our Final Written Decision.1
`Petitioner seeks reconsideration of the finding that Petitioner had not shown
`
`
`1 Citations in this Decision to the Request refer to Paper 57.
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`2
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`IPR2019-00144
`Patent 7,066,240 B2
`that claim 11 of the ’240 patent is unpatentable. For the reasons provided
`below, Petitioner’s Request for Rehearing is denied.
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply. Id. When reconsidering a decision on institution, we review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
`III. ANALYSIS
`Petitioner asserts that the Board’s finding as to claim 11 “is based on
`the incorrect construction for the phrase, ‘at least one spacer extending
`between and contacting said first and second plates.’” Request 1 (emphasis
`in original). In the Final Decision, the Board construed “at least one spacer
`extending between and contacting said first and second plates” as referring
`to a “structure separate from and in contact with the first and second plates
`and configured to maintain a space or clearance between the plates.” Final
`Dec. 23.
`Petitioner argues: (1) the Board misapprehended the intrinsic
`evidence regarding the spacer limitation; (2) the spacer limitation must be
`construed to include depressions because that is how the specification
`describes them; and (3) Nakamura discloses the limitation of “spacer
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`IPR2019-00144
`Patent 7,066,240 B2
`extending between and contacting” the two plates under the correct
`construction. Request 2, 11, 13. We address each argument in turn below.
`A. Petitioner’s assertion that the Board misapprehended the intrinsic
`evidence regarding the spacer limitation
`Petitioner asserts that the Board misapprehended the intrinsic
`evidence in three ways: (1) the Board incorrectly interpreted two distinct
`claim terms, “contacting” and “bonded to,” as the same thing; (2) the
`construction that the spacer be “separate from . . . the first and second
`plates” excludes depressions, which contradicts the express disclosure in
`the ’240 patent; and (3) the construction excludes preferred embodiments of
`“spacer” described and depicted in the specification. Request 2‒3.
`As to the first asserted error, Petitioner argues “[i]n adopting
`Patentee’s construction, the Board apparently (and incorrectly) interpreted
`two distinct claim terms, ‘contacting’ and ‘bonded to,’ as the same thing,
`even though they are not the same in the context of the ’240 patent or
`otherwise.” Request 3 (citing Final Dec. 22). Petitioner argues that “the
`Board seemed to rely on the comparison between how solid columns and
`embossed depressions are differently ‘bonded to’ the plates to conclude that
`depressions could not be ‘contacting’ both plates.” Request 4. Petitioner
`argues that the ’240 patent uses these terms differently so that “how a
`spacers is ‘bonded to’ one or both plates is a different matter from whether
`the spacer is ‘contacting’ the two plates.” Id.
`The Board’s construction of a “spacer extending between and
`contacting said first and second plates,” as reproduced above, does not
`include any reference to how–or whether–the spacer is bonded. Final Dec.
`23. Rather, in determining the scope of a spacer “extending between and
`contacting” both plates, the Board looked to the description of spacers
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`IPR2019-00144
`Patent 7,066,240 B2
`provided in the ’240 patent. In the Final Decision, the Board observed that
`the ’240 patent describes two types of spacers: (1) embossed depressions
`that are formed in one plate with the portion of the depression which
`contacts the opposite plate bonded to that opposite plate, and (2) solid
`columns that are separate from, and bonded to, both plates. Id. at 22. The
`Board interpreted the claimed “spacer extending between and contacting”
`the two plates as referring to the latter type. Id. at 23. The Board did not
`focus on how the spacer is bonded to the plate, rather the Board construed
`the claim language of “extending between and contacting” in light of the
`Specification of the ’240 patent to discern whether the language
`encompasses both types of disclosed spacers or only one of the types of
`spacer.
`Petitioner argues that the panel erred because “the ’240 patent uses the
`terms ‘contacting’ and ‘bonded to’ differently.” Request 4. For instance,
`Petitioner argues that “claim 11 of the ’240 patent recites ‘contacting’ and
`‘bonded to’ as two distinct terms, so they should have different meanings.”
`Id. To the extent “bonded to” may be a narrower term than “contacting,”
`any such difference in scope fails to support Petitioner’s position. Claim 11
`recites “at least one depression formed in said first plate which . . . is
`sealingly bonded to said second plate” and “at least one spacer extending
`between and contacting said first and second plates.” Ex. 1001, 6:38‒41,
`49‒50. The fact that the claim uses different language to recite a depression
`“formed in” one plate and “bonded to” the other plate, as compared to the
`language used to recite a spacer “extending between and contacting” both
`plates supports the Board’s reading of the claim language as drawing a
`distinction between a depression and the claimed spacer. The claim
`language does not use “contacting” to describe the depression with respect to
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`Patent 7,066,240 B2
`the first plate. This confirms our view, as expressed in the Final Decision,
`that a depression would not be understood to contact the plate in which it is
`formed without rendering the word “contacting” meaningless. Final Dec. 23
`(citing Ex. 2002 ¶ 116).
`Petitioner also identifies portions of the’240 patent that “describe[]
`components as contacting each other without indicating they are also bonded
`to each other.” Request 4 (citing Ex. 1001, Abstract (“the region which
`contacts the heat source”), 1:35‒36 (“the heat sink surface which contacts
`the device to be cooled”), 4:11 (“cover plate 20 is held in intimate contact
`with fin plate 38”)). None of these examples describes, however, a
`component formed in the plate itself as also “contacting” the plate.
`Petitioner relies, in part, on the description provided in column 2, lines
`3 through 11 of the ’240 patent as support for a construction that
`encompasses depression spacers. Request 5. Petitioner argues that “a
`pattern of spacers extending between and contacting the two plates”
`described in this portion of the patent is a genus of spacers that includes
`embossed depressions and solid columns. Id. at 5‒6.
`As an initial matter, we agree with Petitioner that “spacer,” when that
`term is considered without the surrounding language in the claim, is a
`generic term encompassing both embossed (depression) spacers and solid
`column spacers. When, however, the term “spacer” is considered in light of
`the surrounding claim language, the phrase “extending between and
`contacting” the two plates limits the claimed spacer to the species where the
`spacer is separate from the two plates. We disagree with Petitioner’s view
`that one having ordinary skill in the art would read this portion of the ’240
`patent to mean that embossed spacers are spacers extending from and
`contacting both of the recited plates.
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`Patent 7,066,240 B2
`Instead, we reviewed the evidence, and in the Final Decision, we
`adopted the Patent Owner’s proffered reading of this portion of the ’240
`patent. See Final Dec. 23 (citing PO Resp. 25 and Ex. 2002 ¶ 116).
`Specifically, Dr. Faghri opined:
`when the last sentence of the above-quoted paragraph [Ex. 1001,
`2:3-11] states that ‘[t]hese spacers can be solid columns,
`embossed depressions formed in one of the plates, or a mixture
`of the two,’ it is referring to the preceding sentence and
`describing examples of structure that can be used to ‘prevent the
`plates from bowing inward.’ It is not identifying ‘embossed
`depressions formed in one of the plates’ as ‘spacers extending
`between and contacting the two plates.’ This is at least because
`a depression would not be understood to contact the plate in
`which it is formed; otherwise, the word ‘contacting’ becomes
`meaningless.
`Ex. 2002 ¶ 116.
`Petitioner argued in the Petition that “[r]eading the above passage
`[Ex. 1001, 2:3‒9], a [person having ordinary skill in the art] would have
`understood that, in the context of the ’240 patent, the word ‘spacer’ simply
`meant a structure used to create or maintain space between the plates.”
`Pet. 24. Dr. Pokharna supports this interpretation of lines 3 through 9 of
`column 2 and the understanding of “spacer” in his declaration. Ex. 1002
`¶ 50. The problem with this construction is that Dr. Pokharna and Petitioner
`do not address in this discussion of column 2 of the ’240 patent, the meaning
`of “extending between and contacting.” Instead, they propose a construction
`of “spacer” that fails to consider the context of the surrounding claim
`language.
`Petitioner further argued in the Petition, and Dr. Pokharna testified,
`that a person of ordinary skill in the art would have understood from the
`subsequent sentence in lines 9 through 11 of column 2 that the claimed
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`IPR2019-00144
`Patent 7,066,240 B2
`“depression” could have functioned as a “spacer.” Pet. 24; Ex. 1002 ¶ 51.
`Again, this testimony does not address the claim language “extending
`between and contacting said first and second plates.”
`We agree that a person having ordinary skill in the art would
`understand that a depression can perform the function of a spacer, but we
`disagree that a person having ordinary skill in the art would understand this
`portion of the ’240 patent as describing that the depression-type of spacer
`extends between and contacts both plates. We disagree with Petitioner that
`the language in lines 9 through 11 of column 2 is inconsistent with this
`construction. Instead, we agree with, and rely on Patent Owner’s expert’s
`testimony as to how a person having ordinary skill in the art would
`understand this disclosure.
`In its Rehearing Request, Petitioner argues that
`because “the spacers” in the second sentence [of lines 3 through
`11 of column 2] are the same as the “pattern of spacers” in the
`first sentence, the “two” types of spacers, “solid columns” and
`“embossed depressions formed in one of the plates,” referenced
`in the third sentence are both “contacting the two plates.”
`Request 5 (citing Pet. 24; Pet. Reply 14‒15). Although Petitioner argued in
`the cited portions of both the Petition and the Reply that Patent Owner’s
`proposed construction is “inconsistent with the specification,” Petitioner
`presents this grammatical argument parsing the language of this passage for
`the first time in its rehearing request, unsupported by expert testimony. We
`do not find Petitioner’s argument persuasive. Rather, as in the Final
`Decision, we find Patent Owner expert’s reading of this passage to be more
`persuasive in light of the remainder of the specification and in the context of
`the totality of the description provided in the ’240 patent. See Final Dec. 23
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`Patent 7,066,240 B2
`(adopting Dr. Faghri’s reading of this passage as set forth in Ex. 2002
`¶ 116).
`Petitioner cites to disclosure in the ’240 patent of bonding of solid
`columns to the plates and bonding of depressions to one of the plates as
`being focused on bonding rather than contacting. Request 6 (citing
`Ex. 1001, 2:29‒36). Petitioner argues that “while the through-hole
`providing depressions may be bonded to only one plate, they can
`nonetheless be extending between and contacting two plate at the same time
`in the context of the ‘240 patent.” Id. at 7.
`We are not persuaded by Petitioner’s asserted distinction between
`“bonding” and “contacting.” The passage in the ’240 patent relied on by
`Petitioner fails to support Petitioner’s assertion that a depression formed in a
`plate can also contact the same plate. Likewise, we find unavailing
`Petitioner’s assertion that other portions of the ’240 patent do not contradict
`Petitioner’s view that a depression can be viewed as extending between and
`contacting two plates. Request 7 n.1. If anything, Petitioner’s citations
`support the view that an embossed spacer does not “contact” the plate in
`which it is embossed. For instance, the ’240 patent describes, in column 2
`lines 34 to 35, spacers embossed in one plate, where “the portions of the
`depressions which contact the opposite plate [are bonded] to that opposite
`plate.” Ex. 1001, 2:34‒35. Thus, the patent uses “contacting” to describe
`only the relationship between the extended end of the depression and the
`plate opposite to the plate in which the depression is formed. Similarly, the
`’240 patent describes in column 3, lines 40 to 41 that when contact plate 18
`and cover plate 20 are joined, “the flat portions of depressions 26 are in
`contact with inner surface 28 of contact plate 18.” Id. at 3:40‒41. By
`contrast, the ’240 patent does not describe the embossed end of the
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`Patent 7,066,240 B2
`depressions being “in contact with” or “contacting” the plate in which it is
`embossed.
`For the reasons discussed above, we do not see how a spacer can be
`embossed in a plate and, at the same time, contact that same plate. We find
`Patent Owner’s expert more credible than Petitioner’s expert as to how a
`person having ordinary skill in the art would have understood the description
`of the types of spacers in the challenged patent and which type of spacers are
`described as “extending between and contacting” both plates.
`For these reasons, we did not misapprehend the evidence presented as
`to the term “contacting.” We considered Petitioner’s arguments and
`evidence and Patent Owner’s arguments and evidence, and determined
`Patent Owner had the better position.
`Along these same lines, Petitioner argues in its second asserted error
`that our construction that requires the “spacer extending between and
`contacting” the two plates be “separate from . . . the first and second plates”
`contradicts the specification of the ’240 patent. Request 7. Petitioner argues
`that this “separate from” construction amounts to a negative limitation that
`contradicts specification. Id. The Request relies, in part, on the same
`portion of column 2, lines 3 through 11 of the ’240 patent that we discussed
`above. Id. For the reasons discussed above, we do not agree that our
`construction is inconsistent with this portion of the ’240 patent.
`Petitioner supports its proposed construction by reference to the
`Figures and corresponding description of some embodiments of spacers as
`solid columns 44 integral with the bottom plate and depressions 26 integral
`with the top plate. Request 8‒9 (citing Ex. 1001, 2:3‒11, 3:38‒42, 4:20‒24
`and references annotated Figures 1, 2). Petitioner argues that “the
`specification suggests that the recited ‘spacer’ should not always be
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`Patent 7,066,240 B2
`‘separate from … the first and second plates.’” Id. at 8‒9. Petitioner asserts
`that “not only is there no support for this negative limitation, but the
`specification also contradicts it.” Id. at 9.
`First, we disagree with Petitioner’s assertion that our claim
`construction of “at least one spacer extending between and contacting” the
`two plates introduces a negative limitation. Our interpretation was not
`limited to construction of only the term “spacer.” Rather, we interpreted the
`express language in the claim that the spacer is “extending between and
`contacting” the two plates, and in doing so, determined that this express
`recitation narrowed the claimed “spacer” to not encompass spacers formed
`by depressions.
`Second, we disagree with Petitioner’s assertion that the requirement
`for the spacer to be separate from both plates in order to meet the claim
`limitation that requires the spacer to be “extending between and contacting”
`both plates is contradicted by the specification. Indeed, as we noted in our
`claim construction in the Final Decision, the ’240 patent describes a spacer
`that is separate from both plates. Final Dec. 22 (citing Ex. 1001, 2:32‒36).
`We agree with Petitioner that this specific embodiment of a spacer that is
`separate from both plates is not shown in the exemplary Figures of the ’240
`patent. But that the applicant did not depict the separate spacer embodiment
`in a figure does not erase the description of this embodiment from the
`specification. Petitioner has pointed us to no authority that supports the
`view that a claim interpretation of explicit claim language to encompass only
`an embodiment disclosed in the patent’s text but not depicted in an
`accompanying figure is incorrect or inconsistent with the specification. The
`claim recites limitations directed to one disclosed spacer embodiment that
`excludes another disclosed spacer embodiments shown in the Figures.
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`Patent 7,066,240 B2
`Petitioner argues that “[t]he Board appeared to believe that, because
`the ‘depression’ and ‘spacer’ limitations are separately recited elements in
`claim 11, ‘spacer’ must be construed to exclude ‘depression’ so that there is
`no overlap between them.” Request 9. This is a mischaracterization of our
`claim construction analysis. The Board did not simply rely on separate
`recitation of these two limitations to determine that the recited “spacer” does
`not encompass an embossed depression. Rather, the Board relied on the
`additional surrounding claim language reciting a specific type of spacer (i.e.,
`one that is separate from the plates). Final Dec. 22.
`Finally, as to the third asserted error involving our review of the
`intrinsic evidence, Petitioner argues that the Board’s construction is
`incorrect because it excludes preferred embodiments of “spacer” described
`in specification. Request 10 (arguing that “[t]he ’240 patent discloses
`‘spacer’ embodiments such as the ‘embossed depressions formed in one of
`the plates’ (’240, 2:10), the ‘spacers embossed in one plate’ and bonded to
`the ‘opposite plate’ (id., 2:33‒35), as well as depressions 26 and solid
`columns 44 (id., Figs. 1‒2) that are integral to one of the two plates.”). As
`explained above, the description of the spacers in the ’240 patent
`encompasses generally various types of spacers, including the embossed
`spacer embodiments shown in the Figures, but the claim language is
`expressly limited to one type of spacer that is separate from both plates.
`For the foregoing reasons, Petitioner has not shown that we
`misapprehended or overlooked relevant law, arguments, or evidence related
`to the “at least one spacer extending between and contacting said first and
`second plates” of claim 11.
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`Patent 7,066,240 B2
`B. Petitioner’s assertion that the spacer limitation must be construed to
`include depressions because that is how the specification describes them
`Similar to Petitioner’s first assertion that we misapprehended the
`intrinsic evidence in reaching our claim construction, Petitioner’s second
`assertion relies on the same portions of the ’240 patent to argue that the
`spacer limitation must be construed to include depressions to be consistent
`with the specification. Request 11‒13 (citing Ex. 1001, 2:3‒11 (discussed
`above, describing extending between and contacting) and 2:29‒36
`(discussed above, describing bonding)). Petitioner argues that the Board
`overlooked distinctions in the specification between “bonding” and
`“extending between and contacting”:
`the choices the Patentee has made with respect to describing
`“bonding” and “extending between and contacting” in the
`specification were different. The fact the specification made a
`distinction as to “bonding” shows that the Patentee could have
`done so as to “extending between and contacting” as well, but
`chose not to.
`Id. at 13.
`We disagree with this asserted distinction, or that the distinction is as
`clear from the intrinsic evidence as Petitioner asserts. For the reasons
`discussed in detail above, we find that Patent Owner’s expert’s explanation
`of these portions of the specification of the ’240 patent is the better one.
`For the foregoing reasons, Petitioner has not shown that we
`misapprehended or overlooked relevant law, arguments, or evidence related
`to the “at least one spacer extending between and contacting said first and
`second plates” of claim 11.
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`C. Petitioner’s assertion that Nakamura discloses the limitation of “spacer
`extending between and contacting” the two plates under the correction
`construction
`Petitioner argues that under the “correct” construction, which includes
`a spacer embossed in one of the plates as the claimed spacer “extending
`between and contacting” both plates, Nakamura’s concavities 9 embossed in
`the top and bottom plates that abut each other when the plates are joined
`meet this claim limitation. Request 13. Petitioner interprets Nakamura as
`disclosing “the two halves of the whole ‘spacer’ together [] extending from
`the first and second plates, respectively, towards and contacting the other
`plates in-between them.” Id. at 14 (citing Pet. 65‒67). “Thus, the spacer as
`a whole is extending between and contacting the two plates.” Id.
`This assertion is moot because we disagree with Petitioner’s
`arguments about claim construction of “at least one spacer extending
`between and contacting said first and second plates.” Further, even if we
`adopted Petitioner’s claim construction, we agree with the Patent Owner’s
`argument, raised in its Patent Owner Response, that “[t]he Petition provides
`no basis for relying on the combination of two concavities 9 (distinct from
`the surfaces in which they are formed) as the claimed spacer. Neither of the
`concavities ‘extend[s] between’ the surfaces but only extend half-way across
`the container.” PO Resp. 48 n.5; Ex. 2002 ¶ 154.
`For the foregoing reasons, Petitioner has not shown that we
`misapprehended or overlooked relevant law, arguments, or evidence related
`to the “at least one spacer extending between and contacting said first and
`second plates” of claim 11 or related to Petitioner’s assertion that Nakamura
`discloses this limitation.
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`D. Conclusion
`For the foregoing reasons, Petitioner has not shown that we
`misapprehended or overlooked Petitioner’s arguments or evidence in
`determining that Petitioner failed to show by a preponderance of evidence
`that challenged claim 11 of the ’240 patent is unpatentable.
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`FOR PETITIONER:
`
`Erik B. Milch
`Andrew C. Mace
`Reuben Chen
`COOLEY LLP
`emilch@cooley.com
`amace@cooley.com
`rchen@cooley.com
`
`
`FOR PATENT OWNER:
`
`Kenneth M. Albridge, III
`Kevin P. Moran
`Brian J. N. Marstall
`MICHAEL BEST & FRIEDRICH LLP
`kmalbridge@michaelbest.com
`kpmoran@michaelbest.com
`bjmarstall@michaelbest.com
`
`
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