March 31, 2006

LexisNexis® announced earlier this week that patent file histories are now available directly from lexis.com. A REEDFAX® file history ordering page is now directly present on lexis.com, allowing file histories to be ordered from the patent search result pages. Reed Technology and Information Services (RTIS) runs the REEDFAX® service (also part of the LexisNexis® Group), which provides U.S., EP, and WO patent documents, file histories, trademark registrations, prior art searches, translations, and other documents and services through its website or toll-free number. Certified copies of patent applications and file wrappers are also available for purchase directly through the USPTO website.

LexisNexis Press Release: LINK
TMCnet News Article: LINK
REEDFAX Website: LINK
USPTO Website for Ordering File Wrappers: LINK

March 30, 2006

It was announced in Monday’s Federal Register that the U.S. Patent and Trademark Office has reopened the window for comments regarding the proposed changes announced in the January 17, 2006 Federal Register. Those proposed changes apply to certain rules regarding practice before the Trademark Trial and Appeal Board, including proposals “to amend [USPTO] rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter partes proceedings to serve on defendants their complaints or claims; to utilize in Board inter partes proceedings as modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and to delete the option of making submissions to the Board in CD-ROM form.” There are also additional amendments proposed for clarification purposes and to correct and confirm the rules to align with current Board practice. The new deadline for comment is May 4th.

March 27, 2006 Federal Register Announcement (Comment Extension): LINK
January 17, 2006 Federal Register Announcement (Original Proposed Changes): LINK

March 29, 2006

Oncolytics Biotech Inc., the Calgary AB based company "focus[ing] on the discovery and development of pharmaceutical products for the treatment of a wide variety of human cancers," recently obtained a patent regarding the prevention of reovirus recognition. U.S. Patent No. 7,014,847 ("Methods for Preventing Reovirus Recognition for the Treatment of Cellular Proliferative Disorders"), issued on March 21st, discloses several methods "directed to the enhancement of the effectiveness of existing reovirus therapies in the treatment of proliferative disorders." The independent claim of the patent teaches a method of treating a mammalian neoplasm by performing a step from a group of administering immune suppressive agents to neoplastic cells, removing anti-reovirus antibodies, administering anti-antireovirus antibodies, and suppressing the immune system, and then "administering to the mammal an oncolytically effective amount of reovirus; wherein the neoplasm comprises cells in which the phosphorylation of PKR is prevented." Oncolytics currently has a number of clinical trials ongoing regarding its REOLYSIN® product, which, according to its website, "has been demonstrated to replicate specifically in tumour cells bearing an activated Ras pathway," and that "REOLYSIN® may represent a novel treatment for Ras activated tumour cells and some cellular proliferative disorders." This is the 15th U.S. patent issued to Oncolytics.

U.S. Patent No. 7,014,847: LINK
Oncolytics Biotech Press Release: LINK
Oncolytics Biotech Website: LINK

March 28, 2006

Last week, the U.S. Patent and Trademark Office published a patent application assigned to Google describing localized wireless advertising. This application, entitled “Method and system to provide advertisements based on wireless access points,” contains a two-sentence Summary section stating “[i]n one embodiment, advertisements are placed in a view of an end user accessing a wireless access point. The advertisements are related to the WAP based on a predetermined criterion.” The application describes targeted marketing depending on the location of the wireless access points (WAP), allowing users to see advertisements specific to that WAP, and also providing a method for providing a portion of advertising revenues to the WAP provider. The first claim of the application claims “[a] method comprising: placing advertisements in a view of an end user accessing a wireless access point (WAP), the advertisements being related to the WAP based on a predetermined criterion.” Note that out of the 24 claims in the application, 19 are independent, describing methods, apparatuses, and machine-readable mediums related to the claimed invention.

U.S. Patent Application Pub. No. 20060059044: LINK
ars technica article: LINK

March 27, 2006

The USPTO recently announced that its Spring 2006 Business Methods Partnership Meeting will be held on Wednesday, May 3, 2006, at the Madison Building (USPTO Madison Auditorium) in Alexandria, Virginia. This half-day meeting focuses on business method issues, with specific topics like the new 35 U.S.C. § 101 guidelines and hoteling listed on the current informal agenda. The USPTO is requiring requests for attendance to be received prior to the meeting, which will be honored on a first-come, first served basis.

USPTO meeting announcement: LINK
E-mail your request to attend by clicking HERE
35 U.S.C. § 101: LINK
Interim guidelines for subject matter eligibility: LINK

March 24, 2006

Bristol-Myers Squibb Company and sanofi-aventis announced earlier this week that they have reached a tentative settlement agreement with Apotex Inc. and Apotex Corp. regarding the pending Plavix® patent infringement lawsuit. The proposed settlement agreement will allow Apotex to market and sell its generic version of Plavix® (clopidogrel bisulfate, prescribed to patients with peripheral arterial disease (PAD) to reduce the risks of heart attack, stroke, and vascular death) in the United States beginning on September 17, 2011, with Apotex paying royalties to Bristol-Myers Squibb and sanofi-aventis after that date, and with Bristol-Myers Squibb and sanofi-aventis splitting an undisclosed payment to Apotex. Apotex was sued in the U.S. District Court for the Southern District of New York for the alleged infringement of U.S. Patent No. 4,847,265 (“Dextro-rotatory enantiomer of methyl alpha-5 (4,5,6,7-tetrahydro (3,2-c) thieno pyridyl) (2-chlorophenyl)-acetate and the pharmaceutical compositions containing it”), of which the validity of the patent was challenged. The license to Apotex will be exclusive with the exception of the Plavix® brand product (currently under agreement whereby sanofi-aventis manufactures the product and Bristol-Myers Squibb markets the product in the U.S.).

U.S. Patent No. 4,847,265: LINK
Bristol-Myers Squibb Press Release: LINK
Sanofi-aventis Press Release (From the Press Room): LINK
Plavix® Product Webpage: LINK

March 23, 2006

Beginning in April, the USPTO will be modifying its First Action System for Trademarks (FAST) so that co-pending trademark applications will be handled by the same examiner during a specific window of time. The update will assign up to ten co-pending trademark applications to the same examiner, and if there are more than ten co-pending applications, the first ten will be assigned to the same examiner. According to the USPTO, "[t]he best method of ensuring consistency in the examination of applications filed by the same applicant is to have the same examining attorney review such applications."

USPTO Press Release: LINK
TMEP §702.03(a) ("Companion Applications"): LINK

March 22, 2006

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the fifteenth through the twentieth patent cases that were appealed from the district court level and decided by the Federal Circuit in 2006.

Lacavera v. Dudas (02/06/2006): regulation of attorney practice before the USPTO, visa restrictions

Digital Control v. The Charles Machine Works (also known as DitchWitch) (02/08/2006):inequitable conduct, standard of review of related summary judgment decision, material misstatements and omissions during prosecution, intentional and affirmative misstatements

Hazelquist v. Guchi Moochie Tackle Co. (02/09/2006): patent infringement & discharge in bankruptcy

Golden Blount, Inc. v. Robert H. Peterson, Co. (02/15/2006): finding of infringement via circumstantial evidence, non-infringing configurations, intent element & reliance on counsel, willful infringement (and standard of appellate review), damage determinations (and standard of appellate review), attorney's fees

Ferring B.V., et al. v. Barr Laboratories, Inc. (02/15/2006): inequitable conduct (materiality and intent), conclusory statements and attorney's arguments relative to summary judgment motions

Curtiss-Wright Flow Control, Corp. v. Velan, Inc. (02/15/2006): preliminary injunctions (and standard of appellate review), claim construction/differentiation, independent and dependent claims and relative scopes

March 21, 2006

Last week Judge Todd Campbell of the United States District Court for the Middle District of Tennessee issued a ban on an album and online song sales for reasons of unauthorized “sampling.” The injunction affects the 1994 debut album “Ready to Die” by the Notorious B.I.G., the New York rapper slain in 1997 at the age of 24. Bridgeport Music and Westbound Records sued Bad Boy Entertainment, University Records, and Sean “Diddy” Combs, alleging sampling of the song “Singing in the Morning” by the Ohio Players. Judge Campbell ruled in favor of the plaintiffs, ordered over $700k in direct damages, $3.5M in punitive damages, and “to vindicate the integrity of copyright law,” he ordered a halt to all sales of the album (traditional brick and mortar as well as online stores), as well as internet downloads and on-air radio play of the title track from the album. “Sampling” is the concept of taking background music, beats, and vocals from earlier-released songs and incorporating them, in part, into a new sound recording.

ABC News Press Release: LINK

March 20, 2006

Last Thursday, the USPTO unveiled its new electronic filing system, EFS-Web, allowing applicants to file electronic patent applications 24 hours a day. One welcome feature is the ability to attach documents in PDF format instead of a USPTO-specific format, which, along with a number of procedural changes, is estimated to shorten the general application process by approximately 30 minutes according to the USPTO. In addition to this announcement, the USPTO has updated the front page of its website, changing from the traditional patent and trademark "file / status / search" features to updated patent and trademark "e-business" features including the aforementioned features plus direct links to the EFS-Web filing system.

USPTO Web-based Filing Press Release: Press Release: LINK
EFS-Web Webpage (for Unregistered Users): LINK
EFS-WEB Webpage (for Registered Users): LINK

March 17, 2006

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the ninth through the fourteenth cases that were appealed from the district court level and decided by the Federal Circuit in 2006.

Applied Medical Resources Corp. v. United States Surgical Corp. (01/24/2006): collateral estoppel, reasonable royalty rates, denial of motion for judgment as a matter of law, evidentiary ruling standard

Minebea Co, LTD. v. Think Outside, Inc., et al. (01/25/2006): standard of review for summary judgment, claim construction (citing Philips)

Summit Technology, Inc. v. Nidek Co., LTD, et al. (01/26/2006): damage and cost calculations, FRCP 54(d)(1), exemplification, types of legal costs included

Purdue Pharma v. Endo Pharmaceuticals (02/01/2006): inequitable conduct (intent and materiality), claim construction, doctrine of prosecution disclaimer

Varco, L.P. v. Pason Systems USA Corp. (02/01/2006): preliminary injunctions, claim construction (and standard of review), preferred embodiment references, disclosed range of equivalents

Medichem, S.A. v. Rolabo, S.L. (02/03/2006): interference-in-fact (and standard of review), obviousness, motivation to combine references, reasonable expectation of success, identification of interfering subject matter, priority of invention, corroboration (and standard of review)

March 16, 2006

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the first eight cases that were appealed from the district court level and decided by the Federal Circuit in 2006.

Golden Eagle USA, LLC v. Consolidated Industrial Corp., et al. (01/04/2006): standing to assert patent infringement claims, standing via license agreement

Fieldturf International, Inc., et al. v. Sprinturf, Inc., et al. (01/05/2006): §271(a) “offer to sell” and bids to supply products

Lizardtech, et al. v. Earth Resource Mapping, et al. (order denying rehearing en banc, citations in concurrence) (01/05/2006): written description requirement

Ncube Corp. (now C-Cor, Inc.) v. Seachange International, Inc. (errata) (01/09/2006): appellate standard of review, claim interpretation, expert opinions, willful infringement, indirect infringement, enhanced damages, doctrine of equivalents

Aspex Eyewear, Inc., et al. v. Miracle Optics, Inc, et al. (01/10/2006): standing of patentee and licensee, joinder of parties, ownership of patent at issue

Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co. (order denying rehearing en banc, citations in dissent) (01/10/2006): §271(f) re: products and methods, interaction with §271(c)

Lamps Plus, Inc, et al. v. Dolan, et al. (01/17/2006): appellate standard of review of jury verdicts, written description requirements, inequitable conduct

Stern v. The Trustees of Columbia University (01/17/2006): inventorship determination, laboratory notebooks

March 15, 2006

On Wednesday, March 22nd, the USPTO will be holding its third Town Hall Meeting on the two proposed patent prosecution rule changes announced in the January 3, 2006 Federal Register. This event will he held at 2PM at the University of Houston Law Center. These proposed rules, of which there has been approximately 40 formal comments submitted to date, include modifications to continuation practice and claim IDENTIFICATION. The following week, on March 27th and 28th, the USPTO is presenting its “CONFERENCE ON INTELLECTUAL PROPERTY IN THE GLOBAL MARKETPLACE,” focusing on inventors & companies looking to market and manufacture their products overseas. This event will be held in McLean, Virginia, at the Ritz-Carlton Hotel at Tyson’s Corner. There is no fee to attend either event.

March 22 Meeting Information: LINK
March 27 and 28 Conference Information: LINK
USPTO “Proposed Rule Changes to Focus the Patent Process in the 21st Century” Webpage: LINK

March 14, 2006

Allergan, Inc., and Alcon, Inc., recently announced a license settlement to end Allergan’s initial lawsuit against Alcon alleging infringement of two of its patents related to brimonidine. This license allows Alcon to sell its 0.15% brimonidine product beginning on September 30, 2009, and royalties will also be due to Allergan at that time. This license agreement grants Alcon rights to U.S. Patent Nos. 6,641,834 and 6,673,337 (both entitled “Compositions containing alpha-2-adrenergic agonist components”). The patents stated that the compositions disclosed “contain certain materials which are effective in at least aiding or assisting in solubilizing the alpha-2-adrenergic agonist components in the compositions, and preferably in environments to which the compositions are administered or introduced, for example, biological environments, such as the human eye.” Allergan currently markets two brimonidine products (Alphagan® P 0.15% and Alphagan® 0.2%) to reduce intraocular pressure (IOP) in patients with ocular hypertension or open-angle glaucoma.

U.S. Patent No. 6,641,834: LINK
U.S. Patent No. 6,673,337: LINK
Allergan Press Release: LINK
Alphagan® P 0.15% Product Page: LINK

March 13, 2006

SpectRx, Inc., a medical technology company focusing on the detection and treatment of diabetes and cancer, was recently issued U.S. Patent No. 7,006,220 (“Apparatus and method for determining tissue characteristics”), expanding the company’s portfolio of disease-detection technologies. This patent teaches a method of determining characteristics of tissues both on the body’s surface and within the body, where “excitation electromagnetic radiation is used to illuminate a target tissue and electromagnetic radiation returned from the target tissue is analyzed to determine the characteristics of the target tissue.” The patent discusses a number of other patented methods in the field of tissue irradiation, but states that several of those methods include expensive components that have “prevented [those] techniques from being used in typical clinical settings.” This patent specifically claims an instrument with a rotatable inner core with a “plurality of interrogation devices” mounted within so that those devices may be rotated to allow that array to take sequential images while minimizing the cross between the individual detection fibers. Guided Therapeutics, Inc, a subsidiary of SpectRx, currently has a non-invasive cervical cancer detection device in the clinical trial stage, wherein light reflected from the cervix allows for non-invasive detection of cancers and precancerous tissues. Mark Faupel, President and COO of Guided Therapeutics, has stated that the patent “may be useful for detecting cervical disease and possibly other cancers as well.”

U.S. Patent No. 7,006,220: link
SpectRx Press Release: link
Discussion of the LightTouch™ Technology; link

March 10, 2006

Microsoft Inc. recently obtained U.S. Patent No. 6,999,083 (“System and method to provide a spectator experience for networked gaming”), describing a system “that generates a spectator experience corresponding to an occurrence of an associated game or event.” Specifically, this milestone 5,000th U.S. patent to Microsoft claims a “spectator engine that aggregates selected game data with other data to provide spectator data,” involving both participants and non-participants, and “a distribution system operative to provide a signal based on the spectator data that is transformable into a representation of the spectator experience.” In the patent, Microsoft states that there is currently “a variety of passive and interactive forms of amusement,” including video games targeting specific age groups, and that video games have become the subject of television shows and movies, but that “[t]ypically, one can either be a participant of the video game or a passive viewer of a television program or movie.” This invention provides for a “spectator experience” generated in real time, allowing not only for the current gaming actions to be experienced, but also “highlights, instant replays, or other enhancements for the resulting spectator experience.” Microsoft has stated that this technology will be incorporated into its Xbox 360™ games, claiming that this innovation would allow a user to “tune into a video game much as they would a sporting event broadcast.” According to the company, it has over 7,000 patents in its portfolio, with a current goal of filing 3,000 patent applications per year.

U.S. Patent No. 6,999,083: LINK
Microsoft Press Release: LINK

March 09, 2006

It was announced last week that The National Pork Board has agreed to purchase the trademarked slogan "Pork. The Other White Meat"® from the National Pork Producers Council for $60 million. This trademark, created in 1985, was determined to be "one of the five most recognizable taglines in American advertising" by a 2000 Northwestern University Study. The National Pork Board will pay $3 million per year for twenty years, with funding coming from the income received by the Pork Checkoff (created in 1986). The President of the National Pork Board, Danita Rodibaugh, stated that replacement costs, development costs, and the appraisal of the slogan were all factors considered prior to purchase.

National Pork Board Press Release: LINK
Brownfield News Article: LINK
Pork. The Other White Meat® Website: LINK
Pork Checkoff Information: LINK

March 08, 2006

On March 2, 2006, U.S. Patent Application Publication No. US2006/0044259 (Serial No. 10/927575) was published, revealing an Apple computer laptop with an extra-wide touchpad surface. This application, entitled "Wide touchpad on a portable computer" includes several images and a description of this "enlarged or wide touchpad." According to the application, an allegedly novel feature of the disclosed invention is that a user can rest his or her palm on one side of the touchpad and continue to control the touchpad using the other hand ("In one embodiment, the touchpad possesses the ability to reject accidental contact when a user does not intend to activate the touchpad (e.g., the touchpad is able to distinguish when a user is contacting the touchpad for intended use or is merely resting his or her palms on a particular portion of the touchpad during a typing activity"). The application further states that "the touchpad may effectively serve as a palm rest . . . in addition to a functional touchpad when an input is interpreted as being an intentional contact by the user." According to the specification, figures 4 and 5 of the published application show the "three regions of touchpad" technology.

U.S. Patent Application Publication No. US2006/0044259: LINK
Macsimum News Article: LINK
Apple Computer Hardware Website: LINK

March 07, 2006

Last Friday, NTP Inc. and Research in Motion Ltd ("RIM") settled their patent dispute, with NTP receiving $612.5 million from RIM to settle all outstanding patent claims. This settlement allows for the continuation of service to RIM’s BlackBerry® handheld device, of which over 4 million people are subscribers. This settlement is the result of an initial 2002 jury verdict that RIM had infringed five patents owned by NTP related to this technology, and grants RIM a perpetual, fully paid up license from NTP covering all of RIM’s products and services related to the patented technology. Jim Balsillie, Chairman and CEO of RIM, extended his "sincere gratitude" to all of its customers as his company "put[s] this lengthy and complicated litigation behind [it]."

RIM Press Release: LINK
Forbes.com News Release: LINK
RIM’s BlackBerry® Device Website: LINK

March 06, 2006

Last week marked the end of two patent disputes for Symbol Technologies Inc., a manufacturer of bar code scanners and the holder of a number of wireless technology patents. On Wednesday, Symbol announced that it had settled a patent dispute with Terabeam, Inc. regarding Symbol’s patents related to 802.11 (the wireless communication standard commonly referred to as Wi-Fi). Under the settlement license agreement, Symbol will acquire certain patents from Terabeam, a license for others, and a settlement fee. On Thursday, Symbol announced that the U.S. District Court of the Southern District of New York upheld an earlier arbitration ruling against Metrologic Instruments Inc. Back in 1996, Metrologic licensed a patented bar code scanning technology from Symbol but stopped paying royalties of $10 per scanner to Symbol in 2001, alleging that the products being sold by Metrologic were no longer covered by the license agreement. Symbol sued Metrologic for breach of contract, and an arbitrator awarded past royalties to Symbol, which was upheld by Judge Rakoff on Thursday.

Symbol’s Terabeam Press Release: LINK
Symbol’s Metrologic Press Release: LINK
Symbol’s Patent Webpage – Over 800 Issued: LINK

March 03, 2006

It was announced this week that Quantum Corporation has agreed to settle its patent infringement lawsuit with Sun Microsystems. This lawsuit, filed in April 2003, was brought by Storage Technology (StorageTek), and Sun acquired StorageTek during the litigation term (August 2005). StorageTek alleged that Quantum had infringed two of its patents, U.S. Patent Nos. 6,236,529 and 6,549,363 (both entitled "Optical servo system for a tape drive"), by Quantum’s use of this technology in its Super DLT™ tape drives. This settlement also resulted in a cross-license agreement between the parties, where Quantum will pay $20 million within the next few months and $5 million more over the next 5 years. According to Rick Belluzzo (Quantum’s Chairman and CEO), this agreement "demonstrates the commitment of Quantum and Sun/StorageTek to building a stronger business partnership centered on meeting customers’ storage and data protection needs."

Quantum Press Release: LINK
U.S. Patent No. 6,236,529: LINK
U.S. Patent No. 6,549,363: LINK

March 02, 2006


On February 2, 2006, U.S. Patent Application Publication No. US2006/0025218 (Serial No. 11/183,737) was published, perhaps giving the world the first view of a new Nintendo® gaming device. This application, entitled "Game apparatus utilizing touch panel and storage medium storing game program," includes an image and a description of functionality not yet existent in current Nintendo® DS™ models. According to the application, an allegedly novel feature of the disclosed invention "is to provide a game apparatus utilizing touch panel and a storage medium storing a game program that are able to control a movement of a character appearing in a game space by use of a touch panel capable of simultaneously detecting two pointing positions." (emphasis added). Additional images disclose the use of two fingers on a touchpad to "control" an object of the game played. According to the DS Advanced article (noted below), "either the DS Lite will have multiple touch functions that have yet to be announced, or another DS is in the works to be launched at some point after the DS Lite."

U.S. Patent Application Publication No. US2006/0025218: LINK
DS Advanced Article: LINK
Nintendo® DS™ Product Website: LINK

March 01, 2006

My blog was temporarily "locked" for posting from sometime Sunday until Tuesday night. I have since posted all articles "on hold" for that period. Those registered for the e-mail distribution received those articles on Monday and Tuesday as scheduled. According to Blogger, I should not experience a similar outage again. Thank you for continuing to visit the Daily Dose of IP blog.
To settle a nearly three-year long patent dispute both in the U.S. and overseas, Inverness Medical Innovations Inc. (Inverness) has agreed to acquire part of the business of Acon Laboratories Inc. (Acon) for $175 million. Inverness initially sued Acon for infringement of its U.S. Patent No. 6,485,982 (“Test Device and Method for Colored Particle Immunoassay”), obtaining a preliminary injunction against Acon in July, 2004 for Acon’s alleged infringement of claims 7 and 19 of the patent (regarding Acon’s “one-step device”). Acon’s “lateral flow immunoassay” business had revenues of $50 million in 2005, with an operating income of $17 million. This purchase by Inverness of part of defendant Acon’s business was justified, according to Ron Zwanziger, CEO of Inverness, because “by acquiring the majority of the rapid diagnostic test business of Acon, who has proven to be an efficient manufacturer of both consumer and professional diagnostic products, we are adding significant revenues at attractive margins as well as manufacturing capabilities that will benefit us companywide.”

Inverness Medical Press Release: LINK
U.S. Patent No. 6,485,982: LINK
Yahoo! News Article: LINK

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Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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The DDIP Author





Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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