Brilliant Instruments, Inc. v. GuideTech, Inc.
Filing
276
ORDER by Judge Claudia Wilken ON ( 251 , 260 ) MOTIONS IN LIMINE AND TRIAL BRIEFS. (ndr, COURT STAFF) (Filed on 3/25/2014)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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GUIDETECH, INC.,
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Plaintiff,
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United States District Court
For the Northern District of California
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ORDER ON MOTIONS
IN LIMINE AND
TRIAL BRIEFS
v.
BRILLIANT INSTRUMENTS, INC.
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No. C 09-5517 CW
(Re: Docket Nos.
251, 260, 261,
262, 267)
Defendant.
________________________________
AND ALL RELATED COUNTERCLAIMS
/
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On March 19, 2014, the Court held a pretrial conference and
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heard arguments regarding the parties’ motions in limine and other
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pretrial motions.
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I.
The Court issues the following rulings:
Motions in Limine
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a.
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No. 1 - Motion to exclude Dr. West’s testimony that “a
Brilliant’s Motions
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processor circuit configured to receive said time signals . . . to
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determine a time interval,” or its equivalent: DENIED.
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inconsistencies in Dr. West’s testimony go to its weight, not to
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its relevance and reliability and may be explored by Brilliant
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through cross-examination.
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Any
No. 2 - Motion to exclude reasonable royalty theory: GRANTED.
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At the hearing, GuideTech represented that it would not be
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pursuing a reasonable royalty theory of damages.
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Nos. 3, 4, 5, 6, 7 - Motion to exclude lost profits theory:
DENIED.
Because GuideTech produced some evidence of its lost
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profits theory during discovery, it would be inappropriate to
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exclude all evidence supporting this theory.
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present evidence it has disclosed to Brilliant and must cite
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before trial where such evidence was disclosed.
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GuideTech may only
No. 8 - Motion to exclude testimony that the relevant market
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is a two-supplier market: DENIED.
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including Ronen Sigura, may offer their percipient knowledge of
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the relevant market.
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somewhat inconsistent statement that GuideTech investigated
United States District Court
For the Northern District of California
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GuideTech’s witnesses,
Brilliant can impeach Sigura with his
whether a third company was a competitor in the relevant market.
No. 9 - Motion to exclude Tabatabaei as an expert witness:
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GRANTED.
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of the ‘231, ‘671, and ‘649 patents, but not one concerning
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infringement; Tabatabaei may not testify as an expert on
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infringement.
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personal knowledge based on his employment with GuideTech during
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the time Brilliant was allegedly infringing.
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Tabatabaei served an expert report only on the validity
However, he may testify about facts of which he has
No. 10 - Motion to exclude evidence supporting permanent
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injunction: DENIED.
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has disclosed to Brilliant that supports its request for a
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permanent injunction.
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issues it may be presented to the jury; if relevant only to the
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injunction request it may be presented to the Court alone.
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request for an injunction will not be alluded to before the jury.
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GuideTech may present any evidence that it
If the evidence is also relevant to jury
The
No. 11 - Motion to exclude evidence of pending or prior legal
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proceedings: GRANTED.
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involving the same parties are not relevant to the patent
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infringement issues in this case.
Proceedings in the state court action
See Fed. R. Evid. 401, 403.
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No. 12 - Motion to exclude documents produced after February
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19, 2014: DENIED.
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fashion and any disorganization was substantially harmless.
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GuideTech also may use Dr. West’s demonstratives at trial, so long
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as they are disclosed before trial and are within the scope of Dr.
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West’s expert report, as GuideTech represents.
GuideTech produced these documents in a timely
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b.
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No. 1 - Motion to exclude reference to Court’s claim
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construction and summary judgment order: GRANTED IN PART.
GuideTech’s Motions
The
United States District Court
For the Northern District of California
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Court’s claim constructions will of course be available for
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purposes of instructing the jury.
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However, the Court’s summary judgment order on infringement
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may not be shared with the jury because any probative value is
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outweighed by the prejudicial effect and danger of confusing the
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issues.
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order is relevant for determining willfulness, i.e., whether “the
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infringer acted despite an objectively high likelihood that its
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actions constituted infringement of a valid patent.”
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Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en
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banc).
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disputed issue regarding literal infringement of the ‘671 and ‘649
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patents, which was affirmed by the Federal Circuit, might be
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probative of whether Brilliant acted willfully.
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jury may decide factual questions underlying the willfulness
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inquiry, the objective aspects of willfulness, which is where the
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Court’s summary judgment order is relevant, is a question that
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must be decided by the Court.
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W.L. Gore & Associates, Inc., 682 F.3d 1003, 1007 (Fed. Cir.
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Fed. R. Evid. 403.
Brilliant argues the summary judgment
In re
Indeed, the Court’s summary judgment order finding no
But, while the
Bard Peripheral Vascular, Inc. v.
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2012).
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willfulness, there is no need to present the summary judgment
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order to the jury.
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of GuideTech’s infringement case may confuse the jury.
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Because the Court will make the ultimate finding on
Additionally, presenting the Court’s opinion
No. 2 - Unopposed motion to exclude reference to the Federal
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Circuit opinion: GRANTED.
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Federal Circuit’s opinion would be prejudicial and would confuse
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the jury.
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Both parties agree that admitting the
No. 3 - Motion to exclude mention of non-infringement of the
United States District Court
For the Northern District of California
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‘959, ‘767, ‘382, and ‘610 patents: GRANTED.
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originally asserted these patents in the present case, at summary
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judgment GuideTech chose not to pursue them further.
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that GuideTech dropped these patents is not relevant to willful
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infringement of the patents remaining in the suit and further
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would be confusing and unfairly prejudicial.
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Although GuideTech
The fact
No. 4 - Motion to exclude any reference to the invalidity of
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the ‘231, ‘649, and ‘671 patents: GRANTED.
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at summary judgment that Brilliant’s invalidity case was barred by
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assignor estoppel.
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to defend against GuideTech’s doctrine of equivalents case.
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Access Floors, Inc. v. Interface Architectural Res., Inc., 279
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F.3d 1357, 1367, 1369 (Fed. Cir. 2002).
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The Court determined
Brilliant may nevertheless utilize prior art
Tate
No. 5 - Motion to exclude any mention of previously-excluded
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prior art references: DENIED.
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Dr. Kaliski’s report to the extent that it relied on certain prior
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art references for its invalidity opinion expressly stated that
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Dr. Kaliski may rely on the references for other purposes.
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No. 85 at 4.
The Court’s previous order striking
As discussed previously, Dr. Kaliski may only
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Docket
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present opinions that he has properly disclosed in an expert
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report.
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II.
Pretrial Motions
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a.
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As the declaratory judgment defendant, GuideTech moves to
Motion to Realign Parties
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realign the parties so that it is the plaintiff and proceeds first
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at trial.
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"primary purpose" of the litigation to determine, in their
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discretion, whether to realign the parties in accordance with the
In the Ninth Circuit, district courts look to the
United States District Court
For the Northern District of California
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primary dispute in controversy.
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Datamize, LLC, 2003 WL 25841157, at *3 (N.D. Cal.) (citing
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Prudential Real Estate Affiliates, Inc. v. PPR Realty, Inc., 204
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F.3d 867, 873 (9th Cir. 2000)).
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at issue, GuideTech is the sole party bearing the burden of proof
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in this case.
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so that GuideTech is the plaintiff and Brilliant is the defendant.
Plumtree Software, Inc. v.
Because invalidity is no longer
The motion is GRANTED and the parties are realigned
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b.
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Brilliant moves to bifurcate the issue of willfulness from
Motion to Bifurcate Willfulness from Liability
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the issue of infringement.
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no special risk of prejudice here.
Bifurcation would not serve
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the interests of judicial economy.
The motion is DENIED.
Fed. R. Civ. P. 42(b).
The Court sees
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c.
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At claim construction, the Court construed “defined within a
Motion to Clarify Claim Construction
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signal channel” as “contained within a signal channel.”
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No. 137 at 8.
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constructions on appeal and the Federal Circuit accepted the
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Court’s claim constructions in finding a disputed issue of
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infringement based on the above-referenced term.
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Docket
Neither party challenged the Court’s claim
Brilliant
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Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1345 (Fed.
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Cir. 2013).
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claim construction does not include “an embodiment that has a
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measurement circuit that is present in more than one channel.”
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Brilliant contends the Federal Circuit did not consider this
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Court’s reasoning rejecting GuideTech’s proposed construction on
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the basis that it “captures an embodiment that has a measurement
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circuit that is present in more than one channel, which is not
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supported by the claim language, the specification or Figure 1.”
Brilliant now moves to “clarify” that the Court’s
United States District Court
For the Northern District of California
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Docket No. 137 at 7-8.
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however, the Federal Circuit did consider Brilliant’s present
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argument.
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(“Brilliant argues that it cannot infringe because the district
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court, as a matter of claim construction, rejected GuideTech’s
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argument that ‘defined within’ allowed a measurement circuit to be
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present in more than one channel.”).
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nevertheless found a disputed issue as to infringement because
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GuideTech’s evidence showed that, when the accused products
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operate in “One-Channel-Two-Edge mode,” “the only active signal
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path flows from the input to two measurement circuits.”
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Court thus declines to adopt Brilliant’s proposed change because
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it contradicts the Federal Circuit’s application of the Court’s
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claim construction.
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Contrary to Brilliant’s assertion,
See Brilliant Instruments, Inc., 707 F.3d at 1345
The Federal Circuit
Id.
The
IT IS SO ORDERED.
Dated:
3/25/2014
CLAUDIA WILKEN
United States District Judge
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