Essity Hygiene and Health Aktiebolag et al v. Cascades Canada ULC
Plaintiff: SCA Hygiene Products Aktiebolag, Essity Hygiene and Health Aktiebolag and Essity Professional Hygiene North America LLC
Defendant: Cascades, Inc. and Cascades Canada ULC
Counter Defendant: SCA Tissue North America, LLC
Case Number: 3:2017cv00282
Filed: April 13, 2017
Court: US District Court for the Western District of Wisconsin
Office: Madison Office
County: Out of Country
Presiding Judge: William M Conley
Referring Judge: Stephen L Crocker
Nature of Suit: Patent
Cause of Action: 35:145
Jury Demanded By: Both
Docket Report

This docket was last retrieved on April 3, 2020. A more recent docket listing may be available from PACER.

Date Filed Document Text
April 3, 2020 Filing 60 Status Report by Plaintiffs Essity Hygiene and Health Aktiebolag, Essity Professional Hygiene North America LLC (Boor, Anita)
October 4, 2019 Filing 59 Status Report by Plaintiffs Essity Hygiene and Health Aktiebolag, Essity Professional Hygiene North America LLC. (Tomaselli, Anthony)
September 3, 2019 Opinion or Order Filing 58 ** TEXT ONLY ORDER **ORDER granting #55 Motion to Substitute Attorney. Signed by Magistrate Judge Stephen L. Crocker on 9/3/2019. (voc)
September 3, 2019 Opinion or Order Filing 57 ** TEXT ONLY ORDER **ORDER granting #54 Motion to Substitute Attorney. Signed by Magistrate Judge Stephen L. Crocker on 9/3/2019. (voc)
August 28, 2019 Opinion or Order Filing 56 ** TEXT ONLY ORDER **ORDER granting #53 Motion to Admit Martin J. Black Pro Hac Vice. Signed by Magistrate Judge Peter A. Oppeneer on 8/28/2019. (lak)
August 28, 2019 Filing 55 Motion to Substitute Attorney by Plaintiff Essity Professional Hygiene North America LLC. Motions referred to Magistrate Judge Stephen L. Crocker. (Black, Martin)
August 28, 2019 Filing 54 Motion to Substitute Attorney by Plaintiff Essity Hygiene and Health Aktiebolag. Motions referred to Magistrate Judge Stephen L. Crocker. (Black, Martin)
August 28, 2019 Filing 53 Motion to Admit Martin J. Black Pro Hac Vice. ( Pro Hac Vice fee $ 100 receipt number 0758-2529548.) by Plaintiffs Essity Hygiene and Health Aktiebolag, Essity Professional Hygiene North America LLC. Motions referred to Magistrate Judge Stephen L. Crocker. (Black, Martin)
August 26, 2019 Opinion or Order Filing 52 ** TEXT ONLY ORDER **ORDER granting #49 Motion to Substitute Attorney by Plaintiff Essity Professional Hygiene North America LLC. Signed by Magistrate Judge Stephen L. Crocker on 8/26/2019. (voc)
August 26, 2019 Opinion or Order Filing 51 ** TEXT ONLY ORDER **ORDER granting #48 Motion to Substitute Attorney by Plaintiffs Essity Hygiene and Health Aktiebolag. Signed by Magistrate Judge Stephen L. Crocker on 8/26/2019. (voc)
August 26, 2019 Opinion or Order Filing 50 ** TEXT ONLY ORDER **ORDER granting #47 Motion to Admit Kevin M. Flannery Pro Hac Vice. Signed by Magistrate Judge Peter A. Oppeneer on 8/26/2019. (lak)
August 26, 2019 Filing 49 Motion to Substitute Attorney by Plaintiff Essity Professional Hygiene North America LLC. Motions referred to Magistrate Judge Stephen L. Crocker. (Flannery, Kevin)
August 26, 2019 Filing 48 Motion to Substitute Attorney by Plaintiffs Essity Hygiene and Health Aktiebolag. Motions referred to Magistrate Judge Stephen L. Crocker. (Flannery, Kevin) Modified on 8/26/2019. (lak)
August 26, 2019 Filing 47 Motion to Admit Kevin M. Flannery Pro Hac Vice. ( Pro Hac Vice fee $ 100 receipt number 0758-2527680.) by Plaintiffs Essity Hygiene and Health Aktiebolag, Essity Professional Hygiene North America LLC. Motions referred to Magistrate Judge Stephen L. Crocker. (Flannery, Kevin)
April 5, 2019 Opinion or Order Filing 46 ** TEXT ONLY ORDER ** The court is in receipt of plaintiffs' status report, explaining that plaintiffs have appealed the PTAB's final decisions, and, as such, requesting that the court continue the stay during plaintiffs' appeal. (Dkt. #45 .) Plaintiffs also represent that defendant does not oppose the continuation of the stay. Plaintiffs' request is granted; this case is further stayed pending plaintiffs' appeal of the PTAB decisions to the Federal Circuit. Plaintiffs should file a status report (even if the status is that there are no updates) every six months. Signed by District Judge William M. Conley on 4/5/2019. (voc)
April 4, 2019 Filing 45 Status Report by Plaintiffs Essity Hygiene and Health Aktiebolag, Essity Professional Hygiene North America LLC, (Attachments: #1 Exhibit 1 - Notice of Appeal re: IPR2017-01902 for the '761 Patent, #2 Exhibit 2 - Notice of Appeal re: IPR2017-01921 for the '372 Patent, #3 Exhibit 3 - Notice of Appeal re: IPR2017-02198 for the '443 Patent) (Kirsch, Kevin)
March 4, 2019 Opinion or Order Filing 44 ** TEXT ONLY ORDER ** The court is in receipt of two status updates by defendant Cascades Canada ULC, informing the court that the PTAB has now issued final decisions on the IPR proceedings for the three patents-in-suit, finding all of the asserted claims unpatentable. (Dkt. # #42 , #43 .) Because these determinations are binding on this civil action, the court assumes that plaintiffs will dismiss their patent infringement claims, and that the finding of unpatentability will moot defendant's counterclaims seeking a declaratory judgment that the three patents are unenforceable for inequitable conduct. As such, the court directs the parties by April 4, 2019, either to move for or stipulate to dismissal or explain why such action should not be undertaken at this time. Signed by District Judge William M. Conley on 3/4/2019. (voc)
March 4, 2019 Filing 43 Status Report by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC, (Attachments: #1 Exhibit A - '443 IPR Decision) (Manning, Daisy)
February 6, 2019 Filing 42 Status Report by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC, (Attachments: #1 Exhibit A - Final Written Decision 761 Patent, #2 Exhibit B - Final Written Decision 372 Patent) (Manning, Daisy)
October 3, 2018 Filing 41 Status Report by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC. (Fussner, Kara)
April 3, 2018 Opinion or Order Filing 40 ** TEXT ONLY ORDER **The court is in receipt of defendants' unopposed motion to continue a stay of the litigation pending inter partes review. (Dkt. #39 .) In the motion, defendants inform the court that the PTAB has now instituted inter partes review of the third patent in suit, having already instituted review of the other two. For the reasons explained in the court's original opinion and order granting defendants' motion to stay (dkt. #33 ), this motion is GRANTED. Defendants are directed to keep the court apprised of any developments. At minimum, defendants should file a status report (even if the status is that there are no updates) every six months. Signed by District Judge William M. Conley on 4/3/2018. (jls)
April 3, 2018 Filing 39 Consent Motion to Continue Stay of the Litigation Pending Inter Partes Review by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC. Response due 4/10/2018. (Attachments: #1 Exhibit A - '443 IPR Decision) (Fussner, Kara)
March 16, 2018 Opinion or Order Filing 38 ** TEXT ONLY ORDER ** Plaintiffs' unopposed motion to amend/correct plaintiffs' captioned name (dkt. #37 ) is GRANTED. The clerk of court is directed to amend the caption accordingly. Signed by District Judge William M. Conley on 3/16/2018. (voc)
March 16, 2018 Filing 37 Unopposed Motion to Amend/Correct Name of Captioned Plaintiffs by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC, (Attachments: #1 Exhibit 1 - Certificate of Registration, #2 Exhibit 2 - Certificate of Amendment, Essity) (Kirsch, Kevin) Modified on 3/16/2018. (lak)
February 15, 2018 Filing 36 **TEXT ONLY ORDER** Judge Conley recently modified his attachments to the Preliminary Pretrial Conference Order, which you may access via this hyperlink: # Attachments to Preliminary Pretrial Conference Order. Please note that occasionally Judge Conley makes changes to these attachments. As such, unless you do not have access to the attachments electronically (e.g., you are a pro se litigant), you should review the most recent version of the appropriate attachment to assure compliance when preparing summary judgment or other pre-trial submissions. (lak)
February 12, 2018 Opinion or Order Filing 35 ** TEXT ONLY ORDER ** The court is in receipt of defendant Cascades Canada ULC's unopposed motion to continue the stay of litigation. (Dkt. #34 .) The court previously stayed this case pending a determination by the PTAB as to whether to institute inter partes review of the claims of the three patents-in-suit. In its motion, defendant informs the court that the PTAB has initiated review with respect to two of the three patents, and that it anticipates a decision on the third petition by April 9, 2018. Defendant's unopposed motion is GRANTED. The case will remain stayed until the PTAB's decision on the '443 patent. Signed by District Judge William M. Conley on 2/12/2018. (voc)
February 9, 2018 Filing 34 Unopposed Motion to Continue Stay of the Litigation Pending Inter Partes Review by Defendants Cascades Canada ULC, Cascades, Inc., Counter Claimant Cascades Canada ULC, (Attachments: #1 Exhibit A - '761 IPR Institution Decision, #2 Exhibit B - '372 IPR Institution Decision) (Telscher, Rudolph)
January 9, 2018 Set TelephoneStatus Conference Re: Pending Inter Partes Review. Telephone Status Conference set for 2/27/2018 at 01:00 PM before Magistrate Judge Stephen L. Crocker. Counsel for Plaintiff responsible for setting up the call to chambers at (608) 264-5153. (voc)
October 6, 2017 Opinion or Order Filing 33 ORDER granting #21 Motion to Stay Pending Inter Partes Review by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC.Defendant's motion for leave to file a reply (dkt. #29 ) is DENIED as unnecessary. Signed by District Judge William M. Conley on 10/6/2017. (voc)
October 2, 2017 Filing 32 Notice by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC re: #21 Motion to Stay Pending Inter Partes Review, (Attachments: #1 Exhibit A - Petition for Inter Partes Review re: 443 Patent, #2 Exhibit B - Filing Receipt) (Fussner, Kara) Modified on 10/3/2017. (lak)
October 2, 2017 Set Telephone Pretrial: Telephone Pretrial Conference set for 10/11/2017 at 03:00 PM before Magistrate Judge Stephen L. Crocker. Counsel for Plaintiff responsible for setting up the call to chambers at (608) 264-5153. (voc)
October 2, 2017 Opinion or Order Filing 31 ** TEXT ONLY ORDER ** The October 3, 2017 telephonic preliminary pretrial conference is postponed to October 11, 2017 at 3:00 pm in the expectation that by then the court will have ruled on the pending motion to stay, dkt. #21 . Signed by Magistrate Judge Stephen L. Crocker on 10/2/2017. (voc)
September 29, 2017 Filing 30 Joint Preliminary Pretrial Conference Report by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC, (Attachments: #1 Order in SCA v. Tarzana, Case No. 17-cv-04395-AB-JPR, U.S. District Court for the Central District of California, Dated September 27, 2017) (Brandyberry, Jared)
September 20, 2017 Filing 29 Motion for Leave to File Cascades Proposed Reply in Support of Its Motion to Stay by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC, (Attachments: #1 Exhibit A - Cascades Proposed Reply in Support of Its Motion to Stay, #2 Exhibit B - Rudolph Telscher Declaration in Support of Cascades Proposed Reply in Support of Its Motion to Stay, #3 Exhibit C - PTAB Statistics March 31, 2017 to the Rudolph Telscher Declaration in Support of Cascades Proposed Reply in Support of its Motion to Stay) (Telscher, Rudolph) Modified on 10/6/2017 (voc).
September 18, 2017 Filing 28 Notice of Errata by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC re: #27 Brief in Opposition (Attachments: #1 SCA's Corrected Opposition to Cascades' Motion to Stay) (Kirsch, Kevin) Modified on 9/19/2017: Linked this entry with a corrected brief to the pending motion to which it relates. (lak)
September 12, 2017 Filing 27 Brief in Opposition by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC re: #21 Motion to Stay filed by Cascades Canada ULC. (Kirsch, Kevin) Modified on 9/19/2017: See #28 -1 for a corrected brief. (lak)
September 12, 2017 Filing 26 Reply to Counterclaim by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC. (Kirsch, Kevin)
August 29, 2017 Opinion or Order Filing 25 ** TEXT ONLY ORDER **ORDER granting #24 Motion for Extension of Time. Brief in Opposition due 9/12/2017. Signed by Magistrate Judge Stephen L. Crocker on 8/29/2017. (lak)
August 28, 2017 Filing 24 Unopposed Motion for Extension of Time to Respond to Motion to Stay by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC. Motions referred to Magistrate Judge Stephen L. Crocker. (Boor, Anita)
August 24, 2017 Set Telephone Pretrial Conference: Telephone Pretrial Conference set for 10/3/2017 at 01:00 PM before Magistrate Judge Stephen L. Crocker. Counsel for Plaintiff responsible for setting up the call to chambers at (608) 264-5153. [#Standing Order Governing Preliminary Pretrial Conference attached] (voc)
August 22, 2017 Filing 23 Declaration of Rudolph A. Telscher filed by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC re: #21 Motion to Stay (Attachments: #1 Exhibit A - US8597761, #2 Exhibit B - Petition for IPR of 761 Patent, #3 Exhibit C - Filing Receipt for IPR of 761 Patent, #4 Exhibit D - Notice of Filing Date Accorded in 761 IPR, #5 Exhibit E - US9320372, #6 Exhibit F - Petition for IPR of 372 Patent, #7 Exhibit G - Filing Receipt for IPR of 372 Patent, #8 Exhibit H - Notice of Filing Date Accorded in 372 IPR, #9 Exhibit I - US8273443, #10 Exhibit J - SCAs Competitive Comparison Guide, #11 Exhibit K - SCAs Market Webpage, #12 Exhibit L - Excerpts from SCAs Responses to Tarzanas Requests for Admission, #13 Exhibit M - PTAB Average Time to Decision in IPRs, #14 Exhibit N - PTAB Statistics, #15 Exhibit O - US1290801) (Telscher, Rudolph) Modified on 8/23/2017. (lak)
August 22, 2017 Filing 22 Declaration of Pierre Brochu filed by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC re: #21 Motion to Stay (Telscher, Rudolph)
August 22, 2017 Filing 21 Motion to Stay Pending Inter Partes Review by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC. Response due 8/29/2017. (Telscher, Rudolph)
August 22, 2017 Filing 20 Corporate Disclosure Statement by Defendant Cascades Canada ULC, Counter Claimant Cascades Canada ULC. (Telscher, Rudolph)
August 22, 2017 Filing 19 ANSWER to Amended Complaint, COUNTERCLAIM against SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC by Defendant Cascades Canada ULC. (Attachments: #1 Exhibit A - US Patent 8273443, #2 Exhibit B - US Patent 8597761, #3 Exhibit C - US Patent 9320372) (Telscher, Rudolph) Modified on 8/22/2017. (lak)
August 17, 2017 Filing 18 Corporate Disclosure Statement by Plaintiff SCA Tissue North America, LLC. (Boor, Anita)
August 17, 2017 Filing 17 Corporate Disclosure Statement by Plaintiff SCA Hygiene Products Aktiebolag. (Boor, Anita)
August 8, 2017 Filing 16 Summons Returned Executed. (Brandyberry, Jared)
August 8, 2017 Filing 15 Summons Issued as to Cascades Canada ULC. (lak)
August 2, 2017 Filing 14 AMENDED COMPLAINT against Cascades Canada ULC, filed by SCA Tissue North America, LLC, SCA Hygiene Products Aktiebolag. (Attachments: #1 Summons, #2 Exhibit 1 - Receipts, #3 Exhibit 2 - US Patent 8273443, #4 Exhibit 3 - US Patent 8597761, #5 Exhibit 4 - US Patent 9320372, #6 Exhibit 5 - USP 8273443 and Cascades ServOne 2411, #7 Exhibit 6 - Website Advertisement for ServOne Dispenser, #8 Exhibit 7 - USP 8597761 and Cascades ServOne 2411, #9 Exhibit 8 - USP 8597761 and Cascades ServOne 2406C1, #10 Exhibit 9 - Website Advertisements for Tandem Products, #11 Exhibit 10 - USP 9320372 and Cascades ServOne 2411, #12 Exhibit 11 - USP 9320372 and Cascades ServOne 2406C1) (Tomaselli, Anthony) Modified on 8/8/2017. (lak)
July 6, 2017 Opinion or Order Filing 13 ** TEXT ONLY ORDER **ORDER granting #10 Motion to Admit Daisy Manning Pro Hac Vice. Signed by Magistrate Judge Peter A. Oppeneer on 7/6/2017. (lak)
July 6, 2017 Opinion or Order Filing 12 ** TEXT ONLY ORDER **ORDER granting #9 Motion to Admit Kara Fussner Pro Hac Vice. Signed by Magistrate Judge Peter A. Oppeneer on 7/6/2017. (lak)
July 6, 2017 Opinion or Order Filing 11 ** TEXT ONLY ORDER **ORDER granting #8 Motion to Admit Rudolph Telscher Pro Hac Vice. Signed by Magistrate Judge Peter A. Oppeneer on 7/6/2017. (lak)
July 6, 2017 Filing 10 Motion to Admit Daisy Manning Pro Hac Vice. ( Pro Hac Vice fee $ 100 receipt number 0758-2062565.) by Defendant Cascades, Inc. Motions referred to Magistrate Judge Stephen L. Crocker. (Manning, Daisy)
July 6, 2017 Filing 9 Motion to Admit Kara Fussner Pro Hac Vice. ( Pro Hac Vice fee $ 100 receipt number 0758-2062554.) by Defendant Cascades, Inc. Motions referred to Magistrate Judge Stephen L. Crocker. (Fussner, Kara)
July 6, 2017 Filing 8 Motion to Admit Rudolph Telscher Pro Hac Vice. ( Pro Hac Vice fee $ 100 receipt number 0758-2062541.) by Defendant Cascades, Inc. Motions referred to Magistrate Judge Stephen L. Crocker. (Telscher, Rudolph)
July 6, 2017 Filing 7 Summons Returned Executed. Cascades, Inc. served on 6/12/2017, answer due 8/2/2017. (Flynn, Kevin)
July 5, 2017 Filing 6 Disregard. Certificate of Service by Plaintiffs SCA Hygiene Products Aktiebolag, SCA Tissue North America, LLC. (Flynn, Kevin) Modified on 7/6/2017. (lak)
June 29, 2017 Opinion or Order Filing 5 ** TEXT ONLY ORDER **ORDER granting #4 Motion for Extension of Time to Answer. Cascades, Inc. answer due 8/2/2017. Defendant should not expect another extension of this deadline. Signed by Magistrate Judge Stephen L. Crocker on 6/29/2017. (voc)
June 29, 2017 Filing 4 Unopposed Motion for Extension of Time to File Answer re: #1 Complaint, by Defendant Cascades, Inc. Motions referred to Magistrate Judge Stephen L. Crocker. (Heneghan, Thomas)
June 29, 2017 Action Requested: Counsel for plaintiff requested to promptly file proof of service. (voc)
April 14, 2017 Filing 3 Report on Filing of Patent or Trademark Action. Copy provided to the US Patent and Trademark Office electronically. (jls)
April 14, 2017 Filing 2 Summons Issued as to Cascades, Inc. (jls)
April 14, 2017 Standard attachments for Judge William M. Conley required to be served on all parties with summons or waiver of service: # NORTC, #Corporate Disclosure Statement. (jls)
April 14, 2017 Case non-randomly assigned to District Judge William M. Conley and Magistrate Judge Stephen L. Crocker. Related Case 16-cv-728-wmc. (jls)
April 13, 2017 Filing 1 PATENT COMPLAINT against Cascades, Inc. ( Filing fee $ 400 receipt number 0758-2007109.) PATENTS AT ISSUE: Patent # 8,273,443, issued 09/25/12, held by SCA Tissue North America LLC; Patent # 8,597,761, issued 12/03/13, held by SCA Hygiene Products; Patent # 9,320,372, issued 04/26/16, held by SCA Hygiene Products; filed by SCA Tissue North America, LLC, SCA Hygiene Products Aktiebolag, (Attachments: #1 Exhibit 1 - Receipts, #2 Exhibit 2 - U.S. Patent No. 8,273,443, #3 Exhibit 3 - U.S. Patent No. 8,597,761, #4 Exhibit 4 - U.S. Patent No. 9,320,372, #5 Exhibit 5 - Comparison of U.S. Patent No. 8,273,443 and Cascades ServOne 2411A1, #6 Exhibit 6 - Advertisement for ServOne Dispenser, #7 Exhibit 7 - Comparison of U.S. Patent No. 8,597,761 and Cascades ServOne 2411A1, #8 Exhibit 8 - Comparison of U.S. Patent No. 8,597,761 and Cascades ServOne 2406C1, #9 Exhibit 9 - Advertisement for Tandem Products, #10 Exhibit 10 - Comparison of U.S. Patent No. 9,320,372 and Cascades ServOne 2411A1, #11 Exhibit 11 - Comparison of U.S. Patent No. 9,320,372 and Cascades ServOne 2406C1, #12 Summons, #13 Report on Filing Patent/Trademark Action, #14 JS-44 Civil Cover Sheet) (Tomaselli, Anthony)

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Defendant: Cascades, Inc.
Represented By: Thomas Patrick Heneghan
Represented By: Rudolph Telscher
Represented By: Daisy Manning
Represented By: Kara Fussner
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Defendant: Cascades Canada ULC
Represented By: Rudolph Telscher
Represented By: Kara Fussner
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Plaintiff: SCA Hygiene Products Aktiebolag
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Plaintiff: Essity Hygiene and Health Aktiebolag
Represented By: Kevin P Flynn
Represented By: Kevin Walpole Kirsch
Represented By: Martin J Black
Represented By: Anthony A. Tomaselli
Represented By: Kevin M Flannery
Represented By: Jared A Brandyberry
Represented By: David A Mancino
Represented By: Anita Marie Boor
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Plaintiff: Essity Professional Hygiene North America LLC
Represented By: Kevin P Flynn
Represented By: Kevin Walpole Kirsch
Represented By: Martin J Black
Represented By: Anthony A. Tomaselli
Represented By: Kevin M Flannery
Represented By: Jared A Brandyberry
Represented By: David A Mancino
Represented By: Anita Marie Boor
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Counter defendant: SCA Tissue North America, LLC
Represented By: Kevin P Flynn
Represented By: Kevin Walpole Kirsch
Represented By: Anthony A. Tomaselli
Represented By: Jared A Brandyberry
Represented By: David A Mancino
Represented By: Anita Marie Boor
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