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Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 1 of 7

IN THE U. S. DISTRICT COURT


DISTRICT OF KANSAS
SHC HOLDINGS, LLC
d/b/a SPECIALTY HOUSE OF CREATION,
Plaintiff,
v.
ALL STAR PREMIUM PRODUCTS, INC.
d/b/a ALL STAR INCENTIVE MARKETING,
Defendant.

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Case No. 2:14-cv-2544

COMPLAINT
Plaintiff SHC Holdings, LLC (Plaintiff and/or SHC), through its undersigned
attorneys, file this Complaint against Defendant, All Star Premium Products, Inc. d/b/a All Star
Incentive Marketing (Defendant or ASIM), and states and alleges as follows:
PARTIES
1.

SHC is a limited liability corporation organized under the laws of the State

of Kansas its principal place of business located at 200 North Walnut, Cottonwood Falls, Kansas
66845.
2.

Defendant is a corporation organized under the laws of the State of

Massachusetts with its principal place of business located at 660 Main Street, Fiskdale,
Massachusetts 01518.
JURISDICTION AND VENUE
3.

This action arises under the patent laws of the United States, 35 U.S.C. 1

et seq., and the copyright laws of the United States, 17 U.S.C. 101 et seq.

Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 2 of 7

4.

Subject matter jurisdiction over this action is conferred upon this Court by

28 U.S.C. 1331 and 1338(a).


5.

Injunctive relief is authorized by 35 U.S.C. 271, and 17 U.S.C. 502(a).

6.

This Court has personal jurisdiction over Defendant because Defendant

has purposefully availed itself of the privilege of conducting business within this State and this
District by, among other things, selling or offering for sale infringing devices.
7.

Venue in this district is proper under 28 U.S.C. 1391 and 1400 because

the events giving rise to the claims asserted herein occurred in this District, and Defendant has
committed acts of infringement in this District.
BACKGROUND
8.

On October 29, 2002, U. S. Patent No. D464,998 (the 998 patent)

entitled Slot Machine Card Holder issued to SHC. A true and correct copy of the 998 patent
is attached as Exhibit A.
9.

On February 10, 2004, U. S. Patent No. D486,531 (the 531 patent)

entitled Slot Machine Card Holder issued to SHC. A true and correct copy of the 531 patent
is attached as Exhibit B.
10.

SHC received from the Register of Copyrights a Certificate of Registration

for a Slot Claw sculpture, registration No. VA 1-867-812 (the 812 registration), effective
July 8, 2013. A true and correct copy of the 812 registration is attached as Exhibit C.
11.

SHC owns all right, title and interest to the 998 and 531 patents, and the

812 registration, including the right to sue for past, present and future infringements.
12.

SHC has owned the 998 and 531 patents throughout the period of the

Defendants infringing acts.

-2-

Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 3 of 7

13.

The 998 and 531 patents are valid and enforceable.

14.

SHC has complied with the statutory requirement of placing a notice of

the 998 and 531 patents on the devices it has made and sells.
COUNT I - 998 PATENT INFRINGMENT
15.

SHC incorporates by reference the foregoing allegations as if fully set forth

16.

On information and belief, ASIM has committed and are continuing to

herein.

commit direct acts of infringement of the 998 patent under 35 U.S.C. 271(a) by making, using,
selling, offering to sell, and/or importing Casino Bungee Cords, item number KWEO2004,
shown in Exhibit D.
17.

SHC has been damaged as a direct result of the infringement of the 998

patent. SHC continue to be damaged unless further infringement is enjoined.


18.

SHC is entitled under 35 U.S.C. 284 to an award of damages adequate to

compensate SHC for ASIMs infringement of the 998 patent. SHC is entitled to in no event less
than a reasonable royalty for the infringement and use made of the invention of the 998 patent
by ASIM, all together with interest and costs.
19.

On information and belief, ASIMs past and continuing infringement of

the 998 patent has been and continues to be deliberate and willful.
20.

ASIMs conduct warrants an award of treble damages pursuant to 35

21.

Moreover, this is an exceptional case that entitles SHC to an award of

U.S.C. 284.

reasonable attorney fees under 35 U.S.C. 285.

-3-

Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 4 of 7

COUNT II - 531 PATENT INFRINGMENT


22.

SHC incorporates by reference the foregoing allegations as if fully set forth

23.

On information and belief, ASIM has committed and are continuing to

herein.

commit direct acts of infringement of the 531 patent under 35 U.S.C. 271(a) by making, using,
selling, offering to sell, and/or importing Casino Bungee Cords, item number KWEO2005,
shown in Exhibit E, and GWSY1132, shown in Exhibit F.
24.

SHC has been damaged as a direct result of the infringement of the 531

patent. SHC continue to be damaged unless further infringement is enjoined.


25.

SHC is entitled under 35 U.S.C. 284 to an award of damages adequate to

compensate SHC for ASIMs infringement of the 531 patent. SHC is entitled to in no event less
than a reasonable royalty for the infringement and use made of the invention of the 531 patent
by ASIM, all together with interest and costs.
26.

On information and belief, ASIMs past and continuing infringement of

the 531 patent has been and continues to be deliberate and willful.
27.

ASIMs conduct warrants an award of treble damages pursuant to 35

28.

Moreover, this is an exceptional case that entitles SHC to an award of

U.S.C. 284.

reasonable attorney fees under 35 U.S.C. 285.


COUNT III COPYRIGHT INFRINGEMENT
29.

SHC repeats and incorporates the allegations contained in the preceding

30.

On information and belief, ASIM copied the Slot Claw sculpture.

paragraphs.

-4-

Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 5 of 7

31.

ASIMs copying, use and display of the sculpture on plaintiffs website

without SHCs permission or authority is a violation of its exclusive rights under the Copyright
Act, 17 U.S.C. 101 et seq., and as a result, SHC has been damaged and is entitled to damages.
32.

ASIMs sale of SHCs sculpture without SHCs permission or authority is

a violation of its exclusive rights under the Copyright Act, 17 U.S.C. 101 et seq., and as a
result, SHC has been damaged and is entitled to damages.
WILLFUL INFRINGMENT
33.

SHC incorporates by reference their foregoing allegations as if fully set

34.

On information and belief, Defendants past and continuing infringement

forth herein.

of the 998 and 531 patents has been deliberate and willful. Its conduct warrants an award of
treble damages pursuant to 35 U.S.C. 284. Moreover, this is an exceptional case as set forth in
35 U.S.C. 285 warranting an award of attorneys fees.
PRAYER FOR RELIEF
WHEREFORE, SHC respectfully prays that this Honorable Court:
A.

A judgment that ASIM has infringed the 998 patent;

B.

A judgment that ASIM has infringed the 531 patent;

C.

A judgment and order permanently restraining and enjoining ASIM, its

officers, directors, agents, servants, employees, attorneys, subsidiaries, affiliates, and all those acting
in concert with or under or through them, from making, using, selling, offering for sale, or
importing any systems or products that infringe one or more claims of the 998 or 531 patents, or
otherwise directly or indirectly committing further acts of infringement of those patents;

-5-

Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 6 of 7

D.

A judgment and order requiring Defendant to pay damages to SHC adequate

to compensate them for Defendants wrongful infringing acts in accordance with 35 U.S.C. 284;
E.

A judgment and order requiring Defendant to pay increased damages up to

three times, in view of their willful and deliberate infringement of the 998 or 531 patents;
F.

A finding in favor of SHC that this is an exceptional case under 35 U.S.C.

285 and an award to SHC its costs, including reasonable attorneys fees and other expenses
incurred in connection with this action;
G.

A judgment and order requiring Defendants to pay SHC pre-judgment

interest under 35 U.S.C. 284 and post-judgment interest under 28 U.S.C. 1961 on all damages
awarded;
H.

A judgment and order of temporary and permanent injunction to prevent or

restrain Defendant from infringement of SHCs copyright under 17 U.S.C. 502;


I.

A judgment and order impounding and destruction of all of Defendants

infringing copies, molds, and means for creating infringing copies of SHCs protected works under
17 U.S.C. 503;
J.

A judgment and order requiring Defendant to pay SHCs actual damages and

any additional profits of Defendant under 17 U.S.C. 504;


K.

A judgment and order requiring Defendant to pay to SHC its full costs and

reasonable attorneys fees under 17 U.S.C. 505; and


L.

Such other and further relief as the Court deems just and appropriate.
DESIGNATION OF PLACE OF TRIAL

Plaintiff hereby designates Kansas City, Kansas as the place of trial of the abovestyled matter.

-6-

Case 2:14-cv-02544-SAC-TJJ Document 1 Filed 10/23/14 Page 7 of 7

REQUEST FOR JURY TRIAL


Plaintiff hereby requests trial by jury of the above-styled matter.
Respectfully submitted,
/s/ James J. Kernell
James J. Kernell, #19559
Kyle D. Donnelly, #25531
ERICKSON, KERNELL, DERUSSEAU
& KLEYPAS, LLC
8900 State Line Road, Suite 500
Leawood, Kansas 66206
Telephone: 913-549-4700
Facsimile: 913-549-4646
E-Mail: jjk@kcpatentlaw.com
Attorneys for Plaintiff
SHC Holdings, LLC

-7-

Case 2:14-cv-02544-SAC-TJJ Document 1-1 Filed 10/23/14 Page 1 of 5

EXHIBIT A

Case 2:14-cv-02544-SAC-TJJ Document 1-1 Filed 10/23/14 Page 2 of 5


USO0D464998S

(12) United States Design Patent (10) Patent N0.:


Br00kins
(54)

(45) Date of Patent:

SLOT MACHINE CARD HOLDER

Inventor:

US D464,998 S

Douglas Brookins, PittSgI-OVQ,


*

5,590,880 A

6,009,048 A

* 12/1999

6,076,296 A

** Oct. 29, 2002

1/1997 Flam ........................ .. 273/150


RaesZ ....... ..

(73) Assignee: Specialty House of Creation, Inc.,


PiIISgIOVfJ, NJ (Us)

cued by exammer
Primary ExaminerSandra L. Morris

(W)

(74) Attorney, Agent, or FirmMarvin C. Gaer

Tenn

14 Years

D21/370

6/2000 Schaeffer ................... .. 40/649

(57)

CLAIM

(21) Appl' NO': 29/160468

The ornamental design for a slot machine card holder, as

(22) Filed:

shoWn and described.

May 10, 2002

(51)

LOC (7) Cl. .................................................. .. 21-03

DESCRIPTION

(52)

US. Cl. .................................... .. D21/370; D21/394

FIG. 1 is a from elevation View of the Slot machine Card

(58)

Field of Search .............................. .. D'2l/369, 370,

holder Showing my new design

B21674 375" 385 392 394 39? 273/148 A


150> 463/17> 20> 46> 47> 133/234 274

FIG. 2 is a rear elevation vieW thereof;


FIG. 3 is a right side elevation vieW thereof;
FIG. 4 is a left side elevation vieW thereof;

(56)

References Clted
US. PATENT DOCUMENTS
D361,516 S

8/1995

FIG. 5 is a top plan vieW thereof; and,


FIG. 6 is a bottom end vieW thereof.

Peersmann .................. .. D10/6

5,560,603 A * 10/1996 Seelig et al. ................ .. 463/20

1 Claim, 3 Drawing Sheets

EXHIBIT A

Case 2:14-cv-02544-SAC-TJJ Document 1-1 Filed 10/23/14 Page 3 of 5

U.S. Patent

0a. 29, 2002

Sheet 1 of3

US D464,998 S

FIG. 1

FIG. 2

Case 2:14-cv-02544-SAC-TJJ Document 1-1 Filed 10/23/14 Page 4 of 5

U.S. Patent

0a. 29, 2002

Sheet 2 of3

US D464,998 S

Hu 'mw
FIG. 3

HI IH I
ll .9 4;

Case 2:14-cv-02544-SAC-TJJ Document 1-1 Filed 10/23/14 Page 5 of 5

U.S. Patent

0a. 29, 2002

Sheet 3 of3

FIG. 6

US D464,998 S

Case 2:14-cv-02544-SAC-TJJ Document 1-2 Filed 10/23/14 Page 1 of 5

EXHIBIT B

Case 2:14-cv-02544-SAC-TJJ Document 1-2 Filed 10/23/14 Page 2 of 5


USO0D486531S

(12) United States Design Patent (10) Patent No.:


Brookins
(54)

SLOT MACHINE CARD HOLDER

5,560,603 A
5,590,880

(75) Inventor: Douglas Brookins, Pittsgrove, NJ (US)

1/1997

6,009,048 A

12/1999

(**)

6/2000

10/2002

Flam

. ... ... ...

. . . ..

RaesZ ........ ..
Schaeffer

.....

. . . . ..

* cited by examiner

Primary ExaminerSandra L. Morris


(74) Attorney, Agent, or FirmMarvin C. Gaer

03/274, D11/81, 238; D21/369370, 385,


392, 394, 396; 273/148 A, 150, 463/17,
20, 46, 47

U.S. PATENT DOCUMENTS


*

8/1995
1/1996

CLAIM

The ornamental design for a slot machine card holder, as


shoWn and described.

DESCRIPTION
FIG. 1 is a front elevation vieW of the slot machine card

holder showing my neW design.


FIG. 2 is a rear elevation vieW thereof;

FIG. 3 is a right side elevation vieW thereof;


FIG. 4 is a left side elevation vieW thereof;
FIG. 5 is a top plan vieW thereof; and,

References Cited

(56)

40/649

Brookins ................. .. D21/370

14 Years

(57)

273/150

D21/370

Pittsgrove, NJ (US)

(21) Appl. No.: 29/177,220


Mar. 5, 2003
(22) Filed:
(51) LOC (7) Cl. .................................................. .. 21-01
(52) US. Cl. .................................... .. D21/370; D21/394
(58) Field of Search ........................ .. D3/211, 215, 234,

D361,516 S
D366,359 S

D464,998 S

=1<=1< Feb. 10, 2004

10/1996 Seelig et al. ................ .. 463/20

6,076,296

(73) Assignee: Specialty House of Creation, Inc.,


Term:

US D486,531 S

(45) Date of Patent:

FIG. 6 is a bottom end vieW thereof.

Peersmann .................. .. D10/6


Riedl ........................ .. D3/211

1 Claim, 3 Drawing Sheets

FJIATQIIGHQTI
Ill

111W

EXHIBIT B

Case 2:14-cv-02544-SAC-TJJ Document 1-2 Filed 10/23/14 Page 3 of 5

U.S. Patent

Feb. 10, 2004

HDH

(E

HHWIWH
W

\\

Illlll IIIIII
IIII IIIII'IIII

Sheet 1 of3

US D486,531 S

Case 2:14-cv-02544-SAC-TJJ Document 1-2 Filed 10/23/14 Page 4 of 5

U.S. Patent

Feb. 10, 2004

Sheet 2 of3

US D486,531 S

If

WMW

if

Case 2:14-cv-02544-SAC-TJJ Document 1-2 Filed 10/23/14 Page 5 of 5

U.S. Patent

Feb. 10, 2004

Sheet 3 of3

US D486,531 S

Case 2:14-cv-02544-SAC-TJJ Document 1-3 Filed 10/23/14 Page 1 of 3

EXHIBIT C

Case 2:14-cv-02544-SAC-TJJ Document 1-3 Filed 10/23/14 Page 2 of 3

EXHIBIT C

Case 2:14-cv-02544-SAC-TJJ Document 1-3 Filed 10/23/14 Page 3 of 3

Case 2:14-cv-02544-SAC-TJJ Document 1-4 Filed 10/23/14 Page 1 of 4

EXHIBIT D

Case 2:14-cv-02544-SAC-TJJ Document 1-4 Filed 10/23/14 Page 2 of 4


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CASINO BUNGEE CORD


KWEO2004
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Use for casino slot club,ID card. ABS clasp with bungee(rubber) cord or EVA(coil) cord for your
choice. PMS color. 20" 36" are available
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Product Detail
Category
HOOKS; LANYARDS; LICENSE PLATE HOLDERS; STRING; TRADE SHOW DISPLAYS

Material
Nylon, Other Plastic

Size
20 ", 36 "

Color
Assorted, Black, Blue, Brown, Gray, Green, Orange, Pink, Purple, Red, White, Yellow

Product Safety Warnings


No safety w arnings for this product

Less than Minimum


Can order less than minimum

Shipping Dimension
24 " x 11 " x 13 "

Imprint
EXHIBIT D

Case 2:14-cv-02544-SAC-TJJ Document 1-4 Filed 10/23/14 Page 3 of 4


Imprint Information
Imprint Method: Silkscreen, Unimprinted
Full Color Process: No
Personalization: No
Sold Unimprinted: Yes

Imprint Method
Imprint Method: Unimprinted
Imprint Method: Silkscreen
Quantity

List Price

$35.00

Production and Shipping


Production Information
Production Time: N/A
Rush Service: No
Made in USA: N/A

Packaging
Poly Bag

All prices and descriptions are subject to change without notice. If the price listed is different from
the actual price, we w ill notify you before processing your order. Prices will be calculated using
end of day exchange rates if orders contain products w ith different currencies. Total price is for
merchandise only. Prices may be exclusive of any setup charges, art changes, shipping charges,
state / provincial required taxes, rush charges or any other additional charges, which will be
communicated prior to processing the order.
Information, data and/or screens (the "Material") from this site may not be copied, duplicated,
saved, archived, or captured by any means except that the Material may be used as part of
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Map data 2014 Google
Office Location
PO Box 980, Sturbridge Office Park - 660 Main St.
Fiskdale, MA 01518
Phone: (508) 347-7672
Fax: (508) 347-5404
E-Mail:cindy.duncan@incentiveusa.com
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Case 2:14-cv-02544-SAC-TJJ Document 1-4 Filed 10/23/14 Page 4 of 4

Case 2:14-cv-02544-SAC-TJJ Document 1-5 Filed 10/23/14 Page 1 of 4

EXHIBIT E

Case 2:14-cv-02544-SAC-TJJ Document 1-5 Filed 10/23/14 Page 2 of 4


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CASINO BUNGEE CORD


KWEO2005
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Use for casino slot club,ID card. ABS clasp with bungee(rubber) lanyard or EVA(coil) lanyard for
your choice. PMS color. 20" 36" are available
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$0.34

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Product Detail
Category
HOOKS; LANYARDS; LICENSE PLATE HOLDERS; STRING; TRADE SHOW DISPLAYS

Material
Nylon, Other Plastic

Size
20 ", 36 "

Color
Assorted, Black, Blue, Brown, Gray, Green, Orange, Pink, Purple, Red, White, Yellow

Product Safety Warnings


No safety w arnings for this product

Less than Minimum


Can order less than minimum

Shipping Dimension
24 " x 11 " x 13 "

Imprint
EXHIBIT E

Case 2:14-cv-02544-SAC-TJJ Document 1-5 Filed 10/23/14 Page 3 of 4


Imprint Information
Imprint Method: Silkscreen, Unimprinted
Full Color Process: No
Personalization: No
Sold Unimprinted: Yes

Imprint Method
Imprint Method: Unimprinted
Imprint Method: Silkscreen
Quantity

List Price

$35.00

Production and Shipping


Production Information
Production Time: N/A
Rush Service: No
Made in USA: N/A

Packaging
Poly Bag

All prices and descriptions are subject to change without notice. If the price listed is different from
the actual price, we w ill notify you before processing your order. Prices will be calculated using
end of day exchange rates if orders contain products w ith different currencies. Total price is for
merchandise only. Prices may be exclusive of any setup charges, art changes, shipping charges,
state / provincial required taxes, rush charges or any other additional charges, which will be
communicated prior to processing the order.
Information, data and/or screens (the "Material") from this site may not be copied, duplicated,
saved, archived, or captured by any means except that the Material may be used as part of
normal browser caching and printing performed in the course of using the site for its intended
purpose.

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SUBMIT
Map data 2014 Google
Office Location
PO Box 980, Sturbridge Office Park - 660 Main St.
Fiskdale, MA 01518
Phone: (508) 347-7672
Fax: (508) 347-5404
E-Mail:cindy.duncan@incentiveusa.com
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Privacy Policy

Case 2:14-cv-02544-SAC-TJJ Document 1-5 Filed 10/23/14 Page 4 of 4

Case 2:14-cv-02544-SAC-TJJ Document 1-6 Filed 10/23/14 Page 1 of 4

EXHIBIT F

Case 2:14-cv-02544-SAC-TJJ Document 1-6 Filed 10/23/14 Page 2 of 4


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Casino Bungee Cord


GWSY1132
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This Casino Slot Claw Bungee Cord is made from non-toxic plastic. Perfect for casino slot club and
loyalty cards. They will keep your membership card close at hand. We have different clip styles
and colors for your option. Cord's length can be adjusted as your need. Your customized LOGO
can be imprinted on the Claw .
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$0.19

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Product Detail
Category
HOLDERS; LANYARDS

Shape
Slot Machine

Material
Nylon, Plastic

Size
32 "

Color
Black, Blue, Green, Other, Purple, Red, Yellow

Product Safety Warnings


No safety w arnings for this product

Shipping Dimension
45 cm x 30 cm x 25 cm

Shipping Estimate
500 cases

EXHIBIT F

Case 2:14-cv-02544-SAC-TJJ Document 1-6 Filed 10/23/14 Page 3 of 4

Imprint
Imprint Information
Imprint Size: max size 1"x1/2"|on the slot claw
Imprint Method: Pad Print, Personalized, Unimprinted
Full Color Process: No
Personalization: Yes
Sold Unimprinted: Yes

Imprint Method
Imprint Method: Personalized; Unimprinted
Imprint Method: Pad Print
Artw ork & Proofs
VIRTUAL PROOF; Pre-production Proof
Minimum Order
50000 pieces

Production and Shipping


Production Information
Production Time: N/A
Rush Service: Yes
Rush Time: N/A
Made in USA: No

Packaging
Poly Bag

All prices and descriptions are subject to change without notice. If the price listed is different from
the actual price, we w ill notify you before processing your order. Prices will be calculated using
end of day exchange rates if orders contain products w ith different currencies. Total price is for
merchandise only. Prices may be exclusive of any setup charges, art changes, shipping charges,
state / provincial required taxes, rush charges or any other additional charges, which will be
communicated prior to processing the order.
Information, data and/or screens (the "Material") from this site may not be copied, duplicated,
saved, archived, or captured by any means except that the Material may be used as part of
normal browser caching and printing performed in the course of using the site for its intended
purpose.

Newsletter
Submit your e-mail address to get the latest
deals and promos.

SUBMIT
Map data 2014 Google
Office Location
PO Box 980, Sturbridge Office Park - 660 Main St.
Fiskdale, MA 01518
Phone: (508) 347-7672
Fax: (508) 347-5404
E-Mail:cindy.duncan@incentiveusa.com
2014 , The Advertising Specialty Institute. All Rights Reserved.

Privacy Policy

Case 2:14-cv-02544-SAC-TJJ Document 1-6 Filed 10/23/14 Page 4 of 4

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