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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

Armen Dallakian, Plaintiff, v. IPG Photonics Corporation, Defendant.

Civil Action No.: COMPLAINT JURY TRIAL DEMANDED

Plaintiff Armen Dallakian (Plaintiff or Dallakian), files this Complaint for Correction of Inventorship and Trade Secret Misappropriation against IPG Photonics, Inc. (Defendant or IPG Photonics) alleging as follows: INTRODUCTION 1. Plaintiff Armen Dallakian is the inventor of a simple and highly effective

technique to align light beams as they pass from one fiber optic cable to another at a coupler or switch (Fiber Coupling Invention). Dallakian invented this technique prior to the time he commenced consulting for IPG Photonics in 2007. In and before 2007, couplers and switches used in the assembly of Defendants laser systems were costly to manufacture, difficult to use, and their housings were bulky. Plaintiff disclosed his invention to IPG Photonics in confidence during the course of his consulting relationship with Defendant and with the expectation that IPG Photonics would license it. Thereafter, Defendant and its engineers incorporated Plaintiffs Fiber Coupling Invention into its couplers and switches without first obtaining Plaintiffs permission. Defendant also misappropriated Plaintiffs property by filing a patent application claiming Plaintiffs Fiber Coupling Invention and obtaining patents on the invention from the United States Patent and Trade Office (USPTO). Thereafter, Defendant filed three additional patent applications which build on its earlier patent. Defendant failed to disclose to the USPTO that Plaintiff was the true inventor of the device and method covered by the initial patent application. -1-

Defendant has profited through tens of millions of dollars of sales as a result of its wrongful conduct. THE PARTIES 2. Plaintiff is, and at relevant times herein was, a resident of the Commonwealth of

Massachusetts. He is a recognized expert in the field of photonics, the science and technology concerned with the generation, transmission, and sensing of photons. Photons are elementary particles of light. Laser equipment, including the laser equipment built by Defendant, relies on optical fiber to transmit light energy. 3. Defendant is a corporation organized under the laws of the State of Delaware,

with its headquarters located at 50 Old Webster Road, Oxford, Massachusetts 01540. IPG Photonics manufactures high-performance fiber lasers and amplifiers for use in materials processing, advanced technologies, telecommunications and medical applications. Founded in 1990, IPG Photonics primary products are optical fiber-based lasers. Because fiber lasers deliver superior performance, reliability and usability at a lower total cost compared with solid-state lasers, they are displacing solid-state lasers in many current applications and enabling new applications for lasers. IPG Photonics is based in Oxford, Massachusetts with additional manufacturing facilities in Germany, Italy and Russia, and regional sales offices in Detroit, Silicon Valley, China, France, India, Japan, Korea, Singapore and the U.K. JURISDICTION AND VENUE 4.
This Court has original jurisdiction over this matter under 28 U.S.C. 1331

because Plaintiff is asserting claims under 35 U.S.C. 256 (correction of patent inventor), and pursuant to 28 U.S.C. 1367 for the Massachusetts statutory and common law trade secret misappropriation claims asserted by Plaintiffs because they are so related to the correction of inventor claim that they form part of the same case or controversy.
5.

This Court has personal jurisdiction over Defendant because it maintains is

principal place of business in this District and has breached duties, violated statutes, and/or
committed tortious acts in Massachusetts.

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6.

Venue is proper in this District under 28 U.S.C. 1391(b)(1)-(2) because Defendant

maintains its principal place of business in this District and a substantial part of the events or omissions giving rise to the claims occurred in this District.

FACTUAL ALLEGATIONS 1. 7. Plaintiffs Fiber Coupling Invention An optical fiber is a flexible and transparent fiber made of glass (silica) or plastic

that is slightly thicker than a human hair. It functions as a waveguide, or light pipe, to transmit light between the two ends of the fiber. The field of applied science and engineering concerned with the design and application of optical fibers is known as fiber optics. Optical fibers are widely used in fiber-optic communications, which permits transmission of information over longer distances and at higher bandwidths (data rates) than other forms of communication, and in lasers, and other high technology applications. Fibers are commonly used to deliver high power output from a laser to a remote work piece. For example, cutting and welding at modern automotive assembly plants is done by robots manipulating invisible focused laser energy received over optical fiber. In a fiber laser, a specially prepared fiber can generate multi-kW laser beams. 8. Defendant designs lasers using optical fiber. Defendants lasers are generally used

in industrial application such as metal cutting, welding and marking. 9. A fiber optic coupler is a device used in optical fiber systems to optically connect

one or more input fibers to one or several output fibers. A fiber optic switch can generally be described as a device having several fiber couplers sharing the same input fiber, and a beam switching mechanism to optically connect one pair of input and output fibers at a time. For example, a fiber switch allows the system to deliver energy through optical fiber from a single laser to several welding robots, one at a time. 10. A coupler is designed to transfer as much of the light energy from the incoming

fiber to the outgoing fiber as possible. In the case of a high power laser, this is done in two steps. First, a lens or a multi-lens system, called a collimator, collimates (makes parallel) the highly -3-

divergent light exiting the input fiber. Then, a focusing lens or a multi-lens system, called a focusator, converges the energy to the very small tip of the outgoing fiber. To obtain this precise convergence, very fine adjustments must be made by the op erator in the X and Y dimensions (and rougher adjustments in the Z dimension). In a couplers basic design shown in Figure 1 below multi-lens collimator and focusator assemblies are replaced with single thin lenses for simplification:

Figure 1 11. The optical centers c1 and c2 of the collimator and the focusator must be

substantially coaxial with the Z axis (the dashed line in Fig. 1) which connects the tips of the fibers positioned substantially at the focal lengths f1 and f2 from the lenses. If the coupler is not aligned properly, the focused high power beam will miss the core of the output fiber and destroy it. The diameter of the core of a multimode fiber can be as small as 50 microns. For comparison, the thickness of a standard double-edge safety razor blade is 100 microns. 12. Typically, both fibers are secured to the housing while the lenses (see Fig. 1) are

adjustably secured to the housing as close to their optimal locations as possible. The final very fine alignment of the coupler is done via positioning of one of the lenses (usually the focusator lens) along the X and Y axes (and via rougher adjustments in the Z axis) to maximize the transfer of light energy from one optical fiber to the other. This X,Y,Z positioning is the heart of a -4-

coupler. The couplers accuracy, mechanical and thermal stability, size, simplicity, and operator-friendliness define its performance, cost and value. 13. Plaintiff's technique provides an extremely inexpensive, but highly accurate

method of aligning the focusator or collimator lens along X,Y,Z dimensions using either a combination of a tilt platform with two orthogonal rotational axes for ultra-fine X and Y alignment with a linear positioner for fine Z alignment or, for extra compactness and simplicity, a single three-point suspension tilt platform manipulated with three adjustment screws arranged in the pattern of a right triangle. In the latter embodiment to align the focusator along the Z dimension the operator can simply turn all three adjustment screws so that their displacement is equal. Hence, such an approach eliminates the need for an additional Z positioner and allows a simple tilt platform (mirror mount) to take care of all three X,Y,Z adjustments. The adjustment screws can be accessed by the operator through openings in a sidewall of the housing. 14. Plaintiffs Fiber Coupling Invention was not used within the industry until he

disclosed it to Defendant. 15. Two embodiments of the Fiber Coupling Invention were described by Plaintiff in

writing on July 7, 2006 and witnessed on July 14, 2006 before Plaintiffs relationship with Defendant. 16. These embodiments were described again in Plaintiffs Provisional Patent

Application 61/068,402 filed on March 7, 2008 titled Simple Method And Apparatus For HighResolution Positioning Of Optical Components (the Patent Application). In the Patent Application, Plaintiff describes the principles of physics and geometry involved in his Fiber Coupling Invention. 17. Thus, in Plaintiffs Fiber Coupling Invention, a commercially available

inexpensive part, called a mirror mount, commonly used for angular adjustments of a laser beam reflected with a mirror, can be adapted for use as a very high resolution X,Y positioner in a fiber coupler or switch. In the 3D model of the fiber coupler designed by Plaintiff (Figure 2) the mirror mount is the purple part comprised of two L-shaped plates. The front plate holds the -5-

focusator lens assembly placed in a water jacket. The three adjustment screws project out of the corners of the back L-shaped plate. The adjustment screws can be accessed with a small Allen wrench through three openings in the sidewall of the gold-colored housing of the coupler. One can see similar access openings arranged in a triangular pattern in the photograph of the prototype of the coupler designed and assembled by Plaintiff during his consultancy with the Defendant described below (Figure 3). The plates of the mirror mount used in Invention can be L-shaped, square, round, etc.

Figure 2 18. Plaintiff did not disclose his Fiber Coupling Invention to the public and at all

times relevant herein he used reasonable efforts to maintain the secrecy of his idea. The prototypes and notebook in which the Fiber Coupling Invention is described has always been kept by Plaintiff in his residence and was shielded from any disclosure to third parties or the public. Plaintiff conceived and reduced to practice prototypes of his Fiber Coupling Invention in 2001. Since testing the prototypes in 2001, Plaintiff has sought opportunities to market/license his invention, including to Defendant. In all such instances Plaintiff was careful not to disclose his Fiber Coupling Invention to the general public, or to the Defendant, or to any third-party,

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except on a need to know basis and under conditions where those to whom disclosures were being made were under obligations to maintain confidentiality. 2. 19. Defendants Theft Of Plaintiffs Invention For many years prior to 2007 Defendant purchased beam couplers and beam

switches from Optoskand AB in order to incorporate them into Defendant high-power fiber lasers. The couplers and switches offered for sale by Optoskand were very expensive, costing roughly $9,000 and $27,000, respectively. Consequently, Defendant wanted to design and build its own couplers and switches. 20. Commencing in or about 2003 Defendant undertook efforts to design its own

couplers and switches, but the resulting product was too expensive and too complex to build for mass production and sale. The couplers and switches designed by Defendant were unreliable in use and were never brought to market. 21. In late 2006 and early 2007, Plaintiff and Defendant discussed possibilities for

collaboration with Plaintiff providing designs for opto-mechanical and optical components and subassemblies for Defendant. Defendant proposed that Plaintiff work as an employee. However, Plaintiff eventually refused and instead agreed only to consult for the company as an independent contractor. One or more draft consulting agreements prepared by Defendant, including one dated March 5, 2007, reflects the parties intent that Plaintiffs relationship with Defendant was solely an independent consulting arrangement. Consistent with this relationship, Defendant paid Plaintiff consulting fees without deduction of payroll taxes and reported his compensation to the Internal Revenue Service as miscellaneous income. 22. Defendant, on several occasions, attempted to have Plaintiff transfer his

intellectual property to it. In each case, Plaintiff refused. For example, in one such proposed agreement dated March 5, 2007, IPG Photonics proposed that Plaintiff assign all right, title and interest to certain of his inventions to Defendant pursuant to the following clause: Agreements Regarding Inventions/Receipt of Fair Compensation. Consultant covenants and agrees that all right, title and interest in any -7-

findings, reports, inventions, writings, disclosures, discoveries, computer code, developments and improvements written, invented, made or conceived by Consultant in the course of or arising out of this Agreement (hereinafter referred to as "Work Product") shall remain the sole and exclusive property of Company and shall be a work made for hire. Consultant agrees to disclose all Work Product to Company and agrees to execute any instruments and to do all other things reasonably requested by Company (both during and after Consultant's engagement by Company) in order to vest more fully in Company all ownership rights in Work Product. ... 23. Plaintiff rejected the terms of Defendants proposed agreements because he did

not agree to the transfer of any ownership interest in any of his inventions, including the Fiber Coupling Invention, or any derivatives of it, to Defendant. Plaintiff specifically told Defendant that any efforts to transfer any of his intellectual property rights, ideas, or inventions, to it was unacceptable. The consulting agreement described above was never signed by Plaintiff. Defendant, thus, proceeded to retain Plaintiffs services without acquiring any right, title, or interest to the Fiber Coupling Invention, or to any derivatives of it. 24. Defendant acquired no shop rights in the Fiber Coupling Invention because it was

conceived of prior to Plaintiffs provision of consulting services to Defendant. 25. Defendant made it known that it had instituted policies requiring its employees to

maintain the confidentiality of trade secrets and other confidential information learned during the course of their work for Defendant. 26. On April 1, 2007, Plaintiff commenced consultations with Defendant and moved

from Pennsylvania to Massachusetts. 27. For the first two months, Plaintiff worked on technology to improve the

production of advanced fiber collimators. On successful completion of that project, Mr. Vladlen Ivshin, Defendants high power laser product line manager, showed Plaintiff a prototype of IPG Photonics high-power fiber coupler, explained the difficulties in building and operating a working model, and asked him for assistance in refining the design. Plaintiff learned quickly that modification of Defendants design would be futile and that his own Fiber Coupling Invention could be successfully used in a coupler in order to substantially reduce its bulk and -8-

cost. Though Plaintiff had not been hired for this particular project, he agreed to provide such assistance. 28. Within weeks, Plaintiff built and successfully tested a coupler using his Fiber

Coupling Invention. Plaintiff also built a prototype suitable for field tests. This prototype was tested at IPG Photonics facilities in the USA and Germany. A photograph of Plaintiffs prototype is set forth below:

Figure 3 29. Dr. Valentin Gapontsev, Defendants founder and Chief Executive Officer,

personally requested that Plaintiff demonstrate the first prototype of his coupler. A number of Defendants R&D engineers also attended this demonstration. At the completion of the demonstration, Dr. Gapontsev lauded the prototype, as did his son, Denis Gapontsev (Vice President of Engineering at the time). Similar commendations for the coupler were communicated to Plaintiff after the demonstration. 30. Shortly after the first demonstration of the prototype, Plaintiff was approached by

Defendants patent attorney, Yuri Kateshov. Kateshov had been asked by Dr. Valentin Gapontsev to file a patent application for Plaintiffs Fiber Coupling Invention, and its derivative -9-

forms. Plaintiff refused to assist in such an effort since he considered the Fiber Coupling Invention to be his own confidential property, and he told this to Mr. Kateshov. 31. Thereafter, Plaintiff built five coupler prototypes similar to the one shown in

Figure 4 for confidential field testing. Plaintiff severed his consulting arrangement with Defendant in late February 2008 due to health reasons and working conditions. He informed Defendants CEO, Valentin Gapontsev, and Denis Gapontsev of the termination of his consultancy and offered to license his Fiber Coupling Invention to Defendant: Also please be
advised that the beam switch (partially) and the beam coupler (completely) are based on my inventions created years before this assignment. I retain all the rights in that intellectual property and would be glad to license it to you. Those inventions will be available for a while, then they will be licensed to the interested companies. So, please be in touch with me to avoid very likely legal complications should you decide to bring to market the mentioned products.

32.

Shortly after resigning, Plaintiff also discussed with Mr. Kateshov his Fiber

Coupling Invention and restated his claim of ownership. 33. Defendants misappropriation of Plaintiffs Fiber Coupling Invention has enabled

it to produce a commercially acceptable coupler. It also was and is much simpler, less expensive and easier to use than any coupler then being marketed by others. Plaintiffs invention is estimated to have reduced manufacturing costs by thousands of dollars per coupler/switch. 34. Plaintiffs design was simple, cost-effective, easily constructed and assembled,

and outperformed the coupler designed by Optoskand, the industry leader at the time. 35. On December 31, 2008, Defendant filed a U.S. Patent Application, No.

12/319,070, entitled Beam Coupler, naming inventors Yuri Grapov, William D. Jones, and Vladlen Ivshin. The patent application was made public on July 1, 2010 and U.S. Patent No. 8,014,641 (the 641 Patent) (attached as Exhibit 1 hereto). Yuri Kateshov was one of the prosecuting attorneys on the application. 36. Also on December 31, 2008, Defendant filed U.S. Patent Application No.

12/317,068, entitled Apparatus for Selectively Distributing Energy for a Laser Beam, naming - 10 -

inventors Yuri Grapov, William D. Jones, and Michael DiGiantommaso issued as U.S. Patent No. 8,320,426 (made public on July 1, 2010), which built upon the essential trade secret discovered by Plaintiff. On March 3, 2009, Defendant filed a third application, U.S. Patent Application No. 12/396,536, a continuation-in-part application, entitled Sealed Beam Coupler For An Isolated Environment, naming inventors Yuri Grapov, William D. Jones, and Michael M. DiGiantommaso that was issued as U.S. Patent No. 7,794,159 (the 159 Patent) (made public on July 1, 2010). Defendant also filed a U.S. Patent Application No. 12/317,997, entitled Mirror Positioning Apparatus For Use In Beam Switching, naming inventors Yuri Grapov, William D. Jones, and Michael M. DiGiantommaso issued as U.S. Patent No. 7,982,935 (made public on July 1, 2010), which built upon the essential trade secret discovered by Plaintiff. Each of these applications included disclosures of aspects of Plaintiffs Fiber Coupling Invention. 37. Finally, on February 16, 2011, Defendant filed an international patent application

PCT/US2011/025012, entitled Beam Coupler Alignment System and Method, naming inventors William Jones, Yuri Grapov, and Michael DiGiantommaso, published as WO2012/112146, which builds upon the essential trade secret provided by Plaintiff. 38. Three of Defendants employees were named as inventors on the 641 Patent, but

Plaintiff was not credited with the Fiber Coupling Invention. In addition to his contribution to all aspects of the patent, Claim 8 of the 641 Patent is directly derived from Plaintiffs Fiber Coupling Invention. 39. Until September 5, 2011, Plaintiff was never informed that Defendant was

seeking these patents or using his Fiber Coupling Invention. On that day, Plaintiff discovered the 641 Patent application in a search of the U.S. Patent and Trade Office web site. Thereafter, Plaintiff learned that Defendant had incorporated his Fiber Coupling Invention into Defendants couplers and switches. 40. Defendant stole Plaintiffs Fiber Coupling Invention and claimed to have

discovered it. By doing so, Defendant also committed fraud on the U.S. Patent and Trade Office.

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Defendant did not lawfully acquire right, title, or interest in Plaintiffs Fiber Coupling Invention and used it without his permission. 41. From 2008 to the present Defendant sold thousands of couplers and hundreds of

switches based on Plaintiffs Fiber Coupling Invention and has failed provide any royalty to Plaintiff as the lawful owner of it. Accordingly, Plaintiff has been damaged in an amount to be proven at trial. FIRST CAUSE OF ACTION (Correction Of Inventors Pursuant to 35 U.S.C. 246) 42. 43. Plaintiff realleges and incorporates by reference paragraphs 1-41. This is a suit to correct the inventors named in the 641 Patent. Defendant,

through omission, failed to name Plaintiff, who individually conceived of one or more claims contained in the 641 Patent. 44. Plaintiff was unaware of the omission and did nothing to deceive the U.S. Patent

and Trade Office about the true ownership of the matters described in the 641 Patent. 45. By failing to name Plaintiff as inventor in the declaration filed on December 31,

2008 in support of the 641 Application, Defendant violated 35 U.S.C. 115 and 116, which require the identification of each inventor in the oath or declaration supporting a patent application. 46. Without correction of the named inventors under 35 U.S.C. 256, Defendants

violation of these federal statutes will continue unabated to the detriment of Plaintiff and the public at large. 47. Plaintiff, therefore, requests correction of the inventors named in the 641 Patent

to ensure compliance with the federal requirements for filing patent applications, to preserve his good name and reputation, and to properly identify the inventors for the benefit of the public. SECOND CAUSE OF ACTION (Misappropriation of Trade Secrets Under Massachusetts Common Law) 48. Plaintiff realleges and incorporates by reference paragraphs 1-41. - 12 -

49.

By virtue of a consulting relationship with Plaintiff, Defendant was given

confidential access to the Fiber Coupling Invention and shown how to incorporate it into the design of its couplers and switchesinformation that has given it the opportunity to earn tens of millions of dollars that it was not otherwise entitled to. 50. Plaintiff took reasonable steps to preserve the secrecy of the Fiber Coupling

Invention, which was not generally known to the public or to Defendant. 51. The conduct described herein establishes that Defendant misappropriated,

disclosed, misused, took, carried away, transferred, copied, concealed, exploited, and/or otherwise used Plaintiffs Fiber Coupling Invention to benefit Defendant, to the detriment of Plaintiff. 52. Additionally and alternatively, Defendant wrongfully took Plaintiffs Fiber

Coupling Invention and intended to convert it to its own use. 53. As a direct and proximate result of Defendants wrongful conduct, Plaintiff has

suffered and will continue to suffer substantial direct and consequential damages. THIRD CAUSE OF ACTION (Misappropriation Of Trade Secrets, Massachusetts General Law Ch. 93, 42, and 42A) 54. 55. Plaintiff realleges and incorporates by reference paragraphs 1-41. Plaintiff developed and discovered the Fiber Coupling Invention, which

constitutes, represents, evidences or records a secret scientific, technical, merchandising, production or management information, design, process, procedure, formula, invention or improvement. 56. it. 57. Invention. Plaintiff took reasonable steps to preserve the secrecy of the Fiber Coupling This Fiber Coupling Invention is economically valuable to those who know or use

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58.

Defendant stole, unlawfully took, carried away, concealed, copied, or otherwise

used this information from Plaintiff, with the intent to convert that information to its own use. This conduct was willful, knowing, and/or in bad faith. 59. Defendants conduct violates the Massachusetts Trade Secrets Act, Massachusetts

General Laws chapter 93, 42, and 42A. 60. As a direct and proximate result of Defendants conduct Plaintiff has suffered and

will continue substantial direct and consequential damages. FOURTH CAUSE OF ACTION (Unfair Competition, Massachusetts General Law Ch. 93A, 2 and 11) 61. 62. 63. 64. Plaintiff realleges and incorporates by reference paragraphs 1-41. Plaintiff engages in the conduct of trade or commerce. Defendant also engages in trade or commerce. Through Defendants misappropriation of Plaintiffs confidential, proprietary,

and/or trade secret information, Defendant has used or employed an unfair method of competition and/or an unfair or deceptive act or practice. 65. Defendants conduct constituted willful or knowing violations of Massachusetts

General Laws Ch. 93A, 2. 66. Defendants conduct took place primarily and substantially within the

Commonwealth of Massachusetts. 67. As a direct and proximate result of Defendants wrongful conduct, Plaintiff has

suffered and will continue substantial direct and consequential damages, including a loss of money and/or property. 68. Defendants misappropriation of Plaintiffs trade secrets affects and harms the

open marketplace. PRAYER FOR RELIEF For the reasons set forth above, Plaintiff respectfully requests the following relief:

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a. Entry of an order of judgment in favor of Plaintiff and against Defendant on all causes of action alleged in the Complaint; b. A declaration that Plaintiff is the inventor of the 641 Patent; c. An order to the Director of the U.S. Patent & Trademark Office directing him or her to issue a Certificate of Correction to name Plaintiff as the inventor of the 641 Patent. d. An injunction permanently enjoining Defendant from using the Fiber Coupling Invention, or derivatives of it, without Plaintiffs express authorization; e. An award of compensatory and consequential damages according to proof; f. As to Count III, an award double damages pursuant to Mass. Gen. Laws Ch. 93, 42, 42A; g. As to Count IV, an award double or treble damages pursuant to Mass. Gen. Laws Ch. 93A, 11; h. An award applicable pre-judgment and post-judgment interest; i. An award to Plaintiff of its reasonable and necessary attorneys fees, pursuant to Massachusetts General Law chapter 93A, 35 USC 285, and as otherwise provided by law. j. An award to Plaintiff of its costs of suit, and; k. An award to Plaintiff of any such other and further relief as the Court may deem just and proper.

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DEMAND FOR JURY TRIAL Plaintiff demands a trial by jury on all issues so triable in this action. Dated: August 5, 2013 Respectfully submitted, LYNCH, BREWER, HOFFMAN & FINK, LLP By: /s/ Alan R. Hoffman Alan R. Hoffman, BBO #236860 Dale C. Kerester, BBO #548385 LYNCH, BREWER, HOFFMAN & FINK, LLP 75 Federal Street 7th Floor Boston, MA 02110 Telephone: (617) 951-1817 Facsimile: (617) 951-0811 Email: ARHoffman@lynchbrewer.com dkerester@lynchbrewer.com

HAUSFELD LLP Christopher L. Lebsock Bruce J. Wecker HAUSFELD LLP 44 Montgomery Street, Suite 3400 San Francisco, CA 94104 Telephone: (415) 633-1908 Facsimile: (415) 358-4980 Email: clebsock@hausfeldllp.com bwecker@hausfeldllp.com Attorneys for Plaintiff

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