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Major Sponsor
Navigant Consulting, Inc.

Luncheon Sponsors
Fulbright & Jaworski, L.L.P.
Jones Day
Weil, Gotshal & Manges LLP

Conference art

13th Annual

Advanced Patent Law Institute - Austin

Austin Oct 29*, 30-31, 2008 Four Seasons Hotel
*optional Wed Evening session
Conference Concluded
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Overview

Join leading practitioners, academics and in-house counsel from the Southwest and Silicon Valley, including senior IP counsel from Apple, ATT, Texas Instruments, and Freescale Semiconductor, in Austin, Texas for two days of presentations on a rich array of prosecution and litigation topics. Cool weather, great city, music and food—at the Four Seasons Austin.

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Event Schedule

Program is subject to change.
All times are Central Time Zone.

  • Day 1 October 29, 2008
  • Day 2 October 30, 2008
  • Day 3 October 31, 2008
  • Time
    Credit
    Subject
    Speaker
  • Time
    Credit
    Subject
    Speaker
  • Thursday Morning, Oct. 30, 2008
    Presiding Officer:
    Robert L. King, Freescale Semiconductor, Inc. - Austin, TX
  • 8:00 am
    Registration Opens
    Includes continental breakfast.

  • 8:45 am
    Welcoming Remarks

  • 8:50 am
    1.00 hr
    Disasters in Litigation: What Patent Prosecutors Could Have Done to Prevent the Carnage
    Ten case histories, with disastrous results for the patentee, will be discussed. In each instance there will be suggestions as to what the patent prosecutor could have done to avoid the bad result.

    Richard A. Killworth, Dinsmore & Shohl, LLP - Dayton, OH
    Dale S. Lazar, DLA Piper - Reston, VA

  • 9:50 am
    0.67 hr
    Developments in Claims Construction
    With apparent claim construction peace declared between the Federal Circuit and the Supreme Court, the Federal Circuit has dug in and potentially opened a new front in its O2 decision. Other old-favorite construction rules and trends have gone off on new loops and tangents as well. These new fronts and trends will be discussed, how to handle them in Markman constructions will be explored, and the new pitfalls and "gotchas" will be flagged.

    Kenneth R. Adamo, Jones Day - Dallas, TX

  • 10:30 am
    Break

  • 10:45 am
    0.50 hr
    Patent Exhaustion After Quanta: Impact on Litigation and Licensing
    The Supreme Court’s recent decision in Quanta redefines an area of patent law that had been subject to considerable confusion for many years. The Court confirmed that so-called “combination” or "system" claims can be exhausted by the sale of a component "substantially embodying" the patented invention. The Court also reversed decades-old Federal Circuit precedent in holding that method claims are subject to the same exhaustion rules as apparatus claims. At the same time, the Court left open the extent to which application of the exhaustion doctrine may be contractually limited. This session explores the impact of Quanta on patent litigation and licensing, including an analysis of the Court's test for exhaustion and the possible extension of Quanta to attempted contractual restrictions.

    Garland T. Stephens, Fish & Richardson P.C. - Houston, TX

  • 11:15 am
    0.75 hr
    Obviousness After KSR: Litigation and Prosecution
    A discussion about how KSR has changed patent infringement litigation and patent prosecution, including a review of cases citing KSR, jury charges on obviousness post-KSR, trial strategies, examiner arguments and rejections, and prosecution strategies.

    Tom Adolph, Jackson Walker LLP - Houston, TX
    Stephen P. Koch, ExxonMobil Upstream Research Company - Houston, TX

  • Thursday Afternoon, Oct. 30, 2008
    Presiding Officer:
    Amber Hatfield Rovner, Weil, Gotshal & Manges LLP - Austin, TX
  • LUNCHEON PRESENTATION
    Sponsored by
    Fulbright & Jaworski L.L.P.
    Weil, Gotshal & Manges LLP

  • 12:00 pm
    Pick up Lunch
    Included in conference registration.

  • 12:15 pm
    0.75 hr
    Jury-Oriented Patent Prosecution and Presentation
    Ideas, strategies and tips for the patent prosecutor and litigator, with the end goal being an understandable patent and/or jury presentation.

    Moderator:
    Brett C. Govett, Fulbright & Jaworski L.L.P. - Dallas, TX
    George Speckart, Courtroom Sciences, Inc. - Irving, TX
    Andrew M. Spingler, The Focal Point - Santa Fe, NM
    James B. Stiff, Trial Analysts, Inc. - College Station, TX

  • 1:00 pm
    Break

  • 1:15 pm
    0.50 hr
    Patent Quality Checklist: In-House Counsel’s Perspective for Ensuring Successful Licensing
    A patent is crafted years before it is asserted. The decision whether, when, how, and where to license a patent depends on any number of business and legal considerations, but it almost always begins with the patent itself. Is your patent ready to take to market? We will discuss what to do before filing and during prosecution to ensure that the finished product--the issued patent or family of patents--is indeed ready. We will also consider how to evaluate issued patents to determine their suitability for licensing.

    Umesh M. Desai, AT&T Laboratories, Inc. - Austin, TX

  • 1:45 pm
    0.50 hr
    Forum Selection and Local Rules
    A survey of popular districts for patent litigation, comparing local patent rules, time to trial and other factors relevant to forum selection.

    John Steven Torkelson, Carrington, Coleman, Sloman & Blumenthal L.L.P. - Dallas, TX

  • 2:15 pm
    0.75 hr
    0.25 hr ethics
    Top 10 Do's and Don'ts for Patent Trial Practice
    The ever increasing complexities of patent litigation come to a head at trial, where the case must be boiled down to sell it to a lay jury. This session will explore what to do, and what not to do, to successfully try a patent case to a jury and for appeal, and to properly work up the case in discovery and pretrial. Plaintiff's and defendant's perspectives, as well as ethical issues, will be considered.

    Michael D. Pegues, Bracewell & Giuliani LLP - Dallas, TX
    Steven J. Pollinger, McKool Smith, P.C. - Austin, TX

  • 3:00 pm
    Break

  • 3:15 pm
    0.50 hr
    Indirect and Divided Infringement
    Few recent cases addressing the law of infringement have been as significant as the Federal Circuit’s decisions in DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006)(en banc) (concerning induced infringement) and BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (concerning divided infringement). This presentation analyzes how the lower courts have responded to those decisions and provides practical advice on how to avoid the pitfalls of those cases for practitioners drafting and prosecuting patent applications.

    Erik R. Puknys, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Palo Alto, CA

  • 3:45 pm
    0.75 hr
    When to Hold, When to Fold: Litigation Judgment and Settlement Strategies in Patent Cases
    Deciding when and how to settle patent cases, and which cases to take to trial, is a critical business decision that requires not only an assessment of the risks and benefits in a specific case but also a strategic sense of the long-term interests of the company. This panel of in-house counsel will discuss their experiences and their lessons learned about what works and what doesn't work in making these decisions.

    Moderator:
    Robert Barr, Berkeley Center for Law and Technology - Berkeley, CA
    Richard 'Chip' J. Lutton Jr., Apple, Inc. - Cupertino, CA
    Mark Patrick, Texas Instruments - Dallas, TX
    Jennifer B. Wuamett, Freescale Semiconductor, Inc. - Austin, TX

  • 4:30 pm
    1.00 hr
    0.25 hr ethics
    Judicial Panel
    In a time of an evolving patent landscape and increased activity in the Supreme Court, legislature and Patent and Trademark Office, a panel of distinguished District Court Judges discuss their experiences with, and thoughts on, managing, hearing and trying patent cases.

    Hon. David J. Folsom, U.S. District Court, Eastern District of Texas - Texarkana, TX
    Moderator:
    Katherine Kelly Lutton, Fish & Richardson P.C. - Redwood City, CA
    Hon. T. John Ward, U.S. District Court, Eastern District of Texas - Marshall, TX
    Hon. Lee Yeakel, U.S. District Court, Western District of Texas - Austin, TX

  • 5:30 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Friday Morning, Oct. 31, 2008
    Presiding Officer:
    Darryl J. Adams, Baker Botts L.L.P. - Austin, TX
  • 8:30 am
    0.50 hr
    Patent Reexamination Nuts and Bolts
    Patent reexaminations, especially inter partes reexaminations, have increasingly become arrows in the quivers of a patent litigator's arsenal that are used to defend allegations of infringement. This presentation will discuss reexamination strategies as well as the nuts and bolts of a successful reexamination request. A check list of must's and should's will be provided.

    Wei Wei Jeang, Haynes & Boone, LLP - Richardson, TX

  • 9:00 am
    0.50 hr
    New USPTO Appeal Rules
    Effective December 8, 2008, the Board of Appeals and Interferences will be operating under a new rule package which is intended to streamline the process and address the increasing backlog of appeals. This presentation will address which rules have changed, what are the best strategies for dealing with the new rule package, and whether the new rules represent progress or merely movement.

    Andrew J. Dillon, Dillon & Yudell LLP - Austin, TX

  • 9:30 am
    0.75 hr
    Industry Standards Impact on How Companies Do Business: SDO's, Essential Patents, Antitrust and Contractual Challenges in Technology Markets
    Companies designing, developing, selling and/or purchasing products for markets that require compliance with industry standards, face uniquely challenging IP and business issues due to the convergence of patent, antitrust, and contractual laws and obligations that are complex and often conflict with business goals. Recent decisions such as the Rambus Federal Circuit decision and the Third Circuit's Broadcomm v Qualcomm decision, as well as ongoing EU investigations of Qualcomm and Rambus highlight how vastly differing interpretations of these laws can have profound business and market implications. This panel of outside counsel and in-house counsel will discuss how companies can better understand and reconcile these laws and obligations in a way that balances the risks and rewards of competing and participating in these industry compliant markets.

    Tim Carlson, Texas Instruments - Germantown, MD
    David J. Healey, Fish & Richardson P.C - Houston, TX

  • 10:15 am
    Break

  • 10:30 am
    0.50 hr
    After eBay: Post-verdict Remedies and ITC Orders
    The Supreme Court's eBay v. MercExchange decision changed the rules for injunctive relief and will likely have a substantial influence on the remedies available to patent owners. What happens when there’s a finding of infringement but a denial of an injunction? What post-verdict remedies remain available and when do they apply? The session will focus on alternative remedies, such as post-verdict royalties and ITC orders and their potential application.

    Brent K. Bersin, Navigant Consulting, Inc. - Houston, TX
    Steven R. Borgman, Vinson & Elkins, L.L.P. - Houston, TX

  • 11:00 am
    0.50 hr
    The Proper Scope of the Experimental Use Doctrine in View of Pfaff
    After the Supreme Court’s decision in Pfaff v. Wells Electronics redefined the scope of the on-sale bar, the Federal Circuit has struggled to find the proper scope of the experimental use negation of the on-sale bar. The Federal Circuit has recognized that its caselaw is confusing in this area and has explicitly questioned whether its precedent is consistent with Pfaff. This presentation will examine the current scope of the experimental use doctrine and the proper scope of the doctrine in view of Pfaff.

    Darryl J. Adams, Baker Botts L.L.P. - Austin, TX

  • 11:30 am
    0.50 hr
    The Shocking Truth about Patent Litigation: Data from the IP Litigation Clearinghouse
    Professor Lemley will present preliminary findings from the most comprehensive collection of patent litigation data in the country, including the real truth about how many patent trolls are out there, whether defendants copy inventions, and the best district to get your patent case to trial (hint: it's NOT the Eastern District of Texas).

    Mark A. Lemley, Stanford Law School - Stanford, CA

  • Friday Afternoon, Oct. 31, 2008
    Presiding Officer:
    David W. O'Brien, Zagorin O'Brien & Graham LLP - Austin, TX
  • LUNCHEON PRESENTATION
    Sponsored by
    Jones Day

  • 12:00 pm
    Pick up Lunch
    Included in conference registration.

  • 12:15 pm
    0.75 hr ethics
    Top 10 Prosecution Ethics Issues
    Malpractice and conflict of interest claims based upon patent prosecution are growing in number and severity of settlement. This session will address ten issues that should be of concern to patent practitioners.

    David Hricik, Mercer University School of Law - Macon, GA

  • 1:00 pm
    Break

  • 1:15 pm
    0.50 hr
    Strategic Patent Monetization: Brokers and Auctions
    Historically, the intellectual property market has been insulated as transactions were largely conducted in private and, thus, transaction prices and other details were not disclosed. The emergence of live auctions have changed this as sellers and buyers now have access to an increasing amount of comparable data as well as expanded knowledge of available assets. However, depending upon specific seller requirements, a private auction or sale may be the better option. During this session, the speaker will discuss current trends, pros and cons of various transaction platforms and common challenges associated with each type.

    Nicole D'Hondt, Ocean Tomo - Chicago, IL

  • 1:45 pm
    0.50 hr
    Section 101
    The presentation discusses recent changes and updates by the U.S. Supreme Court, the Federal Circuit, District Courts and the USPTO to the understanding of statutory subject matter. It further examines what changes might be expected over the coming year.

    Michael G. Locklar, Jackson Walker L.L.P. - Houston, TX

  • 2:15 pm
    0.50 hr ethics
    Joint Defense Strategies and Agreements
    The number of patent cases being filed against groups of unrelated defendants is on the rise. As a result, the number of joint defense groups being formed is also on the rise and issues surrounding joint defense groups are many. This presentation will include a discussion of waiver, conflicts and strategic considerations involving management of the case and the group.

    Hilda C. Galvan, Jones Day - Dallas, TX

  • 2:45 pm
    0.50 hr ethics
    Patent Malpractice Claims
    A discussion of the increasing number of malpractice actions brought against individual practitioners and firms for mistakes in prosecuting applications and dealing with other patent related issues.

    James B. Gambrell, Hunt, TX

  • 3:15 pm
    0.50 hr ethics
    E-Discovery and Spoliation
    Key issues and case law updates of interest to all practitioners will be discussed.

    Barry K. Shelton, Fish & Richardson P.C. - Austin, TX

  • 3:45 pm
    Adjourn

  • Day 1 October 29, 2008
  • Day 2 October 30, 2008
  • Day 3 October 31, 2008
Download Schedule

Conference Faculty

Kenneth R. Adamo

Jones Day
Dallas, TX

Darryl J. Adams

Baker Botts L.L.P.
Austin, TX

Tom Adolph

Jackson Walker LLP
Houston, TX

Robert Barr

Berkeley Center for Law and Technology
Berkeley, CA

Brent K. Bersin

Navigant Consulting, Inc.
Houston, TX

Steven R. Borgman

Vinson & Elkins, L.L.P.
Houston, TX

Tim Carlson

Texas Instruments
Germantown, MD

Nicole D'Hondt

Ocean Tomo
Chicago, IL

Umesh M. Desai

AT&T Laboratories, Inc.
Austin, TX

Andrew J. Dillon

Dillon & Yudell LLP
Austin, TX

Hon. David J. Folsom

U.S. District Court, Eastern District of Texas
Texarkana, TX

Hilda C. Galvan

Jones Day
Dallas, TX

James B. Gambrell

Hunt, TX

Brett C. Govett

Fulbright & Jaworski L.L.P.
Dallas, TX

David J. Healey

Fish & Richardson P.C
Houston, TX

David Hricik

Mercer University School of Law
Macon, GA

Wei Wei Jeang

Haynes & Boone, LLP
Richardson, TX

Richard A. Killworth

Dinsmore & Shohl, LLP
Dayton, OH

Stephen P. Koch

ExxonMobil Upstream Research Company
Houston, TX

Dale S. Lazar

DLA Piper
Reston, VA

Mark A. Lemley

Stanford Law School
Stanford, CA

Michael G. Locklar

Jackson Walker L.L.P.
Houston, TX

Katherine Kelly Lutton

Fish & Richardson P.C.
Redwood City, CA

Richard 'Chip' J. Lutton Jr.

Apple, Inc.
Cupertino, CA

Mark Patrick

Texas Instruments
Dallas, TX

Michael D. Pegues

Bracewell & Giuliani LLP
Dallas, TX

Steven J. Pollinger

McKool Smith, P.C.
Austin, TX

Erik R. Puknys

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Palo Alto, CA

Barry K. Shelton

Fish & Richardson P.C.
Austin, TX

George Speckart

Courtroom Sciences, Inc.
Irving, TX

Andrew M. Spingler

The Focal Point
Santa Fe, NM

Garland T. Stephens

Fish & Richardson P.C.
Houston, TX

James B. Stiff

Trial Analysts, Inc.
College Station, TX

John Steven Torkelson

Carrington, Coleman, Sloman & Blumenthal L.L.P.
Dallas, TX

Hon. T. John Ward

U.S. District Court, Eastern District of Texas
Marshall, TX

Jennifer B. Wuamett

Freescale Semiconductor, Inc.
Austin, TX

Hon. Lee Yeakel

U.S. District Court, Western District of Texas
Austin, TX

Planning Committee

Robert L. King—Co-Chair

Freescale Semiconductor, Inc.
Austin, TX

Amber Hatfield Rovner—Co-Chair

Weil, Gotshal & Manges LLP
Austin, TX

Darryl J. Adams

Baker Botts L.L.P.
Austin, TX

Tom Adolph

Jackson Walker LLP
Houston, TX

Brent K. Bersin

Navigant Consulting, Inc.
Houston, TX

Steven R. Borgman

Vinson & Elkins, L.L.P.
Houston, TX

Andrew J. Dillon

Dillon & Yudell LLP
Austin, TX

Kirby B. Drake

Fulbright & Jaworski L.L.P.
Dallas, TX

Michael J. Esposito

The University of Texas School of Law
Austin, TX

John D. Flynn

IBM Corporation
Austin, TX

James B. Gambrell

Hunt, TX

John M. Golden

The University of Texas School of Law
Austin, TX

Brett C. Govett

Fulbright & Jaworski L.L.P.
Dallas, TX

Gary W. Hamilton

Hamilton & Terrile, LLP
Austin, TX

David J. Healey

Fish & Richardson P.C
Houston, TX

Wei Wei Jeang

Haynes & Boone, LLP
Richardson, TX

Albert B. Kimball Jr.

Bracewell & Giuliani, LLP
Houston, TX

William L. LaFuze

Vinson & Elkins LLP
Houston, TX

Mark A. Lemley

Stanford Law School
Stanford, CA

Eric L. Natinsky

Wilson Sonsini Goodrich & Rosati
Austin, TX

David W. O'Brien

Zagorin O'Brien & Graham LLP
Austin, TX

Mark Patrick

Texas Instruments
Dallas, TX

Louis A. Riley

McAfee, Inc.
Plano, TX

Robert W. Turner

Jones Day
Dallas, TX

Shirley Webster

CRA International
Houston, TX

Craig W. Weinlein

Carrington, Coleman, Sloman & Blumenthal, L.L.P.
Dallas, TX

William D. Wiese

Dubois, Bryant & Campbell, LLP
Austin, TX

James D. Woods

Grant Thornton LLP
Houston, TX

Credit Info

  • Austin
MCLE Credit
Toggle view Texas – 14.25 hrs  |  2.75 hrs Ethics
You may claim your credit online in Your Briefcase, and UT Law CLE will report credit on your behalf to the State Bar of Texas. A Certificate of Attendance will be provided in Your Briefcase for your records. The system reports Texas CLE credit every Tuesday. If you are claiming credit in the last week of your birth month, self-report your CLE credit directly to the State Bar of Texas at texasbar.com, using the course number  provided on your certificate of attendance.
Toggle view California – 14.25 hrs  |  2.75 hrs Ethics
You must claim your credit online in Your Briefcase, and will then be provided a Certificate of Attendance for your records. UT Law CLE is required to provide the State Bar with electronic attendance records for any MCLE participatory activity within 60 days of completion of the activity. The California licensee is responsible for reporting their compliance/credit hours earned to the State Bar at the end of their reporting period directly to the State Bar of California at calbar.ca.gov.  UT Law CLE will maintain Attendance Records for four years.  
Other Credit
Toggle view TX Accounting CPE – 16.00 hrs
The University of Texas School of Law (Provider #250) live conferences are presumptively approved by The Texas State Board of Public Accountancy for Texas Accounting CPE credit based on a 50-minute credit hour. Approved for general CPE credit only.

At the conference, you are welcome to sign in on the Accounting CPE Record of Attendance form at the registration desk, but we are now reporting all credit online. You will receive a Texas Accounting Certificate of Completion in Your Briefcase. Self-report your CPE credit directly to TSBPA. UT Law CLE will maintain Attendance Records for four years.  

Contact us at accreditation@utcle.org if you have additional questions.

Key Dates

Austin – Oct 29*, 30-31, 2008 – Four Seasons Hotel
*optional Wed Evening session
Conference Concluded
Buy
  • Austin
Standard Registration
Last day for $660.00 Regular pricing: Oct 22, 2008

$710.00 for registrations received after this time

Last day for cancellation (full refund): Oct 24, 2008

$50 processing fee applied after this date

Last day for cancellation: Oct 27, 2008

Venue

speaker

Four Seasons Hotel

98 San Jacinto Boulevard
Austin, TX 78701-4082
512-478-4500 (reservations)
Map

Accommodations

$265.00 good through Oct 3, 2008

Parking Information

Self-parking is NOT available at the Four Seasons! We recommend parking at the Convention Center garage at 2nd and Brazos. NOTE: City View rooms are Sold Out. Lake View rooms available at $265 night.

Our Sponsors

Thank you to our sponsors! Click each logo below to learn more.

  • Navigant Consulting, Inc. logo
    Navigant Consulting, Inc.
    Navigant Consulting, Inc. (NYSE: NCI) is a specialized independent consulting firm providing litigation, financial, healthcare, energy and operational consulting services to government agencies, legal counsel and large companies facing the challenges of uncertainty, risk, distress and significant change. The Company focuses on industries undergoing substantial regulatory or structural change and on the issues driving these transformations. www.navigantconsulting.com www.navigantconsulting.com/
  • Fulbright & Jaworski L.L.P. logo
    Fulbright & Jaworski L.L.P.
    The Fulbright Arbitration and ADR group is widely recognized as one of the world's leading international arbitration practices. With strategic locations in the United States, Europe, Asia and the Middle East, Fulbright is positioned to handle international arbitration disputes wherever they may arise. A record of obtaining successful outcomes in major arbitrations involving a variety of governing laws, jurisdictions and arbitral rules has lead Fulbright to be selected as a leading law firm in the field of international arbitration by the 2008 Chambers Global Guide and one of the top ten arbitration firms worldwide based on total number of arbitrations by the 2007 ALM Focus Europe. Fulbright was the recipient of LatinLawyer Magazine's Deal of the Year: Disputes Category for 2007. The firm's multi-national team of arbitration lawyers is fluent in more than a dozen languages and is experienced in appearing as advocates before arbitrators from a wide range of cultural backgrounds under the rules of all of the major international arbitration institutions. Clients around the world have called on us for some of the most politically charged and high-stakes disputes of recent years, in the public and private sectors. www.fulbright.com www.fulbright.com/
  • Jones Day

    Jones Day
    Jones Day is a global law firm with locations in centers of business and finance throughout the world. Ranked among the world's best and most integrated law firms, and perennially ranked among the best in client service, Jones Day acts as principal outside counsel to, or provides significant legal representation for, more than half of the Fortune Global 500 companies. Our practices cover the spectrum of transactional, litigation, regulatory, and tax matters facing our clients. And when these matters have an interdisciplinary dimension, we are well positioned to bring together the right team of lawyers to meet our clients' business objectives. In Texas, Jones Day celebrates its 30th anniversary in 2011 and has more than 200 lawyers in Dallas and Houston. www.jonesday.com www.jonesday.com/
  • Weil Gotshal & Manges logo
    Weil Gotshal & Manges
    Weil, Gotshal & Manges LLP advises many of the world's most successful organizations on matters as complex and interconnected as the businesses themselves. With more than 1,200 lawyers in 20 offices across the U.S., Europe and Asia, the firm is a leader in the marketplace for sophisticated, international legal services. An important part of the firm's philosophy is the team approach. Weil is "one-firm" that provides seamless service no matter the location or area of expertise. The firm's goal is to understand and work toward achieving clients' key objectives, providing their best judgment on close calls and tough issues. In addition to professional excellence, Weil is committed to being a model in providing pro bono legal assistance that impacts global and local organizations in the communities it serves. www.weil.com www.weil.com/
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