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Intellectual Property Due Diligence

Submitted By: David Dawsey | Word Count: 849 | Views: 134

The importance of due diligence in any investment, merger, or acquisition decision cannot be understated. Decisions can no longer be made based solely upon a good business plan. In today's knowledge based economy intellectual property (IP) is often a company's single most valuable asset. However, IP due diligence is typically an afterthought.

The Goals

The goals of IP due diligence should be collaboratively identified by the organization leading the general due diligence investigation and the IP due diligence team. The goals should then be reduced to an IP due diligence plan.

The IP due diligence team should consist of independent IP counsel. The target company's IP counsel should not be used as one can never fully critique their own work, in addition to the potential conflicts of interest.

Several factors must be considered in identifying the goals of the plan. First, the team should discuss the nature of the transaction. IP due diligence goals will differ for investments, mergers, and acquisitions. Secondly, the financial value of the transaction must be considered. There is no use in completing $1 million in due diligence for a $1 million dollar transaction. Third, the risk associated with the transaction must be analyzed. For instance, a $1 million venture capital (VC) investment in a high-tech start-up has a much higher probability of loss than a $100 million merger of established companies. Fourth, the underlying reason for the transaction should be discussed. For example, if a company is acquiring a target company for a particular product line or technology there should be a primary focus on the IP protecting that interest.

The Scope

The scope of IP due diligence investigations is limited by the goals identified above. The scope of IP due diligence should include investigations into the patents, trademarks, copyrights, and trade secrets of the target company to identify weaknesses, potential liabilities, and potential opportunities.

There are some general considerations applicable to all forms of IP. For instance, all of the target company's current IP should be identified and cataloged, including current patent and trademark applications. This process should identify the dates of application, issuance, expiration, required maintenance payments, and whether foreign IP protection has been obtained. Additionally, the true ownership of each piece of intellectual property must be identified. This is particularly true for IP that has been licensed or assigned to the target company. Ownership verification requires meticulously analyzing assignments and licensing agreements, as well as cross-referencing the Patent & Trademark Office files. A golden rule of IP due diligence is to independently verify everything!

There are several aspects of IP due diligence that are unique to situations wherein the target company possesses a patent portfolio. A complete investigation into a company's patent portfolio can be expensive, yet the cost is typically a drop in the bucket when compared to the cost of litigating a patent infringement claim. Carefully identifying the goals of the IP due diligence investigation will often eliminate the need to completely analyze over half of a company's patents. After all, there is no need to perform due diligence on outdated IP that the company no longer uses. Alternatively, IP that is essential to a company's operations should be afforded additional scrutiny.

An IP due diligence plan should include an infringement analysis of the company's key IP assets. Key patents should be analyzed first to determine if they sufficiently cover the product line of interest. It is not uncommon to find that a company's patent portfolio does not adequately protect their main product lines.

The analysis should then turn to competitor's products. It is essential to identify potential infringement lawsuits during the due diligence investigation. One must determine both whether competing products infringe the target company's patents and if the target company's products infringe patents owned by third parties. During this investigation the IP due diligence team can also identify whether the target company's patents are very broad and strong or narrow and weak. The strength of patents has a direct relationship to their value.

A target company may be willing to contribute to the cost of the infringement analysis portion of the IP due diligence. This is because a non-infringement opinion from counsel can protect a company from claims of willful patent infringement. When a company relies in good faith on a competent opinion of an attorney that the company's product does not infringe a third party's patent, the company will not be held to be a willful infringer. This is important because actual damages can be increased threefold in cases of willful infringement.

Comprehensive due diligence investigations into trademark, copyright, and trade secret matters are not nearly as involved as patent investigations. However, when mergers or acquisitions involve ownership transfer of valuable trademarks it is imperative to investigate the validity, ownership, and potential infringement claims of the mark.

Conclusion

IP due diligence is necessary to avoid costly mistakes and properly determine the value of business transactions involving IP. This is true for both traditional brick and mortar companies and high tech companies. The specialized nature of IP due diligence requires that an IP attorney be retained to properly perform the investigations.

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Monday, March 17, 2008

[a business opportunity] Digest Number 39255

Messages In This Digest (25 Messages)

1.: How Are Online MBA Programs Different From Traditional MBA Programs? From: Elizabeth Shirley

2a.: Are you sick of all the false hopes and unkept promises? From: Michelle's Advertising Service

3.: Genuine Lifetime Income!! , 3/17/2008, 8:00 am From: abusinessopportunity@yahoogroups.com

4a.: Don't File For Bankruptcy Until You See How We Can Payoff All Your D From: sficoop
4b.: Don't File For Bankruptcy Until You See How We Can Payoff All Your D From: sficoop

5.: Millions of Homes Are Falling Into Foreclosure: This Is A Plan To P From: sficoop

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7.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan. From: sficoop

8a.: We Give You 1000 Debt Busting Affiliates To Eliminate YOUR DEBTS! From: sficoop

9.: Listing special at The Ultimate Mall (ends tonight) From: The Ultimate Mall

10a.: Want an ATM set up to spit cash out to you monthly? If this sounds l From: Michelle's Advertising Service

11.1.: www.jobjobsjob.com DOMESTIC and INTERNATIONAL JOBS DIRECTORY From: rice_recipes

12a.: FREE social networking site that pays its active users. From: Michelle's Advertising Service

13.: (no subject) From: HY

14.: Scent Sational Home Business From: MiaBellasCandle.com

15.1.: Join a REAL Home Based Business FREE.....Great for the whole family! From: Michelle's Advertising Service

16.1.: Get Your Google Ads FREE Using This Secret From: xxxx

17.1.: Software Shows What ACTUALLY sells on eBAY! From: sinem

18.1.: Get Endless Flood Of Traffic To Your Website Automatically! From: sinem
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19.1.: Put Your Business in THE GEM SPOTLIGHT for FREE!!! From: 41 Marketing

20.: TRAFFICDIGGER – 100% FREE! From: iwebiz

21.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY From: rice_recipes

22a.: $$$ KEEP 100% PROFITS!!!!!!!! From: Michelle's Advertising Service

23a.: Automated Millions! From: Jane

View All Topics | Create New Topic

Messages

1.: How Are Online MBA Programs Different From Traditional MBA Programs?

Posted by: "Elizabeth Shirley" ethshirleyelizab72@gmail.com elizabethshirley72

Mon Mar 17, 2008 7:27 am (PDT)

MBA programs are a popular choice for many mid-career professionals who want
to earn a credential in management level to prepare for their career
advancement.

http://www.onlineeducationgalaxy.com/2008/03/how-are-online-mba-programs-different.html

.........................

Postcard Marketing - An Effective Way Of Marketing

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services. Postcards go way back in history for its usefulness as a means of
communication.

http://www.advertisingvalley.com/2008/03/postcard-marketing-effective-way-of.html

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2a.: Are you sick of all the false hopes and unkept promises?

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 7:38 am (PDT)

Are you sick of all the false hopes and unkept promises?

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3.: Genuine Lifetime Income!! , 3/17/2008, 8:00 am

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Mon Mar 17, 2008 7:41 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
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4a.: Don't File For Bankruptcy Until You See How We Can Payoff All Your D

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:41 am (PDT)

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4b.: Don't File For Bankruptcy Until You See How We Can Payoff All Your D

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:48 am (PDT)

www.we-pay-all-your-debts.biz

Tested Advertising That Produce REAL Hits!
Stop wasting advertising $$$$$!
www.traffictestersaffiliates.com/idevaffiliate.php?id=675

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5.: Millions of Homes Are Falling Into Foreclosure: This Is A Plan To P

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:41 am (PDT)

www.we-pay-all-your-debts.biz

Tested Advertising That Produce REAL Hits!
Stop wasting advertising $$$$$!
www.traffictestersaffiliates.com/idevaffiliate.php?id=675

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6a.: Professional Debt Busters Looking For Work!

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:41 am (PDT)

www.we-pay-all-your-debts.biz

Tested Advertising That Produce REAL Hits!
Stop wasting advertising $$$$$!
www.traffictestersaffiliates.com/idevaffiliate.php?id=675

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7.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan.

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:42 am (PDT)

www.we-pay-all-your-debts.biz

Tested Advertising That Produce REAL Hits!
Stop wasting advertising $$$$$!
www.traffictestersaffiliates.com/idevaffiliate.php?id=675

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8a.: We Give You 1000 Debt Busting Affiliates To Eliminate YOUR DEBTS!

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:42 am (PDT)

www.we-pay-all-your-debts.biz

Tested Advertising That Produce REAL Hits!
Stop wasting advertising $$$$$!
www.traffictestersaffiliates.com/idevaffiliate.php?id=675

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9.: Listing special at The Ultimate Mall (ends tonight)

Posted by: "The Ultimate Mall" theultimatemall@gmail.com ultimatemallads

Mon Mar 17, 2008 7:42 am (PDT)

I'm running this special until tonight as I forgot to send out the ad 1 last
time.
So here is the special offer

The Ultimate Mall Listing special, Good until Monday ONLY!!
March 15 thru March 17th
This special ends the 17th at midnight

All for only
$20.00
Listing on our direct sales directory (consultant page)
Listing in our state Directory
125 X 125 Image On every page in our Mall
Listing (word text ad) in up to 3 category's
(This is a 1 year special only)
A value of $77.00 all for only $20.00
http://www.the-ultimate-mall.net/infotoaddlink.html

or

Get listed in our Direct sales page at The Ultimate Mall
Consultants
- Get listed in our Direct sales at The Ultimate Mall for only $5.00 for
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This special will not last long!!!
For only $5.00 for life you can get your site listed in our Direct sales
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Only one consultant listed for each company
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http://www.the-ultimate-mall.net/infotoaddlink.html
~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~
Catalog Page listing - If you would like to list your catalog for others to
get.
(This is a special offer for $5.00 for life for a limited time only)
To order go to
http://www.the-ultimate-mall.net/infotoaddlink.html
I will be only running this special offer until March 18th..

thank you
Mary B
http://www.the-ultimate-mall.net

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10a.: Want an ATM set up to spit cash out to you monthly? If this sounds l

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 7:44 am (PDT)

Want an ATM set up to spit cash out to you monthly? If this sounds like something you could use and want to accomplish this from the comfort of your own home the you have come to the right place. I have made 4 months salary from my old job in just 1 month using this system. Step inside and you too can have the luxury of financial freedom along with me. www.HugeCashSystem.com

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11.1.: www.jobjobsjob.com DOMESTIC and INTERNATIONAL JOBS DIRECTORY

Posted by: "rice_recipes" rice_recipes@yahoo.com rice_recipes

Mon Mar 17, 2008 7:45 am (PDT)

#1 JOBS DIRECTORY
MILLIONS OF JOBS! HUNDREDS OF SPECIFIC CATAGORIES!

http://www.jobjobsjob.com

FREE RESUME TOOLS AND TEMPLATES!

http://www.jobjobsjob.com/jobspecificresume.htm

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12a.: FREE social networking site that pays its active users.

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 7:51 am (PDT)

FREE social networking site that pays its active users.
Family-friendly social site with a twist.
Let me know if you need any thing else.
http://r.yuwie.com/ashlyd24

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13.: (no subject)

Posted by: "HY" info2@myaltos.info ygmailer987

Mon Mar 17, 2008 7:54 am (PDT)

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14.: Scent Sational Home Business

Posted by: "MiaBellasCandle.com" mia_bellas_candles@yahoo.com mia_bellas_candles

Mon Mar 17, 2008 7:57 am (PDT)

We have created a website that gives detailed information about the business and how to get started. We recommend that you visit www.TeamMiaBellas.com and watch the video. Be sure to fill out the form and we will email you all the information you will need to determine if this business is for you.

Visiting the website above should help answer most of your questions. However after reviewing the information if you have any more questions feel free to email us or call us at 214-893-6060. The thing to keep in mind about this business is the only requirement is to join the candle of the month club. You can stop at anytime and are not required to make any other sales. Also please understand we will help you every step of the way. We will even help you promote your website to the search engines.

Also we would love to give you a call and answer any questions you may have. Since we repect your privacy, please email us the best time to call you.

Earn Income 3 Ways:
1. Retail - earn up to 100% profit from your sales.
2. Fundraising - let Organizations do the majority of the work. Work with the schools and other organizations in your area to use our candles to raise money. This is a sure fire way to increase your sales.
3. Residual/Referral - Build a team and get paid over and over monthly, unlimited width on 6 levels plus bonuses to infinity! As your team grows so does your monthly check.

Your only requirement to become a distributor is to join the Candle of the Month club (COTM) for $39.95 per month.

This is the easiest business I have been involved with. If you get the candle under peoples noses the product sells itself. We have also found that most customers will come back for repeat sales. To become a distributor all you need to do is join the candle of the month club. You have no minimum monthly sales and can quit at any time

Jeff & Stacey Pfohl
Diamond Distributors
Scent-Sations, Inc.
Home of Mia Bella's Cleaner Burning Gourmet Candle

__________________________________________________________
Never miss a thing. Make Yahoo your home page.
http://www.yahoo.com/r/hs

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15.1.: Join a REAL Home Based Business FREE.....Great for the whole family!

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 8:02 am (PDT)

Join a REAL Home Based Business FREE.....Great for the whole family!!

No meetings, No direct selling, No Quotas. You also receive FREE tools and your very own personal website to help your business grow! This is not an MLM or affiliate program. This system is easy and great for the whole family! This is not a GET RICH PROGRAM OR ANOTHER SCAM. For more information please go to:
http://track.mpm-at-msmarketingsystems.com/t/c/arichson/mpm1

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16.1.: Get Your Google Ads FREE Using This Secret

Posted by: "xxxx" cucubeda@yahoo.com cucubeda

Mon Mar 17, 2008 8:05 am (PDT)

Everyday Google sells several $10 million's in pay-per-clicks. But
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17.1.: Software Shows What ACTUALLY sells on eBAY!

Posted by: "sinem" ayse_marketing_001@yahoo.com ayse_marketing_001

Mon Mar 17, 2008 8:07 am (PDT)

Software Shows What ACTUALLY sells on eBAY!
Looking For Ideas to Make a KILLING on Ebay?
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18.1.: Get Endless Flood Of Traffic To Your Website Automatically!

Posted by: "sinem" ayse_marketing_002@yahoo.com ayse_marketing_002

Mon Mar 17, 2008 8:08 am (PDT)

Get Endless Flood Of Traffic To Your Website Automatically!
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This is not spam. You receive this mail because you are a member of this yahoo group. If you do not wish to receive any more mails from this yahoo group, please follow these 3 steps:
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18.2.: Get Endless Flood Of Traffic To Your Website Automatically!

Posted by: "sinem" ayse_marketing_002@yahoo.com ayse_marketing_002

Mon Mar 17, 2008 8:10 am (PDT)

Get Endless Flood Of Traffic To Your Website Automatically!
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Enjoy Unlimited Hits For Life!
Drive Quality Traffic To Your Website Without Losing Money...
Turn any website into an instant success with this powerful new software!
*NEW* Mind-Blowing Technology Delivers An Endless Flood Of Traffic
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This is not spam. You receive this mail because you are a member of this yahoo group. If you do not wish to receive any more mails from this yahoo group, please follow these 3 steps:
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19.1.: Put Your Business in THE GEM SPOTLIGHT for FREE!!!

Posted by: "41 Marketing" megaads@41marketing.com megaads02

Mon Mar 17, 2008 8:12 am (PDT)

Join the Global Business Alliance Network and get your business
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GBAN... What is it?

The Global Business Alliance Network is a GEM sponsored group of
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Why Join?

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· With GBAN there is no cost or obligation like some other similar
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Here is what you'll get for joining NOW!

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· Your Link and business info in our directory published on our GBAN
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· Your business will also be featured (one time) in our weekly
newsletter.

Just click HERE now and Join Us TODAY to get you're business in
THE GEM SPOTLIGHT! http://www.globalextrememarketing.com

Its absolutely FREE!!!

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20.: TRAFFICDIGGER – 100% FREE!

Posted by: "iwebiz" no_reply@yahoogroups.com iwebiz

Mon Mar 17, 2008 8:17 am (PDT)

Post Your Favorite AD here....Forever - 100% FREE! - Promote this
Website and YOUR ad will be listed in every Traffic Digger website from
your downlines up until 6 levels deep...
http://www.trafficdigger.com/user/adsfree.html

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21.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

Posted by: "rice_recipes" rice_recipes@yahoo.com rice_recipes

Mon Mar 17, 2008 8:19 am (PDT)

REAL HOME BUSINESSES WHICH EARN REAL MONEY

http://www.globefetch.com/X2aG9tZS1idXNpbmVzcw.html

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22a.: $$$ KEEP 100% PROFITS!!!!!!!!

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 8:20 am (PDT)

$$$ KEEP 100% PROFITS!!!!!!!!

The home-based-business market is Booming!!!!! 8,000 people a day start
One of their own,but the challenge is finding one that works for the average person,This one
Does complete newbies are coming in having great success!!!!!!! Watch this free video that
Reveals on how to make $1-3K a day. http://www.megawealth777.com

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23a.: Automated Millions!

Posted by: "Jane" gionalianagio@yahoo.com gionalianagio

Mon Mar 17, 2008 8:27 am (PDT)

Automated Millions!

$3198.50 in 2 days!

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If you're looking for a practical way to make money online than I highly suggest you join Automated Millions."

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==========================
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----------------------
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=================
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http://groups.yahoo.com/group/Find_a_Romance/message/913

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Monday, March 17, 2008

Messages In This Digest (25 Messages)

Messages

Posted by: "Elizabeth Shirley" ethshirleyelizab72@gmail.com elizabethshirley72

Mon Mar 17, 2008 7:27 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 7:38 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Mon Mar 17, 2008 7:41 am (PDT)

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:41 am (PDT)

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:48 am (PDT)

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:41 am (PDT)

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:41 am (PDT)

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:42 am (PDT)

Posted by: "sficoop" no_reply@yahoogroups.com sficoop

Mon Mar 17, 2008 7:42 am (PDT)

Posted by: "The Ultimate Mall" theultimatemall@gmail.com ultimatemallads

Mon Mar 17, 2008 7:42 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 7:44 am (PDT)

Posted by: "rice_recipes" rice_recipes@yahoo.com rice_recipes

Mon Mar 17, 2008 7:45 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 7:51 am (PDT)

Posted by: "HY" info2@myaltos.info ygmailer987

Mon Mar 17, 2008 7:54 am (PDT)

Posted by: "MiaBellasCandle.com" mia_bellas_candles@yahoo.com mia_bellas_candles

Mon Mar 17, 2008 7:57 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 8:02 am (PDT)

Posted by: "xxxx" cucubeda@yahoo.com cucubeda

Mon Mar 17, 2008 8:05 am (PDT)

Posted by: "sinem" ayse_marketing_001@yahoo.com ayse_marketing_001

Mon Mar 17, 2008 8:07 am (PDT)

Posted by: "sinem" ayse_marketing_002@yahoo.com ayse_marketing_002

Mon Mar 17, 2008 8:08 am (PDT)

Posted by: "sinem" ayse_marketing_002@yahoo.com ayse_marketing_002

Mon Mar 17, 2008 8:10 am (PDT)

Posted by: "41 Marketing" megaads@41marketing.com megaads02

Mon Mar 17, 2008 8:12 am (PDT)

Posted by: "iwebiz" no_reply@yahoogroups.com iwebiz

Mon Mar 17, 2008 8:17 am (PDT)

Posted by: "rice_recipes" rice_recipes@yahoo.com rice_recipes

Mon Mar 17, 2008 8:19 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Mon Mar 17, 2008 8:20 am (PDT)

Posted by: "Jane" gionalianagio@yahoo.com gionalianagio

Mon Mar 17, 2008 8:27 am (PDT)

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