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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.

Published At: Isnare Free Articles Directory
Permanent Link:
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Tuesday, March 25, 2008

[a business opportunity] Digest Number 39391

Messages In This Digest (25 Messages)

1.1.: How I Make Over $158,000 Monthly? From: fornox
1.2.: How I Make Over $158,000 Monthly? From: fornox

2a.: GOOGLE OFFERS GOLD HAVE NO END From: mosheee
2b.: GOOGLE OFFERS GOLD HAVE NO END From: mosheee

3a.: I am a rich jerk. I make millions From: Pila

4.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY From: wyoming_singles

5a.: $1M a year in Google Adsense From: Salz

6.1.: This weeks Ad Sale! From: Michelle's Advertising Service

7a.: Attention All Home Business People! Incredible Advertising offer For From: Michelle's Advertising Service

8.1.: Turn $10 into $3000! From: fornox
8.2.: Turn $10 into $3000! From: omikron

9.: Genuine Lifetime Income!! , 3/25/2008, 5:00 pm From: abusinessopportunity@yahoogroups.com

10.1.: www.internetloanplace.com Home / Business Loans ( 70 ) Fin. Tools! From: wyoming_singles

11a.: MUDAH!! HANYA CUCUK DI PENCUCUH ROKOK KERETA ANDA. From: I-Charge

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22a.: EARN $1000+ per month 100% FREE! From: EARN $1000+ per month 100% FREE!

View All Topics | Create New Topic

Messages

1.1.: How I Make Over $158,000 Monthly?

Posted by: "fornox" ayse_marketing_003@yahoo.com ayse_marketing_003

Tue Mar 25, 2008 3:50 pm (PDT)

How I Make Over $158,000 Monthly?
Earn $158,000 Dollars Online Every Single Month!
Make Over $158,000 Monthly
Online Every Single Month
without A Website or a Product...
http://clickst.AFFDATCEN.hop.clickbank.net/
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1.2.: How I Make Over $158,000 Monthly?

Posted by: "fornox" ayse_marketing_003@yahoo.com ayse_marketing_003

Tue Mar 25, 2008 3:51 pm (PDT)

How I Make Over $158,000 Monthly?
Earn $158,000 Dollars Online Every Single Month!
Make Over $158,000 Monthly
Online Every Single Month
without A Website or a Product...
http://clickst.AFFDATCEN.hop.clickbank.net/
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2a.: GOOGLE OFFERS GOLD HAVE NO END

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

Tue Mar 25, 2008 3:51 pm (PDT)

CONTACT YOUR LOVERS AND FRIENDS EVERY TIME AND EVERY WHERE WITHOUT NET

www.freecall.we.bs <http://www.freecall.we.bs>

CONTACT YOUR LOVERS AND FRIENDS EVERY TIME AND EVERY WHERE WITHOUT NET

www.freecall.we.bs <http://www.freecall.we.bs/>

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2b.: GOOGLE OFFERS GOLD HAVE NO END

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

Tue Mar 25, 2008 3:52 pm (PDT)

CONTACT YOUR LOVERS AND FRIENDS EVERY TIME AND EVERY WHERE WITHOUT NET

www.freecall.we.bs <http://www.freecall.we.bs>

CONTACT YOUR LOVERS AND FRIENDS EVERY TIME AND EVERY WHERE WITHOUT NET

www.freecall.we.bs <http://www.freecall.we.bs/>

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Messages in this topic (5)

3a.: I am a rich jerk. I make millions

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

Tue Mar 25, 2008 3:55 pm (PDT)

I am a rich jerk. I make millions

Lets get something straight. I am a jerk. I am obnoxious. I am lazy. And I
don't care, because I am FILTHY RICH. I am much too important to even be
sitting here writing this right now. So I'll keep it short. I make several
million dollars every year on the internet, doing almost nothing. Heard that
before? Well you can see proof of my earnings here. Have you seen proof like
that anywhere else? Didn't think so. Do you make that much money? Didn't think
so.

I'm the real deal. Whether you like it or not, you want to be rich like me,
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know that there are thousands of "get rich quick" programs on the internet
today. You've probably even bought some of them yourself. Well, are you
impressed with them? I'm not. Not even close. What proof do these losers have
of their earnings? That they make a few thousand dollars a month? Big deal. I
make millions. And I barely even do anything to earn it. It's so automatic it
would make you sick.

http://tinyurl.com/2qjjkh

==========================
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============================
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4.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

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

Tue Mar 25, 2008 4:00 pm (PDT)

REAL HOME BUSINESSES WHICH EARN REAL MONEY

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

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5a.: $1M a year in Google Adsense

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

Tue Mar 25, 2008 4:24 pm (PDT)

$1M a year in Google Adsense

Make $3500 Weekly. I'll Show You Proof!

Start Making Big Money On the Internet By Next Month!

Learn A Simple Internet Income Secret
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==========================
Get your ad posted to 2,300,000 opportunity seekers for only $5.95 or less!!
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---------------------------
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http://groups.yahoo.com/group/Free_To_Post_Ads

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6.1.: This weeks Ad Sale!

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Tue Mar 25, 2008 4:37 pm (PDT)

This weeks Ad Sale!
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Advertise to 200 groups twice daily for 30 days Regular price $70.00 Sale price $25.00

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Homepage: http://www.michellesadvertisingservice.com
Phone: 540-290-0281
Email: michelle@michellesadvertisingservice.com

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7a.: Attention All Home Business People! Incredible Advertising offer For

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

Tue Mar 25, 2008 4:39 pm (PDT)

Attention All Home Business People! Incredible Advertising offer For Your Business!!!

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8.1.: Turn $10 into $3000!

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

Tue Mar 25, 2008 4:41 pm (PDT)

Turn $10 into $3000!
Click to learn how I quickly turned $10 into $3000, thats right THREE THOUSAND DOLLARS. AND HOW YOU CAN DO IT TOO!!
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8.2.: Turn $10 into $3000!

Posted by: "omikron" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 25, 2008 4:41 pm (PDT)

Turn $10 into $3000!
Click to learn how I quickly turned $10 into $3000, thats right THREE THOUSAND DOLLARS. AND HOW YOU CAN DO IT TOO!!
http://clickst.10TO3000.hop.clickbank.net/
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9.: Genuine Lifetime Income!! , 3/25/2008, 5:00 pm

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

Tue Mar 25, 2008 4:42 pm (PDT)

Reminder from: abusinessopportunity Yahoo! Group
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10.1.: www.internetloanplace.com Home / Business Loans ( 70 ) Fin. Tools!

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

Tue Mar 25, 2008 4:42 pm (PDT)

Loans For All Reasons in All Regions!

http://www.internetloanplace.com

Over ( 70 ) Finance and RE Spreadsheet Tools To Download for FREE!

http://www.internetloanplace.com/calculators2.htm

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11a.: MUDAH!! HANYA CUCUK DI PENCUCUH ROKOK KERETA ANDA.

Posted by: "I-Charge" yaza96@yahoo.com yaza96

Tue Mar 25, 2008 4:42 pm (PDT)

Assalamualaikum semua. saya nak berkongsi alat penjagaan kereta
I-Charge. Alat ni adalah buatan dan dipatenkan dr Jepun dan baru
dikomersialkan di Malaysia ni. Semakin ramai pemandu dah menggunakannya dan hasilnya memang
menakjubkan. Antara fungsi I-Charge ni:

1.Kita dapat mengetahui keadaan batery kereta kita tanpa perlu bawa ke
workshop.( ada lampu yg tunjukkan keadaan batery tu, kalo merah dah
lemah la tu) Mudah untuk pemandu wanita mengetahui keadaan bateri kereta mereka.

2.Untuk menstabilkan Voltan.(mengalirkan voltan yg sama ke semua plug)

3.Jimatkan minyak kereta ( 25%-30%). Petrol naik lagi ni....

4.Tambah pickup kereta. Kesan boleh dirasai on the spot!

5. Mengurangkan asap hitam, CO2

6.Lampu depan kereta semakin terang.

7.Nak masuk gear mudah.

8.Kurangkan gegaran enjin masa buka aircond.

9.Enjin makin power dan sistem audio makin best.

10.Plug tahan lama dan mengelakkan radiasi sistem elektronik.

11. Untuk kereta mewah, alat ini berfungsi menjaga computer box.( kalo
rosak mau rm5k nk repair ni)

Alat ni bukan berbentuk cecair. Ia adalah alat elektronik(besar sikit
dr saiz kotak rokok). Warranty setahun, kalo rosak boleh tukar yang
baru( dlm tempoh setahun tu la). Alat ni boleh guna sampai 5-10 tahun
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leh pkai 5-10tahun.

so sape sape yang minat boleh call/sms no ni: 0129250789
website:
http://i-charge.net
www.zeromax.biz

TERIMA KASIH

wassalam

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12.1.: -||- Get Paid Again and AGAIN Automatically !!! -||-

Posted by: "41 Marketing" qualityads@41marketing.com qualityads03

Tue Mar 25, 2008 4:52 pm (PDT)

Allow your business to stack additional sales (and additional incomes)

on top of the primary purchase and MAKE MORE MONEY WITHOUT DOING ANY
ADDITIONAL WORK!

Find out how NOW! http://simurl.com/uuu-gg-VV

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13a.: Submit it easy text ad

Posted by: "preplugin01@yahoo.com" preplugin01@yahoo.com preplugin01

Tue Mar 25, 2008 5:00 pm (PDT)

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14.: Home Business Success - The Best Business to Get Rich Quick!!!

Posted by: "earnnotes45" earnnotes45@yahoo.com earnnotes45

Tue Mar 25, 2008 5:00 pm (PDT)

The Best Online Business - A Way to Build Wealth that's Open to Anyone.

Visit:-
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15a.: Use this to advertise any business/product/service...it works and it

Posted by: "Brett Gurney" brettgurney@yuhknow.com brett.gurney

Tue Mar 25, 2008 5:04 pm (PDT)

Click the link to see one of the best methods
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to thousands of other network marketers and
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This method of networking works...it flat out
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and...because there is a referral marketing side to
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of those benefits

Thanks

Brett Gurney
bHIP 2 Star Global Leader
770-838-0907
(c) 678-516-1927
brett.gurney@yahoo.com
Skype Address - brettgurney
Yahoo IM handle - gurnstyle

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16.1.: Turnkey Money Machine That Prints Non-Stop Profits!

Posted by: "serdem" ayse_marketing_003@yahoo.com ayse_marketing_003

Tue Mar 25, 2008 5:05 pm (PDT)

Turnkey Money Machine That Prints Non-Stop Profits!
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17.1.: Alternative Cancer Remedy!

Posted by: "ebru" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 25, 2008 5:05 pm (PDT)

Alternative Cancer Remedy!
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- Click "Change setting via the web" link. You will be brought to the Edit Membership Page of this Yahoo Group.
- Change your message delivery (Step 2) option to "Web Only" instead of "Individual Email"
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18a.: Flood Your Website With Visitors 100% FREE!

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

Tue Mar 25, 2008 5:07 pm (PDT)

Flood Your Website With Visitors 100% FREE!

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Ramp Up Your Bandwidth Big Time, Cos You're About To...
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Blast your ads to 2,300,000 opportunity seekers only $5.95 or less!
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http://groups.yahoo.com/group/home_biz_opps_ads
http://groups.yahoo.com/group/home-based-business-opportunity-ads
http://groups.yahoo.com/group/Advertizin
http://groups.yahoo.com/group/Advertise_biz_opportunities

This is not a spam. You receive this e-mail because we are in the same group. Please change your group message delivery setting to "Web Only" or choose "Leave Group" if you wish to be removed from future mailings. Or forward the whole e-mail to zonta43@hotmail.com with the subject "remove" if you don't know how to do it, and then wait for our instructions. If you are a group ADMIN and no longer wish to receive our post, please remove us from your group. We don't own or even know your e-mail address, so please let us know which group you are in when you write to us and, most importantly, DO read our reply. Thanks for your understanding.

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19.1.: TOP 1,000 D-A-T-I-N-G SITES LIST

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

Tue Mar 25, 2008 5:09 pm (PDT)

Over 1,000 Dating Sites

http://www.singlessitedirectory.com

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20.1.: Get Started Making Money Right Now!

Posted by: "Business-Mart" 41advertising@41marketing.com adby41marketing06

Tue Mar 25, 2008 5:10 pm (PDT)

Don't just sit back and watch while everyone else prospers. Jump
right in and start now!

Here is the site:

http://www.wapurl.co.uk/?5OE5FV6

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21a.: L Auto-Guérisons / Self-Healing

Posted by: "Michel Labonte" fiftyplatinum@yahoo.com fiftyplatinum

Tue Mar 25, 2008 5:19 pm (PDT)

L€ '²Auto-Gu€ érisons / Self-Healing
http://www.aidespirituel.com/

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22a.: EARN $1000+ per month 100% FREE!

Posted by: "EARN $1000+ per month 100% FREE!" safelistdb@gmail.com prowealthmom

Tue Mar 25, 2008 5:22 pm (PDT)

EARN $1000+ per month for visiting websites, and reading emails...
EVERYTHING is 100% FREE!
http://EarnFreeMoney.Here.ws

.....Another FREE Money Maker

Just Like MySpace but they pay you!
http://www.yuwie.com/yuwie.asp?r=8933

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Tuesday, March 25, 2008

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Posted by: "fornox" ayse_marketing_003@yahoo.com ayse_marketing_003

Tue Mar 25, 2008 3:50 pm (PDT)

Posted by: "fornox" ayse_marketing_003@yahoo.com ayse_marketing_003

Tue Mar 25, 2008 3:51 pm (PDT)

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

Tue Mar 25, 2008 3:51 pm (PDT)

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

Tue Mar 25, 2008 3:52 pm (PDT)

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

Tue Mar 25, 2008 3:55 pm (PDT)

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

Tue Mar 25, 2008 4:00 pm (PDT)

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

Tue Mar 25, 2008 4:24 pm (PDT)

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Tue Mar 25, 2008 4:37 pm (PDT)

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

Tue Mar 25, 2008 4:39 pm (PDT)

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

Tue Mar 25, 2008 4:41 pm (PDT)

Posted by: "omikron" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 25, 2008 4:41 pm (PDT)

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

Tue Mar 25, 2008 4:42 pm (PDT)

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

Tue Mar 25, 2008 4:42 pm (PDT)

Posted by: "I-Charge" yaza96@yahoo.com yaza96

Tue Mar 25, 2008 4:42 pm (PDT)

Posted by: "41 Marketing" qualityads@41marketing.com qualityads03

Tue Mar 25, 2008 4:52 pm (PDT)

Posted by: "preplugin01@yahoo.com" preplugin01@yahoo.com preplugin01

Tue Mar 25, 2008 5:00 pm (PDT)

Posted by: "earnnotes45" earnnotes45@yahoo.com earnnotes45

Tue Mar 25, 2008 5:00 pm (PDT)

Posted by: "Brett Gurney" brettgurney@yuhknow.com brett.gurney

Tue Mar 25, 2008 5:04 pm (PDT)

Posted by: "serdem" ayse_marketing_003@yahoo.com ayse_marketing_003

Tue Mar 25, 2008 5:05 pm (PDT)

Posted by: "ebru" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 25, 2008 5:05 pm (PDT)

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

Tue Mar 25, 2008 5:07 pm (PDT)

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

Tue Mar 25, 2008 5:09 pm (PDT)

Posted by: "Business-Mart" 41advertising@41marketing.com adby41marketing06

Tue Mar 25, 2008 5:10 pm (PDT)

Posted by: "Michel Labonte" fiftyplatinum@yahoo.com fiftyplatinum

Tue Mar 25, 2008 5:19 pm (PDT)

Posted by: "EARN $1000+ per month 100% FREE!" safelistdb@gmail.com prowealthmom

Tue Mar 25, 2008 5:22 pm (PDT)

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