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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
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Saturday, March 22, 2008

[a business opportunity] Digest Number 39343

Messages In This Digest (25 Messages)

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2.1.: Get paid up to $250 per hour Taking Surveys At Home! From: dilber
2.2.: Get paid up to $250 per hour Taking Surveys At Home! From: dilber

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Messages

1.: A Simple But Powerful System To Create Fast Cash And Residual Income

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

Sat Mar 22, 2008 9:49 am (PDT)

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2.1.: Get paid up to $250 per hour Taking Surveys At Home!

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

Sat Mar 22, 2008 9:52 am (PDT)

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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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2.2.: Get paid up to $250 per hour Taking Surveys At Home!

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

Sat Mar 22, 2008 9:52 am (PDT)

Get paid up to $250 per hour Taking Surveys At Home!
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Rated #1 Work At Home Opportunity!
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*
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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:
- Scroll to the bottom of this page and find the links of Yahoo Groups at the very bottom of this page.
- 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"
By selecting this option, you will be stil member of this yahoo group but will not receive individual mails to your email. If you wish to totally remove this yahoo group, click on the "Leave Group" button in Edit Membership page which is located next to blue "Save Changes" buton.
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3.: Online Accounting Degrees - Forensic Accountant

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

Sat Mar 22, 2008 9:57 am (PDT)

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4.1.: www.internetloanplace.com Home / Business Loans ( 70 ) Fin. Tools!

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

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5a.: You could be earning $1000 to $3,500 a day in just days!

Posted by: "jdias.euro" jcalberto@gmail.com jdias.euro

Sat Mar 22, 2008 10:00 am (PDT)

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I want your success,

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6a.: I make several million dollars every year on the internet, doing alm

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

Sat Mar 22, 2008 10:07 am (PDT)

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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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7.: INTERNET JOBS HERE - PROOF HERE

Posted by: "CELINAA" moneybizjobs@gmail.com onlinejobs6

Sat Mar 22, 2008 10:10 am (PDT)

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If you have any doubt in this program
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8.1.: TOP 1,000 D-A-T-I-N-G SITES LIST

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

Sat Mar 22, 2008 10:25 am (PDT)

Over 1,000 Dating Sites

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9a.: EARN $1000+ per month 100% FREE!

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

Sat Mar 22, 2008 10:26 am (PDT)

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10a.: Make Money With GOOGLE- Free To Join

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

Sat Mar 22, 2008 10:37 am (PDT)

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Details at:- http://www.freewebs.com/hsnagi/jobs.htm

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11.: Genuine Lifetime Income!! , 3/22/2008, 11:00 am

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

Sat Mar 22, 2008 10:40 am (PDT)

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12a.: Get 100,000 Real Visitors

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

Sat Mar 22, 2008 10:41 am (PDT)

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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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13.1.: 100% FULL FREE EBOOKS FOR RESELL PROFIT!

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

Sat Mar 22, 2008 10:52 am (PDT)

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14.: {American Idol Fans}vote for Amanda and David :Top 12 should go on t

Posted by: "Online news 2008" tawesomedeals@yahoo.com tawesomedeals

Sat Mar 22, 2008 10:53 am (PDT)

{American Idol Fans}vote for Amanda and David :Top 12 should go on tour.
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If you can take five minutes to write a letter in support of top 12 tour.
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to sign the petition and pass it on.
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Fan Mail Address:
American Idol
7800 Beverly Blvd.
Suite 251
Los Angeles, CA 90036
USA

Don't forget the other option of calling in LIVE, during the American Idol Show, and asking the panel of judges why we the fans are being cheated out of a full TOP 12 Idol tour.

This is not spam we are in the same optin in groups.
To be deleted from this group go to yahoo groups the group name where you recieved this email and delete the group
Thanks

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15a.: AMAZING! Blast over 3 Million emails per day.

Posted by: "AMAZING! Blast over 3 Million " safelistdb@gmail.com prowealthmom

Sat Mar 22, 2008 11:00 am (PDT)

Blast over 3 Million emails per day. All recipients are
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and all the other people that deal with you. Great job guys.
"

http://3MillionBlast.here.ws/
------------------------

Joe Vain

"Hello SafeMailServices Admin,

Thanks for the "follow through." We are a very small young
company. Sites like yours are helping us stay afloat until
we can generate enough revenue to start a pay per click
campaign. Thank you for the great site. "
------------------------

Jenifer Hayward

"I have been using your service for just over a week and am
receiving excellent results. I love your company and the way
you do business. Thank you and keep up the good work!"
------------------------

Lance Lacky

"Thank you for providing such a great product at such an
affordable price. My company is very small and we don't have
a large advertising budget. You have made it possible for me
to drive traffic to my site without having to worry about
how much I am paying per click or an automatic monthly
charge."

http://3MillionBlast.here.ws/
---------------------

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16a.: Blast Your Ads to OVER 37 Million

Posted by: "C.S." raymondconduit@yahoo.com raymondconduit

Sat Mar 22, 2008 11:02 am (PDT)

DO YOU WANT TO BLAST YOUR ADS TO OVER 37 MILLION.
Do you really want to boost your online business and then going laughing all the way to the bank?
This my friends is an offer you cannot refuse at ONLY $10. YES TEN DOLLARS.
Do it now and start your money machine rolling at:
http://www.webautotraffic.com/bestlists/index.php?e=raymondconduit@yahoo.com
Regards
Raymond Conduit

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17a.: Calling All Ex Berry Tree/Nutronix/Automatic Builder Members

Posted by: "James Young" james123you@yahoo.com james123you

Sat Mar 22, 2008 11:08 am (PDT)

Hello Yahoo Friend,

I am guessing the reason you are no longer an active member of
The Berry Tree/Nutronix/Automatic Builder is because you were not
achieving the success you had hoped for with their System for whatever
reason.

I was with The Berry Tree from the pre Launch. I was frustrated with the
delays and constant changes in direction. To the point I could not in good
faith recommend The Berry Tree to anyone. So leaving money on the table
I closed my account. I was very angry as I had put close to a year of my life
into that company.

Now friend I have found a 7 year old hidden treasure of a company. One
you probably have never heard of. A company I have found to have true
integrity And a knock out pay plan.

Below is some information about LHNInternational and LHNProBuilder.

For only $30.00 $6.00 shipping you get:
Your choice of Nutritional Product
Complete Business
Me working for and with You
eCommerce Website
4 Lead Capture Pages
Contact Manager
Autoresponder
Corporate Presentation Calls
PowerLine Marketing System
Team Presentation Calls
Team Training Calls
F*R*EE Surveyed Leads.
4x5 Matrix 60% Fast Start Bonuses

Find Out More By Taking The Tour On My Marketing Website Below
http://www.lhnprobuilder.com/lhnpro?t=bt

Have an awesome day!
James Young

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18.: New Advertising site!

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

Sat Mar 22, 2008 11:13 am (PDT)

New Advertising site!

Advertise your business for a life time!!! Chelle's Corner offers newsletter advertising, banner advertising and so much more!
Stop in today at: http://www.chellescorner.biz and get your business noticed today!

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19a.: REAL Money making opportunity! 100% Scam-Free

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

Sat Mar 22, 2008 11:19 am (PDT)

REAL Money making opportunity! 100% Scam-Free

You could have that $7,400 in your bank account next week! You could have more than $384,000 in your bank account this time next year!

I'm going to show you how I earn $7,400 + a week and have extra money to spend on myself and my family.

100% INSTANT ACCESS! NO DOWNLOADING REQUIRED

http://tinyurl.com/ys36vm

==========================
Blast your ads to 2,300,000 opportunity seekers only $5.95 or less!
http://groups.yahoo.com/group/AdvertisingBiz/message/2748

---------------------------
New Groups to post your ads FREE
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http://groups.yahoo.com/group/Gold-ads
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http://groups.yahoo.com/group/Share-ur-Idea
http://groups.yahoo.com/group/About-Money
http://groups.yahoo.com/group/Ad-here-now

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

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

Sat Mar 22, 2008 11:19 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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21.1.: Prière Universelle / Universal Prayer

Posted by: "30 DAILY SURF" newproone@yahoo.com newproone

Sat Mar 22, 2008 11:26 am (PDT)

Pri€ ère Universelle / Universal Prayer
http://www.aidespirituel.com/

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22.1.: How to Automate Your Way to Lazy And Enourmous Profits!

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

Sat Mar 22, 2008 11:33 am (PDT)

How to Automate Your Way to Lazy And Enourmous Profits!
Automated Millions!
Earn $3198,5 in only 2 Days!
Discover The Closely Guarded Secrets Of A Real Internet Millionaire That Will Have You Quickly Automating Your Way To
Lazy And Enormous Profits!
http://clickst.AUTOMILL.hop.clickbank.net/

*
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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:
- Scroll to the bottom of this page and find the links of Yahoo Groups at the very bottom of this page.
- 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"
By selecting this option, you will be stil member of this yahoo group but will not receive individual mails to your email. If you wish to totally remove this yahoo group, click on the "Leave Group" button in Edit Membership page which is located next to blue "Save Changes" buton.

Note: If you are a group moderator, and do not wish to receive our post, please email to remove-groups@hotmail.com addres with the group name indicated in the subject line.

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23.: Email 75 Million Targeted Prospects Each Month

Posted by: "rick Schultz" rv21053@yahoo.com rv21053

Sat Mar 22, 2008 11:33 am (PDT)

Email 75 Million Targeted Prospects Each Month...
And Watch Your Online Profits Explode! We Will
Get You The Visitors... The Sales Are Up To You..
The Best Way To Get Your Ads Out! https://paydotcom.com/r/2079/iceman21053/3152631/

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24.: An Auto responder That Pays Me!

Posted by: "David Macneil" dmacnei1_1@yahoo.com dmacnei1_1

Sat Mar 22, 2008 11:39 am (PDT)

Are you looking for a good Auto-responder?

Are you sick of the false spam complaints?

I have tried all of them and this one is simply the
best!

First Ad Coming Soon!

Check it out at:
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Join Today by Visiting:
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Do yourself a favor and check it out today!

Your Partner In Success-

Dave MacNeil

Free Newsletter with Insider Tips, Tricks, and
Techniques used by the Pros
mailto:anything@secrets1.emailaces.com

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Article of related interest

Intellectual Property Due Diligence

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Saturday, March 22, 2008

Messages In This Digest (25 Messages)

Messages

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

Sat Mar 22, 2008 9:49 am (PDT)

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

Sat Mar 22, 2008 9:52 am (PDT)

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

Sat Mar 22, 2008 9:52 am (PDT)

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

Sat Mar 22, 2008 9:57 am (PDT)

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

Sat Mar 22, 2008 9:58 am (PDT)

Posted by: "jdias.euro" jcalberto@gmail.com jdias.euro

Sat Mar 22, 2008 10:00 am (PDT)

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

Sat Mar 22, 2008 10:07 am (PDT)

Posted by: "CELINAA" moneybizjobs@gmail.com onlinejobs6

Sat Mar 22, 2008 10:10 am (PDT)

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

Sat Mar 22, 2008 10:25 am (PDT)

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

Sat Mar 22, 2008 10:26 am (PDT)

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

Sat Mar 22, 2008 10:37 am (PDT)

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

Sat Mar 22, 2008 10:40 am (PDT)

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

Sat Mar 22, 2008 10:41 am (PDT)

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

Sat Mar 22, 2008 10:52 am (PDT)

Posted by: "Online news 2008" tawesomedeals@yahoo.com tawesomedeals

Sat Mar 22, 2008 10:53 am (PDT)

Posted by: "AMAZING! Blast over 3 Million " safelistdb@gmail.com prowealthmom

Sat Mar 22, 2008 11:00 am (PDT)

Posted by: "C.S." raymondconduit@yahoo.com raymondconduit

Sat Mar 22, 2008 11:02 am (PDT)

Posted by: "James Young" james123you@yahoo.com james123you

Sat Mar 22, 2008 11:08 am (PDT)

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

Sat Mar 22, 2008 11:13 am (PDT)

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

Sat Mar 22, 2008 11:19 am (PDT)

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

Sat Mar 22, 2008 11:19 am (PDT)

Posted by: "30 DAILY SURF" newproone@yahoo.com newproone

Sat Mar 22, 2008 11:26 am (PDT)

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

Sat Mar 22, 2008 11:33 am (PDT)

Posted by: "rick Schultz" rv21053@yahoo.com rv21053

Sat Mar 22, 2008 11:33 am (PDT)

Posted by: "David Macneil" dmacnei1_1@yahoo.com dmacnei1_1

Sat Mar 22, 2008 11:39 am (PDT)

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