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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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Friday, September 26, 2008

[87hotrod] Digest Number 38013

business associates and friends exchange ideas and information

Messages In This Digest (25 Messages)

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Messages

1.: You`ll learn how you could be earning an extra $4,000 per month !!.

Posted by: "Income every Month" vitormlm@ymail.com vitorbigbusiness

Fri Sep 26, 2008 7:59 am (PDT)

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2.: CREATE A SUBSTANTIAL residual income!!.....26.09.08

Posted by: "vitor ferreira" vitormlm@ymail.com vitorbigbusiness

Fri Sep 26, 2008 8:02 am (PDT)

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3a.: Start Getting Paid IMMEDIATELY!!!

Posted by: "41 Marketing" qualityads03@yahoo.com qualityads03

Fri Sep 26, 2008 8:05 am (PDT)

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4a.: Join, Advertise and Collect Money!!!

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

Fri Sep 26, 2008 8:05 am (PDT)

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5a.: Risk Free Guarantee!!!

Posted by: "_eLiF_" bizim_marketing_003@yahoo.com bizim_marketing_003

Fri Sep 26, 2008 8:22 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:
- 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.
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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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6a.: Java programmers

Posted by: "Saranya L" saranya_l8@yahoo.com saranya_l8

Fri Sep 26, 2008 8:36 am (PDT)

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7a.: IT Service Management

Posted by: "Saranya L" saranya_l8@yahoo.com saranya_l8

Fri Sep 26, 2008 8:37 am (PDT)

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8.: ANDA DIKEJAR DOLAR, 9/26/2008, 12:00 pm

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:44 am (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

ANDA DIKEJAR DOLAR
Friday September 26, 2008
12:00 pm - 1:00 pm
(This event repeats every day.)

Notes:

ALASAN Anda harus join pada paket program PTC yang saya tawarkan ?

1. Join Gratis.
2. Kerjanya Cuma klik iklan aja.
3. Anda tidak perlu cari DOWNLINE / REFERRAL. Tugas ini saya ambil alih

Berapa penghasilan yang akan Anda peroleh dari 1 PTC ?

Perhitungan Pendapatan:

» Click 10 iklan per hari = $0.10
» 20 referrals click 10 iklan per hari = $2.00
» Maka pendapatan harian = $2.10
» Pendapatan mingguan = $14.70
» Pendapatan bulanan = $63.00

Yah … itu pendapatan Anda hanya dari 1 PTC dengan 20 orang referral . Bagaimana kalau lebih dari 20 orang misalnya 1000 orang Anda dapat menghitung sendiri Dalam paket ini saya menawarkan 3 PTC yang harus Anda ikuti. Sehingga Anda lebih fokus dan tidak disibukkan oleh bisnis ini tapi hasilnya cukup buat hadiah orang-orang tersayang Anda.

Masalah utama dalam program PTC adalah mencari DOWNLINE/REFERRAL. Sebab pendapatan kita walaupun gratis sangat lama terkumpul kalau kita kerja sendiri, ini bisa membuat Anda bosan dan berhenti. Coba Anda perhatikan perhitungan di atas hanya dengan 20 refferral potensi pendapatan Anda $63/bulan.

Bagi Anda yang ingin menjadi salah satu dari 20 referral langsung saya, segeralah join di bawah ini:

• Bux.to
• 10bux.net
• Foxcash

Setelah join kirim link referral Anda ke : dewimantili@gmail.com. agar dengan segera saya promosikan buat Anda, jadi Anda hanya FOKUS dalam klik iklan saja. (MUDAHKAN ?)

Kata Pak Mario Teguh(motivator saya)"Apapun Jika Fokus Akan Tumbuh"

Untuk menampung dolar Anda harus mempunyai account Paypal atau Alertpay.ataupun E-gold Panduan membuat Paypal alertpay dan E-gold ada di http://nabungdollar.blogspot.com.

Sampai jumpa pada paket saya berikutnya.

Salam Super

All Rights Reserved
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Yahoo! Inc.
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9.: Genuine Lifetime Income!! , 9/26/2008, 12:00 pm

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:44 am (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

Genuine Lifetime Income!!
Friday September 26, 2008
12:00 pm - 1:00 pm
(This event repeats every day.)

Notes:
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Notice; u r receiving this message because u r the member of yahoo groups

Thank You

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Copyright © 2008
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10a.: Information & Training Centre

Posted by: "Keerthi H" keerthi_h19@yahoo.com keerthi_h19

Fri Sep 26, 2008 8:47 am (PDT)

Information & Training Centre

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Whistler, Lake Louise Gain professional qualifications

http://informationtraining-m.blogspot.com
Java programmers

Post Your Programming Projects on Elance Free
and Get Bids Today.

http://javaprogrammers-zc.blogspot.com

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11a.: IT Service Management

Posted by: "Keerthi H" keerthi_h19@yahoo.com keerthi_h19

Fri Sep 26, 2008 8:50 am (PDT)

IT Service Management

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(just log on)Earn $20, $50, even $100 per
hour working from their home computer.

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12a.: IT Service Management

Posted by: "Keerthi H" keerthi_h19@yahoo.com keerthi_h19

Fri Sep 26, 2008 8:50 am (PDT)

IT Service Management

ITIL, ISO, CobiT – Discover it all At Pink Elephant's Las Vegas Event

http://sap-ma.blogspot.com

(just log on)Earn $20, $50, even $100 per
hour working from their home computer.

free sign up

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13.1.: NEW! NORTH CAROLINA.

Posted by: "classif2000@yahoo.com" classif2000@yahoo.com classif2000

Fri Sep 26, 2008 8:50 am (PDT)

Carolinas Classified is Officially Open for Business!
www.carolinasclassified.com

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14.: FREE: Your ad sent immediately to 36000. Hourly Auto Renewal Availab

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15.: Huge offer for 99 cents

Posted by: "Kevin Maverick" kevin_maverick05@yahoo.com kevin_maverick05

Fri Sep 26, 2008 8:56 am (PDT)

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16.: Lose 45 lbs in just 29 days ! - 100 lbs in 60 days !, 9/27/2008, 12:

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:59 am (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

Lose 45 lbs in just 29 days ! - 100 lbs in 60 days !
Saturday September 27, 2008
All Day
(This event repeats every day.)
(The next reminder for this event will be sent in 6 hours.)
Location: http://netbiz9.AllInOneHealth.com

Notes:
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Find out how Dr Suzanne Gudakunst discovered how calories, carbs, and such have far less to do with the real reason you're fat and can't seem to lose weight regardless of what you do!

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=> http://netbiz9.AllInOneHealth.com

But hurry as lobbyist want her secret forever banned because it threatens the food & drug companies' continued stronghold on the masses in order for them to remain rich at the cost of YOUR health!

All Rights Reserved
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17.: Do Nothing. Get Paid. Do a Little. Get Paid More. Seriously., 9/

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:59 am (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

Do Nothing. Get Paid. Do a Little. Get Paid More. Seriously.
Friday September 26, 2008
6:00 pm - 7:00 pm
(This event repeats every day.)

Notes:
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18.: Tired of all the "get-rich-quick" junk? Want a realistic way to make

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:59 am (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

Tired of all the "get-rich-quick" junk? Want a realistic way to make money?
Friday September 26, 2008
6:00 pm - 7:00 pm
(This event repeats every day.)
(The next reminder for this event will be sent in 3 hours.)

Notes:
"Who Else Wants to Be Part of a 'Test Group' to Try a No-Brainer, Proven, Foolproof 15-Day Plan to Make at Least $1,000.00?" That's why I'm inviting you to be part of special test group because I need you to succeed and do it quickly. I want your success story so I can use it to silence the doubters and skeptics once and for all.

http://www.moreinfo247.com/9649137/MG

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19.: Build The Body YOU Want Ýn 7 Minutes A Day…Guaranteed!!!

Posted by: "_eLiF_" bizim_marketing_003@yahoo.com bizim_marketing_003

Fri Sep 26, 2008 9:04 am (PDT)

"Rebel Trainer Proves You Can Gain MoreLean Muscle Mass And Dramatically IncreaseYour Health In Just 7 Minutes a Day...And He Guarantees It!" "Read This Page Before I Have To Legally Change It andMake It More 'Politically Correct' So I Won't Get Sued -Supplement Companies, Health Clubs and Certain'Fitness Gurus' Do Not Want You To Read This!" http://creamwalls.7MiNMUSCLE.hop.clickbank.net/

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20.: Discover How You Can Easily Bring Back the Love of Your Life!

Posted by: "_eLiF_" bizim_marketing_003@yahoo.com bizim_marketing_003

Fri Sep 26, 2008 9:04 am (PDT)

Discover How You Can Easily Bring Back the Love of Your Life! - A Potent 4-Step Strategy Which Works!YES! You can bring back your Love! No matter how stubborn the resistance, no matter how far this person may be from you, no matter how hopeless or difficult your situation appears!
http://creamwalls.CPEMO.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:
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21a.: Secure your PC from Hackers and Viruses

Posted by: "<< Ashley Malika >>" soniafernandus@gmail.com sonia_fernandus

Fri Sep 26, 2008 9:06 am (PDT)

*Secure your PC from Hackers and
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*Windows Defender <http://super-software.we.bs/security.html>*
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*>> DOWNLOAD NOW << <http://super-software.we.bs/security.html>*

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22.: WORK FROM HOME...Start TODAY!

Posted by: "$alon Refer" salonrefer@yahoo.com salonrefer

Fri Sep 26, 2008 9:12 am (PDT)

God will never leave you or forsake you!

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

Posted by: "41 Marketing" mega@41marketingsolutions.com megaads03

Fri Sep 26, 2008 9:17 am (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://www.wapurl.co.uk/?LCN39XA

Ad submitted by
41 Marketing
http://www.41marketing.com
email: webmaster+41marketingsolutions.com

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24a.: Make Money Online. No Cost To Get Started. This Really Works.

Posted by: "Claudia" homanilaopia@yahoo.com homanilaopia

Fri Sep 26, 2008 9:25 am (PDT)

Make Money Online. No Cost To Get Started. This Really Works.

I will show you step by step how to start making money online in 15 mins. You will have your own Niche Search Engine. Earn Commissions 6 different ways and receive Free advertising of Your Search Engine in Google and Yahoo. I want you to succeed because when you succeed I do too. Get started at no cost to you.

http://Acme-People-Search.com/signup.php?ref=1219761648JOUO&tid=pads

==================
Post your ads to thousands of members for FREE and make some cash at the same time
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http://groups.yahoo.com/group/MyDuit
http://groups.yahoo.com/group/supremeringgit

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Submit Your Ads To 735 Million Double Opt-in Members! Instantly Explode Your Web Traffic & Sales.
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Blast your ads to 2,300,000 opportunity seekers only $5.95 or less!
http://tinyurl.com/6nwn8c or http://98.to/purads

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25.1.: 1500+ FREE Classified Sites!

Posted by: "classif2000@yahoo.com" classif2000@yahoo.com classif2000

Fri Sep 26, 2008 9:38 am (PDT)

FREE CLASSIFIED SITES DIRECTORY
Access to Over 1500 FREE Classified Ad Sites
The Net's Most Accurate FREE Ad Site List
 
And FREE BUSINESS INFORMATION!
www.business-posting.com

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Friday, September 26, 2008

Messages In This Digest (25 Messages)

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Posted by: "Income every Month" vitormlm@ymail.com vitorbigbusiness

Fri Sep 26, 2008 7:59 am (PDT)

Posted by: "vitor ferreira" vitormlm@ymail.com vitorbigbusiness

Fri Sep 26, 2008 8:02 am (PDT)

Posted by: "41 Marketing" qualityads03@yahoo.com qualityads03

Fri Sep 26, 2008 8:05 am (PDT)

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

Fri Sep 26, 2008 8:05 am (PDT)

Posted by: "_eLiF_" bizim_marketing_003@yahoo.com bizim_marketing_003

Fri Sep 26, 2008 8:22 am (PDT)

Posted by: "Saranya L" saranya_l8@yahoo.com saranya_l8

Fri Sep 26, 2008 8:36 am (PDT)

Posted by: "Saranya L" saranya_l8@yahoo.com saranya_l8

Fri Sep 26, 2008 8:37 am (PDT)

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:44 am (PDT)

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:44 am (PDT)

Posted by: "Keerthi H" keerthi_h19@yahoo.com keerthi_h19

Fri Sep 26, 2008 8:47 am (PDT)

Posted by: "Keerthi H" keerthi_h19@yahoo.com keerthi_h19

Fri Sep 26, 2008 8:50 am (PDT)

Posted by: "Keerthi H" keerthi_h19@yahoo.com keerthi_h19

Fri Sep 26, 2008 8:50 am (PDT)

Posted by: "classif2000@yahoo.com" classif2000@yahoo.com classif2000

Fri Sep 26, 2008 8:50 am (PDT)

Posted by: "FREE: $100 In free ads, etc. Upon FREE Si" rossreyman@gmail.com rreymanjr

Fri Sep 26, 2008 8:52 am (PDT)

Posted by: "Kevin Maverick" kevin_maverick05@yahoo.com kevin_maverick05

Fri Sep 26, 2008 8:56 am (PDT)

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:59 am (PDT)

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:59 am (PDT)

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Fri Sep 26, 2008 8:59 am (PDT)

Posted by: "_eLiF_" bizim_marketing_003@yahoo.com bizim_marketing_003

Fri Sep 26, 2008 9:04 am (PDT)

Posted by: "_eLiF_" bizim_marketing_003@yahoo.com bizim_marketing_003

Fri Sep 26, 2008 9:04 am (PDT)

Posted by: "<< Ashley Malika >>" soniafernandus@gmail.com sonia_fernandus

Fri Sep 26, 2008 9:06 am (PDT)

Posted by: "$alon Refer" salonrefer@yahoo.com salonrefer

Fri Sep 26, 2008 9:12 am (PDT)

Posted by: "41 Marketing" mega@41marketingsolutions.com megaads03

Fri Sep 26, 2008 9:17 am (PDT)

Posted by: "Claudia" homanilaopia@yahoo.com homanilaopia

Fri Sep 26, 2008 9:25 am (PDT)

Posted by: "classif2000@yahoo.com" classif2000@yahoo.com classif2000

Fri Sep 26, 2008 9:38 am (PDT)

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