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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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Messages In This Digest (25 Messages)

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2.1.: EARN 300-600 DOLLARS PER MONTH WITHOUT INVESTMENT

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

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2.2.: EARN 300-600 DOLLARS PER MONTH WITHOUT INVESTMENT

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

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• 100% LEGAL. YOU SHOULD WORK OTHERWISE YOU CANNOT REAP THE FULL BENEFIT
•
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THINK TWICE BEFORE YOU CLOSE

NOTE: THIS MESSAGE IS SENT TO INTERESTED MEMBERS OF THE GROUP OTHERS
PLEASE IGNORE.

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2.3.: EARN 300-600 DOLLARS PER MONTH WITHOUT INVESTMENT

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

Sat Sep 27, 2008 8:58 am (PDT)

EARN 300-600 DOLLARS PER MONTH WITHOUT INVESTMENT

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• YOU WILL BE PAID $2 US DOLLARS FOR EACH MEMBER JOINING UNDER YOU
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• FOR INCOME PROOF PLEASE SEND MAIL TO ME jdp_bala@yahoo.co.in

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•
• YOU CANNOT BECOME RICH OVERNIGHT. BUT FINANCIAL INDEPENDENCE CAN BE GAINED

THINK TWICE BEFORE YOU CLOSE

NOTE: THIS MESSAGE IS SENT TO INTERESTED MEMBERS OF THE GROUP OTHERS
PLEASE IGNORE.

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Messages in this topic (1862)
2.4.: EARN 300-600 DOLLARS PER MONTH WITHOUT INVESTMENT

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

Sat Sep 27, 2008 8:58 am (PDT)

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For more details please log on to

http://www.moreinfo247.com/10267981/CB

• YOU WILL BE PAID $2 US DOLLARS FOR EACH MEMBER JOINING UNDER YOU
• (they also should work)
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• 100% LEGAL. YOU SHOULD WORK OTHERWISE YOU CANNOT REAP THE FULL BENEFIT
•
• YOU CANNOT BECOME RICH OVERNIGHT. BUT FINANCIAL INDEPENDENCE CAN BE GAINED

THINK TWICE BEFORE YOU CLOSE

NOTE: THIS MESSAGE IS SENT TO INTERESTED MEMBERS OF THE GROUP OTHERS
PLEASE IGNORE.

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3.1.: How would you like to make $75 - $250 every single day just for clic

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4.1.: Expand Your Business Or Start A New One and get free ebooks

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7.: Get Paid to do the normal things that you are already doing!, 9/27/2

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

Sat Sep 27, 2008 9:40 am (PDT)

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

Get Paid to do the normal things that you are already doing!
Saturday September 27, 2008
10:00 am - 10:00 pm
(This event repeats every day.)
Location: http://www.eyeearn.com/9860291.90

All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

Privacy Policy:
http://privacy.yahoo.com/privacy/us

Terms of Service:
http://docs.yahoo.com/info/terms/

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8.: Let the Pros Do All The HARD ADVERTISING WORK!, 9/27/2008, 10:00 am

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

Sat Sep 27, 2008 9:40 am (PDT)

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

Let the Pros Do All The HARD ADVERTISING WORK!
Saturday September 27, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: www.eye-earn.biz/Apr08

All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

Privacy Policy:
http://privacy.yahoo.com/privacy/us

Terms of Service:
http://docs.yahoo.com/info/terms/

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9.: Genuine Lifetime Income!! , 9/27/2008, 10:00 am

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

Sat Sep 27, 2008 9:40 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
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All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

Privacy Policy:
http://privacy.yahoo.com/privacy/us

Terms of Service:
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10.: Your Online Gift Store, 9/27/2008, 10:00 am

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

Sat Sep 27, 2008 9:40 am (PDT)

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

Your Online Gift Store
Saturday September 27, 2008
10:00 am - 11:00 am
(This event repeats every day.)
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Notes:
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All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

Privacy Policy:
http://privacy.yahoo.com/privacy/us

Terms of Service:
http://docs.yahoo.com/info/terms/

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11.: Cara dapat duit CUMA DENGAN CARA KLIK IKLAN!!! Pembayaran dijamin 10

Posted by: "serpent_wine87" serpent_wine87@yahoo.com serpent_wine87

Sat Sep 27, 2008 9:45 am (PDT)

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dan Mandiri. Minimal pembayaran Rp50.000.

Bagaimana Klikrupiah.com bekerja?
Klikrupiah.com is BUKAN Autosurf, Multi-Level Marketing, Pyramid,
Ponzi, Matrix or "Get Rich Quick" skema.

Klikrupiah.com inovasi terbaru,dan hanya untuk orang indonesia disini
kami membantu pemilik website yang ingin mendapatkan pengunjung yang
banyak dan berkualitas dan iklan anda akan kami pasang di halaman ,
"Klik Iklan ". Persentase paket iklan yang anda bayarkan kepada
kami,sebagian akan kami berikan kepada anggota kami.

Bagaimana anda mendapatkan uang?
Anda lihat iklan dihalaman "Lihat Iklan ". Setelah waktu 30 detik
sudah tercapai maka anda akan melihat tanda "cek list" atau tanda "V".
Jika tanda "cek list"muncul maka anda akan mendapatkan uang Rp 100 (Rp
150 Premium) tapi jika anda melihat tanda "X"maka anda tidak
mendapatkan uang. Anda mendapatkan tanda "X"dikarenakan anda buka
iklan yang sama atau buka beberapa iklan dalam waktu bersamaan.
Anda hanya diijinkan melihat iklan yang sama setelah 24 jam.

Ini adalah contoh dengan pendapatan anda dengan referral 20
member,kadang kadang iklan yang tampil bisa lebih atau kurang:
» Anda klik 10 iklan = Rp 1.000
» 20 referrals klik 10 iklan = Rp 10.000
» Pendapatan Harian= Rp 11.000
» Pendapatan Mingguan= Rp 77.000
» Pendapatan Bulanan=Rp 330.000
» Pendapatan pertahun= Rp 3960000

Usahakan untuk klik iklan tiap harinya agar keanggotaan anda tidak
terhapus!!!
untuk informasi lebih lanjut kunjungi
http://klikrupiah.com/register.php?r=exaeon
Program klik iklan sejenis yang juga menghasilkan rupiah dapat anda
lihat di http://indouang.com/?r=exaeo

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12.: Extra Income every Month.!!....27-09.08

Posted by: "Multiple Streams of Income" vitormlm@ymail.com vitorbigbusiness

Sat Sep 27, 2008 9:54 am (PDT)

Extra Income every Month.!!....27-09.08

The Secret is In the system...

There is no obligation to join and the tour is completely FREE!
Simply fill aut the form below and you`ll discover how you can start
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13.1.: Blasts your ads to 3.6 Million Safelist recipients at the click of 1

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

Sat Sep 27, 2008 9:59 am (PDT)

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14a.: New Company Advisory...2 years in development...coming this fall...b

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

Sat Sep 27, 2008 10:02 am (PDT)

Greetings

My name is Brett Gurney...full time work
from home entrepreneur and network marketer

I have just recently been offered, and have accepted,
one of 4 top positions with a new company that is
launching this fall...and will be putting together a core
group of founders before our general prelaunch in
early November

..and you are getting first notice

We know this company and the product will have a
dramatic impact on the nutritional MLM industry...we
have documented studies, science, and technology that
will put the product front and center in this catagory

Given the uniqueness of the product, with the science
and technology behind it, and the people involved with
the development and formulation of the company...it
could easily become the next nutritional giant

Nobody knows about this yet...there are no distributors,
there is no website, and the company have not announced
their name yet...they will announce themselves any day now
via press releases and various media outlets

...two years in the making

If you like ground floor it doesnt get any more ground
floor than this

I will be going through a pre-qualification process with
those who wish to get involved now...if you are a leader
in the industry, or someone who wants to get serious
about a business... please contact me...I have information
to share

Click on this link please for a brief overview of
who we are and what were doing
http://lgtmarketing.com/track/t.php?l=5521

Thanks,

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

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15.1.: Important Anouncement, Content nearly banned

Posted by: "G Generalfoundation" kevin_maverick05@yahoo.com kevin_maverick05

Sat Sep 27, 2008 10:08 am (PDT)

Hello my Friend:

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Hope to read from you soon!
Maria
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16.: You`ll learn how you could be earning an extra $4,000 per month !!.

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

Sat Sep 27, 2008 10:23 am (PDT)

You`ll learn how you could be earning an extra $4,000 per month !!.
..27.09.08
"You're About To Learn 'Secrets' That Most People Will *Never*

Know About How To *Really* Create Wealth Online..."

*"Give me 10 minutes of your time and **I'll share with you my secret to
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**
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to over *
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**
When you fill out the form to the right, you'll learn how you could be
earning an extra $4,000 per month
*or more* by simply *giving away* FREE education from world famous speakers
& trainers...

http://vitorferreira.successuniversity.com/slim

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17.: CREATE A SUBSTANTIAL residual income!!.....27.09.08

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

Sat Sep 27, 2008 10:25 am (PDT)

*CREATE A SUBSTANTIAL residual income!!.....27.09.08*
with the simplest cost effective marketing
system on the internet.

*Looking for network marketers*.

Join the fastest growing team in the industry. Make
$10,000 per month.

http://vitorferreira.successuniversity.com/slim

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18.: Successful Holiday Marketing in a Negative Economy

Posted by: "shearnemarketing" shannan@successpromotions.com shearnemarketing

Sat Sep 27, 2008 10:26 am (PDT)

Successful Holiday Marketing in a Negative Economy
By Shannan Hearne, http://www.SuccessPromotions.com

Christmas is just around the corner. E-tailers are struggling to
make ends meet in a negative economy headed rapidly into a
recession. Keeping the books out of the red and the sales coming is
getting harder and harder. But your internet store can keep the cha-
ching of the cash register ringing in your ear with some simple
planning and successful holiday marketing.

The following tips can make the difference in negative or positive
sales in a negative economy this holiday shopping season.

The National Retail Federation expects total holiday retail sales to
increase 5 percent over last year for a whopping $435.3 billion in
holiday spending. Will your business get your fair share?

Successfully generating holiday sales is all about helping your
customers solve their dilemmas of paying their regular bills without
breaking the bank on holiday shopping. You must first reach
potential customers and then offer them solutions to shopping for
their entire family purchasing affordable gifts that are perfect for
everyone on their shopping list.

First you must reach customers. Contact your existing client base
with money saving messages that remind them regularly that your
store can help them shop for the Christmas holidays without going
over an ever-shrinking budget. Maintaining and working your
mailing list (or emailing list) is a cost-effective way to reach
people who you already know are interested in your products.

Second you must solve the holiday shopping dilemmas of your
customers. Providing gift ideas, and ideas that stay within their
budgets, keeps you at the top of your customers' shopping lists.
Remind customers of unique gift ideas they can get from you that
they can't get from their local big box store or your online
competitors. Solve their Christmas budget problems with specials,
combined shipping discounts, frequent buyer programs, and other
money saving offers.

Third, remember that timing is everything. Some people shop early,
while others frantically search for last minute offers and speedy
shipping to meet their buying needs. If you plan multiple holiday
offers coupled with shipping options for the early bird and the late
shopper, you position your e-store to meet the needs of a larger
niche market. Don't forget that many people travel for the holidays
and need to get their shopping done and delivered to their final
holiday destinations. Offer multi-location shipping so that your
customers can shop for friends and family local and far away.

Fourth, stay tuned in to the ever-changing needs of your customers
old and new. If people are looking for widgets in a color you don't
stock, offer to get the color for them or direct them to another
solution within your store shelves. With the cost of fuel rising
and gas hard to find, people are searching for shipping solutions
that work better than going to the local store. If the economy dips
closer to recession and your customers fear for their jobs, buying
more for less becomes a consideration. Be prepared to lower prices
and offer better bargains at the drop of a hat if the economy
requires you to do so. Along that same vein, focus your buying on
items that leave you a profit margin large enough to lop some off
the top if necessary without bleeding your company dry.

Finally, plan your marketing now and launch your campaigns quickly
so that you are ready for the early bird shopper and the last minute
looker. Don't wait until your competition announces their holiday
specials to compete with them directly. Put together Christmas
deals and steals now that appeal to your niche market and let your
competition play catch up with you. The early bird still gets the
worm. And the earliest marketer attracts the most shoppers.

Don't bury your head in the sand and throw in the towel because the
market isn't what it was last year. Projections are still out for
holiday spending to be up from last year and with proper planning,
you can see your sales increase, too.

Shannan Hearne is the President and Wizard of
http://www.SuccessPromotions.com Marketing Your e-Business Better
through creative marketing and knowledge. Guerrilla Marketing. One-
to-One Marketing. Relationship Marketing. Your Marketing. Shannan
is also a founding team member of Inspiring Parents, a network of
like minded people building an income and saving money on the things
they buy every day and helping others to do the same. You can reach
Ms. Hearne via email at shannan@successpromotions.com

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19a.: Get An Entire Business For Only Five Dollars!

Posted by: "Donna Gain" groupsmailer_74@yahoo.ca groupsmailer_74

Sat Sep 27, 2008 10:27 am (PDT)

You get an UNLIMITED SUPPLY of high-demand products! Can you imagine having an UNLIMITED SUPPLY of products for your business to sell? Whether you sell 500 or 5 million, youll NEVER have to pay a dime for more products!

http://just-visit.us/?i=154460/YG

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20.: 84 New Members Have Joined This Program Today, Sept 27th!

Posted by: "August Valcik" ajvalcik@yahoo.com ajvalcik

Sat Sep 27, 2008 10:32 am (PDT)

If you're serious about starting a home based business and are
willing to view a short video that details this program then I¢m positive
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all of your tools are free. Here is your chance to finally succeed!

Check it out at http://4u2bn.com/fv28

Sponsored BannerAd:

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21a.: GET to Number 1 FREE

Posted by: "Paul Fowell" paulfow1@yahoo.co.uk paulfow1

Sat Sep 27, 2008 10:34 am (PDT)

You can get to to the number one listing on 40 major search engines for FREE but only until the end of March. You dont need a credit card just a website to promote. This is still in BETA testing so get in now

http://www.1on40.com/94439079

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22a.: NON-STOP CASH DEPOSITED DIRECTLY INTO YOUR ACCOUNT!

Posted by: "Carlos" coolwebgold@yahoo.com coolwebgold

Sat Sep 27, 2008 10:37 am (PDT)

Increase Your Income! Start Making Money From Home In Your Spare Time.
Your Earnings Deposited Directly Into Your Account For Your Use The
Same Day. Free Information. Get Yours Right Now!
http://www.cnetgold.com

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Saturday, September 27, 2008

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

Sat Sep 27, 2008 8:56 am (PDT)

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

Sat Sep 27, 2008 8:56 am (PDT)

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

Sat Sep 27, 2008 8:57 am (PDT)

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

Sat Sep 27, 2008 8:58 am (PDT)

Posted by: "BALAJI A" sfibalaji1@yahoo.com sfibalaji1

Sat Sep 27, 2008 8:58 am (PDT)

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

Sat Sep 27, 2008 9:00 am (PDT)

Posted by: "profit4us@yahoo.ca" profit4us@yahoo.ca profit4us

Sat Sep 27, 2008 9:15 am (PDT)

Posted by: "nadia.paki" no_reply@yahoogroups.com nadia.paki

Sat Sep 27, 2008 9:16 am (PDT)

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

Sat Sep 27, 2008 9:30 am (PDT)

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

Sat Sep 27, 2008 9:40 am (PDT)

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

Sat Sep 27, 2008 9:40 am (PDT)

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

Sat Sep 27, 2008 9:40 am (PDT)

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

Sat Sep 27, 2008 9:40 am (PDT)

Posted by: "serpent_wine87" serpent_wine87@yahoo.com serpent_wine87

Sat Sep 27, 2008 9:45 am (PDT)

Posted by: "Multiple Streams of Income" vitormlm@ymail.com vitorbigbusiness

Sat Sep 27, 2008 9:54 am (PDT)

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

Sat Sep 27, 2008 9:59 am (PDT)

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

Sat Sep 27, 2008 10:02 am (PDT)

Posted by: "G Generalfoundation" kevin_maverick05@yahoo.com kevin_maverick05

Sat Sep 27, 2008 10:08 am (PDT)

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

Sat Sep 27, 2008 10:23 am (PDT)

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

Sat Sep 27, 2008 10:25 am (PDT)

Posted by: "shearnemarketing" shannan@successpromotions.com shearnemarketing

Sat Sep 27, 2008 10:26 am (PDT)

Posted by: "Donna Gain" groupsmailer_74@yahoo.ca groupsmailer_74

Sat Sep 27, 2008 10:27 am (PDT)

Posted by: "August Valcik" ajvalcik@yahoo.com ajvalcik

Sat Sep 27, 2008 10:32 am (PDT)

Posted by: "Paul Fowell" paulfow1@yahoo.co.uk paulfow1

Sat Sep 27, 2008 10:34 am (PDT)

Posted by: "Carlos" coolwebgold@yahoo.com coolwebgold

Sat Sep 27, 2008 10:37 am (PDT)

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