Design Patents

USPTO Publishes Final Rule on Changes to Implement the Hague Agreement Concerning Industrial Designs

April 2, 2015
On April 2, 2015, the U.S. Patent and Trademark Office ("USPTO") published its Final Rule on Changes to Implement the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement").  80 F.R. 63, pp. 17918-17971.  These changes go into effect on May 13, 2015.  Some of the changes only apply to patent applications filed on or after September 16, 2012 (e.g., power of attorney, application by assignee, inventor’s oath/declaration, and application data sheet).  Other changes only apply to patent applications filed on or after December 18, 2013 (e.g., continuing applications and filing of a certified copy of a previously-filed application).
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Munchkin v. Luv N’Care – CAFC Affirms PTAB

April 16, 2015
On April 14, 2015, the U.S. Court of Appeals for the Federal Circuit ("CAFC") affirmed the Patent Trial and Appeal Board’s decision that Luv N' Care's U.S. Patent Number D617,465 ("the '465 patent") was unpatentable. The PTAB’s decision was the first inter partes review initiated by the USPTO for a design patent. The CAFC issued a Rule 36 judgment that affirmed this decision without opinion.  For reference, Figures 2 and 3 from the '465 patent are provided below.   
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Design Day 2015

April 17, 2015
The U.S. Patent and Trademark Office (USPTO) held its 9th annual Design Day on April 14, 2015. 

The day started off with the Commissioner for Patents, Margaret (Peggy) Focarino, welcoming everyone to Design Day. Commissioner Focarino commented how much Design Day has grown over the last nine years, from a small conference room nine years ago to filling up the entire Madison Auditorium today.

Next, the Director of Design Technology Center TC 2900, Robert Olszewski, spoke about the growth of the Design Technology Center and shared statistical data regarding the Center. In particular, the Design staff now has 9 Supervisor Patent Examiners, with a plan to hire 3 more, along with creating two new art units. Additionally, there are currently 143 Examiners, and the Center plans on hiring 30 more. The average amount of time to a 1st Action is currently 13.8 months, and the average amount of time until issue is 17.3 months. Mr. Olszewski said that the Center's goal is to reduce the pendency; he also spoke about an initiative in the Center to issue an Office Action on all old cases.

Garth Rademaker, a Supervisor Patent Examiner in TC 2900, and the lead on examiner training, spoke about training in the TC. According to Mr. Rademaker, since design patents are so different from utility patents, training happens in the TC rather than Patent Training Academy, preferably on a one-on-one basis. With the hire of so many new examiners recently and 30 more examiners coming in, productivity of experienced examiners will likely be down as the new examiners are trained.

David Gerk, a patent attorney in the USPTO's Office of Pilicy and Internatinal Affairs, spoke briefly about Hague Agreement highlights. Specifically, that the Hague Agreement will take effect in the U.S. on May 13, 2015 and filings can be done directly through WIPO or indirectly through the USPTO if the USPTO is the Applicant's contracting party.

Following David Gerk’s presentation regarding Hague Agreement highlights, the next session delved into certain aspects of the highlights. Notably, the presenters discussed the following aspects: (1) the USPTO has its own dedicated “Hague” webpage, (2) the USPTO does not have its own Hague-specific filing form, so the WIPO forms must be used (updated forms will be posted on May 13, 2015); (3) the country(ies) and fees must be designated/paid at the time of filing; (4) a petition to accept color drawings is not necessary; (5) up to 100 designs may be filed for designs in the same Locarno class; (6) Hague-based design applications will be published (typically within 6 months unless early publication is requested); (7) the file history is made publicly available for an unpublished U.S. application claiming priority to, incorporating by reference, or otherwise identifying a published Hague-based design application; (8) CPAs are not available, so it is necessary to file a continuation or divisional; and (9) provisional rights are available based on publication, except a continuation or divisional application does not receive provisional rights based on the parent’s publication.  See also our previous post here regarding the Final Rules on Changes to Implement the Hague Agreement Concerning Industrial Designs.       

Sachiko Chiba, an Examiner of Household Equipment Design Division of the Japan Patent Office, traveled to Design Day to present on “Effective Utilization of the Design System in Japan.” Ms. Chiba’s presentation covered damages caused by counterfeit products, utilizing design rights and product design by companies, and design strategy and types of utilization of industrial design rights.

Just prior to lunch, a panel comprised of practitioners, draftspersons, and a USPTO representative discussed design drawing requirements and best practices for preparing design-quality drawings. Among other things, the panelists emphasized the importance of communication between practitioners and draftspersons and of providing a sufficient number of views to adequately represent the claimed design. The panelists also discussed advantages and disadvantages of including a specific color in design drawings versus including the USPTO’s “standard” pattern representation for a color and providing specific color tones or color tone ranges in the specification.

After lunch Robert Brunner (Founder/Partner of Ammunition Group) gave an entertaining keynote address entitled “Being Design Driven.” The address highlighted a number of products designed by Mr. Brunner and his company (including the Leeo smart nightlight, Beats headphones, Square credit card readers, Lyft mustache, and Polaroid cube camera) and the importance of design in the marketplace. Mr. Brunner explained that design provides an organization’s interface to the outside world and helps define who an organization is. He advised that companies should not think of design as merely one stage in product development, but as part of the conversation at every stage of product development.

After Robert Brunner’s presentation, Glen Alexrod spoke about the experience of his company, Nylabone®, and the use of Design patents. Mr. Alexrod noted he only has an average of half a second to get the attention of a customer while they walk the aisles of a pet store. Design patents help his company get the attention of customers in order to make a sale.

A panel of design experts moderated by Charles Mauro (President/Founder of MaruoNewMedia) commented on how changes in the law have impacted design experts. Cooper Woodring argued that the approach of factoring out functional features in Richardson v. Stanley Works was troubling because (1) the patent examiner examined the entire design and (2) because the entire design must always be considered in validity and infringement analyses. He suggested that there may not be any designs that should be invalid as functional. Given that a design should not be invalid as functional if the same function can be accomplished by alternative designs, he proposed that patent owners in litigation could use a strategy of creating real alternative designs (if none are readily available) to defend against charges of invalidity based on functionality.

Ronald Kemnitzer (Professor Emeritus at Virginia Tech) addressed the hypothetical “designer of ordinary skill who designs articles of the type involved” in an obviousness analysis. He argued that there have been major changes in the real world of design between 1985 and 2015 that affect who should be considered a designer of ordinary skill. Thirty years ago there were 6,000 designers who were generally found in corporate design departments and these were mostly white men. Today, there are 40,000 designers of much more diverse background who are evenly split between corporations and consulting. Given the broad training received by current designers, the advent of computers, and the fact that most designers work in multiple product disciplines, Dr. Kemnitzer argued that a design expert should be competent to offer expert opinions on obviousness even if they have never designed an article of the particular type involved in the litigation.

Next, Peter Bressler (PBressler LLC) discussed confusion that arises given the verbal focus of the case law and the visual focus of design patents. Legal concepts in design patent law such as “functionality,” “designer of ordinary skill,” “ordinary observer,” and “substantially the same” are all fraught with difficulty. Because these definitions are unclear, courts and parties are forced to spend time arguing about what the definitions mean rather than focusing on the merits of the case. For this reason, he believed a broader consensus on the legal definitions used in design patent law is needed. He further argued that while the Apple v. Samsung case has increased the value of design patents at present, if the Federal Circuit overturns the 35 USC 289 standard for design patent damages awards, the value of design patents could be substantially diminished.

The final presentation of the day was given by George Raynal (Saidman DesignLaw Group LLC). Mr. Raynal provided an entertaining overview of recent decisions involving design patents. He pointed out the contrasting approaches used by district courts in deciding claim construction as well as validity and infringement. This included a review of when courts did or did not elect to provide a written claim construction as opposed to relying only on the drawings, the relevance of the prior art in an infringement analysis, the significance of the drawings, the relevance of the prosecution history (including titles), etc. He provided statistics indicating that over the past year in published decisions patent owners had an even chance of prevailing on validity, but had a tough time prevailing on infringement. Mr. Raynal also noted that there were currently 6 pending cases involving design patents at the U.S. Court of Appeals for the Federal Circuit (CAFC). However, as one audience member noted, the CAFC issued Rule 36 opinions for two of those cases during Design Day. Stay tuned for blog posts on those cases.

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Apple v Samsung – Design Patents Hold Firm, Trade Dress Gives Way

June 15, 2015
On May 18, 2015, the Federal Circuit issued its long-awaited decision on Samsung’s appeal of Apple’s nearly $930 million 2014 judgment for infringement of Apple’s design patents and utility patents covering various smart phones and tablets, and for dilution of its trade dresses. See Federal Circuit Appeal Nos. 2014-1335, 2015-1029.  See also our previous discussions regarding the Apple-Samsung dispute here and here
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Oakley v. 7-Eleven

July 13, 2015
Oakley, Inc. (“Oakley”) filed suit against 7-Eleven, Inc. (7-Eleven) on June 25, 2015 in the District Court for the Southern District of California.  In its Complaint, Oakley alleges that certain products sold and/or offered for sale at 7-Eleven stores infringe the following design patents: 
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Design Patent Litigations Chart Their Own Course

July 28, 2015
Design patent litigations have frequently been in the news the past few years, particularly since Apple and Samsung began battling against each other in the Northern District of California. With the America Invents Act (AIA) also affecting the number of utility patent cases that have been filed, we wondered whether the number of design patent litigations has increased or decreased over the past few years. While the statistics we reviewed indicate no clear trend, we suggest three conclusions that might be drawn from the statistics.
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WIPO Announces Update to Its Global Design Database

August 6, 2015
On August 5, 2015, WIPO announced (available here) that its Global Design Database (available here) has added more than 1 million design documents based on data from the U.S., Japan, and Spain.

According to the announcement, users can now use the Global Design Database to search industrial designs registered under the WIPO-administered Hague System*, as well as designs from the U.S., Japan, Spain, Canada, and New Zealand. WIPO indicates that it plans to add other countries’ design data “in the coming months.”

The Global Design Database includes a user-friendly customizable interface, including various search categories, filters, and sorting capabilities.

As of this posting, the Global Design Database reports contents of 1.2 million design documents drawn from among 153,044 Canadian designs, 479,755 Japanese designs, 482,444 U.S. designs, 93,683 Spanish designs, 44,132 New Zealand designs, and 40,762 International (Hague) designs.

*The WIPO-administered Hague System has been previously discussed on this blog (here, here, here, and here). More information about the Hague system can be found here.
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Lumetique, Inc. v. Blyth, Inc. and PartyLite Gifts, Inc.

September 11, 2015
Lumetique, Inc. (“Lumetique”) filed suit against Blyth, Inc. and PartyLite Gifts, Inc. (collectively, “Defendants”) on September 4, 2015 in the District Court for the District of Connecticut. Please note that Oblon represents Lumetique in this matter.

In its Complaint, Lumetique alleges that “Defendants manufacture, import, offer for sale, and sell certain candle products, including the Nature’s Light series of candles” that infringe two utility patents and two design patents. Specifically, the Complaint alleges that Defendants infringe U.S. Patent Nos. 8,961,171; 9,039,409; D643,554; and D644,359.  By way of example, Figure 1 from D644,359 and Figure 1 from D643,554 are provided below, respectively:
image2Image1


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Hoist v. Health In Motion, Inspire Fitness and Sunset Swings, and Does 1-10

September 24, 2015
Hoist Fitness Systems, Inc. (“Hoist”) filed a Complaint against Health In Motion, LLC (“Health In Motion”), Inspire Fitness and Sunset Swings (“Inspire Fitness”), and Does 1-10 (collectively, “Defendants”) on August 31, 2015 in the District Court for the Southern District of California. Incidentally, the Complaint specifies that the fictitious defendants named “Does 1-10” “include, but are not limited to, any subsidiaries, affiliates, and/or parent companies of Health In Motion.”

In its Complaint, Hoist alleges “patent infringement, trade dress infringement, unfair competition, and unjust enrichment with regard to Hoist’s intellectual property rights.”
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USPTO Hearing On Proposed Fees Set for November 19, 2015

November 18, 2015
The U.S. Patent and Trademark Office (USPTO) and the Patent Public Advisory Committee (PPAC) are holding a public hearing on November 19, 2015 regarding proposed patent fees (a link to the Federal Register Notice is provided here). The meeting will take place from 2:00 p.m. to 4:00 p.m. (EST) at the USPTO Madison Auditorium South, 600 Dulany Street, Alexandria, Virginia 22314.

Proposed fee adjustments specific to U.S. design patent applications, include the following:

  • Filing fee: increase $20 (to $200);
  • Search fee: increase $40 (to $160);
  • Examination fee: increase $140 (to $600); and
  • Issue Fee: increase $440 (to $1000).

 

The fees above, which are for a large entity, represent a total increase of $640, constitute a substantial fee increase for design patent applications as compared to the current fees. 

The proposed fee adjustments also include fees related to international design applications.

Tables containing all of the USPTO's proposed fee adjustments are located at the following URL: http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting

The USPTO will make available online a webcast and transcript of the hearing at the above URL after the hearing. 

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C&A Marketing Asserts Design Patent Infringement Claim Against GoPro’s Hero4 Session Camera

November 20, 2015
C&A Marketing, Inc. (“C&A Marketing”) filed suit against GoPro, Inc. (“GoPro”) on November 3, 2015 in the U.S. District Court District of New Jersey, alleging design patent infringement.  More specifically, in it's complaint C&A Marketing alleges that GoPro's Hero4 Session, a cube-shaped "action" camera, infringes U.S. Patent No. D730,423 (the “D'423 patent”). 

According to C&A Marketing, the D'423 patent protects the Polaroid Cube, created through C&A Marketing's capacity as the exclusive manufacturer, distributor, and marketer of Polaroid® brand mountable action cameras, among other Polaroid® brand products.  Notably, C&A Marketing states that they launched the Polariod Cube in January 2014, at the Consumer Electronics Show (CES) in Las Vegas, Nevada, which was followed by GoPro's release of the "strikingly similar" Hero4 Session camera in 2015.
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Robert Gordon Industries and Thermos Tussle Over Tumbler Design Patent

December 13, 2015

Robert Gordon Industries, Ltd. ("Robert Gordon”) filed a complaint for declaratory judgment of noninfringement against Thermos, LLC (“Thermos”) on November 18, 2015 in the U.S. District Court for the Eastern District of New York.  Meanwhile, Thermos filed its own patent infringement action against Robert Gordon in the U.S. District Court for the Northern District of Illinois Eastern Division, also on November 18, 2015.

According to Robert Gordon, the declaratory judgment action was filed as a result of Thermos' continued efforts “to extract a royalty payment under two Thermos patents; United States Patent No. D622,547entitled 'Tumbler' ('the ‘547 patent') and United States Patent No. 8,348,078entitled 'Leak Proof Drinking Lid With Pressure Relief' ('the ‘078 patent')," with regard to Robert Gordon’s Empire VM-57 Tumbler, despite Robert Gordon's willingness to discontinue this product and pay Thermos a $3,000.00 royalty (based on 5% of past sales).  Robert Gordon seeks a jury trial to obtain a declaratory judgment of non-infringement and invalidity of each of the aforementioned Thermos patents. 

For its part, Thermos asserted that Robert Gordon has "manufactured, imported, sold and/or offered for sale tumblers...in the United States that infringe the '547 patent," such as tumbler "SKU # VM-57 Silver" offered for sale on Robert Gordon's website.   

Shown below, from left to right, are patent illustrations corresponding to Thermos' '547 patent (tumbler) and '078 patent (lid) and an image showing Robert Gordon's accused Empire VM-57 tumbler (based on Exhibit B from Thermos' complaint), respectively. 

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Nike Files Suit Against Skechers Alleging Infringement of Eight Design Patents

February 1, 2016
NIKE, Inc. (“Nike”) filed suit against Skechers U.S.A., Inc. (“Skechers”) on January 4, 2016 in the United States District Court for the District of Oregon, Portland Division, seeking to recover damages and costs from Skechers. In the complaint, Nike alleges Skechers infringes eight Nike design patents issued between January 7, 2014 and March 31, 2015 pertaining to shoe “uppers” and shoe soles (see Table 1 below from the complaint).
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Microsoft Alleges Corel Infringes Design Patents Directed to Graphical User Interfaces (GUIs)

February 9, 2016
Microsoft Corporation ("Microsoft") filed suit against Corel Corporation and Corel Inc. (“Corel”) in the Northern District Court of California, seeking to recover damages and costs for patent infringement.

In the complaint, Microsoft alleges Corel willfully infringes a number of Microsoft utility and design patents.  In particular, Microsoft accuses Corel of infringing U.S. Patent Nos. 8,255,828 (“the ‘828 patent”); 7,703,036 (“the ‘036 patent”); 7,047,501 (“the ‘501 patent”); 5,715,415 (“the ‘415 patent”); 5,510,980 (“the ‘980 patent”); D550,237 (“the D‘237 patent”); D554,140(“the D‘140 patent”); D564,532 (“the D‘532 patent”); and D570,865 (“the D‘865 patent”), all relating to aspects of graphical user interfaces ("GUIs") used in productivity software applications, such as Microsoft Office.

The four design patents forming the basis for part of the complaint are directed to "ornamental designs for parts of Microsoft user interfaces, including the Microsoft Ribbon" and, according to Microsoft, "Corel's advertising makes the copied Microsoft interfaces one of the central selling points of Corel's products:  'With a familiar Ribbon-style interface, Corel® Office looks like the office software you're used to, making it easy to get to work right away.'" 

Accused Corel products associated with the asserted design patents include CorelCAD 2014-2016 and Corel Home Office, which includes Corel Write, Corel Calculate, and Corel Show.
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Nike Files Suit Against Fujiann Bestwinn Alleging Design Patent Infringement

March 11, 2016
NIKE, Inc. (“Nike”) filed suit against Fujiann Bestwinn (China) Industry Co., Ltd. (“Bestwinn”) on February 17, 2016 in the United States District Court for the District of Nevada, alleging infringement of a number of Nike’s design patents for various aspects of athletic shoes.

In the complaint, Nike alleges Bestwinn infringes its design patents by attending the WSA trade show in Las Vegas, Nevada at least twice yearly and promoting and selling the infringing shoes. 

The patents detailed in the suit include eighteen Nike design patents issued between April 26, 2011 and December 29, 2015 pertaining to Nike's shoe designs (see Table 1 below from the complaint).
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Supreme Court to Hear Design Patent Damages Issue

March 21, 2016
The U.S. Supreme Court granted Samsung’s petition for writ of certiorari in the Samsung v. Apple appeal. The grant was limited to Question 2 from the petition, which is as follows:

2. Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Samsung’s position in its petition is that the three design patents at issue (U.S. Design Patent Nos. D618,677, D593,087, and D604,305) “cover only specific, limited portions of a smartphone’s design: a particular black rectangular round-cornered front face, a substantially similar rectangular round-cornered front face plus the surrounding rim or ‘bezel,’ and a particular colorful grid of sixteen icons.” Samsung states that, despite this limited coverage, “the Federal Circuit allowed the jury to award Samsung’s entire profits from the sale of smartphones found to contain the patented designs—here totaling $399 million.” The Federal Circuit opinion can be found here. Contrary to the position taken by the Federal Circuit, Samsung does not believe that Section 289 of the Patent Act compels this result. Instead, Samsung’s position is that “Section 289 nowhere defines the ‘article of manufacture’ to which a patented design is applied as the entire product (here, a smartphone) rather than the portion of the product depicted in the design patent.”
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USPTO Publishes Request for Comments on (and Examples Addressing) the Application of the Written Description Requirement to Specific Situations in Design Applications

April 15, 2016
On April 15, 2016, the U.S. Patent and Trademark Office (“USPTO”) published a Request for Comments on the Application of the Written Description Requirement to Specific Situations in Design Applications (“Request”). See 81 F.R. 73, pp. 22233-22236. In particular, the USPTO is seeking the public’s help in identifying examples “to illustrate [its] proposed approach or any suggested approachfor applying the written description requirement in design applications.” Id. (emphasis added).

Importantly, this Request also points out that “it became clear that there exists a need to supplement the current provisions in the Manual of Patent Examining Procedure (‘‘MPEP’’) relating to 35 U.S.C. 112 for design applications.” Id. (Stop the press! Does the Request really say that? Yes, yes it does. Please read on….)
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Recap of USPTO's Design Day 2016

April 26, 2016
The USPTO's Design Day 2016, held April 19th, started off with a welcoming address from the Commissioner for Patents, Andrew Hirshfeld. Commissioner Hirshfeld noted the increasing importance of design patents, as U.S. design patent application filings have increased from 11,000 in 1987 to 37,000 in 2015. Commissioner Hirschfeld encouraged everyone to submit comments and examples for the application of the Written Description Requirement in Design Applications, which was published on April 15, 2016 (reported here). Commissioner Hirshfeld also announced that 15 design examiners will be working out of the USPTO's San Jose satellite office.
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BMW Group Files Suit Against TurboSquid

May 9, 2016
Bayerische Motoren Werke AG, BMW of North America, LLC, Rolls-Royce Motor Cars Limited, and Rolls-Royce Motor Cars NA, LLC (collectively “BMW Group”) filed suit against TurboSquid, Inc. (“TurboSquid”) on May 3, 2016 in the United States District Court for the District of New Jersey, alleging infringement of BMW Group’s design patents, trademarks, and trade dress.

BMW Group is seeking a permanent injunction for infringement, destruction of products, advertisements, and packaging in TurboSquid’s possession or control bearing BMW Group’s trademarks or trade dress, and recovery of TurboSquid’s profits from the alleged infringement, treble actual damages, and reasonable expenses.

The design patents detailed in the suit include six BMW Group design patents pertaining to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. These are design patents D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” For illustrative purposes, images from the design patents are shown below.
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ITC Terminates Design Patent-Based 337 Investigation

September 2, 2016

The International Trade Commission (ITC) recently terminated a Section 337 investigation, Certain Quartz Slabs and Portions Thereof (II)(Inv. No. 337-TA-1017), which involved U.S. Patent Nos. (1) D712,666; (2) D712,670; (3) D751,298; (4) D712,161; and (5) D737,058.  

Discussed in detail on the Oblon ITC 337 Law Blog here and here, notably, the case involved the assertion of only design patents, the above-identified design patents, directed to quartz slabs.  Also, the Commission declined to send the case to the ITC's Early Disposition Pilot Program, because Respondents' request that the Commission utilize the Early Disposition Pilot Program relates to only two of the five asserted design patents, and therefore does not involve a case dispositive issue, and use of the Early Disposition Pilot Program in this particular scenario would unduly delay resolution of the entire investigation. 

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