`Exhibit 12 4 l
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`§
`Inventor: Hair
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`United States Patent No.: 5,966,440
`Formerly Application No.: 08/471,964 §
`Issue Date: October 12, 1999
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`Filing Date: June 6, 1995
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`Former Group Art Unit: 380
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`Former Examiner: Hoa T. Nguyen
`§
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`Attorney Docket No.:
`104677—5005—803
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`Customer No. 28120
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`Petitioner: Apple Inc.
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`For: System and Method for Transmitting Desired Digital Video or Digital Audio
`Signals
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`MAIL STOP PATENT BOARD
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`Post Office BOX 1450
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`Alexandria, Virginia 22313—1450
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`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 5,966,440
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`I, Roberto J. Gonzalez, make the following Declaration pursuant to 28 U.S.C. §
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`1746:
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`1.
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`2.
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`I am a paralegal at the law firm of Ropes & Gray LLP.
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`I provide this Declaration in connection with the above—identified
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`Covered Business Method Patent Review proceeding that is being requested at the
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`United States Patent and Trademark Office by Apple, Inc. under 35 U.S.C. § 321, 37
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`C.F.R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
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`on my personal knowledge.
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`3.
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`Exhibit 1201 hereto is a true and correct copy of United States Patent
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`No. 5,966,440 to Arthur Hair, with its July 27, 2010 Ex Parte ReexaminatiOn
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`Certificate, which are records of the United States Patent and Trademark Office ("the
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`USPTO") to which all parties have access. Page numbers have been added to the
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`bottom of this document and an exhibit label has been added to the top of this
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`document but no other alterations have been made.
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`4.
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`Exhibit 1202 hereto is a true and correct copy of the file history for
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`United States Patent No. 5,966,440 to Arthur Hair, which was downloaded from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. Page numbers have been added to the bottom of this document and an
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`5.
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`Exhibit 1203 hereto is a true and correct copy of the reexamination file
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`history for Application No. 90/007,407, which was downloaded from the USPTO
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`PAIR website and which is a record of the USPTO to which all parties have access.
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`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
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`6.
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`Exhibit 1204 hereto is a true and correct copy of United States Patent
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`No. 5,191,573 to Arthur Hair, with its November 30, 2010 Ex Parte Reexamination
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`Certificate, which are records of the USPTO to which all parties have access. Page
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`7.
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`Exhibit 1205 hereto is a true and correct copy of the file history for
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`United States Patent No. 5,191,573 to Arthur Hair, which was downloaded from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. Page numbers have been added to the bottom of this document and an
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`8.
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`Exhibit 1206 hereto is a true and correct copy of the reexamination file
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`history for Application No. 90/ 007,402, which was downloaded from the USPTO
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`PAIR website and which is a record of the USPTO to which all parties have access.
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`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
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`9.
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`Exhibit 1207 hereto is a true and correct copy of the file history for
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`United States Patent No. 5,675,734 to Arthur Hair, which was downloaded from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. Page numbers have been added to the bottom of this document and an
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`10.
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`Exhibit 1208 hereto is a true and correct copy of the reexamination file
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`history for Application No. 90/007,403, which was downloaded from the USPTO
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`PAIR website and which is a record of the USPTO to which all parties have access.
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`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
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`11.
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`Exhibit 1209 hereto is a true and correct copy of United States Patent
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`No. 5,675,734 to Arthur Hair, with its December 14, 2010 Ex Parte Reexamination
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`Certificate, which are records of the USPTO to which all parties have access. Page
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`12.
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`Exhibit 1211 hereto is a true and correct copy of the World Patent
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`Application W085/02310,
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`filed on November 14, 1984 by SoftNet
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`Inc., and
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`published on May 23, 1985, which was downloaded from the World Intellectual
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`Property Organization’s PATENTSCOPE search page to which all parties have
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`access. Page numbers have been added to the bottom of this document and an
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`13.
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`Exhibit 1212 hereto is a true and correct copy of United States Patent
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`No. 4,506,387 to Howard F. Walter, which is a record of the USPTO to which all
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`parties have access. Page numbers have been added to the bottom of this document
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`and an exhibit label has been added to the top of this document but no other
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`alterations have been made.
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`14.
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`Exhibit 1213 hereto is a true and correct copy of United States Patent
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`No. 4,124,773 to Robin Elkins, which is a record of the USPTO to which all parties
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`have access. Page numbers have been added to the bottom of this document and an
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`15.
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`Exhibit 1214 hereto is a true and correct copy of an Order regarding
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`Claim Construction in Sig/az‘Somd Tet/7L, LLC 0. Apple Ina, No. 11—01292, before the
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`District Court of the Western District of Pennsylvania, signed by Senior Judge,
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`Donetta W. Ambrose on February 13, 2013, which was downloaded from the Public
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`Access to Court Electronic Records (“PACER”) website and is a record of the
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`aforementioned District Court (Dkt. No. 175) to which all parties have access. Page
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`16.
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`Exhibit 1215 hereto is a true and correct copy of Special Master’s Report
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`and Recommendation on Claim Construction in Sig/affomd Term, LLC a Apple 1726.,
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`No. 11—01292, before the District Court of the Western District of Pennsylvania,
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`signed by Claim Construction Special Master, Gregory L. Bradley and dated
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`November 19, 2012, which was downloaded from the PACER website and is a record
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`of the aforementioned District Court (Dkt. No. 142) to which all parties have access.
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`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
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`17.
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`Exhibit 1219 hereto is a true and correct copy of the transcript of
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`December 11, 2012 Deposition of Arthur Hair in Szég/fifomd Tea/95., LLC a Apple Ina,
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`No. 11—01292, before the District Court of the Western District of Pennsylvania,
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`which was received from the Merrill Corporation and certified by Rachel Perrier, CSR
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`No. 6948.
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`18.
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`Exhibit 1220 hereto is a true and correct copy of the transcript of
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`December 18, 2012 Deposition of Scott Sander in Sig/9215'omd Tet/95., LLC v. App/e Ina,
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`No. 11—01292, before the District Court of the Western District of Pennsylvania,
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`which was received from the Merrill Corporation and certified by Rachel Ferrier, CSR
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`No. 6948.
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`19.
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`Exhibit 1221 hereto is a true and correct copy of United States Patent
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`' No. 4,682,248 to Daniel M. Schwartz, which is a record of the USPTO to which all
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`parties have access. Page numbers have been added to the bottom of this document
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`and an exhibit label has been added to the top of this document but no other
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`alterations have been made.
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`20.
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`Exhibit 1229 hereto is a true and correct copy of United States Patent
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`No. 4,528,643 to Charles C. Freeny, Jr, which is a record of the USPTO to which all
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`parties have access. Page numbers have been added to the bottom of this document
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`and an exhibit label has been added to the top of this document but no other
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`alterations have been made.
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`21.
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`Exhibit 1230 hereto is a true and correct copy of United States Patent
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`No. 4,789,863 to Thomas A. Bush, which is a record of the USPTO to which all
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`parties have access. Page numbers have been added to the bottom of this document
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`and an exhibit label has been added to the top of this document but no other
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`alterations have been made.
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`22.
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`I make this declaration of my own personal knowledge.
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`If called to
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`testify as
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`to the truth of the matters stated herein,
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`I could and would testify
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`competently.
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`23.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed this 5th day of May, 2013, at New York, NY.
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`/
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`oberto J. Gonzalez
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