`Tel: 571-272-7822
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`Paper 11
`Entered: August 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00117
`Patent 8,118,221 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Covered Business Method Patent Review
`and Granting Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`
`
`CBM2015-00117
`Patent 8,118,221 B2
`
`
`I. INTRODUCTION
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`Petitioner, Apple Inc. (“Apple”), filed a Petition requesting covered
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`business method patent review of claims 2, 11, and 32 (the “challenged
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`claims”) of U.S. Patent No. 8,118,221 B2 (Ex. 1001, “the ’221 patent”).
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`Paper 2 (“Pet.”). On June 1, 2015, Patent Owner, Smartflash LLC
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`(“Smartflash”), filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 324, which provides that a
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`covered business method patent review may not be instituted “unless . . . it is
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`more likely than not that at least 1 of the claims challenged in the petition is
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`unpatentable.”
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`Concurrently with its Petition, Apple filed a Motion for Joinder (Paper
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`3, “Mot.”), seeking to consolidate this case, under 35 U.S.C. § 325(c), with
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`the covered business method patent review in Samsung Electronics America,
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`Inc. and Samsung Electronics Co., Ltd. v. Smartflash, LLC, Case CBM2014-
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`00194 (“the Samsung CBM”), which was instituted on March 30, 2015. See
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`CBM2014-00194 (Paper 9, 20) (instituting review of claims 2, 11, and 32 of
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`the ’221 patent under 35 U.S.C. § 101). Smartflash does not oppose Apple’s
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`Motion for Joinder. Paper 12, 1.
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`For the reasons explained below, we institute covered business
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`method patent review of claims 2, 11, and 32 of the ’221 patent and grant
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`Apple’s Motion for Joinder.
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`II. INSTITUTION OF COVERED BUSINESS METHOD
`PATENT REVIEW ON SAME GROUND ASSERTED IN
`THE SAMSUNG CBM
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`Because the challenge in this Petition is the same as that instituted in
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`CBM2014-00194, we determine that it is more likely than not that claims 2,
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`2
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`
`
`CBM2015-00117
`Patent 8,118,221 B2
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`11, and 32 of the ’221 patent are unpatentable. We previously have
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`determined that the ’221 patent is a “covered business method patent.” AIA
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`§ 18(d)(1); see 37 C.F.R. § 42.301(a). CBM2014-00194, Paper 9, 7–12
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`(determining that the ’221 patent is eligible for covered business method
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`patent review based on claim 32); CBM2014-00102, Paper 8, 8–12
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`(determining that the ’221 patent is eligible for covered business method
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`patent review based on claim 12); CBM2015-00015, Paper 23, 10–15
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`(determining that the ’221 patent is eligible for covered business method
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`patent review based on claim 32).
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`Smartflash argues that “Petitioner cites claim 32 as an example,” but
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`“claim 32 does not, in fact, meet the requirements for instituting a review.”
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`Prelim. Resp. 8–9. As noted above, however, the ’221 patent already has
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`been determined to be a covered business method patent based on claim 32,
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`and Smartflash fails to persuade us of error in that determination.
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`Here, Apple challenges the same claims (claims 2, 11, and 32) based
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`upon the same ground, 35 U.S.C. § 101, for which covered business method
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`patent review was instituted in the Samsung CBM. Pet. 14–28; Mot. 8. We
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`have reviewed the Preliminary Response and are not persuaded that we
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`should deny institution in this proceeding. In its Preliminary Response,
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`Smartflash does not attempt to rebut Apple’s contentions regarding the
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`unpatentability of claims 2, 11, and 32 under 35 U.S.C. § 101. Rather,
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`Smartflash argues that the Petition should be denied because it “disregards
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`the Board’s clear ruling in CBM2015-00015” (Prelim. Resp. 4) and “would
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`be contrary to the PTAB’s mandate” of securing the just, speedy, and
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`inexpensive resolution of every proceeding (id. at 5–6). These arguments
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`are not persuasive.
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`3
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`
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`CBM2015-00117
`Patent 8,118,221 B2
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`As Apple notes (Mot. 7–8), we declined to institute CBM review of
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`claims 2, 11, and 32 in CBM2015-00015 because we had already instituted
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`review of that claim on § 101 grounds in the Samsung CBM (CBM2015-
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`00015, Paper 23, 18). In its Motion for Joinder, Apple requests that it
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`be permitted to join these proceedings to ensure that, even if
`Samsung should seek
`to
`terminate
`its
`involvement
`in
`CBM2014-00194 (e.g., as a result of settlement), Apple would
`be able to see the § 101 challenge to claims 2, 11, and 32
`through to a final written decision, since it was not permitted to
`do so in CBM2015-00015.
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`Mot. 8. Apple notes that in this proceeding, the “petition does not assert any
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`new grounds of unpatentability. It involves the same ’221 patent and—as
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`discussed above—the same arguments, evidence and grounds of
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`unpatentability as the Board instituted in CBM2014-00194.” Id. Apple
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`further notes that it has “re-filed the same expert declaration submitted by
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`Samsung,” “this declaration contains no material that is not already in the
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`previously-filed declaration,” and “a second deposition of a second expert is
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`not necessary.” Id. at 9.
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`Based on the specific facts of this case, we institute a covered
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`business method patent review in this proceeding on the same ground,
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`namely under 35 U.S.C. § 101, as that on which we instituted in the
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`Samsung CBM for claims 2, 11, and 32 of the ’221 patent. We do not
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`institute a covered business method patent review on any other ground.
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`III. GRANT OF MOTION FOR JOINDER
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`As noted above, Smartflash does not oppose Apple’s request to
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`consolidate this Petition with the Samsung CBM. Paper 10, 1.
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`4
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`
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`CBM2015-00117
`Patent 8,118,221 B2
`
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`As noted above, the only ground upon which we institute a covered
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`business method patent review in this proceeding is the challenge to claims
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`2, 11, and 32 of the ’221 patent based on 35 U.S.C. § 101. Apple, thus, does
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`not assert any new ground of unpatentability that is not already being
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`considered in the Samsung CBM. Mot. 8. Further, as noted above, Apple
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`represents that the Petition includes the same arguments and relies on the
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`same evidence and grounds of unpatentability that were the basis for the
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`Board’s decision to institute trial in the Samsung CBM. Id. at 7–9.
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`Under the circumstances, we conclude Apple has demonstrated that
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`consolidation of the two cases will not unduly complicate or delay the
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`Samsung CBM, and therefore, we grant Apple’s Motion for Joinder to
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`consolidate this proceeding with the Samsung CBM. All filings in the
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`consolidated proceeding will be made by Samsung Electronics America,
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`Inc., and Samsung Electronics Co., Ltd. (“Samsung”) on behalf of Samsung
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`and Apple. Apple shall not file any separate papers or briefing in these
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`consolidated proceedings without authorization from the Board. In addition,
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`Apple shall not seek any additional discovery beyond that sought by
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`Samsung.
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`Samsung and Apple shall resolve any disputes between them
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`concerning the conduct of the consolidated proceedings and shall contact the
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`Board if any such matters cannot be resolved. No additional burdens shall
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`be placed on Smartflash as a result of the consolidation.
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`In consideration of the above, we institute a covered business method
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`patent review in CBM2015-00117 and grant Apple’s Motion for Joinder.
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`5
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`
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`CBM2015-00117
`Patent 8,118,221 B2
`
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that the challenge to claims 2, 11, and 32 as unpatentable
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`under 35 U.S.C. § 101, is instituted;
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`FURTHER ORDERED that this proceeding is consolidated with
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`CBM2014-00194;
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`FURTHER ORDERED that the ground on which CBM2014-00194
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`was instituted is unchanged, and no other grounds are instituted in the
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`consolidated proceeding;
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`FURTHER ORDERED that the Scheduling Order in place for
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`CBM2014-00194 shall govern the consolidated proceeding;
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`FURTHER ORDERED that, throughout the consolidated proceeding,
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`any paper, except for a motion that does not involve the other party, shall be
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`filed by Samsung as a single, consolidated filing on behalf of Samsung and
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`Apple, and Samsung will identify each such filing as a consolidated filing;
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`FURTHER ORDERED that except as otherwise agreed by counsel,
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`Samsung will conduct cross-examination and other discovery on behalf of
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`Samsung and Apple, and that Smartflash is not required to provide separate
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`discovery responses or additional deposition time as a result of the
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`consolidation;
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`FURTHER ORDERED that CBM2015-00117 is terminated under
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`37 C.F.R. § 42.72, and all further filings in the consolidated proceeding are
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`to be made in CBM2014-00194;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of CBM2014-00194 and CBM2015-00117; and
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`6
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`
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`CBM2015-00117
`Patent 8,118,221 B2
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`FURTHER ORDERED that the case caption in CBM2014-00194
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`shall be changed to reflect consolidation with this proceeding in accordance
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`with the attached example.
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`7
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`
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`CBM2015-00117
`Patent 8,118,221 B2
`
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`
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`FOR PETITIONER:
`
`J. Steven Baughman, Esq.
`Ching-Lee Fukuda, Esq.
`Megan Raymond
`ROPES & GRAY LLP
`ApplePTABService-SmartFlash@ropesgray.com
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`FOR PATENT OWNER:
`
`Michael R. Casey
`Wayne M. Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`mcasey@dbjg.com
`whelge@davidsonberquist.com
`Smartflash-CBM@dbjg.com
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`8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2014-001941
`Patent 8,118,221 B2
`____________
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`1 CBM2015-00117 has been consolidated with this proceeding.
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