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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COMPASS BANK,
`COMMERCE BANCSHARES, INC. and
`FIRST NATIONAL BANK OF OMAHA
`Petitioners,
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`v.
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`INTELLECTUAL VENTURES II LLC
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`Patent Owner.
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`IPR2014-00724
`U.S. Patent 5,745,574
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`DECLARATION OF SEAD MUFTIC
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`Intellectual Ventures Ex. 2010
`Compass v. IV
`IPR2014-00724
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`I, Sead Muftic, do declare as follows:
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`1.
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`I have personal knowledge of the matters set forth herein, and if I am
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`called upon to testify, I could testify competently thereto.
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`2.
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`I understand that an inter partes review of claims 18-31 of U.S. Patent
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`No. 5,745,574 (“the ’574 patent”) has been instituted in IPR2014-00724. I
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`understand that one of the grounds for invalidity which is being considered is as
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`follows:
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`Whether claims 18-31 are anticipated under 35 U.S.C. § 102(a)
`by Nada Kapidzic & Alan Davidson, “A Certificate Management
`System: Structure, Functions and Protocols” Proceedings, IEEE
`Symposium on Network and Distributed System Security, Feb. 16-17,
`1995, at 153-160 (“Kapidzic” or “the Kapidzic article”).
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`3.
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`I do not have any current financial interest in the ’574 patent. I am
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`not employed by the current assignee of the ’574 patent. Although I am being
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`compensated for my time in preparing this declaration, my compensation is not
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`dependent on the outcome of this IPR or upon the outcome of the pending
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`litigation between the parties of the IPR.
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`PERSONAL BACKGROUND
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`I am the sole inventor of the ’574 patent.
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`I obtained my M.Sc. and Ph.D. degrees in Computer Science in the
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`4.
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`5.
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`field of computer security from the Ohio State University in 1974 and 1976,
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`respectively.
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`1
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`6.
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`Since obtaining my Ph.D., I have held numerous positions in the field
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`of computer security in both industry and academia.
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`7.
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`At the time of filing the ’574 patent, I was a Professor of Computer
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`and Networks Security at Stockholm University, Sweden. I held this position from
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`1991 to 2002.
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`8.
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`At the time of filing the ’574 patent, I was also the CEO of COST
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`Computer Security Technologies AB (Stockholm, Sweden), which position I held
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`from 1992 to 1995.
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`9. My full background is summarized in my curriculum vitae, a copy of
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`which is provided as Exhibit 2008.
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`DERIVATION OF THE CONCEPTS CLAIMED IN THE ’574 PATENT
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`10.
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`11.
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`12.
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`I have reviewed claims 18-31 of the ’574 patent.
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`I have also reviewed the Kapidzic article.
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`I do not believe that Kapidzic discloses any of claims 18-31 of the
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`’574 patent.
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`13. However, to the extent that Kapidzic discloses any concepts of
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`portions of claims 18-31 of the ’574 patent, these concepts were derived from me,
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`and I am the sole inventor of those concepts.
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`14. The authors of the Kapidzic article, Nada Kapidzic and Alan
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`Davidson, were my graduate students, and they prepared the Kapidzic article under
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`my direction and supervision and using my direct contributions.
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`2
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`
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`15. Beginning in about 1992, I became a Ph.D. advisor for Nada
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`Kapidzic. I was Nada Kapidzic’s Ph.D. advisor from about 1992 to 1997.
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`16. Also beginning in about 1992, I became a Licentiate advisor for Alan
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`Davidson. In Sweden, the Licentiate degree is a higher degree than a Masters
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`degree but a lower degree than the Ph.D. degree. I was Alan Davidson’s Licentiate
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`advisor from about 1992 until sometime after the publication of the Kapidzic
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`article.
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`17.
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`I conceived of the concepts claimed in claims 18-31 of the ’574 patent
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`prior to the publication of Kapidzic.
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`18.
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`I had been researching in the field of computer security ever since
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`obtaining my Ph.D. in 1976.
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`19.
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`I was researching in the field of public key certification at least as
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`early as 1994. Some of this research is documented in “The Structure and
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`Functioning of the COST Privacy Enhanced Mail (PEM) System,” published as
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`part of the Proceedings of the IFIP SEC 1994 conference in Cura!ao (“the Cura!ao
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`article”), provided as Exhibit 2009.
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`20. The Cura!ao article is coauthored by myself as the first-named author,
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`along with Nada Kapidzic and Alan Davidson, the listed authors of the Kapidzic
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`article, who I added as coauthors only for the benefit of having the reference of
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`participating in my research.
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`21.
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`I developed improvements on features described in the Cura!ao
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`article. Some of those improvements are described in another paper co-authored
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`by Nada Kapidzic (the first-named author) and me, entitled “COST-PEM
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`3
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`
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`Certificates Verification: an Alternative Procedure,” (“the COST-PEM article”) a
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`copy of which is provided as Exhibit 2007.
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`22. The COST-PEM article is also referred to in the Kapidzic article,
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`which states that “[a]n alternative procedure has been suggested by Kapidzic and
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`Muftic [6], though this is not adopted in this version of the CMS [Certificate
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`Management System].” Exhibit 1004 at §§ 6, 9 (citing to Reference [6], which is
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`the COST-PEM article).
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`23. Several portions of the Kapidzic article are also referenced in Nada
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`Kapidzic’s dissertation, completed in 1997, attached as Exhibit 2011.
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`24.
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`I understand that Nada Kapidzic has stated that she and Alan
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`Davidson contributed to the concepts of the Kapidzic article. Exhibit 2011 at 1-4,
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`25-41. However, as discussed below in paragraphs 25 through 33, I disagree.
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`25.
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`I conceived of all the concepts described in the Kapidzic article,
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`including at least the concepts described in sections 2 through 8 of Kapidzic.
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`26.
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`I explained all the details of these concepts to Nada Kapidzic, who
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`wrote about them in the Kapidzic article under my direction and supervision.
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`27. Under my direction and supervision, Alan Davidson wrote a
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`demo/prototype computer program implementation of the system described in the
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`Kapidzic article and assisted Nada with writing the Kapidzic article.
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`28.
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`I allowed Nada Kapidzic and Alan Davidson to have the publication
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`credit for the Kapidzic article without including my name to help them build their
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`academic careers.
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`4
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`29.
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`I have done a similar practice in other situations in which I gave other
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`students publishing credits to help build their careers. It is well known that
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`aspiring academics need publication credits to advance their careers. In addition, a
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`student is usually only paid to attend a conference if he or she is the first listed
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`author. To help my students achieve these benefits, I have listed my students as
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`the first author on papers and also omitted my name as a co-author even though I
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`was the one who did the primary research.
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`30. For example, enclosed is a Licentiate thesis prepared by one of my
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`current Ph.D. students, Ioannis Kounelis, provided as Exhibit 2015, which lists
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`papers he has published with me and without me. Exhibit 2015, at 42. All ideas
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`that he published, with me or without me, resulted from my original ideas and
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`suggestions to him.
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`31.
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`I did not deem it important to my career to be a listed co-author on the
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`Kapidzic article since I was a tenured professor and thus did not need further
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`publication credits to maintain my professorship. In addition, I did not intend to
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`participate at the conference where the paper was presented (San Diego).
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`32.
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`I also did not deem it important to list myself as an author on the
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`Kapidzic article because I had already co-authored in this area, including the
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`Cura!ao and COST-PEM articles, and also because I had authored numerous other
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`articles in the field of computer security.
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`33. Thus, the Kapidzic article does not summarize Nada Kapidzic’s or
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`Alan Davidson’s contributions to the field, but rather my contributions.
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`5
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`34. At the time of publication of the Kapidzic article, I had not yet
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`considered filing for patent protection to protect my ideas.
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`35. The steps that eventually led me to consider filing for patent
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`protection started in June 1995, when I attended an IFIP/SEC international
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`conference in Cape Town, South Africa.
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`36. At the conference, I spoke as a keynote speaker about my public key
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`certification and other security products that I was developing.
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`37. Lance Hoffman, a professor from George Washington University, was
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`in attendance at the conference and suggested that I go to the United States to
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`obtain funding for my products.
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`38.
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`I traveled to the United States sometime between June and September
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`1995. While there, I met with Kenneth Krosin, an attorney who had hosted me
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`when I was studying for my Ph.D. at The Ohio State University.
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`39.
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`I told Kenneth of my business plans, and he suggested that I should
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`file a patent in the United States to help build my business.
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`40. Kenneth introduced me to David Stewart, who was the patent attorney
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`that helped me file the patent application that resulted in the ’574 patent.
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`41.
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`I began working with David Stewart to prepare the patent application
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`in about September 1995. We filed the patent application on December 15, 1995.
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` declare under penalty of perjury that the foregoing is true and correct.
`
` I
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`Dated: 20 January 2015
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`
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`Sead Muftic
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`By:
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`6
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