`571-272-7822
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`Entered: October 29, 2014
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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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`GLOBAL FOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`Cases IPR2014-01083, IPR2014-01086, IPR2014-010871
`Patent 7,147,759 B2
`____________
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`1 IPR2014-00988 has been joined with IPR2014-01083; IPR2014-00981 has been
`joined with IPR2014-01086; and IPR2014-00984 has been joined with
`IPR2014-01087.
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`
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`We instituted an inter partes review in each of the following proceedings,
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`challenging U.S. Patent No. 7,147,759 B2: IPR2014-01083, IPR2014-01086, and
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`IPR2014-01087 (“the GlobalFoundries reviews”), as well as IPR2014-00781 and
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`IPR2014-00782 (“the TSMC reviews”). Paper 9.2 For efficiency, we entered a
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`single Scheduling Order that sets forth the due dates for the parties to take action in
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`all five reviews, ensuring that the reviews will be completed within one year of
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`institution. Paper 10. After institution, we also granted the revised Motions for
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`Joinder filed by Fujitsu Semiconductor Limited and Fujitsu Semiconductor
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`America, Inc. (collectively, “Fujitsu”), Advanced Micro Devices, Inc., Renesas
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`Electronics Corporation, Renesas Electronics America, Inc.,
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`GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden Module One
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`LLC & Co. KG, GLOBALFOUNDRIES Dresden Module Two LLC & Co. KG,
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`Toshiba America Electronic Components, Inc., Toshiba America Inc., Toshiba
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`America Information Systems, Inc., and Toshiba Corporation (collectively,
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`“AMD”), and The Gillette Company (“Gillette”). Papers 16, 17, 18. A list of
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`these Joinder Cases is provided in the Appendix of the instant Order.
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`An initial conference call was held on October 27, 2014, between respective
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`counsel for the parties for all five above-identified reviews and Judges Turner,
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`Stephens, Chang, Mitchell, and Meyer. Counsel for each of the Joinder Cases also
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`attended the conference call. The purpose of the call was to discuss any proposed
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`2 For the purpose of clarity and expediency, we treat IPR2014-01083 as
`representative, and all citations are to IPR2014-01083 unless otherwise noted.
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`2
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`
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
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`changes to the Scheduling Order (Paper 10), as well as any motions that the parties
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`intend to file.
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`Trial Schedule
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`During the conference call, we explained that the trial schedule for all five
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`above-identified reviews had been synchronized. The parties indicated that they
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`do not, at this time, foresee any problems with meeting their due dates. They also
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`expressed that they may stipulate to different dates for certain due dates. If the
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`parties decide to stipulate to different due dates, the parties should file a notice of
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`stipulation that includes a copy of the due date appendix of the Scheduling Order,
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`showing the new due dates next to the original due dates. Paper 10, 2, 5.
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`We further noted that the oral hearings for all five reviews are scheduled on
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`the same day. We explained that, although Petitioners for the GlobalFoundries
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`reviews and the TSMC reviews are different, the oral hearings for all five reviews
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`could be combined and the transcript from the combined oral hearing could be
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`useable across all five reviews, given the similarity in claimed subject matter and
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`overlapping asserted prior art. The parties may request a single-combined oral
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`hearing in their requests for oral hearing before or on Due Date 4. Id. at 5.
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`The Procedure for Consolidated Filings and Discovery
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`As we explained during the conference call, the Decisions on the revised
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`Motions for Joinder (“the Joinder Decisions”) did not change the grounds of
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`unpatentability on which a trial was instituted or the Scheduling Order, in each of
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`the GlobalFoundries reviews and the TSMC reviews. Paper 12. And the Joinder
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`Decisions set forth a procedure for consolidated filings and discovery. Id. at 5–7.
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`3
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
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`Upon inquiry from the Board, the parties stated that they are in agreement with the
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`procedure.
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`The parties indicated that they have been in discussions regarding the
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`discovery schedule. Given the similarity in claimed subject matter and
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`overlapping asserted prior art and that Petitioners submitted declarations from the
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`same expert witness in each review, the parties further expressed the desire to
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`coordinate and combine discovery between all five reviews. For example, the
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`cross-examination of Petitioners’ expert witness may be combined and useable in
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`all five reviews, for efficiency and consistency.
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`Incorporation by Reference is Prohibited
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`During the conference call, we directed the parties’ attention to 37 C.F.R.
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`§ 42.6(a)(3), which provides “[a]rguments must not be incorporated by reference
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`from one document into another document.” We observed that, in a family of
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`cases challenging the same patent, as here, briefing papers may cross-reference
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`between different inter partes reviews, but incorporation by reference is still
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`prohibited. For example, the Patent Owner Response or Reply to a Patent Owner
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`Response filed in one proceeding may not incorporate by reference arguments
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`submitted in another proceeding. Each briefing paper must stand on its own, with
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`appropriate supporting evidence.
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`Objection and Motion to Exclude Evidence
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`As we explained during the conference call, certain due dates are set forth in
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`the Scheduling Order (Paper 10, 6), but the times for serving objections to
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`evidence are set forth in 37 C.F.R. § 42.64(b). For instance, the parties are not
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`4
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`
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
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`required to seek prior authorization for filing a motion to exclude evidence under
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`37 C.F.R. § 42.64(c), a motion for observation regarding cross-examination of
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`reply witness, and a response to observation because the Scheduling Order sets
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`forth the due date for these motions and responses. See Paper 10, 6. However, any
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`objection to evidence submitted during a preliminary proceeding must be served
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`within ten business days of the institution of the trial. After institution, any
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`objection must be served within five business days of service of evidence to which
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`the objection is directed. The parties further should note that a motion to exclude
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`evidence must identify and explain the objections.
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`Motion for pro hac vice admission under 37 C.F.R. § 42.10(c).
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`Petitioners filed a notice of proposed motions indicating that they will file a
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`motion for pro hac vice admission of Mr. Brett C. Rismiller. Paper 13. We
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`previously authorized the parties to file motions for pro hac vice admission.
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`Paper 3, 2. Opposing party is authorized to file an opposition no later than one
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`week after the filing of the underlying motion for pro hac vice admission.
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`See Paper 4, 2; Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639,
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`slip op. at 3 (PTAB Oct. 15, 2013) (Paper 7). A motion for pro hac vice admission
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`generally will be decided in due course, after the expiration of the one-week time
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`period or the filing of an opposition, whichever is earlier. For any future motion
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`for pro hac vice admission, the parties may agree in advance and notify the Board
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`that the motion is unopposed, so that the Board may expedite its decision on such a
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`motion.
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`5
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
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`It is
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`ORDER
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`ORDERED that the parties are authorized to request a single-combined oral
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`hearing for all five above-identified inter partes reviews; and
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`FURTHER ORDERED that the parties are authorized to consolidate
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`discovery for all five above-identified inter partes reviews, so that the
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`cross-examination and redirect examination may be usable in all five reviews.
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`6
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
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`APPENDIX
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`
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`Inter partes reviews for
`U.S. Patent No. 7,147,759 B2
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`Joinder Cases
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`IPR2014-00781 (TSMC)
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`IPR2014-00782 (TSMC)
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`IPR2014-00845 (Fujitsu),
`IPR2014-00985 (Gillette),
`IPR2014-01047 (AMD)
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`IPR2014-00850 (Fujitsu),
`IPR2014-00986 (Gillette),
`IPR2014-01059 (AMD)
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`IPR2014-01083 (Global Foundries)
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`IPR2014-00988 (Gillette)
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`IPR2014-01086 (Global Foundries)
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`IPR2014-00981 (Gillette)
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`IPR2014-01087 (Global Foundries)
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`IPR2014-00984 (Gillette)
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`7
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`
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
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`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
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`For PETITIONERS:
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`GlobalFoundries:
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`David Tennant
`dtennant@whitecase.com
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`Dohm Chankong
`dohm.chankong@whitecase.com
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`TSMC and Fujitsu:
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`David L. McCombs
`david.mccombs.ipr@haynesboone.com
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`David M O’Dell
`david.odell.ipr@haynesboone.com
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`Richard C. Kim
`rckim@duanemorris.com
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`Gillette:
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`Michael A. Diener
`michael.diener@wilmerhale.com
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`Larissa B. Park
`larissa.park@wilmerhale.com
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`8
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`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
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`AMD:
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`David M. Tennant
`dtennant@whitecase.com
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`Brian M. Berliner
`bberliner@omm.com
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`Byan K. Yagura
`ryagura@omm.com
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`Xin-Yi Zhou
`vzhou@omm.com
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`9
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