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` Paper 16
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` Entered: May 14, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`APLIX IP HOLDINGS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00230
`Patent 7,463,245 B2
`____________
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`IPR2015-00230
`Patent 7,463,245 B2
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`I.
`INTRODUCTION
`Petitioner, Sony Computer Entertainment America LLC, filed a
`Petition requesting an inter partes review of claims 1–20 of U.S. Patent No.
`7,463,245 B2 (Ex. 1001, “the ’245 patent”). Paper 2 (“Pet.”). In response,
`Patent Owner, Aplix Holdings Corporation, filed a Preliminary Response.
`Paper 15 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted “unless . . .
`the information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons set forth below, we institute an inter partes review of
`claims 1–20 of the ’245 patent.
`
`A. Related Matter
`
`The ’245 patent is involved in the following lawsuit: Aplix IP
`Holdings Corporation v. Sony Computer Entertainment, Inc. et al.,
`No. 1:14-cv-12745 (MLW) (D. Mass.). Pet. 59; Prelim. Resp. 2.
`
`B. The ’245 Patent
`
`The ’245 patent relates to hand-held electronic devices, such as cell
`phones, personal digital assistants (“PDAs”), pocket personal computers,
`smart phones, hand-held game devices, bar-code readers, remote controls
`having a keypad or one or more input elements. Ex. 1001, 1:13–19. The
`hand-held device includes, on one surface, one or more software
`configurable input elements that can be manipulated by a user’s thumb(s) or
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`stylus, and on the other surface, one or more software configurable selection
`elements that can be manipulated by a user’s finger(s). Id. at Abstract.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 12 are the only independent
`claims. Claims 2–11 depend either directly or indirectly from claim 1 and
`claims 13–20 depend either directly or indirectly from claim 12.
`Claim 1, reproduced below, is illustrative.
`1. A hand-held device comprising:
`a processor configured to process a selected application
`having two or more functions;
`a first surface including at least a first input element
`mapped to at least a first function of the selected application;
`and
`
`a second surface including at least a second input element
`having a sensor pad comprising a selectively configurable
`sensing surface that provides more than one delineated active
`area based on the selected application, wherein at least a first
`delineated active area is mapped to a second function of the
`selected application and a second delineated active area is
`mapped to a third function of the selected application, further
`wherein the second surface is substantially in opposition to the
`first surface.
`Ex. 1001, 15:28–43.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references:
`Liebenow
` US 2002/0118175 A1 Aug. 29, 2002
`Andrews
` WO 2000/59594 Oct. 12, 2000
`
`(Ex. 1003)
`(Ex. 1004)
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`Patent 7,463,245 B2
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`Hedberg
`Martin
`Griffin
`Pallakoff
`Rekimoto
`
`Apr. 15, 1999
` WO 1999/18495
`Feb. 26, 2008
` US 7,336,260 B2
` US 2003/0020692 A1 Jan. 30, 2003
` US 2002/0163504 A1 Nov. 7, 2002
` US 7,088,342 B2
`Aug. 8, 2006
`
`(Ex. 1005)
`(Ex. 1006)
`(Ex. 1007)
`(Ex. 1008)
`(Ex. 1009)
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`
`Basis
`
`References
`
`1, 7, 10–12, 17, and 20
`
`§ 102(b) Liebenow
`
`1–5, 7, 10–15, 17 and
`20
`
`§ 103(a) Liebenow and Andrews
`
`1, 7–12, and 17–20
`
`§ 103(a) Liebenow and Hedberg
`
`1, 6, 7, 10, and 11
`
`§ 103(a) Liebenow and Martin
`
`1, 10, 12, 16 and 20
`
`§ 103(a) Griffin and Liebenow
`
`1–5, 10, 12–16, and 20
`
`§ 103(a) Griffin, Liebenow, and Andrews
`
`1, 10, 12, 16, and 20
`
`§ 103(a)
`
`Pallakoff and Rekimoto
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`1–5, 10, 12–16, and 20
`
`§ 103(a)
`
`Pallakoff, Rekimoto, and Andrews
`
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`II. ANALYSIS
`
`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir. Feb. 4, 2015)
`(“Congress implicitly adopted the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”). Under the broadest reasonable interpretation standard,
`claim terms are given their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes constructions for the following claim terms:
`“delineated active area,” (claims 1 and 12) and “the input element and the
`touch sensing input element are communicatively coupled to a host device,”
`(claim 17). Pet. 7–9. Specifically, Petitioner proposes that delineated active
`areas “must at least include areas that are differentiated from each other
`either physically or tactilely to assist the user in locating the position on the
`sensor pad of the active areas.” Id. at 8. Patent Owner argues that Petitioner
`has submitted an unduly narrow construction for “delineated active area.”
`Prelim. Resp. 20–25. For purposes of this decision, we need not construe
`“delineated active area.” Even assuming Petitioner has an unduly narrow
`construction for “delineated active area,” we are persuaded that it has
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`accounted for the limitation in the prior art under such construction.
`Petitioner argues that “the input element and the touch sensing input
`element are communicatively coupled to a host device” (claim 17) occurs
`when the handheld device is connected to a host device over a network. At
`this juncture, Patent Owner does not challenge Petitioner’s proposed
`construction of this term. We have reviewed Petitioner’s proposed
`construction and portions of the Specification of the ’245 patent that
`Petitioner relies on for the proposed construction. Based on the record
`before us at this juncture, we determine that Petitioner’s proposed
`construction is consistent with the broadest reasonable construction, and,
`therefore, adopt that construction.
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
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`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`established when the prior art itself would appear to have suggested the
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`531 F.2d 1048, 1051 (CCPA 1976).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`C. Obviousness of Claims over Liebenow and Andrews
`
`Petitioner asserts that claims 1–5, 7, 10–15, 17, and 20 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Liebenow and Andrews. Pet. 24. To support its contentions, Petitioner
`provides detailed explanations as to how the prior art meets each claim
`limitation. Id. at 11–27. Petitioner also relies upon a Declaration of
`Dr. Gregory F. Welch, who has been retained as an expert witness by
`Petitioner for the instant proceeding. Ex. 1010.
`Liebenow describes an electronic hand-held information appliance
`having a display disposed on a first surface and an input device disposed on
`a second surface opposed to the first surface for inputting information. Ex.
`1003, Abstract. Figure 1 of Liebenow is reproduced below.
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`As shown in Figure 1 of Liebenow, digital information appliance 100
`is sized and shaped to be held by a user in both hands. Housing 102 includes
`front surface 104 and back surface. Id. ¶ 25. One or more function keys
`such as 150, 152, and 154 may be mounted on front surface 104. Display
`116 may be a touch-screen for touch or pen input of information and data.
`Id. ¶¶ 26, 33. Figure 5 of Liebenow is reproduced below.
`
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`As shown in Figure 5, back surface may be comprised of one or more
`touch sensitive panels 140. Id. ¶¶ 13, 36. Areas of panel 140 may be
`defined as keys of a keyboard (emulated as an electromechanical keyboard
`seen in Figure 2) so that a user touching the panel within such an area would
`accomplish actuation of a key. Id. In particular, panel 140 may be divided
`into left and right key ranges 142 and 144, such that fingers of a user’s left
`and right hands may be positioned over the touch sensitive panel to be in
`position for typing. Various key configurations may be defined as desired
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`by the user or as required by the applications executed by the digital
`information appliance. Id.
`Liebenow further describes, in connection with the hand-held device,
`a processing system 502 that includes a central processing unit such as a
`microprocessor or microcontroller for executing programs, performing data
`manipulations, and controlling tasks of the hand-held device. Id. ¶¶ 21, 56;
`Fig. 13.
`
`Andrews describes a hand-held game system that maps input elements
`to specific game application functions. Ex. 1004, 6:10–14, 9:11–15.
`The present record supports the contention that Liebenow describes a
`hand-held device with a processor for processing a selected application
`having two or more functions. Pet. 11–13; Ex. 1003 ¶¶ 25, 33, 56, and 69.
`The present record also supports the contention that Liebenow describes the
`hand-held device to have a first and second surface as claimed in claims 1
`and 12, for example. Pet. 13–19; Ex. 1003 (multiple paragraphs cited in
`petition).
`Petitioner relies on Andrews for its description of a hand-held game
`system that maps input elements to specific game application functions
`depending on the genre of the game. Pet. 24, Ex. 1004 at 6:10–14, 9:11–15.
`Petitioner concludes that one of ordinary skill in the art would have
`recognized that the hand-held device of Liebenow could have also included
`game applications, like Andrews’ game applications having well-known
`game functions such as weapon fire control, directional control, speed
`control, size and position control. Pet. 25; Ex. 1010 ¶¶ 38–41.
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`Petitioner also accounts for all of the challenged dependent claims.
`Pet. 19–24 and 26–27. Patent Owner argues that, with respect to this
`ground, the Petition does not map any part of Andrews to claims 1, 7, 10–12,
`17, and 20, but rather cites to Liebenow alone for challenging those claims.
`Prelim. Resp. 5. We are not persuaded by this argument.
`We have reviewed the proposed ground of obviousness over
`Liebenow and Andrews against claims 1–5, 7, 10–15, 17, and 20, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`1–5, 7, 10–15, 17, and 20 on this ground. Lastly, we have considered Patent
`Owner’s argument that the Petition improperly incorporates arguments and
`evidence from the Declaration of Dr. Gregory F. Welch into the Petition. Id.
`at 18–20. We agree that, in general, arguments must not be incorporated by
`reference from one document into another document (37 C.F.R.
`§ 42.6(a)(3)). Here, however, Patent Owner’s arguments with respect to
`incorporation by reference are conclusory. Patent Owner’s sole example
`with respect to the impropriety of incorporation by reference is with respect
`to the combination of Griffin, Liebenow and Andrews. We do not, however,
`institute review based on the combination of Griffin, Liebenow, and
`Andrews, and, therefore, we are not persuaded by this one example. We
`have reviewed those portions of Dr. Welch’s Declaration, to which we are
`directed, with respect to the grounds upon which we institute, and, have
`determined that there is nothing unusual about his declaration or the way in
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`which Petitioner relies on the declaration insofar as improper incorporation
`is concerned.
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`D. Obviousness of Claims over Liebenow and Hedberg
`
`Petitioner contends that dependent claims 8, 9, and 17–19 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Liebenow and Hedberg. Pet. 28. To support its contentions, Petitioner
`provides detailed explanations as to how the prior art meets each claim
`limitation. Id. at 22–23, 28–30. Petitioner also relies upon the Declaration
`of Dr. Gregory F. Welch for support. Ex. 1010.
`Hedberg describes a hand-held display device that includes control
`buttons 3 on the display connected to control circuits and a gyroscope 6
`incorporated in the display device and connected to the control circuits. Ex.
`1005, Abstract. The display device is responsive to movements in the space
`for displaying an image in different magnification and/or in different parts.
`Id. Hedberg describes that an equilibrium of force accelerometer may be
`used in place of the gyroscope. Id. at 3:26–32.
`Each of claims 8 and 9 depends directly from claim 1. Claim 18
`depends directly from independent claim 12 and claim 19 depends directly
`from dependent claim 17, which itself depends directly from claim 12.
`Claim 8 recites that the hand-held device includes an accelerometer. Claim
`9 recites that the hand-held device includes a gyroscope. Each of claims 18
`and 19 recites that the hand-held device includes an accelerometer or
`gyroscope.
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`Petitioner relies on Hedberg for its description of a gyroscope or
`accelerometer included in a hand-held device. Pet. 28–30. Petitioner
`concludes that one of ordinary skill in the art would have recognized that the
`addition of a gyroscope and/or an accelerometer would have increased the
`ability to control the Liebenow hand-held device. Pet. 28; Ex. 1010 ¶¶ 42–
`43. Patent Owner does not make arguments, at this time, regarding the
`merits of this ground of unpatentability against challenged claims 8, 9, and
`17–19.
`We have reviewed the proposed ground of obviousness over
`Liebenow and Hedberg against claims 8, 9, and 17–19, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`8, 9, and 17–19 on this ground.
`
`E. Obviousness of Claim 6 over Liebenow and Martin
`
`Petitioner contends that dependent claim 6 is unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Liebenow and
`Martin. Pet. 30–32. To support its contentions, Petitioner provides detailed
`explanations as to how the prior art meets each claim limitation of claim 6.
`Id. Petitioner also relies upon the Declaration of Dr. Gregory F. Welch for
`support. Ex. 1010.
`Martin describes a hand-held device with a display, a plurality of
`buttons, and a 5-way directional pad for navigation within the various
`interfaces displayed on the hand-held device. Ex. 1006, 18:43–50.
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`Claim 6 depends directly from claim 1 and recites that the second
`surface further includes a directional pad. Petitioner relies on Martin for a
`description of a hand-held display with a directional pad. Pet. 31–32.
`Petitioner concludes it would have been obvious to a person having ordinary
`skill in the art to replace Leibenow’s cursor control device on the back
`surface of Liebenow’s hand-held device with a directional pad as described
`by Martin in order to manipulate the cursor up, down, left, and right. Id. at
`31; Ex. 1010 ¶¶ 44–47. Patent Owner does not make arguments, at this
`time, regarding the merits of this ground of unpatentability against
`challenged claim 6.
`We have reviewed the proposed ground of obviousness over
`Liebenow and Martin against claim 6, and we are persuaded, at this juncture
`of the proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claim 6 on this ground.
`
`F. Obviousness of Claim 16 over Griffin and Liebenow
`
`Petitioner contends that dependent claim 16 is unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Griffin and
`Liebenow. Pet. 32. To support its contentions, Petitioner provides detailed
`explanations as to how the prior art meets each claim limitation of claim 16.
`Id. Petitioner also relies upon the Declaration of Dr. Gregory F. Welch for
`support. Ex. 1010.
`Griffin describes a hand-held electronic device with a display, a
`plurality of buttons, and a thumbwheel on the front surface and function
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`keys on the back surface. Ex. 1007 ¶ 30.
`Claim 16 depends directly from claim 1 and recites that the input
`element comprises a rotary sensor or a directional pad. Petitioner relies on
`Griffin for at least its description of a hand-held electronic device with a
`thumbwheel on the front surface. Pet. 32, 40–41. Petitioner concludes it
`would have been obvious to a person having ordinary skill in the art to
`include the touch sensor keys of Leibenow on the device of Griffin, having
`the rotary thumbwheel on front, as a simple substitution of one known
`element for another known element. Id. at 34; Ex. 1010 ¶¶ 48–51. Patent
`Owner does not make arguments, at this time, regarding the merits of this
`ground of unpatentability against challenged claim 16.
`We have reviewed the proposed ground of obviousness over the
`combination of Griffin and Liebenow against claim 16, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claim
`16 on this ground.
`
`G. Remaining Grounds Challenging the Claims of the ’245 Patent
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
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`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R. §
`42.108(b).
`We have considered Patent Owner’s arguments that the Petition
`improperly presents vertically and horizontally redundant grounds, and as
`such, the Board only should consider one challenge. Prelim. Resp. 9–18.
`Based on the record before us, Patent Owner’s arguments are moot, as we
`exercise our discretion and decline to institute review based on any of the
`other asserted grounds advanced by Petitioner that are not identified below
`as being part of the trial. See, e.g., Pet. 6–7; 37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in challenging claims 1–20 of the ’245 patent.
`At this juncture, we have not made a final determination with respect to the
`patentability of the challenged claims, nor with respect to claim
`construction.
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`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims
`1–5, 7, 10–15, 17 and
`20
`
`Basis
`
`References
`
`§ 103(a)
`
`Liebenow and Andrews
`
`8, 9, and 17–19
`
`§ 103(a)
`
`Liebenow and Hedberg
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`6
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`16
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`§ 103(a)
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`Liebenow and Martin
`
`§ 103(a)
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`Griffin and Liebenow
`
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`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
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`PETITIONER:
`
`Eric A. Buresh
`Abran J. Kean
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`Abran.kean@eriseip.com
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`PATENT OWNER:
`
`Michael Mauriel
`Sherman Kahn
`MAURIEL KAPOUYTIAN WOODS LLP
`mmauriel@mkwllp.com
`skahn@mkwllp.com
`
`Robert Gilbertson
`Sybil Dunlop
`X. Kevin Zhao
`GRENNE ESPEL PLLP
`BGilbertson@GreeneEspel.com
`sdunlop@greeneespel.com
`kzhao@greeneespel.com
`
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