`571-272-7822
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`Paper 8
`Date: May 6, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`
`IPR2022-00360
`Patent 8,553,079 B2
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`
`
`
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`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
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`IPR2022-00360
`Patent 8,553,079 B2
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`I.
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`INTRODUCTION
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`A. Background and Summary
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`Petitioner, Google LLC, requests that we institute an inter partes
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`review to challenge the patentability of claims 1–30 (the “challenged
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`claims”) of U.S. Patent 8,553,079 B2 (Ex. 1001, “the ’079 patent”). Paper 1
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`(“Petition” or “Pet.”). Concurrently with its Petition, Petitioner filed a
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`Motion for Joinder with Apple Inc. v. Gesture Technology Partners,1 LLC,
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`IPR2021-00922 (“the Apple IPR”). Paper 3 (“Mot.”). Petitioner represents
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`that the petitioner in the Apple IPR— Apple Inc.—does not oppose the
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`Motion for Joinder. Mot. 2. Patent Owner, Gesture Technology Partners,
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`LLC, did not file a response or an opposition to the Motion.
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`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
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`demonstration of a reasonable likelihood that Petitioner would prevail with
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`respect to at least one challenged claim, we institute an inter partes review.2
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`Further, for the reasons set forth below, we grant the Motion for Joinder.
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`B. Related Matters
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`The parties identify these related matters: Gesture Technology
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`Partners, LLC v. Huawei Device Co., Ltd., No. 2:21-cv-00040 (E.D. Tex.);
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`Gesture Technology Partners, LLC v. Samsung Electronics Co., No. 2:21-
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`cv-00041 (E.D. Tex.); Gesture Technology Partners, LLC v. Apple Inc., No.
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`6:21-cv-00121 (W.D. Tex.); Gesture Technology Partners, LLC v. Lenovo
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`Group Ltd., No. 6:21-cv-00122 (W.D. Tex.); and Gesture Technology
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`1 Since the filing of Google’s Motion, IPR2022-00090 (LG Electronics, Inc.
`and LG Electronics U.S.A., Inc.) has been joined with this proceeding. See
`IPR2021-00922, Paper 14.
`2 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
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`2
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`
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`IPR2022-00360
`Patent 8,553,079 B2
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`Partners, LLC v. LG Electronics, Inc., No. 6:21-cv-00123 (W.D. Tex.)
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`(transferred to D. NJ as No. 2:21-cv-19234). Pet. 77–78; Paper 4, 1. Patent
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`Owner identifies these related Board proceedings: IPR2021-00917;
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`IPR2021-00920; IPR2021-00921; IPR2021-00922; IPR2021-00923;
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`IPR2021-01255; IPR2022-00090; IPR2022-00091; IPR2022-00092;
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`IPR2022-00093; IPR2022-00359; IPR2022-00361; and IPR2022-00362.
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`Paper 4, 1–3. Patent Owner identifies these related Ex Parte
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`Reexaminations: No. 90/014,900; No. 90/014,901; No. 90/014,902; and No.
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`90/014,903. Id. at 3.
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`In the Apple IPR, we instituted an inter partes review of claims 1–30
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`of the ’079 patent as unpatentable on the following grounds:
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`Claim(s) Challenged
`1, 2, 4–14, 17, 19, 21, 22,
`24–28, 30
`3, 15, 23
`16, 29
`18
`20
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`35 U.S.C. §
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`103(a)3
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`103(a)
`103(a)
`103(a)
`103(a)
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`Reference(s)/Basis
`Numazaki,4 Knowledge of a
`POSA5
`Numazaki, Numazaki ’8636
`Numazaki, DeLuca7
`Numazaki, DeLeeuw8
`Numazaki, Maruno9
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`See Apple IPR, Paper 10 (PTAB Nov. 29, 2021) (“Apple Dec.”).
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`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version.
`4 U.S. Patent 6,144,366, issued Nov. 7, 2000 (“Numazaki”) (Ex. 1004).
`5 A person of ordinary skill in the art (“POSA”).
`6 U.S. Patent 5,900,863, issued May 4, 1999 (“Numazaki ’863”) (Ex. 1005).
`7 U.S. Patent 6,064,354, issued May 16, 2000 (“DeLuca”) (Ex. 1006).
`8 U.S. Patent 6,088,018, issued July 11, 2000 (“DeLeeuw”) (Ex. 1007).
`9 U.S. Patent 6,191,773 B1, issued Feb. 20, 2001 (“Maruno”) (Ex. 1008).
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`3
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`IPR2022-00360
`Patent 8,553,079 B2
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`II. INSTITUTION OF INTER PARTES REVIEW
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`The Petition in this proceeding asserts the same grounds of
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`unpatentability as the ones on which we instituted review in the Apple IPR.
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`Compare Pet. 4, with Apple Dec. 5. Indeed, Petitioner contends that the
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`“[P]etition and the Apple IPR are substantively identical; they contain the
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`same grounds (based on the same prior-art combinations and supporting
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`evidence) against the same claims.” Mot. 1; see also id. at 3–5. This includes
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`relying on the same expert declaration as the Apple IPR. Id. at 5.
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`Patent Owner did not file a Preliminary Response.
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`For the same reasons set forth in our institution decision in the Apple
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`IPR, we determine that Petitioner has shown a reasonable likelihood that at
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`least one claim is unpatentable. We therefore institute trial as to all
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`challenged claims on all grounds stated in the Petition.
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`III. MOTION FOR JOINDER
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`The statutory provision governing joinder in inter partes review
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`proceedings (35 U.S.C. § 315(c)) reads:
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`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
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`As the moving party, Petitioner bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: set forth the reasons joinder is appropriate; identify any new grounds
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`of unpatentability asserted in the petition; and explain what impact (if any)
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`joinder would have on the trial schedule for the existing review. See Kyocera
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`4
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`IPR2022-00360
`Patent 8,553,079 B2
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24,
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`2013).
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`Petitioner timely filed the Motion no later than one month after
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`institution of the Apple IPR. See 37 C.F.R. § 42.122(b). As noted, the
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`Petition in this case asserts the same unpatentability grounds on which we
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`instituted review in the Apple IPR. See Mot. 1. Petitioner also relies on the
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`same prior art analysis and expert testimony submitted by the Apple
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`petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition
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`filed by the Apple petitioner. See id. Thus, this inter partes review does not
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`present any ground or matter not already at issue in the Apple IPR. Id.
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`If joinder is granted, Petitioner agrees to assume an “‘understudy’
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`role” and agrees that this role “shall apply so long as the current petition[er]
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`in IPR2021-00922 remains [an] active” party.10 Id. at 6. Petitioner further
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`represents that it will not advance any arguments separate from those
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`advanced by Apple in the consolidated filings. Id. Because Petitioner
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`expects to participate only in a limited capacity, Petitioner submits that
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`joinder will not impact the trial schedule for the Apple IPR. Id. at 6.
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`Patent Owner did not file an Opposition to the Motion for Joinder.
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`10 As noted previously, Apple Inc. was the initial Petitioner in IPR2021-
`00922, however, since the filing of Google’s Motion, IPR2022-00091 (LG
`Electronics, Inc. and LG Electronics U.S.A., Inc.) has been joined with this
`proceeding. See IPR2021-00920, Paper 16. LG Electronics, Inc. and LG
`Electronics U.S.A., Inc. have also agreed to take an understudy role to Apple
`Inc. See id. at 10. Thus, Google LLC will assume an “understudy role”
`unless and until Apple Inc., LG Electronics, Inc., and LG Electronics
`U.S.A., Inc. are no longer parties to the inter partes review.
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`5
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`IPR2022-00360
`Patent 8,553,079 B2
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`Based on the above, we determine that joinder with the Apple IPR is
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`appropriate under the circumstances. Accordingly, we grant Petitioner’s
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`Motion for Joinder.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that, inter partes review of claims 1–30 of U.S. Patent
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`8,553,079 B2 is instituted on all grounds in the Petition;
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`FURTHER ORDERED that the Motion for Joinder with IPR2021-
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`00922 is granted;
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`FURTHER ORDERED that IPR2022-00360 is joined with IPR2021-
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`00922, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein Petitioner will
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`maintain a secondary role in the proceeding, unless and until the current
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`IPR2021-00922 petitioners cease to participate as a petitioner in the inter
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`partes review;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2021-00922 (Paper 11) remains unchanged, and shall govern the joined
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`proceeding;
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`FURTHER ORDERED that all future filings in the joined proceeding
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`are to be made only in IPR2021-00922;
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`FURTHER ORDERED that the case caption in IPR2021-00922 shall
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`be changed to reflect joinder of Google LLC as a petitioner in accordance
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`with the below example; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2021-00922.
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`6
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`IPR2022-00360
`Patent 8,553,079 B2
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`Example Caption
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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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`APPLE, INC., LG ELECTRONICS, INC.,
`LG ELECTRONICS U.S.A., INC., and GOOGLE LLC
`Petitioner,
`
`v.
`
`GESTURE TECHNOLOGY PARTNERS, LLC,
`Patent Owner.
`_______________
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`IPR2021-0092211
`Patent 8,553,079 B2
`_______________
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`11 IPR2022-00090 (LG Electronics, Inc. and LG Electronics U.S.A., Inc.)
`and IPR2022-00360 (Google LLC) have been joined with this proceeding.
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`7
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`IPR2022-00360
`Patent 8,553,079 B2
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`For PETITIONER:
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`Erika Arner
`Daniel Cooley
`Mingji Jin
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`erika.arner@finnegan.com
`daniel.cooley@finnegan.com
`mingji.jin@finnegan.com
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`For PATENT OWNER:
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`Todd Landis
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`johnw@wsltrial.com
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`8
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