`571-272-7822
`
`Paper 10
`Date: January 10, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON WEB SERVICES, INC. and
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`ZENTIAN LIMITED,
`Patent Owner.
`
`IPR2023-01197
`Patent 10,971,140 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, JEFFREY S. SMITH, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
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`
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`IPR2023-01197
`Patent 10,971,140 B2
`
`INTRODUCTION
`I.
`Petitioners Amazon Web Services, Inc. and Amazon.com Services
`LLC (“Amazon”) filed a Petition (Paper 1, “Pet.”) under 35 U.S.C. §§ 311–
`319 requesting inter partes review of claims 1–8 of U.S. Patent No.
`10,971,140 B2 (Ex. 1001, “the ’140 patent”). Amazon also submits a
`Motion for Joinder (Paper 3, “Mot.”) to Apple Inc. v. Zentian Ltd., IPR2023-
`00036 (“the Apple IPR”), to which the Board instituted inter partes review.
`IPR2023-00036, Paper 10 (PTAB June 12, 2023).
`Patent Owner Zentian Limited (“Zentian”) filed a Preliminary
`Response and Contingent Joinder Opposition (Paper 7, “Prelim. Resp.”). To
`this, Amazon submitted a preliminary Reply (Paper 8, “Prelim. Reply”), and
`Zentian submitted a preliminary Sur-reply (Paper 9, “Prelim. Sur-reply”).
`Each party alleges that it is the sole real party in interest, and this is
`not contested on the preliminary record. See Pet. 66; Paper 5, 1.
`Under the authority delegated to us under 37 C.F.R. § 42.4(a) by the
`Director of the USPTO, we may institute an inter partes review when “the
`information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a);
`see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute
`an inter partes review of all the challenged claims of the ’140 patent for the
`reasons explained below. This is a preliminary decision, and we will base
`our final written decision on the full trial record. We also grant Amazon’s
`Motion for Joinder.
`
`A. Related Matters
`The parties indicate that the following matters relate to the ’140
`patent: Zentian Ltd v. Apple Inc., 6:22-cv-00122, (W.D.Tex. Feb. 2, 2022);
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`IPR2023-01197
`Patent 10,971,140 B2
`Zentian Ltd v. Amazon.com, Inc., 6:22-cv-00123, (W.D.Tex. Feb. 2, 2022);
`Apple Inc. v. Zentian Ltd., Inter Partes Review No. IPR2023-00033; Apple
`Inc. v. Zentian Ltd., Inter Partes Review No. IPR2023-00034; Apple Inc. v.
`Zentian Ltd., Inter Partes Review No. IPR2023-00035; and Apple Inc. v.
`Zentian Ltd., Inter Partes Review No. IPR2023-00036. Paper 5, 1–2; Pet.
`66.
`
`B. The ’140 Patent
`The ’140 patent is related to a speech recognition circuit which uses
`parallel processors for processing the input speech data in parallel.
`Ex. 1001, 1:18–20.
`The patent describes that in speech recognition, there are generally
`two processes: “front end processing to generate processed speech
`parameters such as feature vectors, followed by a search process which
`attempts to find the most likely set of words spoken from a given vocabulary
`(lexicon).” Id. at 1:21–26. According to the ’140 patent, “for large
`vocabulary, speaker independent speech recognition, it is the search process
`that presents the biggest challenge.” Id. at 1:28–30.
`The ’140 describes that in order to speed up the search function,
`parallel processing techniques have been suggested. Id. at 1:45–47. The
`patent further describes that “one algorithm for performing the search is the
`Viterbi algorithm,” which “is a parallel or breadth first search through a
`transition network of states of Hidden Markov Models.” Id. at 1:36–39.
`This search algorithm is computationally intensive, but in one paper cited by
`the ’140 patent, “a multi-threaded implementation of a fast beam search
`algorithm is disclosed.” Id. at 1:47–52. This “multi-threading
`implementation requires a significant amount of communication and
`synchronization among threads,” but in another paper, “the parallel
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`Patent 10,971,140 B2
`processing of input speech parameters is disclosed in which a lexical
`network is split statically among processors.” Id. at 1:52–58.
`To implement parallel processing of the search function, the ’140
`describes a special circuit, in which a “plurality of lexical tree processors are
`connected in parallel to the input port and perform parallel lexical tree
`processing for word recognition by accessing the lexical data in the lexical
`memory arrangement.” Id. at 2:4–8. In addition, a “controller controls the
`lexical tree processors to process lexical trees identified in the results
`memory arrangement by performing parallel processing of a plurality of
`lexical tree data structures.” Id. at 2:12–15.
`Figure 2 is a diagram of the circuit of the ’140 patent, and is
`reproduced below.
`
`
`Figure 2, showing a plurality k of lexical tree processors 21, arranged
`in a lexical tree processor cluster 22, with acoustic model memory 23.
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`IPR2023-01197
`Patent 10,971,140 B2
`
`C. Illustrative Claim
`Challenged claim 1 of the ’140 patent recites:
`1. [Pre] A speech recognition circuit comprising:
`[a] one or more clusters of processors, each of the one or more
`clusters of processors comprising:
`a plurality of processors; [b] and
`an acoustic model memory storing acoustic model data, [c]
`wherein each of the plurality of processors is
`configured to compute a probability using the
`acoustic model data in the acoustic model memory,
`[d] wherein:
`the speech recognition circuit is configured to
`generate an initial score for an audio sample;
`[e] and
`the initial score is used to determine whether to
`continue processing to determine a final
`score via processing a larger amount of
`model data than that was processed to
`generate the initial score.
`Ex. 1001, 6:13–26; Pet. 66 (showing Amazon’s bracketed claim
`annotations).
`
`D. Evidence
`Amazon relies on the following prior art:
`US Patent No. 6,374,219 B1, issued April 16, 2002 (Ex. 1004,
`“Jiang”);
`US Patent No. 5,428,803, issued June 27, 1995 (Ex. 1005,
`“Chen”);
`US Patent Appl. Publ. No. 2001/0053974 A1, published
`December 20, 2001 (Ex. 1008, “Lucke”);
`US Patent No. 5,983,180, issued November 9, 1999 (Ex. 1009,
`“Robinson”);
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`5
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`Patent 10,971,140 B2
`US Patent No. 5,036,539, issued July 30, 1991 (Ex. 1010,
`“Wrench”).
`
`E. Prior Art and Asserted Grounds
`Amazon asserts that claims 1–8 of the ’140 patent are unpatentable on
`the following grounds:
`Claim(s) Challenged 35 U.S.C. §
`1–3, 5, 7, 8
`103(a)
`1–3, 5, 7, 8
`103(a)
`4
`103(a)
`4
`103(a)
`6
`103(a)
`6
`103(a)
`
`Reference(s)/Basis
`Jiang, Chen
`Jiang, Chen, Lucke
`Jiang, Chen, Robinson
`Jiang, Chen, Lucke, Robinson
`Jiang, Chen, Wrench
`Jiang, Chen, Lucke, Wrench
`
`Pet. 7–8.
`Amazon submits a declaration by Dr. Les Atlas. Ex. 1043. Dr. Atlas
`agrees with and adopts as his own the testimony of Christopher Schmandt,
`who submitted a declaration in the Apple IPR (Ex. 1003). See Ex. 1043
`¶ 26. Although Zentian submitted preliminary declaratory testimony in the
`Apple IPR, Zentian has not submitted declaratory testimony at this stage in
`this proceeding.
`II. DISCRETIONARY GROUNDS FOR DENYING INSTITUTION
`Under 35 U.S.C. § 314(a), institution of inter partes review is
`discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016); see also 35 U.S.C. § 314(a). In Amazon Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the Board
`set forth six non-exclusive factors for determining “whether efficiency,
`fairness, and the merits support the exercise of authority to deny institution
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`Patent 10,971,140 B2
`in view of an earlier trial date in the parallel proceeding.” Id. at 6. These
`factors are as follows:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`In evaluating these factors, we take a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`instituting review. Id. at 6. The Director has also issued interim guidance to
`the Board on applying the factors. See Katherine K. Vidal, Interim
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
`Parallel District Court Litigation (June 21, 2022) 9, https://www.uspto.gov/
`sites/default/files/documents/interim_proc_discretionary_denials_aia_
`parallel_district_court_litigation_memo_20220621_.pdf (“Interim
`Procedure”).
`Zentian argues that “Fintiv factors 1–5 here warrant non-institution
`and denial of joinder” because in the parallel district court proceedings, (1)
`Amazon has served invalidity contentions presenting “many of the same art
`and arguments raised in its Petition” including reliance on Jiang, Robinson,
`and Wrench; (2) the proceeding has not been stayed; (3) the proceeding “is
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`Patent 10,971,140 B2
`set for trial on September 23, 2024”; (4) “Amazon’s invalidity expert report
`is due by May 2, 2024”; and (5) “Zentian’s rebuttal report is due on May 30,
`2024.” Prelim. Resp. 1–2 & n.1 (citing Ex. 2001, 8–101; Ex. 2002, 3); see
`also Prelim. Sur-reply 1–2.
`Amazon argues that Fintiv factor 2 weighs against discretionary
`denial because trial in the parallel case would be “more than three months
`after the expected date of the final written decision.” Prelim. Reply 1.
`Amazon also contends, as to factor 3, that under the district court’s current
`schedule, major invalidity-related work is not due until after our institution
`decision (e.g., final invalidity contentions are not due until February 22,
`2024 and the parties do not narrow their prior art assertions until March 14,
`2024). Id. Amazon also argues that under Fintiv factor 4, “there is little risk
`of overlap or conflicting decisions because [Amazon] will be subject to
`estoppel well before trial” in the district court case. Id. at 1–2.
`Of the first five Fintiv factors, we consider factor 2 (proximity to trial
`in the parallel case) most significant under these circumstances. According
`to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1.
`However, a final written decision in the instituted Apple IPR (and in the
`combined proceeding after joinder) will be due on June 12, 2024, more than
`three months before the trial date in district court. Thus, factor 2 weighs
`heavily against discretionary denial.
`The other factors do not outweigh the second factor. As to factor 1,
`there is no evidence as to whether there will be a stay in the parallel case, so
`we regard this factor as neutral. As to factor 3, there has been some
`
`1 We note that pages 8–10 of Exhibit 2001 address invalidity contentions
`regarding related U.S. Patent No. 7,979,277, and not the ’140 patent, which
`are discussed on pages 43–47. See Ex. 2001, 1–2.
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`Patent 10,971,140 B2
`preliminary activity in the parallel case, but overall, the litigation is in its
`early stages, so we do not regard this factor as weighing substantially in
`favor of discretionary denial. As to factor 4, the district court may
`ultimately consider Jiang, Robinson, and Wrench, but not the other
`references, and not necessarily in the same combinations as asserted in the
`Petition. See Ex. 2001, 45–48. So factor 4 weighs somewhat but not
`heavily in favor of discretionary denial. As to factor 5, the parties in the
`parallel proceeding are not different from the parties here, so we regard this
`factor as neutral.
`Next. we turn to Fintiv factor 6. According to Zentian, this factor
`“warrants non-institution unless the Board requires Amazon to enter the
`same Sotera stipulation to which Apple agreed, and on which the Board
`relied, in underlying proceeding IPR2023-00037, which Amazon seeks to
`join.” Prelim. Resp. 2.
`The Interim Procedure states that, “[c]onsistent with Sotera Wireless,
`Inc., the PTAB will not discretionarily deny institution in view of parallel
`district court litigation where a petitioner presents a stipulation not to pursue
`in a parallel proceeding the same grounds or any grounds that could have
`reasonably been raised before the PTAB.” Interim Procedure 3 (footnote
`omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
`Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim
`Procedure explains that a Sotera stipulation “mitigates concerns of
`potentially conflicting decisions and duplicative efforts between the district
`court and the PTAB . . . and allows the PTAB to review grounds that the
`parallel district court litigation will not resolve.” Id. at 7–8.
`In the Apple IPR, the Board declined to deny institution under
`35 U.S.C. § 314(a) because Apple offered a Sotera stipulation that it “will
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`not pursue in the parallel district court proceeding the same grounds as in the
`Petition or any grounds that could have reasonably been raised in the
`pending Petition.” IPR2023-00037, Paper 10 at 10 (PTAB June 12, 2023)
`(quoting IPR2023-00037, Paper 9 at 1).
`Unlike Apple, Amazon has not offered a Sotera stipulation. Zentian
`contends that Amazon would be time-barred absent its ability to join the
`Apple IPR and “Amazon effectively seeks to enjoy the benefits of joining
`Apple’s instituted proceeding on the same terms and conditions through
`which Apple obtained institution.” Prelim. Resp. 3. Thus, according to
`Zentian, “it would be unfair and prejudicial to Zentian if Amazon were
`permitted to join without being bound by the same Sotera stipulation to
`which Apple has agreed, and on which the Board’s institution decision
`relied.” Id.; see also Prelim. Sur-reply 2–3 (asserting that factors 1–5 weigh
`in favor of discretionary denial and arguing that by submitting a Sotera
`stipulation, Apple avoided the necessity of showing “compelling merits”
`under factor 6).
`In its Preliminary Reply, Amazon contends that Apple entered its
`Sotera stipulation under different circumstances because “the operative trial
`date in its case was two months before the expected written decision date,”
`but here, the “trial date is three months after the Board is expected to render
`its final written decisions.” Prelim. Reply 2–3 (citing Exs. 1032, 2002).
`Amazon also argues that as a subordinate petitioner in the combined
`proceeding with Apple, Amazon’s estoppel would be evaluated differently
`than Apple’s. Id. at 3 (citing Network-1 Techs., Inc. v. Hewlett-Packard Co.,
`981 F.3d 1015, 1027 (Fed. Cir. 2020)). Given the different circumstances,
`Amazon argues that it would be unfair to require Amazon to enter the same
`stipulation as Apple. Id. Amazon also argues that under prior Board
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`practice, “a Sotera-style stipulation [is not] a prerequisite for institution.”
`Id. at 2 (alteration in original) (quoting Zhuhai Cosmx Battery Co., Ltd. v.
`Maxell, Ltd., IPR2022-00984, Paper 8 at 4 (Sept. 29, 2022)).
`In its Preliminary Sur-reply, Zentian argues that, unlike the petitioner
`in Zhuhai, Amazon would be time-barred absent joinder. Prelim. Sur-reply
`2.
`
`We disagree with Zentian that, under the circumstances, we should
`deny institution in the absence of a Sotera stipulation from Amazon. First,
`we find no unfairness or prejudice in the fact that Apple has submitted a
`Sotera stipulation but Amazon has not. In this proceeding, Fintiv factors 1–
`5, as a whole, weigh heavily against discretionary denial even without
`Amazon offering a Sotera stipulation and without any showing of
`compelling merits. Most significantly, the Board will be deciding the
`patentability issues raised in the Petition well before the scheduled trial date
`in the parallel district court proceeding. Thus, even if Amazon had
`submitted a Sotera stipulation, this would not change our decision to
`institute an inter partes review and join this case to the Apple IPR.
`Although a petitioner has the option to submit a Sotera stipulation, no such
`stipulation is required where the Fintiv factors as a whole do not otherwise
`weigh in favor of discretionary denial.
`For the above reasons, we determine that the efficiency and integrity
`of the patent system are best served by instituting inter partes review, and
`we decline to deny institution discretionarily under 35 U.S.C. § 314(a).
`III. INSTITUTION OF INTER PARTES REVIEW
`We instituted inter partes review in the Apple IPR on all challenged
`claims and all asserted grounds of unpatentability. IPR2023-00037,
`Paper 10. Amazon’s Petition challenges the same claims and asserts the
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`same grounds of unpatentability as those on which we instituted the Apple
`IPR, relying on substantially the same testimonial evidence. See Mot. 2
`(“The Instant Petition is intentionally identical in substance to the Apple
`Petition.”); Ex. 1043 ¶ 26 (adopting the opinions set forth in the Declaration
`of Christopher Schmandt (Ex. 1003) that Apple relied on in Apple IPR).
`Because the issues presented in Amazon’s Petition are identical to
`those in the Apple IPR, we determine for the same reasons that there is a
`reasonable likelihood that Amazon would prevail in showing that at least
`one of claims 1–8 is unpatentable under the grounds of the Petition.
`Therefore, we institute inter partes review for the same reasons stated in our
`Decision on Institution in the Apple IPR. See IPR2023-00037, Paper 10.
`IV. MOTION FOR JOINDER
`Under authority delegated to us by the Director, we have the
`discretion, when warranted, to join as a party to an instituted inter partes
`review any other party who properly files a petition, after the patent owner
`has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c).
`As the moving party, Amazon bears the burden of proving that it is entitled
`to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to
`join a case, we consider (1) the reasons why joinder is appropriate,
`(2) whether the petition raises any new grounds of unpatentability, (3) any
`impact that joinder would have on the cost and trial schedule for the existing
`review, and (4) whether joinder will add to the complexity of briefing or
`discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial
`Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/
`documents/tpgnov.pdf.
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`IPR2023-01197
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`Amazon’s Motion addresses each of these considerations. Mot. 1–6.
`According to Amazon, its “Petition is intentionally identical in substance to
`the Apple Petition.” Mot. 2; see also Mot. 4. Amazon also argues that the
`schedule of the joined cases “would be unaffected, no additional briefing or
`discovery would be required, and no additional burdens would be placed on
`[Zentian].” Mot. 3; see also Mot. 4. Further, Amazon “agree[s] to take an
`‘understudy’ role as long as Apple remains a party to the Apple IPR,” and
`that it “will not make any substantive filings and shall be bound by the
`filings of Apple,” and will not pursue its own arguments, evidence, or
`discovery unless the matter of termination or settlement arises or there are
`issues involving only Amazon. Mot. 5–6. Thus, according to Amazon,
`Zentian would not suffer prejudice if the two proceedings are joined. Mot. 6.
`Apart from its arguments discussed above in the context of
`discretionary denial, Zentian does not dispute the above contentions by
`Amazon and does not point to any particular prejudice relating to joining the
`two proceedings. In light of these considerations, Amazon has shown that
`joinder to the Apple IPR is appropriate in this case. Therefore, we grant
`Amazon’s Motion for Joinder.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–8 of the ’140 patent is instituted with respect to all the
`grounds set forth in the Petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, inter partes review of the ’140 patent commences on the
`entry date of this Order, and the Board hereby gives notice of the institution
`of a trial;
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`FURTHER ORDERED that Amazon’s Motion for Joinder is granted
`and Amazon Web Services, Inc. and Amazon.com Services LLC are joined
`as parties to IPR2023-00037;
`FURTHER ORDERED that the grounds of unpatentability on which
`the Board instituted trial in IPR2023-00037 are unchanged and remain the
`only grounds on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order and any of its
`modifications entered in IPR2023-00037 will govern the schedule of the
`joined proceedings;
`FURTHER ORDERED that any filings by the petitioner parties in
`IPR2023-00037 will be consolidated, and that filings by Amazon, alone, are
`not permitted without the Board’s prior approval;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2023-00037; and
`FURTHER ORDERED that the case caption in IPR2023-00037 will
`be modified in accordance with the attached example to reflect joinder with
`this proceeding.
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`PETITIONER:
`
`J. Hadden
`Dargaye Churnet
`Saina Shamilov
`dhadden-ptab@fenwick.com
`dchurnet@fenwick.com
`sshamilov-ptab@fenwick.com
`
`PATENT OWNER:
`
`Peter C. Knops
`NOROOZI P.C.
`peter@noroozipc.com
`
`Katherine Rhoades
`BARTLIT BECK L.L.P.
`katherine.rhoades@bartlitbeck.com
`
`
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., AMAZON WEB SERVICES, INC., and
`AMAZON.COM SERVICES LLC
`Petitioner,
`
`v.
`
`ZENTIAN LIMITED,
`Patent Owner.
`
`IPR2023-000371
`Patent 10,839,789 B2
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`1 IPR2023-01197 has been joined with this proceeding.
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