`Filed: June 5, 2015
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`Filed on behalf of: Askeladden LLC
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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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`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00125
`U.S. Patent No. 8,540,152
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`_____________
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`PETITIONER’S OPPOSITION
`TO
`PATENT OWNERS’ MOTION FOR DISCOVERY AUTHORIZATION
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction .................................................................................................... 1
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`Patent Owners’ Request for Employment Lists Should Be
`Denied ............................................................................................................. 2
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`III. Patent Owners’ Request for Funding Information Should
`Be Denied ........................................................................................................ 5
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`IV. Patent Owners’ Request for a Timeline Should Be Denied ....................... 6
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`V. Conclusion ...................................................................................................... 7
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`i
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`I.
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`Introduction
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`Pursuant to the Board’s May 27, 2015 Order (Paper 37), Petitioner
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`Askeladden LLC (“Askeladden”) hereby opposes Patent Owners’ Motion for
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`Discovery Authorization (Paper 39) (“Motion”). The rules permit additional
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`discovery only in rare instances where the moving party establishes that the
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`discovery is necessary and would be in the interest of justice. 37 C.F.R.
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`§§ 42.20(c), 42.51(b)(2)(i); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
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`IPR2012-00001, Paper 26 (P.T.A.B. Mar. 5, 2013) (“Garmin”). The discovery
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`sought by Patent Owners here is improper under these standards.
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`The proposed discovery is almost entirely unrelated to real party-in-interest
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`(“RPI”) issues, is premised at best on speculative assumptions regarding the
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`information that might be obtained, and is unnecessary in light of information
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`already disclosed or that is available to the Patent Owners. Moreover, the
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`proposed discovery will impose undue burden on Petitioner to inquire with respect
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`to parties that are not within its control—e.g., each of the twenty-six member
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`banks of The Clearing House Payments Company L.L.C. (“PayCo”)—concerning
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`matters that are not remotely related to Askeladden’s IPR efforts. Patent Owners’
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`failure to enunciate a concise justification for their proposed discovery illustrates
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`its improper nature and that it is not in the interest of justice.
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`1
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`II.
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`Patent Owners’ Request for Employment Lists Should Be Denied
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`The Motion requests the name and role “of each individual employee/
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`committee member/officer/director of the Acknowledged RPI who is an employee/
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`committee member/officer/director of the Alleged RPI” (“1st Request”).1 Motion
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`at 1. Patent Owners thus seek the names and roles of any person employed by or
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`affiliated with PayCo and Askeladden who is also affiliated with an Alleged RPI—
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`i.e., not only with the Association, but with each of the twenty-six banks that is a
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`member of PayCo. Patent Owners seek this information regardless of whether a
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`person has any relationship to Askeladden or the present IPR. The interests of
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`justice weigh against granting this request.
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`Under the first Garmin factor, the information sought lacks “substantive
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`value to a contention of the party moving for discovery,” and therefore will not be
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`useful. Garmin at 6-7. The Motion fails to explain otherwise. For example, if an
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`employee of a PayCo member bank participates in a PayCo committee concerning
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`banking regulatory matters, the identity of that person is called for by the Motion
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`even though such information is entirely irrelevant to Askeladden’s IPR activities
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`1 The Motion defines (i) Askeladden and PayCo, collectively, as “Acknowledged
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`RPI,” and (ii) “owning banks” of PayCo and The Clearing House Association (the
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`“Association”) as “Alleged RPI.” Motion at 1.
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`2
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`and would be prohibitively burdensome to identify. At best, therefore, Patent
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`Owners can only speculate that their overly broad 1st Request might reveal
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`something relevant to RPI issues. But the first Garmin factor does not
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`countenance such speculation, and the fifth Garmin factor does not permit
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`discovery such as this that is not “sensible and responsibly tailored according to a
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`genuine need.” Id. at 7.
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`Moreover, Patent Owners already have evidence of this sort sufficient to the
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`RPI question. Regarding control over this proceeding, Patent Owners already have
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`been provided full information about the membership of Askeladden and PayCo,
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`their governing boards, and the lack of any involvement of PayCo’s member banks
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`in Askeladden’s IPR activities. The Reilly Declaration (Ex. 1031) and Askeladden
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`LLC Agreement (Ex. 1033) each establish that
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` is solely responsible for selecting patents to challenge
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`using IPR proceedings, and for independently determining all other aspects of
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`Askeladden’s IPR activities. Ex. 1031 ¶ 11; Ex. 1033 at 2, 8, 12. As the Patent
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`Owners also know,
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`. Ex. 1031 ¶ 15; Ex. 1033 at 2, 10. Petitioner further represents that
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`3
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`concrete basis to suggest otherwise.
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`. Patent Owners offer no
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` also is
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`known to Patent Owners. See Ex. 1031 at ¶ 15. So too, however, is the fact that
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`. See Ex 1031 ¶ 11; Ex 1033 at 10.
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`Patent Owners offer no explanation as to how their further requested
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`discovery will alter the RPI considerations over the existing record, nor can they
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`do so without relying solely on improper speculation. In particular, the names and
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`roles of individuals from PayCo member banks are not relevant given that parent
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`companies or association members are not considered RPIs, absent a showing of
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`specific control of the proceeding in which the related corporation or association is
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`involved. See Unified Patents Inc. v. Dragon Intellectual Property, LLC,
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`IPR2014-01252, Paper 37, at 13 (P.T.A.B. Feb. 12, 2015); GEA Process Eng’g,
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`Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 23, at 3-4, 6-7 (P.T.A.B. Apr.
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`22, 2014).2
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`2 The Motion refers to amicus briefs filed separately by Askeladden, The Clearing
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`House Association and other entities, in cases unrelated to the present proceeding
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`or to any IPR proceeding. Motion at 2. Alignment of interest in unrelated amicus
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`4
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`In these circumstances, Patent Owners’ assertion with respect to the third
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`Garmin factor, namely, that they are unable to obtain the requested information by
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`other means (Motion at 3), is misdirected. Petitioner has not “intentionally
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`shield[ed]” Askeladden’s corporate structure and the “details of the
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`interconnections between the Alleged RPI and the Acknowledged RPI from the
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`public,” based on the Protective Order in this case. Id. Rather, under the
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`Protective Order (Papers 20, 24, 25), Patent Owners have received all pertinent
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`information relating to RPI issues—e.g., concerning Askeladden’s corporate
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`structure and the relationships between Askeladden, PayCo, and PayCo member
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`banks. See Paper 26; Ex. 1031; Ex. 1033.
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`III. Patent Owners’ Request for Funding Information Should Be Denied
`Equally improper is the Motion’s second request, which seeks information
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`regarding “funding used in the Proceedings acquired from Member Banks directly
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`or indirectly” (“2nd Request”). Motion at 4. This request is not proper under
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`Garmin factors 1 and 5, and is unnecessary in light of information already
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`provided.
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`positions, however, does not evidence any connection of the Association or other
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`entities with respect to Askeladden’s IPR efforts, and certainly does not suggest
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`specific control by the Association or the other entities over this proceeding.
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`5
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` E.g.,
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`.
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`Petitioner has already provided evidence showing that
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`Ex. 1031 ¶ 16. Indeed, such control is within the sole discretion of
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`Accordingly, consistent with the Board’s own precedent, Patent Owners
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`have received all pertinent information concerning Askeladden IPR funding issues
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`relevant to RPI matters in this proceeding. See Unified Patents, IPR2014-01252,
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`Paper 37, at 12 and Paper 39, at 5 (P.T.A.B. Feb. 12, 2015) (only control over
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`funds used to challenge specific patents in an IPR is relevant to an RPI analysis).3
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`IV. Patent Owners’ Request for a Timeline Should Be Denied
`The Motion’s third request seeks a timeline of events involved in preparing
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`this proceeding’s Petition, and disclosure of payments to Petitioner’s counsel and
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`expert witness (“3rd Request”). The Motion provides no coherent reason why this
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`information is necessary or relevant to RPI issues. Indeed, Patent Owners state
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`3 The 2nd Request is also ambiguous in that it appears to seek information for IPR
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`Proceedings other than this one. That is not proper under Garmin factors 4 and 5.
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`6
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`only that they “reasonably question that the prepared Petitioners [sic] were initiated
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`in September ….” Motion at 6. This speculation, which is less than
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`comprehensible, is inadequate to justify further discovery on RPI questions.
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`In addition, here, too, Patent Owners already have all information that may
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`be pertinent to the RPI question—viz., Askeladden was formed on June 17, 2014,
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`and
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`. Ex. 1031 ¶¶ 6, 13, 14.
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`The 3rd Request also is contrary to the interests of justice because it would
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`require the production of information subject to the attorney-client privilege and
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`the attorney work product immunity doctrine.
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`V. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`deny the Motion.
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`Respectfully submitted,
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`/Frank A. DeLucia/
`Frank A. DeLucia, Jr.
`Attorney for Petitioner
`Registration No. 42,476
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`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, New York 10104-3800
`Facsimile: (212) 218-2200
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`7
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105, the undersigned certifies
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`that on this date a true and correct copy of this Petitioner’s Opposition to Patent
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`Owners’ Motion for Discovery Authorization was served via email on the Patent
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`Owner’s counsel at the following address indicated in the Patent Owner’s
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`Mandatory Notices.
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`bbuchheit@gmail.com
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`Dated: June 5, 2015
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`/Frank A. DeLucia/
`Frank A. DeLucia, Jr.
`Attorney for Petitioner
`Registration No. 42,476
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