`Trials@uspto.gov
`Entered: November 2, 2016
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`SOCKEYE LICENSING TX, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00985
`Patent 8,879,987 B1
`_______________
`
`
`
`Before BRYAN F. MOORE, ROBERT J. WEINSCHENK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2016-00985
`Patent 8,879,987 B1
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`I.
`INTRODUCTION
`RPX Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 20–29, 31–37, 39–45, and 47 of
`U.S. Patent No. 8,879,987 B1 (Ex. 1001, “the ’987 patent”). Sockeye
`Licensing TX, LLC (“Patent Owner”) did not file a preliminary response to
`the Petition. An inter partes review may not be instituted “unless . . . 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).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 20–29, 31–
`37, 39–45, and 47 of the ’987 patent. Accordingly, we institute an inter
`partes review as to claims 20–29, 31–37, 39–45, and 47 of the ’987 patent
`on the grounds specified below.
`A.
`Related Proceedings
`The parties indicate that the ’987 patent is the subject of several cases
`in the United States District Court for the Northern District of Illinois. Pet.
`1; Paper 5, 2–3. The parties also indicate that the following petitions for
`inter partes review are related to this case:
`Case No.
`Involved U.S. Patent No.
`IPR2016-00989
`U.S. Patent No. 8,135,342
`IPR2016-01052
`U.S. Patent No. 8,135,342
`IPR2016-01053
`U.S. Patent No. 8,879,987
`IPR2016-01054
`U.S. Patent No. 8,879,987
`Pet. 1; Paper 5, 2.
`B.
`The ’987 Patent
`The ’987 patent relates to establishing a connection between a
`wireless device and a peripheral device. Ex. 1001, col. 1, ll. 25–30. The
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`’987 patent explains that, although previous products allowed a wireless
`device to project images onto a wall or nearby surface, those products did
`not allow a wireless device to transmit browser-based content to a full-size
`digital display device, such as a computer monitor. Id. at col. 2, ll. 1–9. To
`address this deficiency, the ’987 patent describes connecting a wireless
`device to one or more peripheral devices, such as a desktop monitor or
`printer, using one or more wireline or wireless connections. Id. at col. 6, ll.
`55–63. The wireless device uses a cell phone network and Transmission
`Control Protocol/Internet Protocol (“TCP/IP”) network to access one or
`more browser-based applications. Id. at col. 6, ll. 63–67. The data received
`by the wireless device from the browser-based applications is communicated
`through a peripheral communications interface to the one or more peripheral
`devices. Id. at col. 7, ll. 9–18.
`C.
`Illustrative Claim
`Claims 20, 32, and 40 are independent. Claim 20 is reproduced
`
`below.
`
`20. A wireless device for facilitating user connectivity
`comprising:
`a connector, said connector connecting a user of said
`wireless device to a remote server containing user information
`therein;
`a memory, said memory containing therein said user
`information downloaded from said server;
`a transmitter, said transmitter, at the control of said user,
`sending said user information to a peripheral device; and
`an interface, on said wireless device, where said user
`through said interface operates said peripheral device from said
`wireless device,
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`
`Exhibit No.
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1008
`
`wherein said peripheral device comprises one or more
`components of personal equipment of said user,
`wherein two users interconnect to said peripheral device,
`said two users controlling said user information,
`whereby said user information is employed by said one
`or more components.
`Ex. 1001, col. 17, ll. 44–61.
`D.
`Evidence of Record
`Petitioner relies on the following references and declaration (Pet. 3, 8–
`9, 34–35, 55):
`Reference or Declaration
`Tee et al., U.S. Patent Application Pub. No. 2006/0203758
`A1 (published Sept. 14, 2006) (“Tee”)
`Acharya et al., U.S. Patent Application Pub. No.
`2005/0036509 A1 (published Feb. 17, 2005) (“Acharya”)
`Soin et al., U.S. Patent Application Pub. No. 2005/0091359
`A1 (published Apr. 28, 2005) (“Soin”)
`Wang et al., U.S. Patent Application Pub. No.
`2006/0077310 A1 (published Apr. 13, 2006) (“Wang”)
`Benco et al., U.S. Patent Application Pub. No.
`2005/0135393 A1 (published June 23, 2005) (“Benco”)
`Declaration of Peter Rysavy (“Rysavy Declaration”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 3):
`Claim(s)
`Basis
`20–29, 31–37, 39–
`35 U.S.C. § 103(a)
`45, and 47
`20–23, 25–29, 31,
`40–45, and 47
`24, 32–37, and 39
`
`Reference(s)
`Soin and Wang
`
`35 U.S.C. § 103(a)
`
`Tee and Acharya
`
`35 U.S.C. § 103(a)
`
`Tee, Acharya, and Benco
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`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016). Petitioner proposes construing several claim
`terms in the ’987 patent. Pet. 5–8. On this record and for purposes of this
`decision, we determine that no claim terms require express construction. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`B.
`Asserted Grounds of Unpatentability
`1.
`Obviousness of Claims 20–29, 31–37, 39–45, and 47
`Over Soin and Wang
`Petitioner argues that claims 20–29, 31–37, 39–45, and 47 would have
`been obvious over Soin and Wang. Pet. 3. We have reviewed Petitioner’s
`assertions and supporting evidence. For the reasons discussed below, we
`determine that Petitioner demonstrates a reasonable likelihood of prevailing
`in showing that claims 20–29, 31–37, 39–45, and 47 would have been
`obvious over Soin and Wang.
`
`Claim 20 recites “a connector, said connector connecting a user of
`said wireless device to a remote server containing user information therein.”
`Ex. 1001, col. 17, ll. 46–48. Petitioner identifies evidence indicating that
`Soin teaches a network adapter or modem for connecting a user of a wireless
`device to a remote server that contains user information. Pet. 11–12 (citing
`Ex. 1004 ¶¶ 33, 44, 56; Ex. 1008 ¶ 177). On this record, Petitioner has
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`shown sufficiently that the combination of Soin and Wang teaches the above
`limitation of claim 20.
`Claim 20 recites “a memory, said memory containing therein said user
`information downloaded from said server.” Ex. 1001, col. 17, ll. 49–50.
`Petitioner identifies evidence indicating that Soin teaches a memory
`containing files or data downloaded from the remote server. Pet. 12–13
`(citing Ex. 1004 ¶¶ 45, 50, 52; Ex. 1008 ¶¶ 124–128, 178–181). Petitioner
`also identifies evidence indicating that a person of ordinary skill in the art
`would have known that the files or data in Soin can include the video or
`multimedia information in Wang. Pet. 13 (citing Ex. 1005 ¶ 27). On this
`record, Petitioner has shown sufficiently that the combination of Soin and
`Wang teaches the above limitation of claim 20.
`Claim 20 recites “a transmitter, said transmitter, at the control of said
`user, sending said user information to a peripheral device.” Ex. 1001, col.
`17, ll. 51–52. Petitioner identifies evidence indicating that Soin teaches a
`transmitter at the control of the user that sends the user information to a
`peripheral device, such as a laptop or a projector. Pet. 13–15 (citing Ex.
`1004 ¶¶ 24, 26, 56, 98, 102, 104, 106, 109; Ex. 1008 ¶¶ 182–183). On this
`record, Petitioner has shown sufficiently that the combination of Soin and
`Wang teaches the above limitation of claim 20.
`Claim 20 recites “an interface, on said wireless device, where said
`user through said interface operates said peripheral device from said wireless
`device.” Ex. 1001, col. 17, ll. 53–55. Petitioner identifies evidence
`indicating that Soin teaches an interface that allows the user to operate the
`peripheral device from the wireless device, such as by using the wireless
`device to change slides in a presentation displayed on the peripheral device.
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`Pet. 15–16 (citing Ex. 1004 ¶¶ 109, 118, 163; Ex. 1008 ¶¶ 95–100, 131,
`190–191). On this record, Petitioner has shown sufficiently that the
`combination of Soin and Wang teaches the above limitation of claim 20.
`Claim 20 recites “wherein said peripheral device comprises one or
`more components of personal equipment of said user.” Ex. 1001, col. 17, ll.
`56–57. Petitioner identifies evidence indicating that a person of ordinary
`skill in the art reading Soin would have known that the peripheral device
`(e.g., the laptop or projector) can belong to the user of the wireless device or
`a third party.1 Pet. 16–17 (citing Ex. 1004 ¶¶ 103–104; Ex. 1008 ¶¶ 150–
`151). On this record, Petitioner has shown sufficiently that the combination
`of Soin and Wang teaches the above limitation of claim 20.
`Claim 20 recites “wherein two users interconnect to said peripheral
`device, said two users controlling said user information.” Ex. 1001, col. 17,
`ll. 58–59. Petitioner identifies evidence indicating that, in Soin, one user can
`transfer control of the peripheral device to a second user. Pet. 17–18 (citing
`Ex. 1004 ¶¶ 99, 167; Ex. 1008 ¶¶ 156–160, 174). Petitioner also identifies
`evidence indicating that a person of ordinary skill in the art reading Soin
`would have known that two users can control the peripheral device
`simultaneously, such as in the multi-user gaming scenario described in Soin.
`Pet. 18–19 (citing Ex. 1004 ¶ 181; Ex. 1008 ¶¶ 190–191). On this record,
`Petitioner has shown sufficiently that the combination of Soin and Wang
`teaches the above limitation of claim 20.
`
`
`1 Petitioner argues alternatively that ownership of the peripheral device is
`neither structural nor functional, and, thus, cannot distinguish the challenged
`claims from the prior art. Pet. 16–17 (citing Ex Parte Nehls, 88 USPQ2d
`1883 (BPAI 2008)).
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`Claim 20 recites “whereby said user information is employed by said
`one or more components.” Ex. 1001, col. 17, ll. 60–61. Petitioner identifies
`evidence indicating that, in Soin, the components of the peripheral device
`display the user information received from the wireless device. Pet. 19–20
`(citing Ex. 1004 ¶¶ 74, 98, 171; Ex. 1008 ¶ 185). On this record, Petitioner
`has shown sufficiently that the combination of Soin and Wang teaches the
`above limitation of claim 20.
`
`In sum, on this record, Petitioner has shown sufficiently that the
`combination of Soin and Wang teaches the limitations in claim 20. Claims
`21–29 and 31 depend from claim 20, and Petitioner identifies evidence
`indicating that the combination of Soin and Wang also teaches the
`limitations in claims 21–29 and 31.2 See Pet. 20–31. Claims 32–37, 39–45,
`and 47 recite limitations similar to those recited in claims 20, 24–29, and 31.
`See id. at 31–34. Therefore, on this record, Petitioner has shown sufficiently
`that the combination of Soin and Wang teaches the limitations in claims 21–
`29, 31–37, 39–45, and 47.
`
`For the foregoing reasons, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 20–29, 31–37,
`39–45, and 47 would have been obvious over Soin and Wang.
`
`
`2 For example, claim 24 further recites that the peripheral device is a hub
`device. Ex. 1001, col. 18, ll. 7–11. Petitioner identifies evidence indicating
`that Wang teaches a hub device (Pet. 21–22 (citing Ex. 1005 ¶¶ 32, 34)), and
`that it would have been obvious to use the hub device in Wang with the
`wireless device in Soin in order to provide additional flexibility (Pet. 10–11
`(citing Ex. 1005 ¶ 51; Ex. 1008 ¶¶ 120–122); Pet. 23–24 (citing Ex. 1008
`¶¶ 187–189)).
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`2.
`
`Obviousness of Claims 20–23, 25–29, 31, 40–45, and 47
`Over Tee and Acharya
`Petitioner argues that claims 20–23, 25–29, 31, 40–45, and 47 would
`have been obvious over Tee and Acharya. Pet. 3. We have reviewed
`Petitioner’s assertions and supporting evidence. For the reasons discussed
`below, we determine that Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 20–23, 25–29, 31, 40–45, and 47 would
`have been obvious over Tee and Acharya.
`
`Claim 20 recites “a connector, said connector connecting a user of
`said wireless device to a remote server containing user information therein.”
`Ex. 1001, col. 17, ll. 46–48. Petitioner identifies evidence indicating that
`Tee teaches a transceiver for connecting a user of a wireless device to a
`remote server that contains user information. Pet. 37 (citing Ex. 1002 ¶¶ 15,
`18–19, 22, 25, 29; Ex. 1008 ¶¶ 58–59). On this record, Petitioner has shown
`sufficiently that the combination of Tee and Acharya teaches the above
`limitation of claim 20.
`Claim 20 recites “a memory, said memory containing therein said user
`information downloaded from said server.” Ex. 1001, col. 17, ll. 49–50.
`Petitioner identifies evidence indicating that Tee teaches a memory
`containing a video file. Pet. 37–38 (citing Ex. 1002 ¶¶ 24–25, 30).
`Petitioner also identifies evidence indicating that a person of ordinary skill
`reading Tee would have known that the wireless device can download the
`video file from the remote server. Pet. 38 (citing Ex. 1002 ¶ 30; Ex. 1008
`¶¶ 202–203). On this record, Petitioner has shown sufficiently that the
`combination of Tee and Acharya teaches the above limitation of claim 20.
`Claim 20 recites “a transmitter, said transmitter, at the control of said
`user, sending said user information to a peripheral device.” Ex. 1001, col.
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`17, ll. 51–52. Petitioner identifies evidence indicating that Tee teaches a
`transceiver at the control of the user that sends the user information to a
`peripheral device, such as a computer or a projector. Pet. 38–39 (citing Ex.
`1002 ¶¶ 15–16, 23, 25–26, 29). On this record, Petitioner has shown
`sufficiently that the combination of Tee and Acharya teaches the above
`limitation of claim 20.
`Claim 20 recites “an interface, on said wireless device, where said
`user through said interface operates said peripheral device from said wireless
`device.” Ex. 1001, col. 17, ll. 53–55. Petitioner identifies evidence
`indicating that Acharya teaches an interface that allows a user to operate a
`peripheral device from a wireless device, such as by using the wireless
`device to start or hide a presentation displayed on the peripheral device. Pet.
`40–41 (citing Ex. 1003 ¶¶ 84, 117; Ex. 1008 ¶ 63). Petitioner also identifies
`evidence indicating that it would have been obvious to use the interface in
`Acharya with the wireless device in Tee in order to “improv[e] users’
`experience by allowing them to better control presentations and other media
`being displayed on the external display device.” Pet. 41 (citing Ex. 1008
`¶¶ 62–63). On this record, Petitioner has shown sufficiently that the
`combination of Tee and Acharya teaches the above limitation of claim 20.
`Claim 20 recites “wherein said peripheral device comprises one or
`more components of personal equipment of said user.” Ex. 1001, col. 17, ll.
`56–57. Petitioner identifies evidence indicating that a person of ordinary
`skill in the art reading Tee would have known that the peripheral device
`(e.g., the computer or projector) can belong to the user of the wireless device
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`or a third party.3 Pet. 41–42 (citing Ex. 1008 ¶¶ 75–77). On this record,
`Petitioner has shown sufficiently that the combination of Tee and Acharya
`teaches the above limitation of claim 20.
`Claim 20 recites “wherein two users interconnect to said peripheral
`device, said two users controlling said user information.” Ex. 1001, col. 17,
`ll. 58–59. Petitioner identifies evidence indicating that, in Acharya, one user
`can transfer control of the peripheral device to a second user. Pet. 42–43
`(citing Ex. 1003 ¶¶ 56, 94–95). Petitioner identifies evidence indicating that
`Acharya also teaches that two users can modify a presentation on the
`peripheral device simultaneously. Pet. 42–44 (citing Ex. 1003 ¶¶ 94–95).
`Petitioner identifies evidence indicating that it would have been obvious to
`use the multi-user feature in Acharya with the wireless device in Tee in
`order “to handle common user scenarios,” such as “a conference room
`meeting with many users taking the podium in sequence.” Ex. 1008 ¶ 90.
`On this record, Petitioner has shown sufficiently that the combination of Tee
`and Acharya teaches the above limitation of claim 20.
`Claim 20 recites “whereby said user information is employed by said
`one or more components.” Ex. 1001, col. 17, ll. 60–61. Petitioner identifies
`evidence indicating that, in Tee, the components of the peripheral device
`display the user information received from the wireless device. Pet. 44–45
`(citing Ex. 1002 ¶¶ 18, 35). On this record, Petitioner has shown sufficiently
`
`
`3 Petitioner argues alternatively that ownership of the peripheral device is
`neither structural nor functional, and, thus, cannot distinguish the challenged
`claims from the prior art. Pet. 16–17, 42 (citing Ex Parte Nehls, 88 USPQ2d
`1883 (BPAI 2008)).
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`that the combination of Tee and Acharya teaches the above limitation of
`claim 20.
`
`In sum, on this record, Petitioner has shown sufficiently that the
`combination of Tee and Acharya teaches the limitations in claim 20. Claims
`21–23, 25–29, and 31 depend from claim 20, and Petitioner identifies
`evidence indicating that the combination of Tee and Acharya also teaches
`the limitations in claims 21–23, 25–29, and 31. See Pet. 45–53. Claims 40–
`45 and 47 recite limitations similar to those recited in claims 20, 25–29, and
`31. See id. at 53–55. Therefore, on this record, Petitioner has shown
`sufficiently that the combination of Tee and Acharya teaches the limitations
`in claims 21–23, 25–29, 31, 40–45, and 47.
`
`For the foregoing reasons, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 20–23, 25–29, 31,
`40–45, and 47 would have been obvious over Tee and Acharya.
`3.
`Obviousness of Claims 24, 32–37, and 39 Over Tee,
`Acharya, and Benco
`Petitioner argues that claims 24, 32–37, and 39 would have been
`obvious over Tee, Acharya, and Benco. Pet. 3. We have reviewed
`Petitioner’s assertions and supporting evidence. For the reasons discussed
`below, we determine that Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 24, 32–37, and 39 would have been
`obvious over Tee, Acharya, and Benco.
`Claim 24 recites “wherein said peripheral device is a hub device, and
`wherein one or more components of said peripheral device are connected to
`said hub device and interconnected to said wireless device.” Ex. 1001, col.
`18, ll. 7–11. Claim 32 recites limitations similar those recited in claims 20
`and 24. Id. at col. 18, ll. 46–63. Petitioner identifies evidence indicating
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`that Benco teaches a peripheral hub that connects a wireless device to a
`plurality of peripheral devices, such as a monitor, a printer, a keyboard, and
`a mouse. Pet. 57 (citing Ex. 1006 ¶ 19). Petitioner also identifies evidence
`indicating that it would have been obvious to use the peripheral hub in
`Benco with the wireless device in Tee in order to allow “users to connect to
`a wider variety of peripheral devices.” Pet. 56 (citing Ex. 1008 ¶¶ 55–56,
`71, 73–74).
`Thus, on this record, Petitioner has shown sufficiently that the
`combination of Tee, Acharya, and Benco teaches the limitations in claims 24
`and 32. Petitioner also identifies evidence indicating that the combination of
`Tee, Acharya, and Benco teaches the limitations in claims 33–37 and 39.
`See Pet. 57–59. Therefore, on this record, Petitioner has shown sufficiently
`that the combination of Tee, Acharya, and Benco teaches the limitations in
`claims 33–37 and 39.
`For the foregoing reasons, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 24, 32–37, and 39
`would have been obvious over Tee, Acharya, and Benco.
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of claims 20–29, 31–37, 39–45, and 47 of the
`’987 patent. At this stage in the proceeding, we have not made a final
`determination with respect to the patentability of any of the challenged
`claims.
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`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 20–29, 31–37, 39–45, and 47 of the
`’987 patent on the following grounds:
`A. Claims 20–29, 31–37, 39–45, and 47 as unpatentable under
`35 U.S.C. § 103(a) as obvious over Soin and Wang;
`B.
`Claims 20–23, 25–29, 31, 40–45, and 47 as unpatentable under
`35 U.S.C. § 103(a) as obvious over Tee and Acharya; and
`C.
`Claims 24, 32–37, and 39 as unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Tee, Acharya, and Benco;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter
`partes review of the ʼ987 patent is hereby instituted commencing on the
`entry date of this Order, and, 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; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`identified, and no other grounds are authorized.
`
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`PETITIONER:
`Andrew M. Mason
`John D. Vandenberg
`Jeffrey Love
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`john.vandenberg@klarquist.com
`jeffrey.love@klarquist.com
`
`PATENT OWNER:
`Gregory S. Donahue
`DINOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`
`Jeffrey W. Salmon
`JEFFREY W. SALMON LAW LLC
`jeff@jeffreywsalmonlawllc.com
`
`
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