September 10, 2013

Judge Robinson grants-in-part defendant’s motion for judgment as a matter of law following verdict in plaintiff’s favor

In MobileMedia Ideas, LLC v. Apple, Inc., C.A. No. 10-258-SLR-MPT (D. Del. Sept. 5, 2013), Judge Sue L. Robinson granted defendant’s renewed motion for judgment as a matter of law with respect to invalidity and non-infringement of one patent-in-suit and with respect to invalidity of one claim of another patent-in-suit, and denied the motion in all other respects.

Following a seven-day jury trial in 2012, the jury found direct infringement and validity of the three patents-in-suit. Id. at 1. Defendant renewed its motion for judgment as a matter of law that the asserted claims of the three patents-in-suit were invalid and not infringed. Id. The three patents-in-suit (the ’075, ‘068, and ‘078 patents) “relate to a variety of technologies in information processing, computing, and mobile phones.” Id. at 3.

As to the ‘075 patent, entitled “Method and Apparatus for Incoming Call Rejection,” the Court found that its asserted claims were invalid. There was no dispute that two prior art references disclosed the limitations of the asserted claims, but the parties disputed whether there was sufficient motivation to combine them. Id. at 18. The Court concluded that the plaintiff’s expert had “only offered conclusory testimony” to rebut defendant’s evidence and testimony that a person of ordinary skill would have found it obvious to combine these references. Id. at 19. “In addition, [plaintiff’s] infringement theory conflicts with [its invalidity expert’s] opinion.” See id. at 20-21. Therefore, the Court concluded that “even if the jury had resolved all disputed facts in [plaintiff’s] favor, the evidence could not support a finding” of validity. Id. at 22. As to infringement, the Court also granted defendant’s motion because plaintiff had not presented sufficient evidence to support its infringement theory. See id. at 22-27.

As to the ‘068 patent, entitled “Communication Terminal Device and Method for Controlling a Connecting State of a Call into a Desired Connection State upon a Predetermined Operation by a User,” the Court found one asserted claim valid (Claim 23) and the other asserted claim invalid (Claim 24). Defendant’s anticipation arguments as to Claim 23 were grounded in “an untimely claim construction argument,” and the plaintiff’s expert testimony had provided sufficient support for the jury’s finding of validity. Id. at 35. But for Claim 24, unlike for Claim 23, the parties had identified a relevant “pre-trial dispute in their joint claim construction chart . . . [therefore] the court has a duty to resolve [the dispute].” Id. at 36. The Court went on to clarify the construction of a relevant term, id. at 37, and concluded that the jury’s verdict of validity of Claim 24 was “inconsistent” with the Court’s construction of the term. Id. at 38. As to infringement of the ‘068 patent, the Court denied defendant’s motion. See id. at 38-45. The Court also denied the motion as to infringement and validity of the ‘078 patent, entitled “Device for Personal Communication, Data Collection and Data Processing, and a Circuit Card.” See id. at 47-56.

Finally, the Court denied defendant’s motion for a new trial in the alternative. See id. at 56-62. Defendant argued, inter alia, that plaintiff’s statements at closing arguments that companies from whom it obtained patents “decide to invest in patents to recover research and development costs” were directed to damages and therefore improper as damages had been bifurcated. Id. at 57. The Court concluded that the statements were not directed to damages, but Instead were “used to explain what [plaintiff] does as a non-practicing entity”, and were therefore not improper. Id. at 57-58.

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September 6, 2013

Judge Stark grants motions to stay pending inter partes review

In Softview LLC v. Apple Inc., et al., C.A. Nos. 12-989-LPS & 10-389-LPS (Cons.) (D. Del. Sept. 4, 2013), Judge Leonard P. Stark has ordered a stay, pending inter partes review, until March 31, 2014. While the Court had previously denied defendants’ motion to stay in July 2012, it concluded that circumstances had changed such that a stay was now warranted.

As to prejudice to the plaintiff, while the Court “continue[d] to have . . . concerns” regarding prejudice and the potential tactical advantage for defendants, “subsequent case developments make them less of a problem. In particular, fact discovery is now complete, at least somewhat mitigating the risk of evidentiary staleness. Also, given that [plaintiff] is a non-practicing entity and not seeking injunctive relief, the limited delay . . . should not severely prejudice [plaintiff].” Id. at 2-3.

A stay pending inter partes review would also likely simplify issues for trial. Whereas at the time of the previous request for a stay only some of the asserted claims stood rejected, now the PTAB had granted inter partes review with respect to all asserted claims. Id. at 3.

Finally, while the early stage of the case and the “lengthy process of reexamination” had been factors in the Court’s 2012 denial of a stay, the case had since moved forward “substantially” (the Court, for example, issued a claim construction opinion on the same day as this Order) and “the inter partes review promises to be a more expeditious process than reexamaination and appears to be relatively close to completion.” Id. at 3. Absent a stay, the parties were scheduled to complete expert discovery and file case-dispositive motions by the end of March 2014, but the PTAB was required to issue a final determination by that time unless there was an extension for good cause. Id. at 4. “[U]nder the circumstances, [the Court believed that] it is appropriate to allow the inter partes review a reasonable period to conclude before launching the parties into the expense of expert discovery.” Id.

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September 6, 2013

Judge Stark Construes Terms of Web Browsing Patents

Judge Leonard Stark has issued a claim construction opinion in the ongoing Softview litigation, a pre-AIA case involving several defendants that are among the biggest tech companies. Softview’s patents relate to a system and method for rendering, zooming, and panning in a web browser. Judge Stark resolved disputes about the following terms:
- “scalable content”
- “scalable / scaling / scaled”
- “translating”
- “processing [the] HTML-based Web content to produce scalable content”
- “format”
- “vector-based content / scalable vector-based content”
- “vector”
- “object datum”
- “primary datum”
- “layout location datum”
- “enabling the user to zoom and pan a view of the Web page”
- “fit across”
- “tapping”
- “preserve(s) / preserved / preserving / preservation”
- “machine-readable medium”
- “storage means”
- “processing means”
- “wireless communication[s] means”

Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Op. at 5-25 (D. Del. Sep. 4, 2013).

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September 6, 2013

Judge Stark construes terms of patents relating to automatic insertion of hypertext links in text articles

Judge Leonard P. Stark recently construed the non-means-plus-function claim terms of U.S Patent Nos. 6,092,074 and 6,581,065; and resolved the parties' scheduling dispute regarding briefing of of the means-plus-function claim terms. General Electric Co. v. Kontera Technologies, et al., C.A. No. 12-525-LPS, C.A. No. 12-526-LPS (D. Del. Sept. 3, 2013). Judge Stark construed the terms:

"Class Codes"
"Major Class Codes"
"Preferred Major Class Codes"
"Hit Count Data"
"Intermittent Maintenance Mode"
"Wherein the character strings have no associated hypertext link(s)"

Judge Stark found that the following terms did not require construction:

"Primary Computer"
"Central Computer"
"Associated with a/said Primary Computer"
"Associated with a/said Central Computer"
"Associated with At Least One of Said Destination Addresses" (also determining that the term was not indefinite)
"Which Are Associated With Said Plurality of Linkable Character Strings/Matching Linkable Character String Has a Plurality of Class Codes Associated Therewith" (also determining that the term was not indefinite)
"Determining A Matching Linkable Character String For Said First Character String, If Present, In Said Annotation Database"
"Querying Said Destination Database To Obtain The Plurality Of Destination Addresses Corresponding To The Associated[] Class Codes"
"Providing ... Anchor Code(s) Which Relate(s) Said Matching Linkable Character String To Said ... Corresponding Destination Addresses To Provide A ... Hypertext Link(s) For Said First Character String"
"Said Destination Database Comprises A Plurality Of Destination Addresses Corresponding To Said Plurality Of Class Codes Of The Matching Linkable Character String"
"Writing A Plurality Of Character Strings Into A Primary Computer File"
"Qualifying The Matching Linkable Character String ... (Class Codes)"

Judge Stark also ordered supplemental briefing to address the proposed constructions of the disputed means-plus-function claim terms and scheduled a second Markman hearing to address those claim terms.

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September 6, 2013

Judge Burke recommends denial of defendant’s renewed motion to transfer

In Pragmatus AV, LLC v. Yahoo! Inc., C.A. No. 11-902-LPS-CJB (D. Del. Aug. 28, 2013), Magistrate Judge Christopher J. Burke recommended denial of defendant’s renewed motion to transfer to the Northern District of California. Judge Burke had previously recommended denial of defendant’s motion to transfer (see here), and Judge Stark had accepted the recommendation (see here). Defendant argued that plaintiff’s recent filing of a separate lawsuit against defendant in the Northern District of California (the “California Action”) altered the Jumara factors such that transfer was merited. The California Action involved different patents within the same family as the patents-in-suit in this case and involved the same accused product. Id. at 16.

The Court first addressed the relevance of In re EMC Corp., 501 F. App’x 973 (Fed. Cir. 2013), where the Federal Circuit held that “motions to transfer venue are to be decided based on the situation which existed when suit was instituted,” but also noted that “a district court may properly consider any judicial economy benefits which would have been apparent at the time the suit was filed.” Id. at 8 (internal citations and quotation marks omitted). While it observed that “the full scope of In re EMC Corp’s impact and meaning as to this question” was unclear, see id. at 9-10, “[u]ltimately, the Court need not further examine the full scope of the rule . . . [because] even if the Court could properly take all of the proffered facts related to the California Action into account for purposes of the Renewed Motion to Transfer, the Court determines that they do not add support to that motion, nor would they alter the outcome of the First Motion to Transfer.” Id. at 10-11.

The Court went on to reject all of defendant’s arguments that the California Action “undercut” the original reasons for keeping the case in Delaware. As to plaintiff’s forum preference, plaintiffs had provided a “plausible” explanation for suing in different districts that was not a bad-faith attempt to forum-shop. See id. at 11-15. The convenience of the parties factor was also unaffected. Id. at 16. Regarding practical considerations, while transfer could minimize duplication, it was also the case that the patents in the California Action were different, “and so efficiencies gained from transferring this case to the Northern District . . . might not be as extensive as Defendant argues.” Id. at 17. The Court added that transferring the case to California “would almost certainly have the effect of delaying the ‘expeditious’ progress of the case regarding the five patents-in-suit here (which is nearing the close of discovery), in order to account for the fact that the California Action is at its inception.” Id. at 18. “In conclusion, because the filing of the California Action does not, in the Court's view, alter the calculus as to any of the cited Jumara factors in favor of transfer, the Court recommends denial of [defendant's] Renewed Motion to Transfer.” Id.

Defendant had moved to enjoin the California Action in the alternative, under the first-filed rule. The Court also recommended denial of this motion, finding that “while there is an overlap in the identity of parties and there may be an overlap of certain legal issues among the two lawsuits, the cases are sufficiently different such that the first-filed rule does not apply,” particularly because there was no overlap of patents between the two actions. Id. at 20.

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September 5, 2013

Magistrate Judge Thynge construes claim terms relating to pulse oximetry.

Magistrate Judge Mary Pat Thynge recently issued a report recommending constructions for 27 claim terms across eight patents relating to pulse oximetry, which "allows for non-invasive measurement of the oxygen levels in a medical patient's hemoglobin." Masimo Corp. v. Philips Electronics North America Corp., C.A. Nos. 09-080-LPS-MPT, 11-742-LPS-MPT (D. Del. Aug. 29, 2013). The following claim terms were construed:

“scan of a plurality of possible values for said physiological parameter”;

“said scan”;

“analysis to determine which of the plurality of possible oxygen saturation values corresponds to the oxygen saturation of the pulsing blood”;

“calculating a plurality of ratios of values of the transformed first signal to corresponding values of the transformed second signal”;

“potential of said physiological parameter”;

“said physiological parameter”;

“determination of confidence in the accuracy of physiological signals”;

“signal confidence determination”;

“confidence measurement”;

“determination of signal confidence”;

“based upon at least two alternative methods of processing the sensed physiological signals from at least one of the first and second wavelengths”;

“based upon at least two alternative methods of processing the physiological signals”;

“based upon at least two different methods of processing the intensity signals”;

“based upon at least two alternative methods of processing the sensed physiological signals from at least one of the first and second wavelengths and the signals corresponding to ambient light”;

“adjustably smooth the plurality of resulting values indicative of the at least one physiological characteristic”;

“adjustably smooth the plurality of values”;

“adjustably smoothing the plurality of values”;

“speed up the adjustable smoothing”;

“the smoothing filter is sped up”;

“slow down the adjustable smoothing”;

“first inactive time period”;

“second inactive time period”;

“second time where it is responsive to said ambient light”;

“inactive portions of a drive cycle where none of said plurality of light sources are active”;

“docking station . . . configured to mate with the portable physiological measurement device”;

“patient monitoring system”; and


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September 3, 2013

Judge Andrews considers objections to Special Master decisions

In a recent memorandum order, Judge Richard G. Andrews considered “various objections that have been made to decisions of the Special Master Collins J. Seitz, Jr., Esq.” Inventio AG v. Thyssenkrupp Elevator Americas Corporation, et al., C.A. No. 08-874-RGA (D. Del. Aug. 15, 2013). First, Judge Andrews considered plaintiff’s objections and motion to modify the Special Master’s ruling with respect to Defendants’ Challenges to Plaintiff’s Designations of Privilege or Work Product in its Third Amended Privilege Log, and granted that motion in part. See id. at 1-3. Judge Andrews adopted the Special Master’s decision with regard to what country’s privilege law applied and denied defendants’ argument that “under the ‘touch base’ test, Swiss law applies because Plaintiff is a Swiss company.” Id. at 2. As Judge Andrews noted, “[i]f Defendants were correct, the ‘touch base’ test would be pretty meaningless, since once citizenship was determined, that would be the end of the analysis.” Id. Judge Andrews then assessed whether various communications were protected by the attorney-client privilege. See id. 2-3. For example, Judge Andrews found that a “communication between two non-lawyers on which a lawyer [was] copied,” and for which there was no indication that it was “sent for the purpose of obtaining or providing legal advice,” was non-privileged. Id. at 2. Similarly, a communication between an employee of the SEC and a business person of plaintiff was found non-privileged. Id. On the other hand, Judge Andrews found privileged, inter alia, bills from plaintiff’s attorneys for legal services rendered. Id. at 3. Judge Andrews found it sufficient that “[t]he bills identif[ied] specific attorneys billing for legal work, the patents involved, the date of the work, and the general nature of the work.” Id.

Judge Andrews next considered defendants’ objections to and motion to modify the Special Master’s Report and Recommendation on Defendants’ Motion to Reclassify as Non-confidential Information Designated by Plaintiff as Highly Confidential and/or Limited Modification of the Protective Order. See id. at 4-5. Defendants’ motion was granted in part. Specifically, Judge Andrews addressed whether “four categories of deposition excerpts [were] properly marked as ‘highly confidential’” and whether the “Special Master’s discussion concerning modifying the protective order [should] be reviewed.” Id. at 4. First, Judge Andrews found that some excerpts contained publicly available technical information, as those excerpts were, for example, similar to descriptions presented during the Markman hearing or appeared in a publication. See id. As such, Judge Andrews determined that such excerpts should not be marked “highly confidential.” See id. On the other hand, Judge Andrews found that an expert’s analysis of whether certain elements are in the prior art and other non-public technical information were appropriately marked as “highly confidential.” See id. Second, Judge Andrews determined that “[t]he Special Master concluded after a thorough analysis that the protective order should not be modified,” and that the “present objections are without merit.” Id. at 5. Judge Andrews further noted that “[t]here is no reason” to vacate the Special Master’s discussion regarding what the “PTO will consider during reexamination,” as the “Special Master’s Report does not purport to tell any party what information to submit or to withhold from the PTO.” Id.

Judge Andrews additionally considered plaintiff’s objections to the Special Master’s rulings on plaintiff’s and defendants’ motions to compel. See id. at 6-7. First, plaintiff objected to be “being denied discovery on ‘new jobs.’” Id. at 6. Judge Andrews explained that “[e]ven assuming that it is not Plaintiff’s fault that it did not get the discovery before and that it is acting in good faith, the lack of actual prejudice to the Plaintiff and the inherent prejudice to the system of never-ending litigation means that on balance I do not think that discovery should be extended.” Id. at 7. Second, plaintiff “object[ed] to being ordered to produce the Transfer Pricing Analysis, stating that it should only have to produce the portion relating to the United States.” Id. at 6. Judge Andrews found, however, that the Transfer Pricing Analysis was relevant and ordered its production. Id. at 7.

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September 3, 2013

Judge Stark Construes Terms of Semiconductor Patents

Fairchild Semiconductor Corp. v. Power Integrations, Inc. is a patent infringement case involving semiconductors, power supplies, and LED circuits. The plaintiff, Fairchild, asserted three patents, and the defendant, Power Integrations, counterclaimed alleging infringement of five additional patents. Following a Markman hearing in July, Judge Stark has now issued a claim construction order in the case. Judge Stark construed the following terms:

- “a second feedback signal associated with a current control loop”
- “generates the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer”
- “generating the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer”
- “means for regulating the power supply system”
- “the control circuit and the feedback circuit are operable to regulate”
- “the feedback circuit operable to support regulation by the control circuit”
- “generating a LED current for controlling the LED”
- “a sense terminal of the control circuit, coupled to the LED for detecting a LED voltage, wherein the LED voltage is coupled for adjusting the LED current”
- “a soft start circuit means”
- “An oscillator that provides a maximum duty cycle signal comprising an on-state and an off-state”
- “a control circuit coupled to an input of a power converter”
- “when the electrical energy source is uncoupled from the input of the power converter”
- “a capacitance coupled between input terminals of the input of the power converter”
- “render dormant the drive signal generator”
- “power up the drive signal generator”
- “current input circuit”
- “current limit”
- “current limit adjustment signal”
- “dynamically adjust a current limit”

Fairchild Semiconductor Corp., et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS, Memo. Op. at 1-25 (D. Del. Aug. 28, 2013).

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September 3, 2013

Judge Sleet grants motion to transfer venue to Eastern District of Michigan

In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted defendant’s motion to transfer venue to the Eastern District of Michigan. Joao Control & Monitoring Systems, LLC v. Ford Motor Company, C.A. No. 12-1479-GMS (D. Del. Aug. 21, 2013). Plaintiff is a limited liability company organized under the laws of the State of Delaware and lists its principal place of business as the residence of the inventor of the patents-in-suit in New York. Id. at 1. Defendant is a Delaware corporation with its principal place of business in Michigan. Id. at 1-2.

First, Judge Sleet determined that this action could have been brought in the Eastern District of Michigan, as defendant maintains “its principal place of business in Dearborn, Michigan, which is located in the proposed transferee forum.” Judge Sleet also noted that plaintiff “is currently litigating a suit against [defendant] in the Eastern District of Michigan.” Id. at 4.

Turning to the Jumara private interest factors, Judge Sleet found that “because [plaintiff] chose to litigate in the forum where it was formed, rather than the forum where its principal place of business is located, its choice is entitled to less deference than it would typically receive in this analysis.” Id. at 6. Defendant’s forum preference, on the other hand, was “legitimate and rational” and therefore weighed in favor of transfer. Id. at 7. Addressing whether “the claims arose elsewhere, Judge Sleet noted that “[t]o some extent, [infringement] claims ar[i]se where the allegedly infringing products [a]re designed and manufactured.” Id. at 7. Accordingly, Judge Sleet found that factor to weigh “on the transfer side of the balance” because the infringement claims arose “from infringing products that were designed and manufactured in a single, discrete location.” Id. at 8. Judge Sleet next found that the “convenience of the parties” weighed slightly in favor of transfer, because while it appeared that “each [party] [had] sufficient financial resources to litigate in either forum,” defendant’s “decision to incorporate in Delaware suggests that the inconvenience of litigation here is somewhat less than the court would ordinarily presume it to be in this case.” Id. at 9-10. Judge Sleet found “the convenience of the witnesses” to be neutral since defendant was able to specifically identify only one third-party witness outside of the District of Delaware’s subpoena power. Id. at 12. Additionally, Judge Sleet explained that “because [defendant’s] principal place of business and much, if not all, of its materials relevant to the accused technology are located in the Eastern District of Michigan,” the “location of books and records” weighed slightly in favor of transfer. Id. at 13.

Judge Sleet next addressed the Jumara public interest factors. Accounting for “practical considerations that make the trial easy, expeditious, or inexpensive,” Judge Sleet found transfer favored by the fact that “neither party has facilities, offices, or employees in Delaware.” Id. at 15. Judge Sleet further noted that “both parties are currently litigating in the Eastern District of Michigan,” and the instant litigation “involves patents related to the patents-in-suit in the Eastern District of Michigan.” Id. at Judge Sleet additionally found that neither district “has a local interest in this action that would weigh in favor of transfer.” Id. at 17.

Judge Sleet concluded that in “[c]onsidering the Jumara factors as a whole, . . . [defendant] has met its burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.

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August 28, 2013

Judge Andrews rejects “dual jurisdiction” theory, denies motion to transfer

Judge Richard G. Andrews recently decided defendants’ motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the Northern District of California in Round Rock Research LLC v. ASUSTeK Computer Inc., et al., C.A. No. 11-978-RGA (D. Del. Aug. 20, 2013).

The Court first concluded that plaintiff had not established personal jurisdiction over defendant ACI, a California company, with regard to two out of its ten counts that dealt with two different patents. For one patent, plaintiff had not sufficiently alleged that sales of named accused products had taken place in Delaware, and for the other, it had not sufficiently shown that sales of accused products had taken place prior to the filing of the complaint. See id. at 6-7.

The Court then dismissed the Taiwanese defendant, ASUSTeK, because plaintiff “ha[d] not established that there is personal jurisdiction . . . generally.” Id. at 12. Plaintiff could not establish jurisdiction under the specific jurisdiction provisions of the Delaware long-arm statute, see id. at 7-8, but the Court also considered whether “dual jurisdiction” was an available theory, under which there could be “jurisdiction under a blend of” specific and general jurisdiction provisions of the long-arm statute. Id. at 8. Although other Delaware state and federal decisions have accepted the “dual jurisdiction” theory based on their interpretation of a footnote in LaNuova D&B, S.p.A. v. Bowe Co., Inc., 513 A.2d 764,768 (Del. 1986), see id. at 7-10, the Court did not accept the theory. The Court explained that it did not believe that the dicta in this “footnote supports the conclusion that [the Delaware] Superior Court has interpreted it to have [i.e., to recognize dual jurisdiction].” Id. at 10.

The Court then denied the motion to transfer to the Northern District of California. The remaining defendant ACI was incorporated and headquartered in California, while the plaintiff was a Delaware company with its principal place of business in New York. The Court found that that the Jumara factors weighing in favor of transfer did not outweigh plaintiff’s forum choice or the fact that three other actions were filed contemporaneously in Delaware by plaintiff, making the balance of conveniences “tip[] strongly enough” in favor of keeping the case in Delaware. Id. at 19. The Court had also gained familiarity with the patents-in-suit in the related actions through a Markman hearing held after the filing of the motion to transfer. Id. at 18 (see link for the Court’s denial of a motion to transfer to the N.D. Cal. in one of the related cases). While the Court explained that “[s]ubsequent events while a motion to transfer has been pending should not be taken into account,” here “it [had been] predictable that [the Court] would likely be gaining [knowledge of the patents-in-suit] through the related cases” and therefore the Court’s familiarity with the patents was “a legitimate concern to factor into the analysis.” Id. (citing In re EMC, 501 F. App’x 973, 976 (Fed. Cir. 2013)).

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