Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 1 of 10 PageID #: 25271
`Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 1 of 10 PagelD #: 25271
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`EXHIBIT 16
`EXHIBIT 16
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`Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 2 of 10 PageID #: 25272
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`HIGHLY CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v. )
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`CATERPILLAR INC.,
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`Defendant.
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`________________________________
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`C.A. No. 17-770-JDW
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`REBUTTAL EXPERT REPORT OF JOSEPH RAKOW, Ph.D., P.E., F.A.S.M.E.
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`HIGHLY CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY
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`Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 3 of 10 PageID #: 25273
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`HIGHLY CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY
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`V. Non-infringement Analysis of Asserted Patents
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`A. Summary of non-infringement opinions
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`[10] The road-building machine as claimed in claim 9, characterized in that the
`valve control is designed such that all the wheels are raised in a first operating
`mode and are lowered in a second operating mode, this taking place in each case
`by the same amount.
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`1.
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`All the wheels are raised or lowered
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`53.
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`As discussed above, I understand that the patentee has the burden of proving infringement,
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`and that literal infringement is established only if each and every element of a claim is
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`shown to be present in the accused product or process. Dr. Lumkes has not shown that the
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`Large Milling Machines practice each and every element of Claim 10.
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`54.
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`Dr. Lumkes states that, “Each track assemblies (undercarriages) of the Accused Ride
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`Control Machines have a planetary drive and idler component, each having a round pulley
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`or gear around which the track pads rotate […] This round pulley or gear is a wheel. For
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`each of the track assemblies, the round pulley is raised in the first operating mode and are
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`[sic] lowered in the second operating mode.”95 The “planetary drive” and “idler
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`component” that Dr. Lumkes references are shown in Figure 16.96 The PM620 Parts
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`Manual refers to the component labeled as element 1 as a “PLANEARY GP – FINAL
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`DRIVE” and the component labeled as element 2 as an “IDLER GP – TRACK.”
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`55.
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`In my opinion, a PHOSITA would not consider the “planetary drive and idler component”
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`each having a “round pulley or gear” to be a wheel. Dr. Lumkes asserts that each track
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`assembly of the Accused Products performs substantially the same function as a wheel,
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`which he asserts is to “engage the ground surface.”97 Neither the planetary drive nor the
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`95 Lumkes Initial Expert Report, ¶142.
`96 CAT-770_004719, pp. 505-506/894.
`97 Lumkes Initial Expert Report, ¶144.
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`idler component engage the ground surface. The function of the planetary drive is to modify
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`the gear speed ratio to ensure proper track speed is maintained. The function of the idler
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`component is to provide an axis about which the tracks can rotate as well as maintain track
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`alignment. Neither the planetary drive nor the idler component is a wheel that engages the
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`ground surface.
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`Figure 16. Diagram of 01A build track assembly with planetary drive and idler
`components annotated.
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`56.
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`Dr. Lumkes also asserts that the track assemblies of the Accused Products achieve
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`substantially the same result as wheels, which he asserts is that “the machines moves.”98
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`Dr. Lumkes does not explain how a planetary drive or the idler component are used to
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`“move” the machine.
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`98 Lumkes Initial Expert Report, ¶144.
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`Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 5 of 10 PageID #: 25275
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`57.
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`Dr. Lumkes then states that, “To the extent this limitation is not literally present, this claim
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`is still infringed under the doctrine of equivalents in my opinion. In the context of the ’309
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`patent, the track assemblies of the Accused Ride Control Machines perform substantially
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`the same function (engage the ground surface) in substantially the same way (hydraulically
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`powered to rotate) to achieve substantially the same result (the machine moves) as a
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`wheel.”99 Dr. Lumkes seems to be describing a hypothetical scenario in which the track
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`assemblies of the PM620 are replaced by wheels.
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`58.
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`A PHOSITA at the time of the alleged infringement would understand that a track assembly
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`does not perform substantially the same function as a wheel in substantially the same way
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`to achieve substantially the same result. A PHOSITA would understand that track
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`assemblies are selected as an alternative to wheels during design processes because track
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`assemblies and wheels have substantially different capabilities and functions as
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`acknowledged in literature.100,101,102,103 The function of a track assembly is substantially
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`different from a wheel whereas, for example, elements of the track assembly engage and
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`disengage with each other as the vehicle travels, while a wheel or tire would typically not
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`disengage.
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`59.
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`A track assembly achieves substantially different results from a wheel in at least two
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`additional ways. First, a track assembly functions to distribute the weight of a machine
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`over a dispersed area while engaging the ground.104,105 A wheel concentrates the same
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`weight of a machine over a smaller area while engaging the ground. A PHOSITA would
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`99 Lumkes Initial Expert Report, ¶144.
`100 Wheels vs. Tracks - A Fundamental Evaluation from the Traction Perspective. (EXPONENT_0006382).
`101 Analysis of Track and Wheel Soil Compaction. (EXPONENT_0006089).
`102 Do I Need Equipment with Tracks or Wheels? (EXPONENT_0006078).
`103 Benjamin Holt and the Invention of the Track-Type Tractor (EXPONENT_0005743).
`104 Benjamin Holt and the Invention of the Track-Type Tractor (EXPONENT_0005743), p. 2/19.
`105 A New Caterpillar Development (EXPONENT_0005741), p. 1/2.
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`understand that pavement, over which the Accused Products must traverse, is susceptible
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`to damage from elevated and concentrated loadings,106,107,108 and the track assembly can
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`function to decrease potential damage to the pavement from the weight of the machine
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`while engaging the ground when compared to a wheel. Figure 17 shows an illustrative
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`schematic that qualitatively shows the difference in the pressure experienced by the
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`pavement from the weight of the machine as transferred through either a track assembly
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`(left) or wheel (right). As can be seen in Figure 17, the wheel produces a more concentrated
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`load on the pavement, potentially increasing the likelihood that the pavement will be
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`damaged when compared to the track assembly. The track assembly achieves a different
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`result by distributing the weight of the machine over a larger area.
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`106 Assessment of Damage Caused to Pavements by Heavy Trucks in New England. (EXPONENT_0006069).
`107 Quantifying Incremental Pavement Damage Caused by Overweight Trucks (EXPONENT_0005721), p. 1/20.
`108 Mechanistic-Empirical Study of Effects of Truck Tire Pressure on Pavement. (EXPONENT_0006372).
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`Figure 17. Illustrative schematic demonstrating that a track assembly functions
`substantially different and produces a substantially different result while
`engaging the ground. The weight of the machine is distributed over a larger
`area for the track assembly compared to the wheel, thereby decreasing
`potential damage to the pavement.
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`60.
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`Second, a track assembly generally enables traversal over rougher or looser terrain109,110,111
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`when compared to a wheel. A track assembly engages the ground with a larger surface
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`area, increasing the stability and traction of the machine when compared to a wheel. With
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`the machine operating in and around construction sites and milled roadways, a PHOSITA
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`would understand that track assemblies function to establish the stable and firm traversal
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`109 Benjamin Holt and the Invention of the Track-Type Tractor (EXPONENT_0005743), p. 2/19.
`110 A New Caterpillar Development (EXPONENT_0005741), p. 1/2.
`111 Do I Need Equipment with Tracks or Wheels? (EXPONENT_0006078), p. 5/11.
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`of the machine over rough or loose terrain better than wheels would.112 The track assembly
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`achieves a different result by distributing the weight of the machine over a larger area,
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`achieving enhanced stability, traction, and traversal capabilities.
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`61.
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`Therefore, Dr. Lumkes is incorrect in alleging that “any differences between the tracks of
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`the Accused Ride Control Machines and the recited wheel are insubstantial.”113
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`62.
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`Dr. Lumkes also does not explain how a track assembly performs the “function” of
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`“engag[ing] the ground surface” to achieve the “result” of “the machine moves.”
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`Dr. Lumkes also does not explain how the “way” of “hydraulically powered to rotate” is
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`used to perform the “function” of “engag[ing] the ground surface.”
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`63.
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`Dr. Lumkes references the ’309 Patent when he quotes, “When a front wheel is referred to
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`hereinafter, this is also understood to mean a caterpillar.”114,115 Dr. Lumkes then incorrectly
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`states, “Using this express definition of ‘wheels,’ the Accused Ride Control Machines’
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`track assembly constitute a ‘wheel,’ as recited in claim 10.”116 Dr. Lumkes is
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`misinterpreting the purpose of this statement in the patent. Rather, this statement appears
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`to be utilized because the discussion of one embodiment, which focuses on wheels, applies
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`equally to an alternate embodiment, with track assemblies (i.e., caterpillars), even though
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`that alternative embodiment is not necessarily discussed in all respects.
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`64.
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`The ’309 Patent expressly uses the phrase “wheel or caterpillar” in other parts of the
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`specification117 and claims.118 If wheel and caterpillar are interchangeable, then the term
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`112 Mechanistic-Empirical Study of Effects of Truck Tire Pressure on Pavement (EXPONENT_0006362), p. 3/10.
`113 Lumkes Initial Expert Report, ¶144.
`114 Lumkes Initial Expert Report, ¶144.
`115 ’309 patent, 2:32-33.
`116 Lumkes Initial Expert Report, ¶144.
`117 See for example, ’309 patent, 1:10-15, 2:28-32, and 4:54-59.
`118 ’309 patent, Claims 1 and 26.
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`Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 9 of 10 PageID #: 25279
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`“wheel or caterpillar” as used in Claims 1 and 26 would be redundant. Dr. Lumkes
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`incorrectly broadens the scope of Claim 10.
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`65.
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`As discussed in the prior section and shown in Figure 18,119 the Accused Products engage
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`the ground via four track assemblies, not wheels. Therefore, the Accused Products do not
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`practice “all the wheels are raised in a first operating mode and are lowered in a second
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`operating mode.”
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`66.
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`Accordingly, Dr. Lumkes has not shown that the Large Milling Machines practice each
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`and every element of Claim 10 for at least the reasons described above.
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`Figure 18. Annotated image of a PM620 01A showing four track assemblies;
`two front track assemblies and two rear track assemblies.
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`119 CAT_00037701, p. 7/24.
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`Case 1:17-cv-00770-JDW Document 249-16 Filed 10/25/23 Page 10 of 10 PageID #: 25280
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`VIII. Conclusion
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`90.
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`For at least the reasons stated above, it is my opinion that that the Accused Products do not
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`infringe on  the Asserted Claims  based  on  the  evidence  provided by  Dr.  Lumkes  in  his
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`Initial Expert Report.
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`I declare under the penalty of perjury that the foregoing is true and correct. 
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`Executed on June 16, 2023 at Menlo Park, California 
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`Joseph Rakow, Ph.D., P.E., F.A.S.M.E. 
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