` Paper No. 37
`Date Entered: November 19, 2016
`G.B.T., INC.,
`Patent Owner
`Case No. IPR2015-01197
`Patent 6,487,656 B1
` ____________
`BRIAN J. McNAMARA, Administrative Patent Judges.
`McNAMARA, Administrative Patent Judge.
`35 U.S.C. § 318(a) and
` 37 C.F.R. § 42.73

`Patent 6,487,656 B1
`On November 23, 2015, we instituted an inter partes review of claims
`1, 2, 10, 11, 19, and 20 of U. S. Patent No. 6,487,656 B1 (“the ’656 Patent”).
`Paper 14 (“Dec. to Inst.”). Kinglite Holdings, Inc. (“Patent Owner”) filed a
`Patent Owner Response (Paper 20, “PO Resp.”), American Megatrends, Inc.,
`Micro-Star International Co., Ltd, MSI Computer Corp., Giga-Byte
`Technology Co., Ltd., and G.B.T., INC. (collectively, “Petitioner”) filed a
`Petitioner Reply (Paper 27, “Pet. Reply”). Petitioner filed a Motion to
`Exclude (Paper 30, “Mot. To Exclude”), and Patent Owner filed an
`Opposition to Petitioner’s Motion to Exclude (Paper 35, “Opp. To Mot. To
`Exclude”). A transcript of an oral hearing held on August 16, 2016 (Paper
`36, “Hr’g Tr.”) has been entered into the record.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We base our decision on
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Having reviewed the arguments of the parties and the supporting
`evidence, we conclude that Petitioner has demonstrated by a preponderance
`of the evidence that the challenged claims are unpatentable.
`The ’656 Patent describes a system and method to enable PC
`manufacturers and others to provide additional Basic Input/Output System
`(BIOS) functionalities while minimizing the impact on system BIOS code.
`Ex. 1001, col. 2, ll. 19–22. In the ’656 Patent, when an interface module is
`interfaced to the system BIOS and when a request to perform a task is
`received, device information associated with the task is received from the
`system BIOS. Id. at col. 7, ll. 50–53. The interface module translates the

`Patent 6,487,656 B1
`system device information to provide translated information, which is then
`transferred to a corresponding module. Id. at col. 7, ll. 53–56. Patent Owner
`notes that information regarding system devices, such as processor
`performance data and memory size, is accessed and displayed on a screen
`before the operating system takes control. Prelim. Resp. 3
`Claim 1 is illustrative.
`1. A method to provide functionalities to a system BIOS,
`interfacing an interface module to the system BIOS;
`receiving a request from the system BIOS to perform a
`receiving the system device information associated with
`the task from system BIOS;
`translating, by the interface module, the system device
`information to provide translated information; and
`transferring the translated information to a corresponding
`In our Decision to Institute, we instituted trial on the following
`challenge to patentability:
`Claims 1, 2, 10, 11, 19, and 20 as obvious under 35 U.S.C. § 103(a)
`over the combination of Nunn1 and AMIBIOS.2
`1 U.S. Patent No. 6,317,828 B1 issued Nov. 13, 2001. Ex. 1003
`2 AMIBIOS Technical Reference. American Megatrends, Inc. 1998
`(“AMIBIOS”). Ex. 1005

`Patent 6,487,656 B1
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their “broadest reasonable construction in light of
`the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b);
`see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141–46 (2016).
`The terms also are generally given their ordinary and customary meaning as
`would be understood by one of ordinary skill in the art in the context of the
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`In our Decision to Institute, we applied the following constructions
`agreed to by the parties and apply these same constructions in this Decision:
`Agreed Construction
`A request . . . to perform a task
`Soliciting action to be taken
`Converting to another data format
`Corresponding module
`A software module associated with
`another module
`In our Decision to Institute, we applied the broadest reasonable
`interpretation to the following term that required construction:
`Interface module. We construed this term to mean program
`instructions used to translate information and to transfer the translated
`information. Dec. to Inst. 9.
`Patent Owner does not dispute our construction explicitly or propose
`an alternative construction, but in its arguments states that “the ‘interface
`module’ is a program allowing manufacturers to provide additional
`functionality to the system BIOS.” PO Resp. 7. We discussed the term
`“interface module” extensively in our Decision to Institute, noting that the

`Patent 6,487,656 B1
`function of the interface module recited in independent claims 1, 11, and 19
`is to provide translated information and that the claim structure is consistent
`with the disclosure in the Specification that: “[T]he interface module
`translates the system device information to provide translated information.
`The translated information is then transmitted to a corresponding module.”
`Dec. to Inst. 8 (citing Ex. 1001, col. 7, ll. 54–56). The ’656 Patent states that
`the interface module “enables various parties such as PC system
`manufacturers and motherboard manufacturers to provide additional system
`BIOS functionalities.” Ex. 1001, col. 7, ll. 46–49. Neither this disclosure
`nor the claims limit use of the interface module to manufacturers, as argued
`by Patent Owner. Thus, in this Decision, we apply the same construction we
`applied in the Decision to Institute.
`The Patent Owner Response states that “[f]or the reasons set forth in
`Kinglite’s motion to exclude, there are evidentiary issues surrounding
`AMIBIOS reference as a prior art publications. Paper No. 17.” PO Resp. 1.
`On December 7, 2015, Patent Owner filed Patent Owner’s Objection to
`Evidence Pursuant to 37 C.F.R. § 42.64(a)(1). Paper 17 (“PO Obj. to
`Evid.”). In its Objection, “Patent Owner asks the Patent Trial and Appeal
`Board to exclude Exhibit 1005 for the reasons set forth below.” PO Obj. to
`Evid. 2. However, Patent Owner did not preserve its objection by filing a
`motion to exclude the evidence, as required by 37 C.F.R. 42.64(c). In order
`to facilitate resolution of objections by the parties themselves, our rules are
`structured to require the objection to identify the grounds for the objection
`with sufficient particularity to allow correction in the form of supplemental
`evidence that the party relying on the evidence may serve within 10 business

`Patent 6,487,656 B1
`days. 37 C.F.R. § 46.64(a), (b). In the event that an objection is not
`resolved, the objecting party may preserve the objection by filing a motion
`to exclude. 37 C.F.R. § 42.64(c). Patent Owner raised this issue in its
`Preliminary Response, and we outlined Patent Owner’s options in our
`Decision to Institute. Dec. to Inst. 5–6. Patent Owner waived its objection
`on evidentiary grounds when it did not file a Motion to Exclude. We do not
`incorporate by reference into the Patent Owner Response arguments made in
`another paper. 37 C.F.R. § 42.6(a)(3).
`In addition, the status of AMIBIOS as a publication is a substantive
`issue that is not proper subject matter of a motion to exclude. We addressed
`the substance of Patent Owner’s contentions concerning AMIBIOS in
`IPR2015-01094, finding that AMIBIOS was publicly available at least as
`early as June 1998. American Megatrends, Inc. v. Kinglite Holdings, Inc.,
`Case IPR2015-01094, slip. op. at 9–13 (PTAB Nov. 04, 2016) (Paper 48,
`Final Written Decision). For the same reasons, we apply the same result in
`this Decision and find that AMIBIOS is prior art to the ’656 Patent, which
`issued from an application filed on December 10, 1999.
`The sole challenge on which we instituted trial is Petitioner’s
`contention that claims 1, 2, 10, 11, 19, and 20 are obvious under 35 U.S.C.
`§ 103(a) over the combination of Nunn and AMIBIOS. We resolve the
`question of obviousness on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of nonobviousness, i.e., secondary

`Patent 6,487,656 B1
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The test for obviousness is whether the combination of references, taken as a
`whole, would have suggested the patentees’ invention to a person having
`ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
`We apply “an expansive and flexible approach” to the question of
`obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, requires more than a mere
`showing that the prior art includes separate references covering each
`separate limitation in a claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d
`1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional
`showing that a person of ordinary skill at the time of the invention would
`have selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention. Id. In many cases
`a person of ordinary skill “will be able to fit the teachings of multiple patents
`together like pieces of a puzzle,” recognizing that a person of ordinary skill
`“is also a person of ordinary creativity, not an automaton.” Id. at 420–21.
`Against this general background, we consider the references, other evidence,
`and arguments of the parties.
`Claim 1, 10, and 19
`Independent claims 1, 10, and 19, which respectively are drawn to a
`method, computer usable medium having program codes embodied therein,
`and a system, recite similar limitations concerning providing functionalities

`Patent 6,487,656 B1
`to a system BIOS. Therefore, we treat these claims together, using claim 1
`as exemplary. For convenience, we refer to claim element designations used
`in Petitioner’s claim charts.
`We agree with Petitioner that Nunn and AMIBIOS concern providing
`functionalities to a system BIOS, as recited in the preamble of claim 1.
`Petitioner contends that Nunn discloses a setup program that is part of BIOS
`allowing a user to configure the operating system and select a particular
`initial program load (IPL) device. Pet. 14–15. According to Petitioner, in
`Nunn, the setup program presents to the user a list of adapter selections on-
`screen that permit the user to control the order of the drives for the operating
`system to be initialized as a boot drive. Id. at 15. Petitioner notes that
`AMIBIOS discloses that a setup program is typically requested by system
`BIOS when the user presses a function key, causing the generation of a
`hardware interrupt that calls an interrupt service routine. Id. at 16.
`Turning to the claimed interface module (claim element 1.1),
`Petitioner argues that Nunn’s Utility Setup Program is collated in BIOS
`ROM, is the interface module to the system BIOS, and provides displayable
`information about the configuration of the computer. Id. at 19.
`Petitioner also cites Nunn as disclosing translating information
`relating to bootable devices interconnected to the computer into a different
`format in preparation for display, noting that a computer graphics module
`acts as a correspondent module to the setup program to display the translated
`information on screen. Id. at 19, 23–24. Thus, Petitioner contends that
`Nunn discloses claim element 1.4, i.e., translating by the interface module,
`the system device information to provide the translated information and
`claim element 1.5, i.e., transferring the translated information to a

`Patent 6,487,656 B1
`corresponding module. Pet. 23–24. Petitioner also cites the video interrupt
`routine in AMIBIOS as disclosing claim element 1.5. Pet. 24.
`Noting that Nunn discloses these features at a high level, and that
`information cannot be displayed without a monitor screen and associated
`graphics, Petitioner cites AMIBIOS as disclosing how system BIOS
`interacts with setup and other programs to facilitate displaying images. Id.
`at 20. AMIBIOS discloses that system BIOS, which provides fundamental
`services for proper operation and is active the entire time the computer is on,
`loads (bootstraps) the operating system and remains active for requests by
`the operating system to activate device drivers that service hardware
`components. Ex. 1005, 9–10. One part of the BIOS receives and processes
`requests from programs to perform standard BIOS services, using an
`interrupt mechanism. Id. at 8. The BIOS takes instructions from the
`operating system and translates these commands to the exact instructions
`that the hardware itself understands. Id. at 10. AMIBIOS also discloses a
`video BIOS and an Option ROM BIOS that employs shadowing and can be
`used, for example, to translate Ethernet commands into code the computer
`can understand and vice versa. Id. at 12.
`Petitioner notes that setup invokes a BIOS service by issuing an INT
`10h, for the video interrupt routine. Id. The functions performed include the
`graphics module setting the video mode, translating system configuration
`data into the format required by the graphics module, and the controller
`software, in tandem with the system BIOS, writing the character string
`produced by the program. Id. Thus, according to Petitioner, a person of
`ordinary skill would have understood that to display setup-related
`configuration data, when the setup program has renderable data to display,

`Patent 6,487,656 B1
`the setup program requests video service from the BIOS, causing an
`interrupt to invoke a BIOS display service request, and the BIOS/Utility
`Setup gets the IPL device information that requires translation and formats it
`for compatibility with the graphics controller for display. Id.
`Noting that Nunn’s method is implemented in and operated by BIOS
`codes and that in Nunn a system setup program is part of BIOS, Patent
`Owner contends that Nunn does not disclose the claimed interface module
`because “[s]omething that is in BIOS would not be understood as interfacing
`with BIOS.” PO Resp. 5. Petitioner acknowledges that “Nunn describes
`how a system Setup program is part of BIOS.” Pet. 15. However, Petitioner
`responds that “a setup program, properly understood, is an interface program
`which interfaces with the system BIOS.” Pet. Reply 8. According to
`Petitioner, packaging a setup program with system BIOS or in the same
`firmware is not significant because a setup module provides a graphical user
`interface (GUI) for the user to view and manipulate BIOS settings relevant
`to BIOS functions. Id.
`Petitioner also points out that Patent Owner’s expert, Dr. Nazarian,
`testified that a person of ordinary skill at the time of the ’656 patent
`application would not have understood setup necessarily to be a part of
`system BIOS. Hr’g Tr. 34:10–22. Petitioner notes Dr. Nazarian’s testimony
`that system BIOS does not need a setup program and that the setup program
`could be removed from system BIOS, so that the system would boot up
`using default settings, without the user having the option of entering setup
`and making adjustments. Pet. Reply 7 (citing Ex. 1015, Transcript of
`Deposition of Dr.Shahin (“Nazarian Tr.” 22:1–17). As further support for
`its position that setup is an optional module, Petitioner points to US Patent

`Patent 6,487,656 B1
`5,836,013, which is the subject of American Megatrends Inc. v. Kinglite,
`Case IPR2015-01189. Id. at 8. (citing Ex. 1001, col 3, ll. 13–16 (“System
`ROM 210 [that] comprises BIOS (Basic Input/Output System) 310, and
`optionally setup program 303[.]”)). Petitioner also contends that AMIBIOS
`discloses modules in which system BIOS is always available as an interface
`between hardware and software, but other modules, including the BIOS
`Setup Utility execute only when the required conditions exist, i.e., the user
`presses <DEL>. Hr’g. Tr. 31:5–32:17; Ex. 1005, 9.
`Nunn describes a BIOS/Utility display “routine.” Ex. 1003, col. 3,
`ll. 54–56. AMIBIOS states “[t]he BIOS (Basic Input/Output System) is a
`collection of routines between the hardware and systems software.” Ex.
`1005, 7. Based on these disclosures in Nunn and AMIBIOS and on Dr.
`Nazarian’s testimony, we are persuaded that a person of ordinary skill would
`have been motivated to provide the claimed functionality in an interface
`module. In addition, we agree with Petitioner that, notwithstanding the
`language “interface to,” the claims do not limit the physical location of the
`claimed interface module and do not preclude implementing the claimed
`interface module as part of the BIOS code, which the disclosures in the
`references include as routines in a collection of routines.
`Turning to claim element 1.4, Patent Owner argues that Nunn’s BIOS
`display “does not comprise ‘program instructions,’ nor does it translate or
`transfer information.” PO Resp. 5. In this context Patent Owner
`characterizes Nunn’s Setup display as a user interface to facilitate user
`interaction with the machine, rather than the claimed interface module. Id.
`at 6–7. Patent Owner contrasts Nunn’s approach with that of the ’656
`Patent, arguing that the interface module of the ’656 Patent does not allow

`Patent 6,487,656 B1
`for human interactions and instead enables PC system manufacturers and
`motherboard manufacturers to provide additional system BIOS
`functionalities with minimal impact to the system. Id.
`Patent Owner’s argument is not persuasive. As Petitioner emphasizes,
`the Specification of the ’656 Patent does not state the invention is limited to
`interface modules developed by manufacturers: there is no such limitation
`in the claims, and we have not construed interface module to be so limited.
`Patent Owner also argues that Petitioner has not provided evidence
`that a prior art user interface is capable of translating and transferring
`information. Id. at 7. Arguing that the evidence Petitioner relies upon only
`describes Nunn’s display of bootable devices on a screen, Patent Owner
`argues that “[n]owhere does Nunn expressly teach translating information of
`detected bootable devices for display.” PO Resp. 8–9 (citing Ex. 2008 ¶ 6).
`According to Patent Owner, “nothing . . . corresponding to the translation of
`information, e.g., a binary value to a text string, is conducted by the BIOS
`setup program, as required by the challenged claims. As there is no
`‘translated information,’ there also can be no ‘transfer’ of such information,
`which is separately required by the claims.” Id. at 9 (emphasis omitted).
`Petitioner responds that a graphical user interface (GUI) can be an
`interface module, as we have construed that term, if it translates and
`transfers information, and that Nunn is more than just a display because its
`disclosure of a setup program demonstrates the presence of program
`instructions, e.g., a software routine for display. Pet. Reply 5–6 (citing Ex.
`1010, Abstract).
`Nunn’s setup display allows a user to specify a bootable device to
`serve as the boot drive of the computer system. Ex. 1003, Abstract.

`Patent 6,487,656 B1
`Petitioner argues that a graphics controller requires initialization and must be
`able to send image data to the screen (Pet. Reply 8–9 (citing Nazarian Tr.
`33:10–20)). Petitioner cites extensively to the testimony of Patent Owner’s
`expert, Dr. Nazarian, as supporting the proposition that a graphics display
`satisfies the translation and transfer features recited in the claims. Petitioner
`notes, for example, Dr. Nazarian’s testimony that one purpose of the claimed
`translator is to take raw system BIOS data and translate it into a readable
`character string, even if not needed for display on a screen, (Pet. Reply 9
`(citing Nazarian Tr. 43:17–44:14; 126:5–8)) and that a setup program, such
`as that disclosed in Nunn and AMIBIOS, allows a user to examine and alter
`raw system information stored in CMOS and accessible through system
`BIOS (id. (citing Nazarian Tr. 87:6–10; 90:12–18; Righi Decl. ¶¶ 23, 37).
`Petitioner also cites AMIBIOS as disclosing translating raw data into
`parameters (translated information) to be used by a corresponding video
`service module in which the raw data is formatted with an attribute (BL),
`line and column numbers, and color, so that once the parameters are created
`the INT 10 video interrupt routine can display the parameters (translated
`information). Pet. Reply 10–11. In view of these disclosures, we agree with
`Petitioner that the references disclose claim element 1.4.
`Turning to the remaining elements of claim 1, Petitioner cites Nunn’s
`disclosure of a setup program allowing the user to configure the operating
`system and specify a bootable device as teaching claim element 1.2, i.e.,
`receiving a request from the system BIOS to perform a task. Pet. 23. We
`agree. We also agree with Petitioner that Nunn’s disclosure of a system
`BIOS making routine queries to an option ROM discloses claim element 1.3,
`i.e., receiving device information associated with the task from system

`Patent 6,487,656 B1
`BIOS. Id. This feature is also disclosed in AMIBIOS, which states that one
`part of BIOS receives and processes requests, in the form of interrupts, from
`programs to perform standard BIOS services. Ex. 1005, 8. Thus, we agree
`with Petitioner that all the limitations of independent claims 1, 10, and 19
`are found in the references.
`Petitioner asserts that a person of ordinary skill would have been
`motivated to combine the teachings of Nunn and AMIBIOS in order to make
`using setup easier. Pet. Reply 3 (citing Righi Decl. ¶ 70). Patent Owner
`contends that motivation is lacking because each reference discloses a user
`friendly start-up environment. PO Resp. 4. Patent Owner also notes that
`AMI’s first customer, Dell Computer, was the assignee who employed
`inventor Nunn as a BIOS engineer at the time and argues “[t]hat Ms. Nunn,
`. . . did not think to use a reference generated by AMI is compelling
`empirical evidence as to how non-obvious it was to combine Nunn and the
`AMIBIOS references.” Id. at 5.
`AMIBIOS and Nunn address aspects of using system BIOS, and, as
`discussed concerning making the use of setup easier, Petitioner has
`articulated a reason a person of ordinary skill and creativity would have
`motivated to combine Nunn and AMIBIOS to arrive at the invention recited
`in independent claims 1, 10, and 19. We agree with Petitioner that Patent
`Owner offers no support for its assertions concerning inventor Nunn. The
`motivations or thinking behind any action or inaction by Dell or inventor
`Nunn is pure speculation by Patent Owner. As Petitioner points out, Patent
`Owner’s expert, Dr. Nazarian, testified that any number of commercial or
`other circumstances having nothing to do with obviousness under 35 U.S.C.
`§ 103 can explain Dell’s behavior. In addition, Patent Owner has not

`Patent 6,487,656 B1
`identified any law to support its theory that an incorporation of references
`into a real world system is required to demonstrate obviousness.
`In consideration of the above, we agree with Petitioner that the Nunn
`and AMIBIOS references disclose the features recited in independent claims
`1, 10, and 19 and that a person of ordinary skill would have been motivated
`to combine these references to arrive at the invention recited in these claims.
`Claims 2, 11, and 20
`Remaining challenged claims 2, 11, and 20, which depend from
`independent claims 1, 10, and 19, respectively, each recite a similar
`limitation, i.e., the corresponding module performs (or is caused to perform)
`the task associated with the transferred translated information. Petitioner
`cites Nunn’s disclosure of a user specifying a bootable device to operate as a
`boot drive of the computer system, as disclosing this limitation. Pet. 24
`(citing Ex. 1003, col. 7, ll. 36–38). Patent Owner disputes Petitioner’s
`“equat[ing] a user’s specification of the boot drive with ‘a task associated
`with the transferred information’” and argues that to be consistent with Mr.
`Righi’s analogizing a graphics module to a corresponding module, “the
`user’s specification of the boot drive must be performed by the graphics
`module. This clearly does not occur.” PO Resp. 32.
`Petitioner notes Nunn’s disclosure of translating information
`concerning bootable devices interconnected to the computer into a different
`format in preparation for display, and argues that a computer graphics
`module acts as a correspondent module to a setup program for displaying the
`translated information on the screen for the user to view. Pet. 19; Pet. Reply
`14. We agree with Petitioner that a person of ordinary skill would have
`understood that a user’s selection of a particular function triggers the BIOS

`Patent 6,487,656 B1
`to make a function call request to setup, e.g., to show the user selection on
`the screen via the graphics module, causing the graphics module to perform
`the task associated with the transferred and translated system information, as
`recited in claims 2, 11, and 20. Pet. Reply 14–15.
`In consideration of the above, we agree with Petitioner that the Nunn
`and AMIBIOS references disclose the features recited in dependent claims 2,
`11, and 20 and that a person of ordinary skill would have been motivated to
`combine these references to arrive at the invention recited in these claims.
`Petitioner moves to exclude the deposition testimony of its expert
`because the cross examination was conducted by Patent Owner’s back-up
`counsel, George Summerfield, before he was admitted pro hac vice. Mot.
`To Exclude. We have addressed this issue in related proceedings. See
`American Megatrends Inc., et. al. v. Kinglite Holdings, Inc., Case IPR2015-
`01079, slip op. at 25–29 (PTAB October 27, 2016) (Paper 49, Final Written
`Decision). In accordance with our decision in those proceedings,
`Petitioner’s Motion to Exclude in this proceeding is DENIED.
`For the reasons discussed above, we conclude that claims 1, 2, 10, 11,
`19, and 20 are unpatentable under 35 U.S.C. § 103 as obvious over the
`combination of Nunn and AMIBIOS.
`In consideration of the above it is
`ORDERED that claims 1, 2, 10, 11, 19, and 20 of the ’656 Patent are

`Patent 6,487,656 B1
`FURTHER ORDERED that Petitioner’s Motion to Exclude is
`DENIED; and
`FURTHER ORDERED, that because this is a final written decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`Vivek Ganti
`Gregory Ourada
`Christopher Frerking

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