`571-272-7822
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`Paper No. 13
`Entered: December 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01728
`Patent 7,337,241 B2
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108, 42.122
`
`
`
`IPR2017‐01728
`Patent 7,337,241 B2
`
`
`
`INTRODUCTION
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`I.
`
`
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`Cavium, Inc. (“Petitioner”), filed a Petition (Paper 1, “Pet.”) for inter
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`partes review of claims 1–24 of U.S. Patent No. 7,337,241 B2 (“the ’241
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`Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Within days of filing
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`the Petition, Petitioner filed a Motion for Joinder. Paper 3 (“Joinder
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`Motion” or “Mot.”). The Joinder Motion seeks to join this proceeding with
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`Intel Corp. v. Alacritech, Case IPR2017-01392 (“the 1392 IPR”). Mot. 1.
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`The Joinder Motion indicates Intel Corp., Petitioner in the 1392 IPR, does
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`not oppose Cavium’s request to join that proceeding. Id. However, the
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`Joinder Motion is silent regarding Patent Owner’s position regarding the
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`Joinder Motion.
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`Alacritech, Inc. (“Patent Owner”) did not file an Opposition to the
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`Joinder Motion. Patent Owner filed a Preliminary Response that is silent
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`regarding the Joinder Motion. Paper 7 (“Prelim. Resp.”).
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`As explained further below, we institute trial in this inter partes
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`review on the same grounds as instituted in IPR2017-01392 and we grant
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`Petitioner’s Motion for Joinder.
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`
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`II. DISCUSSION
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`A.
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`Institution of Trial
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`In IPR2017-01392, Petitioner Intel challenges the patentability of
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`claims 1–24 of the ’241 Patent on the following grounds:
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`2
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`
`
`IPR2017‐01728
`Patent 7,337,241 B2
`
`
`Reference(s)
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`Erickson,1 Tanenbaum,2
`and Alteon3
`Erickson and Tanenbaum
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`
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`Basis
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`§ 103
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`§ 103
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`IPR2017-01392, Paper 4, 14–15.
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`
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`Claims challenged
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`1–8, 18, 22, and 23
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`9–17, 19–21, and 24
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`After considering the Petition and the Patent Owner’s Preliminary
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`Response in IPR2017-01392, we instituted trial for the above-identified
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`grounds of unpatentability. See IPR2017-01392, Paper 11, 26. Petitioner
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`here (Cavium) represents that this Petition is substantively identical to the
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`Petition in IPR2017-01392 and challenges the same claims based on the
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`same grounds. Mot. 1. We have considered the relevant Petitions and we
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`agree with Petitioner’s representation that this Petition is substantially
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`identical to the Petition in IPR2017-01392. Compare Pet. with IPR2017-
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`01392, Paper 2.
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`Patent Owner’s Preliminary Response does not point out any
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`differences from its Preliminary Response in the 1392 IPR. However, after
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`reviewing Patent Owner’s Preliminary Response here and in the 1392 IPR,
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`we find the two responses to be substantially identical, with one exception.
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`We note that, here, Patent Owner argues that QLogic, Inc. (“QLogic”)
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`should have been named as a real party-in-interest because QLogic, a wholly
`
`owned subsidiary of Petitioner (Cavium, Inc.) is a supplier to, and
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`indemnitor of, Dell (the defendant in related infringement litigation) and
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`1 U.S. Patent No. 5,768,618. (“Erickson,” Ex. 1005).
`2 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum96,” Ex. 1006).
`3 Alteon Networks Inc., Gigabit Ethernet Technical Brief: Achieving End-to-
`End Performance, 1996. (“Alteon,” Ex. 1033).
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`3
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`
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`IPR2017‐01728
`Patent 7,337,241 B2
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`Cavium’s only interest in the ’241 patent is that of its subsidiary QLogic.
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`
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`Prelim. Resp. 29–32. In the 1392 IPR, Patent Owner presented a similar
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`argument in its Preliminary Response that Petitioner Intel should have
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`named Cavium and Dell as real parties-in-interest because of the alleged
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`supplier-indemnitor relationship between Intel and Dell and Cavium and
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`Dell. IPR2017-01392 Paper 2. Here, Patent Owner argues the parent child
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`relationship between Petitioner and QLogic and the supplier/indemnitor
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`relationship between QLogic and Dell requires that QLogic be named as a
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`real party-in-interest. Prelim. Resp. 28–37.
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`We have reviewed Patent Owner’s arguments. On the record before
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`us and for purposes of this Decision, and for the similar reasons as in the
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`1392 IPR, we determine there is insufficient evidence that QLogic
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`controlled, or had the opportunity to control, this Petition and, thus, is not a
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`real party-in-interest. See Case IPR2017-01392, Paper 11, 21–25.
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`Moreover, the issue Patent Owner raises is not jurisdictional. See Lumentum
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`Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. at 6
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`(PTAB March 4, 2016) (Paper 38) (precedential). As in the 1392 IPR,
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`Patent Owner does not allege that naming additional real parties-in-interest
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`such as QLogic or Dell would bar Petitioner in the instant proceeding. See
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`Case IPR2017-01392, Paper 11, 23–24.
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`Accordingly, for essentially the same reasons stated in our Decision to
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`Institute in IPR2017-01392, we conclude Petitioner has established a
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`reasonable likelihood of prevailing with respect to at least one challenged
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`claim and we institute trial in this proceeding for claims 1–24 on the same
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`grounds as in IPR2017-01392.
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`
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`4
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`
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`IPR2017‐01728
`Patent 7,337,241 B2
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`
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`B. Motion for Joinder
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`
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`Based on authority delegated to us by the Director, we have discretion
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`to join an inter partes review to a previously instituted inter partes review.
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`35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f the
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`Director institutes an inter partes review, the Director, in his or her
`
`discretion, may join as a party to that inter partes review any person who
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`properly files a petition under section 311.” Id.
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`Without opposition to the Joinder Motion from any party, we grant
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`Petitioner’s Motion for Joinder with the 1392 IPR subject to the condition
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`that:
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`In the joined proceeding, Petitioner here (i.e., Cavium,
`Inc.) will be bound by all substantive and procedural filings and
`representations of current Petitioner in IPR2017-01392 (i.e.,
`Intel Corp.), without a separate opportunity to be heard, whether
`orally or in writing, unless and until the joined proceeding is
`terminated with respect to Petitioner Intel in IPR2017-01392.
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`In view of the foregoing, we determine that joinder based upon the
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`above-noted condition will have little or no impact on the timing, cost, or
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`presentation of the trial on the instituted grounds. Moreover, discovery and
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`briefing will be simplified if the proceedings are joined.
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`III. ORDER
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`After due consideration of the record before us, and for the foregoing
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`reasons, it is:
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`
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted for claims of the ’241 Patent as follows: (1) claims 1–8,
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`18, 22, and 23 as obvious under 35 U.S.C. § 103(a) over Erickson,
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`5
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`
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`IPR2017‐01728
`Patent 7,337,241 B2
`
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`Tanenbaum96, and Alteon and (2) claims 9–18, 19–21, and 24 as obvious
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`
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`under 35 U.S.C. § 103(a) over Erickson and Tanenbaum96;
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`IPR2017-01392 is granted and Cavium, Inc. is joined as a petitioner in
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`IPR2017-01392;
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`FURTHER ORDERED that the grounds on which an inter partes
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`review was instituted in Case IPR2017-01392 remain unchanged, and no
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`other grounds are instituted in the joined proceedings;
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`FURTHER ORDERED that IPR2017-01728 is joined with IPR2017-
`
`01392, pursuant to 37 C.F.R. §§ 42.72, 42.122, on the condition that:
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`In the joined proceeding, Petitioner here (i.e., Cavium, Inc.) will be
`
`bound by all substantive and procedural filings and representations of
`
`current Petitioner in IPR2017-01392 (i.e., Intel Corp.), without a separate
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`opportunity to be heard, whether orally or in writing, unless and until the
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`joined proceeding is terminated with respect to Petitioner Intel in IPR2017-
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`01392;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2017-01392 (Paper 12) shall govern the joined proceedings;
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`FURTHER ORDERED that IPR2017-01728 is terminated under
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`37 C.F.R. § 42.72, and that all future filings in the joined proceeding are to
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`be made only in IPR2017-01392;
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`FURTHER ORDERED that the case caption in IPR2017-01392 for all
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`further submissions shall be changed to add Petitioner (Cavium, Inc.) as a
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`named Petitioner, and to indicate by footnote the joinder of Petitioner
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`Cavium to that proceeding, as indicated in the attached sample case caption;
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`and
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`6
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`IPR2017‐01728
`Patent 7,337,241 B2
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`
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`
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`into the record of IPR2017-01392.
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`
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`PETITIONER:
`
`Patrick McPherson
`pdmcpherson@duanemorris.com
`
`PATENT OWNER:
`
`Jim Glass
`jimglass@quinnemanuel.com
`
`Joseph Paunovich
`joepaunovich@quinnemanuel.com
`
`Brian Mack
`brianmack@quinnemanuel.com
`
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`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., and
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013924
`Patent 7,337,241 B2
`
`
`
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`4 Cavium, who filed a Petition in Case IPR2017-01728, has been joined as a
`petitioner in this proceeding.
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`