UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`PELICAN BIOTHERMAL, LLC
`Petitioner
`
`v.
`
`VA-Q-TEC AG.
`Patent Owner
`
`Patent No. 10,766,685
`Issue Date: September 8, 2020
`Title: BOX-TYPE TRANSPORT CONTAINER
`_______________
`
`Post-Grant Review No. PGR2021-00085
`
`
`SECOND DECLARATION OF PAUL HARBER
`
`
`
`
`
`
`1
`
`PGR2021-00085
`Pelican EX1072 Page 1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`PELICAN BIOTHERMAL, LLC
`Petitioner
`
`v.
`
`VA-Q-TEC AG.
`Patent Owner
`
`Patent No. 10,766,685
`Issue Date: September 8, 2020
`Title: BOX-TYPE TRANSPORT CONTAINER
`_______________
`
`Post-Grant Review No. PGR2021-00085
`
`
`SECOND DECLARATION OF PAUL HARBER
`
`
`
`
`
`
`1
`
`PGR2021-00085
`Pelican EX1072 Page 1
`
`
`
`I, Paul Harber, do declare as follows:
`
`I.
`
`INTRODUCTION
`
`I prepared a previous Declaration on behalf of Pelican BioThermal,
`
`LLC for the Post-Grant Review (PGR) of U.S. Patent No. 10,766,685
`
`(EX1001)(“the ‘685 patent”). See EX1002. I understand that my previous
`
`Declaration was submitted in support of the Petition for the above-noted PGR.
`
`This Second Declaration adds to that previous Declaration, and is in regards to
`
`amendments proposed in the Patent Owner’s Motion to Amend dated March 11,
`
`2022.
`
`
`
`Specifics of my retention, compensation, background and
`
`qualifications are set forth in my previous Declaration (EX1002).
`
`II. THE BASES FOR MY OPINIONS
`
`In formulating my opinions as expressed in this Second Declaration, I
`
`considered exhibits identified in my previous declaration (id.), as well as the
`
`following additional exhibits:
`
`Ex #
`
`EXHIBIT
`
`1065 U.S. Application Publication No. 2009/0001086 (“Roderick”)
`1066 U.S. Patent No. 4,911,355 to Bannister (“Bannister”)
`1067 U.S. Patent No. 4,770,339 to Weimer (“Weimer”)
`1068 U.S. Patent No. 3,973,723 to Owens (“Owens”)
`1069 U.S. Patent No. 3,157,346 to Hamilton (“Hamilton”)
`1071 Second Declaration of Mr. Charles Zumwalt
`
`
`
`2
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`PGR2021-00085
`Pelican EX1072 Page 2
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`III. PRIOR ART
`A. Roderick (Exhibit 1065)
`
`I reviewed U.S. Patent Publication No. US2009/0001806
`
`(“Roderick”)(EX1065), which published on January 1, 2009. That date is more
`
`than a year before the October 27, 2014, earliest possible effective date of the ’685
`
`patent. Accordingly, I understand that Roderick is prior art to the ’685 patent.
`
`
`
`Roderick describes a container insert for providing a thermally
`
`insulated enclosure. The container insert 10 has a bottom insulation panel 12, side
`
`and end insulation panels 14, 16, 18 and 20, and a lid 30 with an insulation panel
`
`32. (EX1065, Abstract, 31, 47 and Fig. 6, below.)
`
`B.
`
`
`Bannister (Exhibit 1066)
`I reviewed U.S. Patent No. 4,911,355 (“Bannister”)(EX1066), which
`
`issued on March 27, 1990. That date is more than a year before the October 27,
`
`
`
`
`
`3
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`Pelican EX1072 Page 3
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`
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`2014, earliest possible effective date of the ’685 patent. Accordingly, I understand
`
`that Bannister is prior art to the ’685 patent.
`
`
`
`Bannister describes a foldable cardboard carton. (Id., Title and 3:32-
`
`36.) The carton is shown in its folded form in Figs. 3 and 5 of Bannister (id., Fig.
`
`3, annotated copy shown below).
`
`
`
`
`
`Bannister’s carton has a cover panel 18 that is pivotally connected to a
`
`side panel 16. The cover panel includes tabs 28 that enter and are retained in
`
`cutouts 60 and 62 on the top edge of the sidewalls of the carton, when the cover
`
`panel 18 is closed. (Id., 3:41-47, 5:6-11, and Figs. 3 and 5.)
`
`
`
`4
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`Pelican EX1072 Page 4
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`
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`C. Weimer (Exhibit 1067)
`
`I reviewed U.S. Patent No. 4,770,339 (“Weimer”)(EX1067), which
`
`issued on September 13, 1988. That date is more than a year before the October
`
`27, 2014, earliest possible effective date of the ’685 patent. Accordingly, I
`
`understand that Weimer is prior art to the ’685 patent.
`
` Weimer describes a paperboard box that includes top closure panels
`
`22 connected on folding score lines to side panels 20. (Id., 1:28-31 and 2:9-12.)
`
`Friction tabs 24 (also referred to by Weimer as friction flaps) are on the side ends
`
`of the top closure panels 22 and enter a space between the first end panel 30 and
`
`the third end panel 60 when the top panel 22 is folded downward. (Id., 3:29-32
`
`and Figs 2-4, annotated copies shown below.) The friction tabs 24 assist in a
`
`locking action to maintain the friction panels in the space between the end panels
`
`30 and 60. (Id., 4:6-10.)
`
`
`
`5
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`PGR2021-00085
`Pelican EX1072 Page 5
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`
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`D. Owens (Exhibit 1068)
`
`I reviewed U.S. Patent No. 3,973,723 (“Owens”)(EX1068), which
`
`issued on August 10, 1976. That date is more than a year before the October 27,
`
`2014, earliest possible effective date of the ’685 patent. Accordingly, I understand
`
`that Owens is prior art to the ’685 patent.
`
` Owens describes corrugated container blank that folds to form a
`
`corrugated container in which locking projections on flaps engage locking
`
`apertures for assembly. (Id., 1:1-59.) “[L]ocking apertures are provided in the side
`
`wall wing flap portions for receiving the free extremities of the second locking tab
`
`
`
`6
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`PGR2021-00085
`Pelican EX1072 Page 6
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`
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`portions, thereby to effect locking of the top flaps in their closed positions.” (Id.,
`
`1:62-65.)
`
` Owens describes locking tabs 38 connected to lateral edges of the top
`
`flaps 34 of the container. The top flaps 34 are hinged to the side walls 10 of the
`
`container. (Id., 2:49-54.) The locking tabs 38 are introduced into locking slots 18
`
`shown in Figs. 4-6 (Fig. 4 shown below with annotations), to lock the top flaps 34
`
`in a closed position. (Id., 3:29-39.)
`
`
`
`
`
`
`
`
`
`7
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`PGR2021-00085
`Pelican EX1072 Page 7
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`E. Hamilton (Exhibit 1069)
`
`I reviewed U.S. Patent No. 3,157,346 (“Hamilton”)(EX1069), which
`
`issued on . Hamilton describes a fiberboard box (Id., 1:9-11.) Hamilton’s box
`
`includes top panels 8 that connect along folding creases to a side wall panel 6. (Id.,
`
`2:15-16 and Fig. 8, below.) A tab 32 is formed on each top panel 8 and shaped to
`
`fit into a slot. (Id., 3:40-43.) When the top closure flaps are folded down, the tabs
`
`32 enter openings that interrupt the narrow strip 47 and hold the side wall panels 6.
`
`(Id., 6:6-11 and Fig. 3, 6 and 8, below, where Fig. 6 is annotated).
`
`
`
`8
`
`
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`PGR2021-00085
`Pelican EX1072 Page 8
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`
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`IV. SUPPLEMENTAL OPINIONS
`A.
`“Close to”
`I understand that Patent Owner’s proposed amended claims continue
`
`
`
`to use the phrase “close to,” as seen for example in proposed claim 50:
`
`50. (Substitute for claim 2) The transport container as claimed in
`claim 49, wherein the at least one tensioning strap includes two
`horizontally extending tensioning straps spaced apart and
`encircling the sidewall vacuum insulation panels, wherein the
`sidewall vacuum insulation panels have peripheral top and bottom
`edges and wherein the bottom vacuum insulation panel is part of
`the coherent frame-type insert and one of the horizontally
`extending tensioning straps is arranged close to the bottom edge
`such that it exerts pressure on the bottom vacuum insulation panel.
`
` The appearance and use of “close to” in this context has the same
`
`problems as I identified in my first declaration. Claim 50, which depends from
`
`proposed claim 49, calls for angled rails to serve as the corner protection elements.
`
`These angled rails must be relatively rigid to serve their purpose. However, as a
`
`
`
`9
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`PGR2021-00085
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`
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`result of the rigidity of the angled rails, the tensioning straps will exert at least
`
`some force on the bottom VIP when the strap is located across a wide range of
`
`positions along the vertical length of the angled rails. That is, at least some
`
`pressure will be exerted on the bottom VIP no matter what distance the strap is
`
`located from the bottom edges of the sidewall VIPs.
`
` Because of this natural result, it remains my opinion that in viewing
`
`claim 50, for example, a person of ordinary skill in the art would not be able to
`
`determine when a horizontal strap is “close to” the bottom edge of the VIP. As an
`
`example, a horizontal strap might be located more than halfway up the vertical
`
`length of the angled rail, and yet still exert some pressure on the bottom VIP. In
`
`that scenario, a person of ordinary skill in the art would have difficulty concluding
`
`that the strap was “close to” the bottom edge of the VIP. Therefore, the new
`
`wording of proposed claim 50 does not solve the problem raised in my first
`
`declaration on this topic, and I continue to believe that the term “close to” is
`
`indefinite.
`
`B.
`
`Top VIPs
` Proposed claim 49 and others require “a top board-like top vacuum
`
`insulation panel.” Notwithstanding the use of the word “top” twice, this
`
`requirement does nothing to support the patentability of the proposed claims.
`
`Many prior art references, such as Frysinger (EX1018) and Roderick (EX1065),
`
`
`
`10
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`PGR2021-00085
`Pelican EX1072 Page 10
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`
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`clearly show this feature, and a top VIP was also used in the NanoCool 98830-type
`
`products as well.
`
` For example, Frysinger describes a thermally insulated container 10
`
`including a vacuum panel 62 attached to the lid 18, and further vacuum panels 62
`
`in the sidewalls 14, as shown in Frysinger’s Figs. 1 and 2 below. The lid 18 is
`
`hinged to the body 12 by hinges 54. (EX1018, 6:15-18 and Fig. 1.) The lid 18
`
`compresses a gasket 50 on top of the side wall 14 vacuum panels 62, when closed.
`
`(Id., 5:49-51, Fig. 2.) Accordingly, Frysinger’s top VIP 62 in lid 18 presses
`
`against the top ends of the sidewall VIPs 62 when lid 18 is closed.
`
`
`
`
`
`11
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`
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`PGR2021-00085
`Pelican EX1072 Page 11
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`
` Roderick also describes an insulated transport container, including a
`
`vacuum insulation panel 32 that is attached to a lid 30, and that is “compressed
`
`against the top edge surfaces of the side panels and end panels when the top lid of a
`
`container is closed ….” EX1065, ¶¶3 and 47. Roderick also teaches that the top
`
`lid can be hinged. Id., ¶58.
`
` The NanoCool 98830-type products also utilize a top VIP, as seen in
`
`the photos in my first declaration. See EX1002, ¶94. The NanoCool 98596-type
`
`products use a more involved cooling engine to cover the VIP insert top opening.
`
`However, I understand from the Second Declaration of Mr. Charles Zumwalt that
`
`the cooling engine consists of a rigid structure that is placed under vacuum, and
`
`rests on the top edges of the sidewall VIPs. EX1071, ¶¶4-6. Given these traits, the
`
`cooling engine itself is basically a top “VIP,” albeit one that has more function that
`
`just being a VIP.
`
`
`
`In addition, given the teachings from Frysinger and/or Roderick and
`
`the example provided by the NanoCool 98830-type products, it would have been
`
`obvious to a POSITA to use a traditional VIP as the top covering for maintaining a
`
`desired temperature range in the payload volume. To the extent that further
`
`temperature control and maintenance were needed, it was also well-known to
`
`include PCMs inside the container itself. The well-known, prior art status of this
`
`approach is acknowledged by Patent Owner, who admits that their product line
`
`
`
`12
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`PGR2021-00085
`Pelican EX1072 Page 12
`
`
`
`using PCM inserts was prior art. See Motion to Amend at 35; EX2006; EX2007.
`
`Thus, if the cooling engine of the NanoCool 98596-type products were replaced
`
`with a more traditional top VIP such as taught by Frysinger, Roderick, and the
`
`98830-type products, such well-known PCMs could be used within the container if
`
`needed to provide a similar cooling function for temperature control within the
`
`interior of the container.
`
` Regarding the requirement that the top VIP be attached to the box
`
`cover appearing in proposed claim 52 (among others), as Frysinger and Roderick
`
`teach, it would also have been obvious to attach the top VIP to the cover of the
`
`outer box as desired. This modification would be a simple design choice. In
`
`addition, it was well-known that one would want a good abutment and seal
`
`between adjoining VIPs to help manage thermal-bridging, as I discussed in the
`
`context of Frysinger in my first declaration. EX1002, ¶¶70-71. For this purpose, it
`
`would have been obvious to a POSITA to design the dimensions of the VIP insert
`
`components, top VIP, and outer box such that when the cover of the box is closed,
`
`the top VIP presses against the top edges of the sidewall VIP so as to achieve a
`
`better seal and reduce thermal flows.
`
`
`
`In reviewing the second declaration from Mr. Zumwalt, I note that the
`
`prior art NanoCool 98596 product was already designed with this function.
`
`Specifically, the VIP insert, cooling engine, and box with foam liner was designed
`
`
`
`13
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`PGR2021-00085
`Pelican EX1072 Page 13
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`
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`and constructed so that when the box lid was closed, the underside of the box cover
`
`pressed down on the top of the cooling engine to enhance the seal between the
`
`cooling engine and the top edges of the sidewall VIPs. EX1071, ¶¶5-6. The
`
`NanoCool also incorporated a foam sealing strip at this interface to further improve
`
`the seal. Id.
`
` With respect to the limitations of proposed claims 53 and 56 (among
`
`others), in the obvious modification I discuss above where the cooling engine is
`
`replaced with a simple VIP attached to the underside of the box cover and used as
`
`the top VIP for the insert (supra ¶¶22-23), it would have also been obvious to
`
`replicate the same feature already present in the prior art NanoCool 98596 product
`
`where the components were designed such that the top VIP would press down
`
`against the sidewall VIPs when the box lid was closed. There is nothing surprising
`
`or unexpected about this configuration or the results achieved. Not only that, but
`
`in my opinion a POSITA would have never considered any other configuration – if
`
`the top VIP does NOT make contact with and press down on the sidewall VIPs
`
`when closed, that would result in a gap between them, and any POSITA would
`
`have appreciated such gaps are undesirable in a container system specifically
`
`designed for insulation and thermal control. This appreciation is evidenced both
`
`by Frysinger (see EX1002, ¶¶70-71) as well as the use of the foam sealing ring in
`
`the NanoCool 98596 prior art product (EX1071, ¶¶5-6).
`
`
`
`14
`
`PGR2021-00085
`Pelican EX1072 Page 14
`
`
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` Given the above, it is my opinion that it would have been obvious to a
`
`POSITA to employ a top board-like VIP in place of the cooling engine of the
`
`NanoCool 98596 (to the extent the cooling engine is not itself considered to be a
`
`VIP), and to attach the top VIP to a cover/lid of an outer container in the NanoCool
`
`98596, as taught by Frysinger and Roderick. It would have been further obvious to
`
`design the components such that when the box lid is closed, the top VIP attached to
`
`it would press against the top edges of the sidewall VIPs. Such modifications were
`
`within the level of skill of a POSITA and a POSITA would have had reasonable
`
`expectation of success in making the modifications. This is evidenced by the
`
`NanoCool 98596 product itself, which already had a foam liner glued to the
`
`underside of the top box cover (see EX1002, ¶92 (98596 photo); EX1071, ¶¶5-6),
`
`such that the modification would have been easily achieved by a POSITA simply
`
`by substituting a VIP for the foam liner that is already present.
`
`C. Guides and Guide Tabs
` Regarding the limitations related to guides and guide tabs appearing in
`
`proposed claim 57, Bannister, Weimer, Owens, and Hamilton all teach such a
`
`configuration as discussed above (supra, ¶¶6-14). For example, Bannister
`
`describes tabs 28 that are received in cutouts 60 and 62 on the top edge of the
`
`carton sidewalls. Weimer describes friction tabs 24 that enter a space between
`
`panels 30 and 60. Owens describes locking tabs 38 that are received in locking
`
`
`
`15
`
`PGR2021-00085
`Pelican EX1072 Page 15
`
`
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`slots 18 on the top edge of sidewalls of the container. Hamilton describes tabs 32
`
`that fit into a slot on the sidewalls when the closure flap is closed.
`
` Accordingly, in view of any one or more of those references, a
`
`POSITA also would have found guides on the top of the outer box sidewalls to be
`
`a well-known expedient for holding a top in a closed position. Such a modification
`
`was within the level of skill of a POSITA and a POSITA would have reasonable
`
`expectation of success in making the modification.
`
`D.
`
`Foam Seal Strips
` Regarding the limitations requiring foam sealing strips between VIP
`
`surfaces coming into contact as appearing, for example, in claim 58, this feature
`
`does not support patentability. As I discussed in my first declaration, Frysinger
`
`clearly discloses such sealing strips for eliminating or reducing gaps and thermal
`
`flows between abutting VIPs. See, e.g., EX1002, ¶¶70-71. Also, as I already
`
`noted above in reference to Mr. Zumwalt’s second declaration, the prior art
`
`NanoCool 98596 product incorporates a foam sealing strip placed between the
`
`cooling engine (which is itself a VIP or equivalent to one) and the VIP insert. See
`
`EX1071, ¶¶5-6. Consistent with my expectations and common knowledge of a
`
`POSITA, such strips are useful to better seal against any gaps between abutting
`
`VIP surfaces.
`
`
`
`16
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`Pelican EX1072 Page 16
`
`
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`
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`In view of Frysinger, it would have been obvious to a POSITA to
`
`provide foam sealing strips between abutting VIPs of a thermal insulated shipping
`
`container, such as the NanoCool 98596 type products, to reduce thermal edge loss.
`
`Such a modification was within the level of skill of a POSITA and a POSITA
`
`would have reasonable expectation of success in making the modification, as
`
`evidence by such strips already being present in the NanoCool 98596 product
`
`itself.
`
`E. Angled Rails
` Regarding the limitations requiring the corner protection elements to
`
`comprise angled rails that extend vertically over vertical corners of the coherent
`
`frame-type insert and extend laterally beyond the respective abutting vertical edge”
`
`as appearing, for example, in claim 49, this feature does not support patentability.
`
`As I discussed in my first declaration, corner or edge protection elements were in
`
`common usage and were described in various patents and publications, including
`
`Morrison (EX1015), Kruelle (EX1017) and Signode 1996 Catalog (EX1019). See,
`
`e.g., EX1002, ¶¶45-47. Each of those examples have an angled rail configuration
`
`that may extend vertically over vertical corners.
`
`
`
`In view of Mayer and any one or more of Morrison, Kruelle or the
`
`Signode 1996 Catalog, a POSITA would have found the VIP arrangement and
`
`corner protection elements having angled rails recited in claim 49 to be a well-
`
`
`
`17
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`PGR2021-00085
`Pelican EX1072 Page 17
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`
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`known expedient ( and equivalent to the VIP arrangement or comer protection
`
`elements of in the references cited in Grounds 2-7 of the PGR).
`
`V.
`
`CONCLUSION
`
`33.
`
`In signing this declaration, I recognize that the declaration will be
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I also recognize that I may be
`
`subject to cross-examination in the case and that cross-examination will take place
`
`within the United States. If cross-examination is required of me, I will appear for
`
`cross-examination within the United States during the time allotted for cross(cid:173)
`
`examination.
`
`34.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be tn1e; and further that these statements were made with the
`
`knowledge that willful false statements and the Jike so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Dated: CJ/ .Jucy 2{Yl. 2-
`
`Paul Harber
`
`18
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`Pelican EX1072 Page 18
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`
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