Knobbe attorneys recently presented on "What Businesses & Engineers Need to Know About Recent Changes in U.S. Patent Law" at an event hosted by the Sino-American Biomedical and Pharmaceuticals Professionals Association (SABPA), the American Society of Mechanical Engineers (ASME) and Knobbe Martens.
Knobbe Martens' attorneys Brenden Gingrich and Kathleen Mekjian conducted a workshop on Sunday, May 5, 2012 at the 99th Annual Meeting of The American Association of Immunologists (AAI), entitled "Monetizing Your Intellectual Property: Protecting Ideas that Generate Income." This presentation explores the types of research innovations that are protectable and provides practical tips for protecting innovations while avoiding some common pitfalls, which can compromise intellectual property.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorneys Ron Schoenbam and Amy Chun presented on "Latest IP Issues Affecting High-Tech Companies", one of three presentations given during the seminar.
View this presentation to learn what hightech companies should be doing to implement the right IP strategy at your company.
This presentation titled "The New gTLD Program: What, When, and Why" was given by Knobbe Martens Partner Jeff Van Hoosear on April 16, 2012 to the Orange County Patent Law Association (OCPLA).
A panel of experts discussed the concept of “freedom to operate” in the context of evaluating and mitigating third party patent infringement risk at a recent OCTANe OC event. The discussion focused on startup companies, and the topics included: How to analyze the third party patent landscape; How to set an appropriate budget based on the company’s objectives and milestones; Understanding the impact of litigation on the company; What to do if the company is sued.
On Saturday, April 28, 2012, Knobbe Martens Partner Agnes Juang presented "Intellectual Property Considerations During Product Development" at the Sino-American Biomedical & Pharmaceutical Professionals Association (SABPA) 7th Annual Biomedical Forum, which was held at the McDonnell Douglas Engineering Auditorium at UC Irvine.
Knobbe Martens hosted a Pre-Conference Workshop on Monday, October 15, 2012, at the IN3 Medical Device Summit in San Francisco. Knobbe Partners Paul Conover, Curtis Huffmire, and Karen Vogel Weil presented a “Patent Update for Medical Device Companies.” This forum took place in the hub of device investment and innovation in the San Francisco Bay Area, and brought together a diverse group of medtech’s key thought leaders to candidly discuss the critical issues that will define the future of all players in the evolving device space.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Mr. Chen joined Knobbe Martens attorneys Gerard von Hoffmann, Brent Babcock and Scott Smith and presented on "Dealing Strategically with the America Invents Act", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
Knobbe Martens' attorneys Brenden Gingrich and Kathleen Mekjian conducted a workshop on Sunday, May 5, 2012 at the 99th Annual Meeting of The American Association of Immunologists (AAI), entitled "Monetizing Your Intellectual Property: Protecting Ideas that Generate Income." This presentation explores the types of research innovations that are protectable and provides practical tips for protecting innovations while avoiding some common pitfalls, which can compromise intellectual property.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorneys Ron Schoenbam and Amy Chun presented on "Latest IP Issues Affecting High-Tech Companies", one of three presentations given during the seminar.
View this presentation to learn what hightech companies should be doing to implement the right IP strategy at your company.
This presentation titled "The New gTLD Program: What, When, and Why" was given by Knobbe Martens Partner Jeff Van Hoosear on April 16, 2012 to the Orange County Patent Law Association (OCPLA).
A panel of experts discussed the concept of “freedom to operate” in the context of evaluating and mitigating third party patent infringement risk at a recent OCTANe OC event. The discussion focused on startup companies, and the topics included: How to analyze the third party patent landscape; How to set an appropriate budget based on the company’s objectives and milestones; Understanding the impact of litigation on the company; What to do if the company is sued.
On Saturday, April 28, 2012, Knobbe Martens Partner Agnes Juang presented "Intellectual Property Considerations During Product Development" at the Sino-American Biomedical & Pharmaceutical Professionals Association (SABPA) 7th Annual Biomedical Forum, which was held at the McDonnell Douglas Engineering Auditorium at UC Irvine.
Knobbe Martens hosted a Pre-Conference Workshop on Monday, October 15, 2012, at the IN3 Medical Device Summit in San Francisco. Knobbe Partners Paul Conover, Curtis Huffmire, and Karen Vogel Weil presented a “Patent Update for Medical Device Companies.” This forum took place in the hub of device investment and innovation in the San Francisco Bay Area, and brought together a diverse group of medtech’s key thought leaders to candidly discuss the critical issues that will define the future of all players in the evolving device space.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Mr. Chen joined Knobbe Martens attorneys Gerard von Hoffmann, Brent Babcock and Scott Smith and presented on "Dealing Strategically with the America Invents Act", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
This presentation titled "Soarin' Over Your Trademarks - Keys to Monetizing Your Brands" was given by Knobbe Martens' Partners Susan M. Natland and Jeffrey Van Hoosear to a group of in-house counsel attending the American Corporate Counsel (ACC) SoCal Double Header.
Knobbe Martens attorneys Russell Jeide and Scott Cromar presented “Why is Intellectual Property Important?” at a Temecula Valley Entrepreneur’s Exchange (TVE2) event. The presentation was focused on the importance of IP to entrepreneurs and new businesses, and was part of an all-day event celebrating TVE2’s two year anniversary. The event was called “Innovate. Grow. Connect.”
The second breakout session was directed to attendees in the information technology (IT) and biotechnology sectors, with discussion about the recent Alice v. CLS Bank Supreme Court decision.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Licensing to Foreign Manufacturers Satisfies Domestic Industry
Appeal Found to Be Moot in Light of “Side Bet”
Mere Design Choice Leads to Obviousness Finding
Design Patent Infringement Complaint Survives Dismissal
On Saturday, May 4, 2013, the Sino-American Biomedical & Pharmaceutical Professionals Association (SABPA) held its 8th Annual Biomedical Forum. The forum focused on career development, entrepreneurship and the latest innovations in pharma/biotech and medical devices industries. The biomedical forum strives to provide an attractive platform for entrepreneurs, scientists, engineers, investors, executives, and policy makers to promote life sciences, biotech, medical device and alliances across the biomedical industry in Southern California and Asian countries. Knobbe Martens Partner Terry Tullis presented on “Commercialization and Patent Infringement.”
This document provides an overview of patent systems in Europe and considerations for patent filing and litigation. It discusses the Patent Cooperation Treaty (PCT) system and European Patent Office (EPO) process. Key points include differences from the US system regarding publication grace periods, patentable subject matter, and claim drafting. The document cautions against simply filing foreign counterparts of US applications and recommends tailoring claims and disclosure to individual countries. It also notes risks around amendments and oppositions in the EPO system. Litigation processes in Germany and the UK are briefly outlined.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar will host a free seminar series on intellectual property basics for Temecula’s business community. This interactive and practical series will provide a basic overview of patents, copyrights and trademarks, while also answering questions about preparing patent applications and how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from these classes.
WHO: Knobbe Martens, one of the largest intellectual property firms in the United States, in conjunction with the Temecula Valley Entrepreneur’s Exchange will host this series.
SPEAKERS: Jeide specializes in several areas of intellectual property law, including patent prosecution, legal opinion work and licensing. Cromar focuses on IP counseling and patent preparation and prosecution.
COST: Classes are free and open to the public. However, seating is limited so please RSVP via the following link: http://tve2ipbasicsseries.eventbrite.com/.
The document summarizes key takeaways from a presentation on post-grant proceedings and recent Supreme Court patent cases. It discusses statistics on inter partes review outcomes, reasons for denying petitions and claims surviving review. It also analyzes the impact of recent Supreme Court cases that lowered standards for fee shifting in patent cases and required a single actor for direct infringement. The document advises patent drafters and litigators on strategies in view of these legal developments.
Derivation proceedings replace interferences for determining priority of invention under the America Invents Act (AIA). They decide whether one inventor derived an invention from another inventor without authorization. Regulations for derivation proceedings are not finalized yet as the earliest AIA patent applications will not be filed until 2013. The Patent Trial and Appeal Board will determine whether a named inventor derived a claimed invention from another inventor's application without permission. Parties can appeal decisions to the Court of Appeals for the Federal Circuit or settle proceedings confidentially through binding arbitration. Evidence of how an invention was disclosed or made available to other inventors may be important for derivation proceedings.
Knobbe Martens Partner Joseph Re presented at the Washington State Patent Law Association (WSPLA) event "Patent Prosecution Through the Eyes of a Patent Litigator" on Wednesday, September 19, from 12:00 p.m. to 1:30 p.m. View these slides for an in-depth view of patent prosecution and how recent court decisions have impacted IP law.
Knobbe Martens attorneys Andrew Douglas and Shannon Lam presented "Intellectual Property for Engineers" on January 14, 2014 at the University of California, Irvine.
Partner Agnes Juang, Ph.D. presented "Navigating the Patent Minefield" at SABPA's 9th Annual Biomedical Forum on Saturday, April 26, at the Crowne Plaza Hotel in Costa Mesa.
The event showcased a number of experts across the pharmaceutical, medical device, and diagnostics industries.
Our panel of Knobbe Martens partners hosted this complimentary and informative webinar to discuss the state of software and hardware IP protection and enforcement.
Challenges to obtaining broad software and hardware IP protection are coming from every side. The Supreme Court may decide this year whether certain software even qualifies as patentable subject matter. The USPTO is also examining certain types of software applications with higher scrutiny.
Many recent decisions at the Federal Circuit have made it harder to enforce the IP that you do obtain. In addition to those difficulties, pending patent reform legislation may force a “loser pays” approach in court, where a company may have to pay millions of dollars in legal fees if they don’t win their litigation.
Our panel explained these issues, and provided real-world strategies to help maximize the protection and enforcement of your intellectual property.
On October 23, 2013, Knobbe Martens Partners Andrew Douglas and Sabing Lee presented on "Preparing Your Medical Device NewCo for IP Due Diligence" at the OCTANe Medical Device and Investor Forum.
Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation walks the viewer through how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
Partner Ben Anger discusses the latest developments and advanced strategies for PTAB practice, specifically focused on the petitioner side. Ben covers issues related to selecting the prior art, anticipation versus single-reference obviousness, motivation to combine, post-institution practice, and more.
This presentation titled "Soarin' Over Your Trademarks - Keys to Monetizing Your Brands" was given by Knobbe Martens' Partners Susan M. Natland and Jeffrey Van Hoosear to a group of in-house counsel attending the American Corporate Counsel (ACC) SoCal Double Header.
Knobbe Martens attorneys Russell Jeide and Scott Cromar presented “Why is Intellectual Property Important?” at a Temecula Valley Entrepreneur’s Exchange (TVE2) event. The presentation was focused on the importance of IP to entrepreneurs and new businesses, and was part of an all-day event celebrating TVE2’s two year anniversary. The event was called “Innovate. Grow. Connect.”
The second breakout session was directed to attendees in the information technology (IT) and biotechnology sectors, with discussion about the recent Alice v. CLS Bank Supreme Court decision.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Licensing to Foreign Manufacturers Satisfies Domestic Industry
Appeal Found to Be Moot in Light of “Side Bet”
Mere Design Choice Leads to Obviousness Finding
Design Patent Infringement Complaint Survives Dismissal
On Saturday, May 4, 2013, the Sino-American Biomedical & Pharmaceutical Professionals Association (SABPA) held its 8th Annual Biomedical Forum. The forum focused on career development, entrepreneurship and the latest innovations in pharma/biotech and medical devices industries. The biomedical forum strives to provide an attractive platform for entrepreneurs, scientists, engineers, investors, executives, and policy makers to promote life sciences, biotech, medical device and alliances across the biomedical industry in Southern California and Asian countries. Knobbe Martens Partner Terry Tullis presented on “Commercialization and Patent Infringement.”
This document provides an overview of patent systems in Europe and considerations for patent filing and litigation. It discusses the Patent Cooperation Treaty (PCT) system and European Patent Office (EPO) process. Key points include differences from the US system regarding publication grace periods, patentable subject matter, and claim drafting. The document cautions against simply filing foreign counterparts of US applications and recommends tailoring claims and disclosure to individual countries. It also notes risks around amendments and oppositions in the EPO system. Litigation processes in Germany and the UK are briefly outlined.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar will host a free seminar series on intellectual property basics for Temecula’s business community. This interactive and practical series will provide a basic overview of patents, copyrights and trademarks, while also answering questions about preparing patent applications and how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from these classes.
WHO: Knobbe Martens, one of the largest intellectual property firms in the United States, in conjunction with the Temecula Valley Entrepreneur’s Exchange will host this series.
SPEAKERS: Jeide specializes in several areas of intellectual property law, including patent prosecution, legal opinion work and licensing. Cromar focuses on IP counseling and patent preparation and prosecution.
COST: Classes are free and open to the public. However, seating is limited so please RSVP via the following link: http://tve2ipbasicsseries.eventbrite.com/.
The document summarizes key takeaways from a presentation on post-grant proceedings and recent Supreme Court patent cases. It discusses statistics on inter partes review outcomes, reasons for denying petitions and claims surviving review. It also analyzes the impact of recent Supreme Court cases that lowered standards for fee shifting in patent cases and required a single actor for direct infringement. The document advises patent drafters and litigators on strategies in view of these legal developments.
Derivation proceedings replace interferences for determining priority of invention under the America Invents Act (AIA). They decide whether one inventor derived an invention from another inventor without authorization. Regulations for derivation proceedings are not finalized yet as the earliest AIA patent applications will not be filed until 2013. The Patent Trial and Appeal Board will determine whether a named inventor derived a claimed invention from another inventor's application without permission. Parties can appeal decisions to the Court of Appeals for the Federal Circuit or settle proceedings confidentially through binding arbitration. Evidence of how an invention was disclosed or made available to other inventors may be important for derivation proceedings.
Knobbe Martens Partner Joseph Re presented at the Washington State Patent Law Association (WSPLA) event "Patent Prosecution Through the Eyes of a Patent Litigator" on Wednesday, September 19, from 12:00 p.m. to 1:30 p.m. View these slides for an in-depth view of patent prosecution and how recent court decisions have impacted IP law.
Knobbe Martens attorneys Andrew Douglas and Shannon Lam presented "Intellectual Property for Engineers" on January 14, 2014 at the University of California, Irvine.
Partner Agnes Juang, Ph.D. presented "Navigating the Patent Minefield" at SABPA's 9th Annual Biomedical Forum on Saturday, April 26, at the Crowne Plaza Hotel in Costa Mesa.
The event showcased a number of experts across the pharmaceutical, medical device, and diagnostics industries.
Our panel of Knobbe Martens partners hosted this complimentary and informative webinar to discuss the state of software and hardware IP protection and enforcement.
Challenges to obtaining broad software and hardware IP protection are coming from every side. The Supreme Court may decide this year whether certain software even qualifies as patentable subject matter. The USPTO is also examining certain types of software applications with higher scrutiny.
Many recent decisions at the Federal Circuit have made it harder to enforce the IP that you do obtain. In addition to those difficulties, pending patent reform legislation may force a “loser pays” approach in court, where a company may have to pay millions of dollars in legal fees if they don’t win their litigation.
Our panel explained these issues, and provided real-world strategies to help maximize the protection and enforcement of your intellectual property.
On October 23, 2013, Knobbe Martens Partners Andrew Douglas and Sabing Lee presented on "Preparing Your Medical Device NewCo for IP Due Diligence" at the OCTANe Medical Device and Investor Forum.
Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation walks the viewer through how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
Partner Ben Anger discusses the latest developments and advanced strategies for PTAB practice, specifically focused on the petitioner side. Ben covers issues related to selecting the prior art, anticipation versus single-reference obviousness, motivation to combine, post-institution practice, and more.
Partners Susan Natland and Jessica Sganga discussed potential trademark and copyright issues in the emerging metaverse, including the surge in popularity of NFTs (non-fungible tokens) and how they may affect intellectual property protections. Get up-to-speed on the “hot” cases in this evolving area and get practical tips on how best to protect your intellectual property from infringement in this virtual space.
Speakers: Susan Natland, Jessica Sganga
Knobbe partners Jeff Van Hoosear (OC) Jason Jardine (SD) and associate Julia Hanson (SD) recently gave a presentation at San Diego Fashion week on intellectual property for designers and artists. The presentation explored what IP is, why it is important to designers, top 5 misconceptions, how to get a copyright, how to get a trademark and how to get a design patent.
Partner Mauricio Uribe continued the two-part, comprehensive discussion on responding to IP threats and assertions. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios.
Speakers: Mauricio Uribe
This document discusses strategic considerations for intellectual property risk mitigation and responding to patent infringement threats and assertions. It provides an overview of types of patent infringement, including literal infringement which occurs when each element of a patented claim is identical in an allegedly infringing device or process. It also discusses doctrine of equivalents, contributory infringement, and induced infringement. The document outlines appropriate and limited defenses to patent infringement and notes statutes related to willfulness and enhanced damages. Factors courts consider for determining willfulness are also provided.
Partner Mauricio Uribe continued the two-part, comprehensive discussion on open-source software and third-party vendors. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios.
Speakers: Mauricio Uribe
Partner Jason Gersting, Ph.D. moderated a panel of his peers in a discussion about learning how to identify the waves in current written description and enablement law and tips for smoothly riding them to expand, enhance and protect life sciences intellectual property rights. Panelists included Knobbe Martens partners Jessica Achtsam, Eric Furman, Ph.D., and Dan Altman.
Partner Mauricio Uribe kicked off a two-part, comprehensive discussion on open-source software and third-party vendors. The presentation served as an introduction to the topic and provided more general information.
Speakers: Mauricio Uribe
Partner Mauricio Uribe continued the two-part, comprehensive discussion on data privacy. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios .
Speakers: Mauricio Uribe
Partner Mauricio Uribe kicked off a two-part, comprehensive discussion on data privacy. The presentation served as an introduction to the topic and provided more general information.
Speakers: Mauricio Uribe
Partners Mauricio Uribe and Vlad Lozan gave an informative presentation on design patent law in the United States. The partners provided best practices for filing and prosecuting design patents in the U.S. and techniques and strategies for including multiple design embodiments in design patent applications. They also discussed how to identify and protect visual elements in computer-related technologies and how to integrate design patents into a holistic intellectual property strategy.
Speakers: Mauricio Uribe, Vlad Lozan
Partners Melanie Seelig and Mauricio Uribe continued the two-part, comprehensive discussion on trade secrets. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios .
Speakers: Melanie Seelig and Mauricio Uribe
Partners Melanie Seelig and Mauricio Uribe kicked off a two-part, comprehensive discussion on trade secrets. The presentation served as an introduction to the topic and provided more general information.
Speakers: Melanie Seelig and Mauricio Uribe
Partners Mauricio Uribe and Paul Stellman continued the two-part, comprehensive discussion of strategic planning for capturing and protecting intellectual property. The presentation focused on a more detailed exploration of the topic, diving into the best intellectual property portfolios and cost deferrable strategies to maximize intellectual property spend.
Speakers: Mauricio Uribe and Paul Stellmann
Partners Mauricio Uribe and Vlad Teplitskiy gave an informative presentation on strategic considerations for claim drafting electrical and telecommunications Inventions. The partners provided illustrative claim drafting examples and best practices for defining claim scope, as well as claim drafting strategies for avoiding or minimizing unintentional functional claiming.
Speakers: Mauricio Uribe, Vlad Teplitskiy
Partners Maria Stout and Paul Stellman kicked off a two-part, comprehensive discussion of strategic planning for capturing and protecting intellectual property. The presentation served as an introduction to the topic and provided more general information.
Speakers: Maria Stout and Paul Stellmann
Partners Melanie Seelig and Mauricio Uribe continued the two-part, comprehensive discussion of strategic considerations regarding employment and vendor agreements. The presentation focused on a more detailed exploration of managing employment and vendor agreements, follow-on agreements, and sample language and practical examples.
Speakers: Melanie Seelig and Mauricio Uribe
The webinar covered strategic considerations for key terms in employee and vendor agreements regarding intellectual property and restrictive covenants. It discussed defining the scope of work and assignments of ownership for intellectual property created. Restrictive covenants like non-compete clauses, non-solicitation, anti-poaching, and confidentiality were also covered. The presentation addressed terms regarding the duration of the agreements and obligations after termination.
This document discusses advanced claiming strategies for artificial intelligence and machine learning inventions. It provides an overview of machine learning and the minimal requirements for an algorithm to be considered machine learning. It also discusses best practices for drafting patent claims for machine learning inventions, including providing detailed descriptions of the technical underpinnings of the AI technology and step-by-step algorithms. The document gives examples of potential patentable subject matter for machine learning inventions, such as collecting or forming a data set, modifications to algorithms, and using machine learning processed data. It provides sample patent claims related to training a neural network, predicting device failures using state and configuration data, and characterizing user inputs using machine learning.
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