Managing IP is pleased to bring you the IP Ones to Watch 2021: 25 In-House on the Rise, a new project that showcases emerging talent in the in-house intellectual property world.
We have picked counsel who typically either have less than 12 years’ post-qualification experience or have only joined the IP ranks more recently.
The 25 winners were whittled down from a long list of recommendations made in a survey that launched in early 2021. Respondents were asked to nominate up to three junior in-house IP practitioners in their company or another business that they considered to be rising stars.
Our journalists conducted thorough research to verify the nominees’ suitability and credentials, often speaking directly to the nominators.
Some of the names on the list may be familiar, but many may not be. We believe, however, that the 25 practitioners here will certainly be known to you in years to come.
This project is just the latest in a long line of successful research-based offerings from Managing IP or its sister publication IP STARS, which will be publishing the next instalment of the Corporate Stars (for senior in-house counsel) later this year.
With that, we congratulate all the winners you see below.
Karen Alcorn, senior IP adviser, Fisher & Paykel Healthcare, New Zealand
Karen Alcorn, a senior intellectual property adviser at Fisher & Paykel Healthcare in New Zealand, has been picked for her skills as an operator in the patent field.
Alcorn, who only qualified as a patent attorney in 2015, manages the filings and prosecution for two product groups, along with the freedom to operate (FTO) aspects of new product development within those groups. She has also completed some large and challenging FTO projects, which have involved guiding product development teams through tricky IP landscapes.
Alcorn has also provided support on some global litigation and has taken the lead on large administration projects for the IP team, including implementing new a software system and developing training materials for use of that system.
“Karen is an excellent problem solver and has been able to develop some novel solutions to some IP issues that have arisen,” says her nominator.
“She is also very good at autonomously working through IP issues and handles a large case load. I have been able to just assign Karen projects and they all get completed to a very high quality without any input from me.”
Diyanah Baharudin, counsel, Netflix, Singapore
Diyanah Baharudin embodies an enormous amount of resilience and dedication, according to her nominator, which is why she features in this year’s list.
Baharudin joined Netflix in Singapore at the onset of the COVID pandemic and, despite very difficult conditions, brought herself up to speed with the requirements of her new role very quickly.
With her prior experience as counsel with the Intellectual Property Office of Singapore and with international treaty negotiations, Baharudin was able to bring fresh and useful insights with her, which were valuable in the industry’s efforts to address the various copyright legislation reviews.
Baharudin helps manage Netflix’s IP policy interests and content protection matters in the region.
“I believe it is important to have a deep understanding of the local context in which IP laws and policies operate whilst bearing in mind that IP is an area of law and policy that is intrinsically globally connected,” she says.
“I hope to continue contributing to the IP sector in one way or another as it continues to grow and evolve.”
James Barker, deputy general counsel, Bungie, US
James Barker is the deputy general counsel at gaming company Bungie in Seattle, where he engages with the business, tech and artistic stakeholders to manage the day-to-day contractual and intellectual property needs of his company.
Before joining Bungie, Barker was an associate at Kilpatrick Townsend & Stockton, having started in 2014, and a patent extern at the University of Washington Center for Commercialisation.
His former colleagues at the University of Washington tell Managing IP that Barker “really maximised his skillset when handling patent drafting, prosecution and during all inventor correspondence for our organisation”.
They add: “He excelled at finding ways to communicate about IP matters and concepts with research faculty and staff who are at different levels of experience when it comes to IP.”
Barker has drafted and prosecuted hundreds of patent applications in his career with a wide variety of technologies from acoustic devices to medical imaging systems and augmented and virtual reality games.
Before becoming an IP attorney, Barker was a research lead for a venture capital-funded biotech start-up company. He has a BS in mechanical engineering from Johns Hopkins University and an MS in mechanical engineering from the University of Washington.
Julia Bishop, lead trademark counsel, Amazon Web Services, US
Julia Bishop started her career as an attorney in 2010 and is now the lead US-based trademark counsel for Amazon Web Services (AWS), Amazon Game Studios, and Twitch.
She has been recommended for her quick and business-focused guidance in handling trademark matters worldwide.
Bishop manages a diverse portfolio of brands and supports the full lifecycle of each one from global trademark clearance and prosecution to enforcement and maintenance. She also provides key support for acquisition deals, and advises on complex cross-border trademark disputes and licensing matters.
Bishop’s teammates praise her collegial attitude and eagerness to share her knowledge, resources, and contacts. Her business clients appreciate her practical advice and creative solutions, says a company source.
Outside of her usual job responsibilities, Bishop dedicates her time to mentoring law students and providing pro bono services for the Washington Lawyers for the Arts and the Washington Innocence Project.
Bishop tells Managing IP that protecting IP plays a fundamental role in maintaining customer trust.
She adds: “As a member of Amazon’s trademark team, I am fortunate to work with exceptionally talented IP professionals who continuously raise the bar on customer service as we handle global portfolio, licensing, enforcement, and other strategy matters.”
Mariana de Souza Cruz Caparelli, head of data protection, Nubank, Brazil
Mariana de Souza Cruz Caparelli heads Nubank’s intellectual property, data protection and privacy division in Brazil. She has been acting as the data protection officer of Nubank, the largest fintech bank in Latin America, since August 2020.
Caparelli has been recommended for her strong background in dealing with IP matters, as well as her extensive experience in trademark portfolio management, administration of trademarks, patents, copyright, and IP litigation.
Caparelli tells Managing IP that IP protection has become crucial as financial technology evolves and the company innovates.
“I am flattered to work in a challenging environment as an in-house counsel at a hyper-growth company.”
Caparelli has been lauded for her expert dealing of IP matters both in Brazil and internationally.
She is a member of the International Association of Privacy Professionals and certified as a specialist in European data protection legislation.
“I am proud to be part of the team that has been doing paramount work in Latin America to protect IP assets of the world’s largest digital bank,” she says.
Demetrio Roberto Cavicchia, IP manager, Angelini Holding, Italy
As the IP manager for pharma and consumer goods company Angelini Holding, Demetrio Roberto Cavicchia has produced outstanding work while upgrading the role of IP throughout the business.
Cavicchia more than tripled the number of patent filings at the firm, established several successful IP partnerships with companies such as Paul Hartman and Istituto Italiano di Tecnologia, and emphasised the importance of IP to the engineering, commercial and marketing departments.
He has also played a key role in defending the firm’s IP portfolios by monitoring for competitors and preparing technical opinions when setting up legal actions against them.
Cavicchia frequently prepares documentation necessary for Angelini to benefit from various tax contributions in accordance with different national regulations, such as patent boxes.
He tells Managing IP that he has grand ambitions in the IP world.
“It’s important to have specific dreams. Dream big and dream without fear,” he says.
Patrick Chinkiwsky, patent portfolio manager, CoMotion at University of Washington, US
Patrick Chinkiwsky, a patent portfolio manager at CoMotion, the innovation hub at the University of Washington, has successfully established long-lasting relationships with stakeholders, particularly inventors.
He has received praise for his ability to find creative solutions to various intellectual property problems, including workarounds on inadvertent public disclosures, as well as ensuring that emergency filings are made before these disclosures.
Chinkiwsky has also worked to improve his university’s internal processes to file and protect its IP.
One of his main legal ambitions is to continue to support the impactful work of others by successfully translating it into protected IP. He says some of the most interesting parts of his job are the diversity of the technology and the stakeholders that he interacts with in his day-to-day work.
“From our researchers at the college of engineering and its various disciplines, the physics department and the school of medicine to our outside patent counsel and licensees of University of Washington technologies and, of course, our team at CoMotion, I always find it easy to derive inspiration in what we’re working on,” he says.
He has worked at the university since September 2017.
Jenna Faulkner, legal manager, PizzaExpress, UK
The “extraordinary” Jenna Faulkner was hired at restaurant chain PizzaExpress in 2015 as a law degree graduate. Since then, according to her nomination, she has helped build and develop the legal team, taking it from strength to strength.
She has been praised for quickly learning on the job, including how to manage the company’s intellectual property portfolio as well as draft and negotiate contracts.
“Within a year Jenna became so indispensable to me and the business that PizzaExpress decided to fund her legal practice course,” says her nominator.
In fact, the company sought special permission from the Solicitors Regulation Authority (which covers England and Wales) to promote Faulkner to legal manager a few months before she officially qualified as a solicitor in 2019.
Today she is legal manager for the PizzaExpress UK and international business and leads the trainees in the team.
Faulkner tells Managing IP that in her six years at PizzaExpress, the company has acquired and sold a business, been sold itself, and entered a company voluntary arrangement (a procedure to assist companies in financial difficulties), as well as navigating the COVID-19 pandemic.
“I have been lucky enough to play a part in all of these things.”
Faulkner also praises the breadth of experience she has gained beyond IP, including data protection, employment law, franchising, publishing and corporate governance.
“I’ve been able to gain knowledge in so many areas of law whilst working with a fantastically diverse and interesting set of people,” she says.
Leon Ge, general manager, ABRO Industries, China
Leon Ge is an expert at fighting counterfeiters. Before joining vehicle company ABRO Industries as a general manager, he worked in private practice as an intellectual property specialist.
Ge is described by colleagues as moving from “strength to strength” and always considering the wider business angle, not just the purely legal questions at hand.
“IP work is like playing chess,” says Ge. “I can always encounter interesting challenges and create new combinations to gain advantage. I especially enjoy how IP activities can interact with the business and ultimately amaze each other.”
Before joining ABRO Industries, Ge was a lawyer and partner at DHH in Beijing. He has a BA in business law from Griffith College Dublin, and a master’s degree in IP law from the University of Manchester.
Natalia Isakova, legal counsel, Gorodskoy Supermarket, Russia
Nataliya Isakova, legal counsel at Gorodskoy Supermarket in Russia, has been working as a lawyer for six years. Although her duties are not limited to intellectual property, she has already coped with many interesting cases in this sphere, according to her nominator.
She is actively taking part in claim work in IP, including online infringement cases. Her work includes monitoring for violation of IP rights, licensing agreements, and checking the IP rights of the business’s partners when they place advertisements.
Among her successes are taking part in the successful blocking of a website that infringed Gorodskoy’s IP rights and defending the company from accusations that it violated third-party rights, avoiding a potential compensation payment.
Speaking about her role, Isakova says her favourite part of work is representing the company in court: “I feel that a lot depends on me and I am responsible for the whole process. I always do my best in order to defend the company in court. I hope that in future I will be able to take part in different and challenging trials.”
Gorodskoy owns several supermarkets across Russia.
Teemu Itälä, senior legal counsel, Nokia Technologies, Finland
Teemu Itälä, currently a senior legal counsel at Nokia Technologies, has held several different positions since joining Nokia as a legal trainee in 2014. He has been recommended for efficiently handling a breadth of work which ranges from supporting filing activities to commercial intellectual property licensing.
Itälä focuses mainly on IP-related transactions and contracts, including licensing and divestment of Nokia patents and technologies. Additionally, he works on matters relating to dispute resolution, procurement activities, open-source licensing, R&D contracting, patent portfolio management and data protection.
He is praised for his analytical mind, ability to ask the right questions as well as his nerve to carry matters to conclusion.
Itälä tells Managing IP: “Nokia has really shown me a very comprehensive overview of the world of IP ranging from creation and protection of technology and IP to how they can be commercialised and monetised. I have always felt privileged to work on such interesting matters in a global setting while being surrounded by great colleagues.”
He adds: “Altogether, I have tremendously enjoyed working at Nokia because change and renewal are a constant here; new opportunities and challenges often come about which keep work fresh and exciting.”
Harry Knight, legal counsel, Xero, Australia
Harry Knight is legal counsel in Australia at New Zealand-based technology company Xero. He advised the business on the use of a brand protection tool which has resulted in significant return on investment.
Knight acts to ensure the company’s global brand portfolio is strong, and advises on trademark prosecutions, oppositions and other contentious matters. He also works on domain names, copyright licensing and technology issues.
Before joining Xero, Knight worked at PwC on IP matters. He is also a volunteer lawyer for the Arts Law Centre of Australia and helped a photographer with a copyright infringement issue.
Knight says he is excited about working in-house at his company, which is growing rapidly both in Australia and overseas.
“This growth will require us to make some changes over time to our brand protection strategy, and these changes will present opportunities to work on interesting trademark and commercial IP matters. My ambition is to implement these changes and enable Xero to continue on its growth trajectory,” he says.
He notes that as part of his role, he has had to learn about more than 180 countries where Xero operates, as well as the products and features of the brand.
“But I’m lucky to be learning from some very talented colleagues, including the brand and marketing teams,” he says.
Vikash Kumar, trademark paralegal, Coca-Cola, India
Vikash Kumar is a paralegal at Coca-Cola in India with over eight years of work experience in trademarks and intellectual property management.
He has been recommended for providing “exceptional” support to his team including his contributions to projects such as restructuring the company’s juice business in Russia and neighbouring countries.
Kumar tells Managing IP: “I believe that creating a well-recognised global brand and protecting its value is the most important aspect of IP. Working as part of a truly global networked organisation has allowed me to interact with talented people across the globe who share a love for IP and our brands.”
He adds: “Working on the lifecycle of trademarks right from clearance, filing to managing every aspect till grant is a hugely satisfying task that creates a sense of belonging to the company.”
Kumar has been described as knowledgeable, proactive and committed.
Prior to joining Coca-Cola, he worked with a law firm and IP management service providers where he was responsible for trademark portfolio management, clearance searches, and handling communications with clients and IP offices.
He is a die-hard fan of cricket and roots for the India national team.
Giles Lane, IP counsel, Dyson, UK
An intellectual property counsel at Dyson in the UK, Giles Lane has been nominated for his work managing brand protection actions worldwide as well as leading the company’s counterfeit task force.
Reasons for his nomination include pioneering innovative measures to reduce financial loss related to counterfeiting and working with product development teams to introduce novel anti-counterfeiting features in Dyson products.
Away from brand protection, Lane sits on Dyson’s design strategy board and has led a number of patent enforcement actions.
Lane tells Managing IP: “Brand protection forms the core of my work and I really enjoy the opportunities it provides to collaborate with other stakeholders in the business and to learn more about Dyson.
“Our anti-counterfeiting programme presents me with new challenges to rise to every day and I’m really proud of the collaborative work I have been doing with our product design teams to pioneer changes in the way Dyson approaches anti-counterfeiting in product design.
“Aside from brand protection, it’s also been fantastic to lead a number of cross-border patent enforcement actions, which have successfully ended the manufacture and distribution of various infringing products,” he says.
Shaina Lumish, legal counsel, Velodyne Lidar, US
Shaina Lumish has made it into this year’s list because of her impressive work managing Velodyne’s entire legal department, including all commercial contracts, for several months after the first general counsel she worked under resigned from the lidar technology company.
When the new general counsel joined, Lumish also demonstrated a remarkable knowledge of the company, its operations and her job by introducing the legal head to the company’s policies and processes.
The general counsel was so impressed by Lumish that he soon allowed her to take on more responsibility in some of the firm’s most complex commercial contracts and some litigation and compliance cases.
Lumish, who is based in San Francisco and is a second-year attorney, has more experience than most lawyers of her vintage.
“Working at Velodyne has been a privilege,” says Lumish. “I am looking forward to continuing to grow as a commercial technology lawyer, helping Velodyne in its mission to transform infrastructure and transportation with the goal of making communities smarter and safer.”
Lumish is described as having a wonderfully positive attitude about work and remaining unflappable under stress.
Krista Mirhoseini, senior corporate counsel, Expedia, US
Since joining Expedia around three years ago, Krista Mirhoseini has broadened her focus to intellectual property.
In fact, prior to joining Expedia in 2018, Mirhoseini worked primarily in other areas of law away from IP, including as a corporate counsel at an art studio and a professor of law at Seattle University School of Law.
During her time at Expedia she has moved from focusing on copyright licensing and general business enforcement to also including contentious matters in the fields of copyright and trademarks as well as advertising. She has also undertaken IP training responsibilities.
Mirhoseini, based in Seattle, has expanded her participation and leadership in both the Expedia legal team and among other IP professionals. Reasons for her nomination include her establishing a “strong reputation for knowledge, experience, and effective representation and counselling of a range of clients within one of the world’s leading online travel companies”.
She tells Managing IP: “I support Expedia and all its brands, and particularly enjoy the role I play in guiding its negotiations for sponsorship agreements, including with the UEFA Champions League, Liverpool FC, National Basketball Association, Dallas Cowboys, and Wrexham AFC.
“I look forward to more engagement with marketing teams and ad campaigns as travel continues to open up.”
Niels Peder Møller, patent agent, Coloplast, Denmark
Niels Peder Møller, a patent agent at medical device company Coloplast in Copenhagen, has been nominated for his work managing the strategy, drafting, and prosecution of a group of more than 50 patent families.
Møller was said to be “instrumental” in securing patent protection for a new and growing area of technology within Coloplast and has also been very active in promoting intellectual property internally, including by making sure as much value as possible is extracted from new filings.
A company source says Møller is also doing excellent work to manage its use of external patent attorneys, including both European and US firms, and has been coordinating internal and external work to create maximum value for the company.
He has also been working actively and closely with examiners at the EPO and USPTO to make sure prosecution goes as smoothly as possible.
Møller tells us: “I am immensely proud of having contributed to the establishment and development of an extensive patent portfolio being the product of a radically new approach to innovation and patenting within my company.
“I am looking forward to continuously developing and strengthening the protection conferred by the portfolio and to extract its value by engaging with relevant stakeholders.”
Andrew Montague, legal counsel of intellectual property, Suncor Energy, Canada
Andrew Montague, legal intellectual property counsel at Suncor Energy in Canada, is nominated for his work managing a significant portion of the global patent and trademark portfolio of the energy company.
He also helped lead Suncor’s investment into the LanzaJet technology for sustainable aviation fuel, as well as the growth of strategic opportunities in the company’s renewable liquid fuels business.
“Andrew always provides informed and creative strategic and tactical advice in managing Suncor’s growing IP portfolio,” one source says.
Prior to joining Suncor, Montague worked as an associate at Ridout & Maybee, where he prosecuted trademark and patent applications, helped with transactional matters and litigated IP issues before the Federal Court, the Federal Court of Appeal and the Trade-marks Opposition Board.
Montague tells Managing IP that the transition from private practice to in-house gave him a new appreciation for effective and business-focused solutions.
He received his law degree at the University of Ottawa in 2010. Before becoming a lawyer, he worked as a plant biosafety officer at the Canadian Food Inspection Agency.
Maria Ovsova, lawyer, MaximaTelecom, Russia
Maria Ovsova, a lawyer at technology company MaximaTelecom in Russia, has been nominated for her work on transportation digitalisation projects.
Her company developed a high-speed Wi-Fi network that covers the subway system in Moscow as well as suburban commuter trains. The project involves the integration of hardware and software solutions from different vendors, and Ovsova worked on the legal aspects of these solutions.
Ovsova has also advised on negotiations, contract drafting, software share purchases, licences and copyright agreements at the company. She has received praise for having strong soft skills in addition to her legal expertise.
She says she plans to take part in projects related to intellectual property and new digital technologies in the future. Healthcare is another area of interest for her, and she studies the legal aspects of modern technologies in that field.
She is also driven by the opportunity to work on complex, atypical projects and to be able to come up with complex solutions.
“I love to help my colleagues with their projects, and their gratitude is the pleasant part of my work process,” she notes.
Ovsova has worked at the company since October 2018.
Emmy Pettersson, senior legal counsel, Klarna, Sweden
As senior legal counsel, Emmy Pettersson is responsible for legal matters directed to the app of Klarna, a private fintech company in Stockholm. She has been working in intellectual property since completing her LLM at the University of Gothenburg in 2013.
Pettersson reportedly manages a variety of IP and technology-related issues that demand a lot from an in-house counsel in addressing a wide range of matters within the scope of the Klarna app, while still being agile amid the changing needs of a start-up.
She tells Managing IP: “In the ever-changing world of Klarna, you are able to be part of the evolution of law by interpreting it in relation to new product ideas. Every day you gain further knowledge as Klarna’s products develop and are launched into new markets.”
She adds that she particularly enjoys the opportunity to be creative by interpreting how the law relates to new technologies.
Before joining Klarna, Pettersson was a senior associate at Roschier in Stockholm specialising in IP and tech law. Klarna is reportedly Europe’s highest valued fintech company, and has 90 million active consumers across 17 countries.
Claire Robertson, IP and regulatory lawyer, Livestock Improvement Corporation, New Zealand
Claire Robertson joined Livestock Improvement Corporation, an agritech and herd improvement cooperative, as an adviser to the intellectual property team in 2014. She earned an LLB and BSc from the Victoria University of Wellington and in 2019 was promoted to lawyer (IP and regulatory) and gained her first practising certificate.
Robertson is said to provide excellent legal and IP support for significant funding agreements, and the research undertaken from these agreements contributes to the performance of her company.
Her science and legal skills have left her well-placed to support the research and development team, whether through collaborations with third parties, research agreements, new business opportunities or new product development.
“One of the best things about my job is that I get to see projects go from idea to commercialised product, and that my legal and IP expertise are required at all stages of this process,” says Robertson. “It is always satisfying when you can help the business launch a new product or successfully license IP.”
Rachael Shen, senior associate litigation counsel, VMware, US
Rachael Shen, the associate senior litigation counsel at VMware in California with five years of legal experience, has received recognition for her strong litigation skills, strategic thinking, and judgement and technical savviness.
She can provide guidance on claim construction issues, and non-infringement and invalidity positions on technically complex matters. She is also believed to be the most junior person to become a manager of people in the history of her company’s legal team.
A source notes that Shen has helped junior members of the legal group to better support their assigned litigation matters so the company can handle an increased volume of cases without adding new team members.
Shen says that one day she hopes to become a director of litigation and oversee a diverse docket of intellectual property and business matters.
“I want to master a broad range of skills so I can spot issues and manage risks across any area of need that arises for the company.”
She adds that the most interesting part of her job is interviewing subject matter experts within the company to learn more about its products, services and business operations, which allows her to be a better advocate for the business.
“I love that my job not only gives me the opportunity to translate legal concepts to non-lawyers but also allows me to translate our technology and business into legal arguments,” she says. “It is challenging and fulfilling to bring these two sides together.”
Alex Silverberg, senior legal counsel, Horizon Therapeutics, US
Alex Silverberg is a senior legal counsel at Horizon Therapeutics in the US with about 10 years of experience in the legal field. He provides support on an array of acquisitions, licensing, divestitures and other business development and R&D activities.
He works closely with the operational and business units throughout the company, and collaborates with the intellectual property team and other subject matter experts from the general counsel’s office.
A company source recommends Silverberg for his skills in the contracts and negotiations space as well as for working with people outside the company to “get things done”.
Silverberg speaks Mandarin Chinese, and has extensive experience living and working in China. He has been described as a quick learner, easy to work with and knowledgeable.
He tells Managing IP: “IP is a critical component of transactional and licensing work in the biotech space. I am very fortunate to be a member of the outstanding legal team at Horizon Therapeutics and to work hand-in-hand with our exceptional IP colleagues on transactional, licensing, IP portfolio and strategy matters.”
With Horizon doing a lot of work in the rare diseases field, Silverberg is praised for going above and beyond in facilitation efforts with patient groups and organisations, as well as in community outreach.
He is also actively involved in mentoring programmes.
Vladimir Starovoytov, senior legal counsel, Azbuka Vkusa, Russia
Vladimir Starovoytov, a 32-year-old lawyer for Russian retail company Azbuka Vkusa, has been recognised this year for his ability to pick up intellectual property law quickly and apply it in a successful way.
Since joining the team two years ago, Starovoytov has helped register and purchase more than 30 trademarks and, according to his nominator, has been active in protecting the interests of the company in IP disputes.
He is currently working to establish business processes related to legal compliance and protection of the company’s IP and IT rights.
“Concerning my ambitions as an IP lawyer, I must say that one of my biggest goals is to keep learning and acquiring experience in this field,” says Starovoytov.
“Specifically, I would like to enrol in an IP postgraduate course in a foreign university. That would give me the possibility to get immersed in the latest IP international trends and approaches, which together with my Russian practice would allow me to perform in a more assertive way in IP disputes.”
Juliane Rose Sun, brand cooperation, IP protection, Lazada Group, Singapore
Juliane Rose Sun is described as an “extremely pro-active” member of the intellectual property protection team at e-commerce company Lazada in Singapore, where she is responsible for brand protection across Southeast Asia.
As part of her role, she has actively engaged with different brand owners on new projects including Lazada’s IPP Plus programme and a pilot mentoring programme.
Her listening skills and ability to take queries from brand owners have made her a valuable member of her team, according to her nominator.
This year she organised an online IPR protection workshop to provide insight for brand owners on how to protect their IP and understand different ways of interacting with the Lazada platform.
Before joining Lazada, Sun worked in social media at both Facebook and Instagram in Singapore, handling IP enforcement and anti-counterfeiting matters.
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