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500 West Madison Street, 34th Floor, Chicago, IL 60661 – T 312.775.8000 – www.mcandrews-ip.com

Troy A. Groetken

tgroetken@mcandrews-ip.com
312.775.8259

Troy A. Groetken Shareholder

312.775.8259

  • Overview
  • Practices & Industries
  • Related Experience
  • Honors & Awards
  • Representative Matters
  • Publications
  • Presentations
  • Professional & Community Involvement

Troy Groetken is a Shareholder, Board Member, and Executive Committee member at McAndrews. He has over 28 years of legal experience in the intellectual property field and more than 30 years of technical experience in the pharmaceutical, biotechnological, and chemical fields. He is recognized in IAM’s Strategy 300: The World’s Leading IP Strategists and Patent 1000: The World’s Leading Patent Professionals, and has been listed as one of the Best Lawyers in America since 2012.

As a registered U.S. patent attorney, Troy is known globally as a “go-to” intellectual property attorney for Fortune 100 and 500 clients, which he assists on complex intellectual property matters and strategic global patent portfolio development, implementation, positioning, and enforcement. Troy also advises clients regarding the acquisition, divestiture, and licensing of core and non-core intellectual property assets. In addition, he is a thought leader with respect to patent portfolio due diligence analyses, global portfolio coordination (e.g., coordination of complex U.S. reexamination or reissue proceedings with European, Asian, and Australian appeals, cancellation, nullity, and/or opposition proceedings), and advanced U.S. Patent Office procedural issues (e.g., strategic use of inter partes review and post-grant review practice).

Troy counsels domestic and foreign clients on a broad range of technical disciplines in the chemical, pharmaceutical, and biotechnological arts. Areas include new drug entities (small-molecule, protein, recombinant, combinatorial technologies, assay, etc.), diagnostics, biological molecular technologies, API development and positioning, generic pharmaceuticals, biosimilars, pharmaceutical conjugates, vaccines, cancer therapeutics, CAR-T technologies, mRNA technologies, antibody technologies, surfactant technologies, agricultural compositions, food-based technologies, animal compositions, gellants, polyols, lubricants, coatings, elastomers, sealants, adhesives, construction products (interior and exterior), biocides, medical devices, drug delivery formulations and systems, drug storage and logistical systems, including RFID technologies, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, Big Data and artificial intelligence (within the pharmaceutical, life science, precision clinical therapy, and logistical intellectual property spaces), personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, and renewable energies, among others.

Prior to practicing patent law, Troy worked as a clinical consultant pharmacist, supervised drug research programs in coordination with the FDA, evaluated drug-management protocols, and performed drug-treatment trials on behalf of various hospitals, research institutions, and drug companies.

EDUCATION

  • John Marshall Law School, LL.M., Intellectual Property Law, Honors
  • Drake University Law School, J.D., cum laude
  • Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi

BAR ADMISSIONS/REGISTRATIONS

  • Illinois
  • Iowa
  • United States Supreme Court
  • Federal Circuit Court of Appeals
  • District Courts for the Northern District of Illinois and the Southern District of Iowa
  • U.S. Patent and Trademark Office
  • Registration Certificate (Roll of Patent Agents)
  • Canadian Patent Office

Education

  • John Marshall Law School, LL.M., Intellectual Property Law, Honors
  • Drake University Law School, J.D., cum laude
  • Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi

Practices

  • Design Rights
  • IP Transactions
  • IP Litigation
  • Patent Prosecution
  • Post-Grant Practice
  • Trademarks & Copyrights

Bar Admissions/Registrations

  • Illinois
  • Iowa
  • United States Supreme Court
  • Federal Circuit Court of Appeals
  • District Courts for the Northern District of Illinois and the Southern District of Iowa
  • U.S. Patent and Trademark Office
  • Registration Certificate (Roll of Patent Agents)
  • Canadian Patent Office

Industries

  • Chemical
  • Life Sciences
  • Pharmaceuticals

Related Experience

  • Licensed pharmacist, Illinois, Iowa and Michigan

Honors & Awards

  • IAM Strategy 300, 2022 – Present
  • IAM Patent 1000: The World’s Leading Patent Professionals, 2022- Present
  • The Best Lawyers in America, 2012 – Present
  • IP Star: Managing Intellectual Property, 2022 – Present
  • Lawyer of the Year, USA – Patents, Lawyer Monthly, 2016
  • Legal Elite Award Winner, 2016
  • Rising Star, Illinois Super Lawyers independent survey, 2008, 2009
  • 40 Illinois Attorneys Under Forty to Watch, Law Bulletin Publishing Company, selected by peers in 2009
  • Member, Richard Linn Inn of Court

Representative Matters

  • WR Meadows, Inc. – Acquisition and Development of Trademark Portfolio for European Market for Precon and Mel-Roe Precon Products – 2025
  • Preferred Law Firm IP Provider for Danaher Corporation and several operating companies thereof, 2024-2025
  • Transition of IP Portfolio for KemPharm, Inc. to Zevra, Inc. with Rare Disease and Orphan Drug Focus, 2024-2025
  • Strategic Intellectual Property Assistance, Orange Book Listing, PTE extension and FDA Approval Support for rare disease drug, Arimoclomol – FDA approved 2024
  • WR Meadows, Inc. – Development of Innovation Program and new Innovation Center (2019 – present), Acquisition of Gemite® products and IP portfolio – 2021
  • BioNTech – Strategic IP U.S. positioning with respect to COVID-19 vaccines (2019 – present)
  • Beckman Diagnostics, Inc. – Strategic IP positioning of COVID-19 diagnostics (2019 – present)
  • KemPharm, Inc. – Portfolio development, U.S. commercial launch, and global licensing program of Azstarys® pharmaceutical product (2016 – present)
  • Chiesi Farmaceutici s.p.A. v. Mesoblast International Sárl, Patent No. 2298863 (05/03/2016) Subject: Mesenchymal stem cells
  • Desmond Mark Chapman v. Osiris Therapeutics, Inc., Case No. T 1147/15-3.3.08 (07/09/2015) Subject: Mesenchymal stem cells
  • Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 15-cv-5667, (06/25/2015) Subject: Fracturing technology
  • Kovin Associates, L.P. v. Duo-Gard Industries, Inc., Case No. 15-cv-2058, (03/09/2015) Subject: Roofing technology
  • Polyguard Products, Inc. v. W R. Meadows, Inc. (02/28/11 – 03/2012) Subject: Sealant based product and process
  • Strawman Limited v. Osiris Therapeutics, Inc. (European Opposition) (2012) Subject: Joint Repair Using Mesenchymal Stem Cells
  • Shire LLC v. Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10 – 05/12/12) Subject: Pharmaceutical conjugates
  • Cognate Therapeutics Inc.; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc. (European Opposition) (2008) Subject: Muscle regeneration using stem cells
  • Akzo Nobel v. Stepan Company (European Opposition) (2006)
    Subject: Surfactant technology

Publications

  • Featured in “How Can Firms Avoid Falling Into GSK-Teva ‘Skinny Label’ Trap?” Generics Bulletin, September 6, 2021.
  • Quoted in “Arthrex Ruling Leaves Attys Eyeing USPTO for Guidance,” Law360, June 21, 2021.
  • A Conversation with Troy Groetken and Outsourced Pharma about “What Happens When IP is Redistributed? CDMOs Without Borders,” May 24, 2021.
  • Quoted in “Did You Vote to Give Your IP Away?” Outsourced Pharma, May 19, 2021.
  • Featured in “Why focusing on the quantity of pharma innovation is misleading,” Drug Discovery & Development, February 23, 2021.
  • Featured in “Why Big Tech is offering Biden help with COVID-19 vaccination,” Pharmaceutical Processing World, February 17, 2021.
  • “Three cases that changed the patent disclosure landscape of proteins,” Drug Discovery & Development, December 15, 2020.
  • “The Critical Importance of Patent Protection for Diagnostics in the COVID-19 Era,” MDDI, November 19, 2020.
  • “Rethinking the Way We Patent Diagnostics,” IP Watchdog, August 13, 2020.
  • Thought Leader: “Troy Groetken on Patents,” lawyer-monthly.com, LM77-16, p. 87, October 4, 2016.
  • “Inter Partes Review, Development and Procedures,” Today’s General Counsel, Vol. 12, No. 1, Feb/Mar 2015.
  • “An alternative litigation strategy: ADR + IPR,” Insidecounsel.com, March 26, 2014.
  • “Should the Supreme Court address claim construction in patent cases?” Insidecounsel.com, March 12, 2014.
  • “Sufficiency of disclosure and the great divide between the U.S. and Europe,” Insidecounsel.com, February 26, 2014.
  • “The perfect storm that led to the rise of design patents,” Insidecounsel.com, February 12, 2014.
  • “Can personalized medicine survive Prometheus?” Insidecounsel.com, January 29, 2014.
  • “Is Patent Reform, Round II a bad idea?” Insidecounsel.com, January 15, 2014.
  • “Using Patents as a Business Asset in Today’s Economy,” Life Science Leader, July 2011.

Presentations

  • Speaker and Program Creator, “Modern Ethics for In-house Counsel,” Tesla Corporation, Virtual Webinar to Company Legal In-house Membership, March 17, 2025
  • Moderator and Program Creator, “Ethical Considerations for In-house Counsel,” Consero’s Life Sciences Forum, Boston, MA, March 13, 2025
  • Speaker and Program Creator, “Intellectual Property Basics,” International Food Technologies, Virtual Webinar to Membership, January 14, 2025
  • Speaker and Program Creator, “Understanding the Impact of the FTC Non-Compete Rule,” Presented to Corning Legal Membership, Corning, Incorporated, Corning, NY, December 10, 2024
  • Moderator and Program Co-creator, “Mind the Gap: Between the US and UK Advocacy,” Richard Linn Inn of Court, Chicago, November 14, 2024
  • Speaker, “Artificial Intelligence and Precision Healthcare,” BIO International Convention 2022, San Diego, CA, June 15, 2022
  • Moderator, “Out of Monumental Challenges Come Substantial IP Opportunities,” Consero’s IP Virtual Forum for Life Sciences, December 7, 2021
  • Moderator, “Trade Secret Programs: From Setup to Enforcement,” Consero’s IP Virtual Forum for Life Sciences, December 5, 2021
  • Panel Leader, “Navigating the Life Sciences IP Landscape,” IPBC Connect Life Sciences Panel, September 29, 2021
  • Presenter, “Inflection Point: IP Innovation, Collaboration, and Enforcement at this Stage of the Pandemic,” Association of Medical Diagnostic Manufacturers (AMDM) Quarterly IVD Diagnostics Sector, June 22, 2021
  • Moderator, “Lessons from COVID on Innovation, Collaboration & Enforcement,” BIO Digital 2021, June 15, 2021
  • Moderator, “Discussing the Regulatory Climate in Light of the Pandemic,” Consero’s IP Virtual Forum for Life Sciences, June 7, 2021
  • “Looking Beyond the Pandemic,” January 27, 2021
  • Event Founder/Director, Sixth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, September 29, 2016
  • Moderator, “Practical Insights Regarding IPR and PGR Practice”
  • “Best Practices: PGR Procedures, U.S. and Foreign Venues” – 2016
  • Event Founder/Director, Fifth Annual Symposium on IP, “Practical Insights Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, June 11, 2015
  • “Strategic U.S. Patent Portfolio Development,” IP Management Seminar, ZSP Patentanwälte PartG mbB, Munich, Germany, March 19, 2015
  • “Best Practices Regarding Patent Prosecution Under 35 U.S.C. § 101,”S. and Foreign Venues – 2015
  • “Best Practices: IPR Procedures,”S. and Foreign Venues – 2015
  • “ITC litigation in the USA,” 2014 Global IP & Innovation Summit, Shanghai, China, September 3, 2014
  • Event Founder/Director, Fourth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, July 24, 2014
  • Moderator, “Practical Insights Regarding IPR and PGR Practice”
  • “Best Practices With Respect to U.S.C. § 112,”S. and Foreign Venues – 2014
  • Event Founder/Director, Third Annual Symposium on IP, “Strategic and Practical Approaches to Intellectual Property: Where Law and Business Intersect,” McAndrews, Held & Malloy, Ltd, October 17, 2013
  • Panelist, “AIA: To Litigate at the Patent Office or Not”
  • “Best Practices: Controlling Litigation Costs,”S. and Foreign Venues – 2013
  • Event Founder/Director, Second Annual Symposium on IP, “Developments In US and EP Intellectual Property Practice and Law,” McAndrews, Held & Malloy, Ltd, July 26, 2012
  • “U.S. Patent Reform: A Major Update,” Numerous U.S. and European venues – October-November 2011 and May 2012
  • “KSR – Practical Approaches,” American Intellectual Property Law Association (AIPLA) Roadshow – June 23, 2011
  • “Biosimilars Legislation in the U.S.,” S. and EPO Patent Law Update Symposium, Chicago, May 19, 2011
  • “Biosimilars Legislation in the U.S.,” U.S. and EPO Patent Law Update Symposium, Munich, May 3, 2011

Professional & Community Involvement

  • American Intellectual Property Law Association (AIPLA)
  • American Pharmacists Association (APhA)
  • American Society of Consultant Pharmacists (ASCP)
  • Association of Patent Law Firms (APLF)
  • Federal Circuit Bar Association
  • PTAB Bar Association
  • Batavia Lions Club
  • Batavia Moose Lodge
  • Millcreek Neighborhood Crime Watch Captain

Practices

  • Design Rights
  • IP Transactions
  • IP Litigation
  • Patent Prosecution
  • Post-Grant Practice
  • Trademarks & Copyrights

Industries

  • Chemical
  • Life Sciences
  • Pharmaceuticals
  • Licensed pharmacist, Illinois, Iowa and Michigan
  • IAM Strategy 300, 2022 – Present
  • IAM Patent 1000: The World’s Leading Patent Professionals, 2022- Present
  • The Best Lawyers in America, 2012 – Present
  • IP Star: Managing Intellectual Property, 2022 – Present
  • Lawyer of the Year, USA – Patents, Lawyer Monthly, 2016
  • Legal Elite Award Winner, 2016
  • Rising Star, Illinois Super Lawyers independent survey, 2008, 2009
  • 40 Illinois Attorneys Under Forty to Watch, Law Bulletin Publishing Company, selected by peers in 2009
  • Member, Richard Linn Inn of Court
  • WR Meadows, Inc. – Acquisition and Development of Trademark Portfolio for European Market for Precon and Mel-Roe Precon Products – 2025
  • Preferred Law Firm IP Provider for Danaher Corporation and several operating companies thereof, 2024-2025
  • Transition of IP Portfolio for KemPharm, Inc. to Zevra, Inc. with Rare Disease and Orphan Drug Focus, 2024-2025
  • Strategic Intellectual Property Assistance, Orange Book Listing, PTE extension and FDA Approval Support for rare disease drug, Arimoclomol – FDA approved 2024
  • WR Meadows, Inc. – Development of Innovation Program and new Innovation Center (2019 – present), Acquisition of Gemite® products and IP portfolio – 2021
  • BioNTech – Strategic IP U.S. positioning with respect to COVID-19 vaccines (2019 – present)
  • Beckman Diagnostics, Inc. – Strategic IP positioning of COVID-19 diagnostics (2019 – present)
  • KemPharm, Inc. – Portfolio development, U.S. commercial launch, and global licensing program of Azstarys® pharmaceutical product (2016 – present)
  • Chiesi Farmaceutici s.p.A. v. Mesoblast International Sárl, Patent No. 2298863 (05/03/2016) Subject: Mesenchymal stem cells
  • Desmond Mark Chapman v. Osiris Therapeutics, Inc., Case No. T 1147/15-3.3.08 (07/09/2015) Subject: Mesenchymal stem cells
  • Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 15-cv-5667, (06/25/2015) Subject: Fracturing technology
  • Kovin Associates, L.P. v. Duo-Gard Industries, Inc., Case No. 15-cv-2058, (03/09/2015) Subject: Roofing technology
  • Polyguard Products, Inc. v. W R. Meadows, Inc. (02/28/11 – 03/2012) Subject: Sealant based product and process
  • Strawman Limited v. Osiris Therapeutics, Inc. (European Opposition) (2012) Subject: Joint Repair Using Mesenchymal Stem Cells
  • Shire LLC v. Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10 – 05/12/12) Subject: Pharmaceutical conjugates
  • Cognate Therapeutics Inc.; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc. (European Opposition) (2008) Subject: Muscle regeneration using stem cells
  • Akzo Nobel v. Stepan Company (European Opposition) (2006)
    Subject: Surfactant technology
  • Featured in “How Can Firms Avoid Falling Into GSK-Teva ‘Skinny Label’ Trap?” Generics Bulletin, September 6, 2021.
  • Quoted in “Arthrex Ruling Leaves Attys Eyeing USPTO for Guidance,” Law360, June 21, 2021.
  • A Conversation with Troy Groetken and Outsourced Pharma about “What Happens When IP is Redistributed? CDMOs Without Borders,” May 24, 2021.
  • Quoted in “Did You Vote to Give Your IP Away?” Outsourced Pharma, May 19, 2021.
  • Featured in “Why focusing on the quantity of pharma innovation is misleading,” Drug Discovery & Development, February 23, 2021.
  • Featured in “Why Big Tech is offering Biden help with COVID-19 vaccination,” Pharmaceutical Processing World, February 17, 2021.
  • “Three cases that changed the patent disclosure landscape of proteins,” Drug Discovery & Development, December 15, 2020.
  • “The Critical Importance of Patent Protection for Diagnostics in the COVID-19 Era,” MDDI, November 19, 2020.
  • “Rethinking the Way We Patent Diagnostics,” IP Watchdog, August 13, 2020.
  • Thought Leader: “Troy Groetken on Patents,” lawyer-monthly.com, LM77-16, p. 87, October 4, 2016.
  • “Inter Partes Review, Development and Procedures,” Today’s General Counsel, Vol. 12, No. 1, Feb/Mar 2015.
  • “An alternative litigation strategy: ADR + IPR,” Insidecounsel.com, March 26, 2014.
  • “Should the Supreme Court address claim construction in patent cases?” Insidecounsel.com, March 12, 2014.
  • “Sufficiency of disclosure and the great divide between the U.S. and Europe,” Insidecounsel.com, February 26, 2014.
  • “The perfect storm that led to the rise of design patents,” Insidecounsel.com, February 12, 2014.
  • “Can personalized medicine survive Prometheus?” Insidecounsel.com, January 29, 2014.
  • “Is Patent Reform, Round II a bad idea?” Insidecounsel.com, January 15, 2014.
  • “Using Patents as a Business Asset in Today’s Economy,” Life Science Leader, July 2011.
  • Speaker and Program Creator, “Modern Ethics for In-house Counsel,” Tesla Corporation, Virtual Webinar to Company Legal In-house Membership, March 17, 2025
  • Moderator and Program Creator, “Ethical Considerations for In-house Counsel,” Consero’s Life Sciences Forum, Boston, MA, March 13, 2025
  • Speaker and Program Creator, “Intellectual Property Basics,” International Food Technologies, Virtual Webinar to Membership, January 14, 2025
  • Speaker and Program Creator, “Understanding the Impact of the FTC Non-Compete Rule,” Presented to Corning Legal Membership, Corning, Incorporated, Corning, NY, December 10, 2024
  • Moderator and Program Co-creator, “Mind the Gap: Between the US and UK Advocacy,” Richard Linn Inn of Court, Chicago, November 14, 2024
  • Speaker, “Artificial Intelligence and Precision Healthcare,” BIO International Convention 2022, San Diego, CA, June 15, 2022
  • Moderator, “Out of Monumental Challenges Come Substantial IP Opportunities,” Consero’s IP Virtual Forum for Life Sciences, December 7, 2021
  • Moderator, “Trade Secret Programs: From Setup to Enforcement,” Consero’s IP Virtual Forum for Life Sciences, December 5, 2021
  • Panel Leader, “Navigating the Life Sciences IP Landscape,” IPBC Connect Life Sciences Panel, September 29, 2021
  • Presenter, “Inflection Point: IP Innovation, Collaboration, and Enforcement at this Stage of the Pandemic,” Association of Medical Diagnostic Manufacturers (AMDM) Quarterly IVD Diagnostics Sector, June 22, 2021
  • Moderator, “Lessons from COVID on Innovation, Collaboration & Enforcement,” BIO Digital 2021, June 15, 2021
  • Moderator, “Discussing the Regulatory Climate in Light of the Pandemic,” Consero’s IP Virtual Forum for Life Sciences, June 7, 2021
  • “Looking Beyond the Pandemic,” January 27, 2021
  • Event Founder/Director, Sixth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, September 29, 2016
  • Moderator, “Practical Insights Regarding IPR and PGR Practice”
  • “Best Practices: PGR Procedures, U.S. and Foreign Venues” – 2016
  • Event Founder/Director, Fifth Annual Symposium on IP, “Practical Insights Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, June 11, 2015
  • “Strategic U.S. Patent Portfolio Development,” IP Management Seminar, ZSP Patentanwälte PartG mbB, Munich, Germany, March 19, 2015
  • “Best Practices Regarding Patent Prosecution Under 35 U.S.C. § 101,”S. and Foreign Venues – 2015
  • “Best Practices: IPR Procedures,”S. and Foreign Venues – 2015
  • “ITC litigation in the USA,” 2014 Global IP & Innovation Summit, Shanghai, China, September 3, 2014
  • Event Founder/Director, Fourth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, July 24, 2014
  • Moderator, “Practical Insights Regarding IPR and PGR Practice”
  • “Best Practices With Respect to U.S.C. § 112,”S. and Foreign Venues – 2014
  • Event Founder/Director, Third Annual Symposium on IP, “Strategic and Practical Approaches to Intellectual Property: Where Law and Business Intersect,” McAndrews, Held & Malloy, Ltd, October 17, 2013
  • Panelist, “AIA: To Litigate at the Patent Office or Not”
  • “Best Practices: Controlling Litigation Costs,”S. and Foreign Venues – 2013
  • Event Founder/Director, Second Annual Symposium on IP, “Developments In US and EP Intellectual Property Practice and Law,” McAndrews, Held & Malloy, Ltd, July 26, 2012
  • “U.S. Patent Reform: A Major Update,” Numerous U.S. and European venues – October-November 2011 and May 2012
  • “KSR – Practical Approaches,” American Intellectual Property Law Association (AIPLA) Roadshow – June 23, 2011
  • “Biosimilars Legislation in the U.S.,” S. and EPO Patent Law Update Symposium, Chicago, May 19, 2011
  • “Biosimilars Legislation in the U.S.,” U.S. and EPO Patent Law Update Symposium, Munich, May 3, 2011
  • American Intellectual Property Law Association (AIPLA)
  • American Pharmacists Association (APhA)
  • American Society of Consultant Pharmacists (ASCP)
  • Association of Patent Law Firms (APLF)
  • Federal Circuit Bar Association
  • PTAB Bar Association
  • Batavia Lions Club
  • Batavia Moose Lodge
  • Millcreek Neighborhood Crime Watch Captain
 

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500 West Madison Street, 34th Floor
Chicago, IL 60661
T 312.775.8000 | F 312.775.8100

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