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  • PTAB · Jun 2, 2025 · IPR2025-00233 · APJ Michael A Valek · IPR · Institution

    The Board denied institution under § 314(a) based on the Fintiv factors and denied joinder; it did not reach the merits of the asserted grounds.

    In the decision

    …both sides, aflibercept . . . can be produced from different cells, only some of which result in glycosylation of aflibercept.”); see also Ex. 1029 (teaching expression in systems other than CHO cells); Ex. 1039 ¶ 38 (teaching glycosylation may be eliminated by using mutant CHO cell lines).…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

      “B. The Fintiv Factors and Related Guidance The Board’s precedential decision in Fintiv outlines factors that balance considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, such as the MDL proceeding here. Fintiv 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. “[I]n evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 10

    • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

      “III. DISCRETION UNDER 35 U.S.C. § 314(A) We begin by addressing Patent Owner’s arguments for discretionary denial. As explained below, we find those arguments persuasive. Thus, we exercise discretion to deny institution of the Petition under 35 U.S.C. § 314(a) without reaching the merits of Petitioner’s asserted grounds of unpatentability.” slip op. at 8

    • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

      “35 U.S.C. § 314(a) to deny institution of the Petition and deny the Joinder Motion.” slip op. at 2

    Discretionary denial
    Patents in suitUS 11,084,865
  • PTAB · Jun 2, 2025 · IPR2025-00176 · APJ Michael A Valek · IPR · Institution

    The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors—particularly investment, overlap, and merits—weighed against review.

    In the decision

    …. . . and increase risks such as inflammation”). Petitioner attempts to distinguish these and other findings from the district court by pointing to teachings in some of its cited references that differ from those considered in the Mylan case and the reference claims in Petitioner’s ODP defense.…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

      “raised by this overlap, but given the circumstances, it does not effectively mitigate them. First, the disputed issues for Petitioner’s ODP defense are the same or substantially similar to those for the obviousness grounds in the Petition, but the Sotera stipulation does not prevent Petitioner from litigating those issues before both the district court (as part of its ODP defense) and here in the event an IPR is instituted.19 Second, the MDL proceeding 19 ODP or nonstatutory double patenting is, as the name implies, not premised on any statute. See, e.g., Ostuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1297 (Fed. Cir. 2012) (“Nonstatutory double patenting is a judicially created doctrine grounded in public policy.”). Accordingly, it is not a ground Petitioner reasonably could have raised in this IPR. See 35 U.S.C. § 311(b) (inter partes review may be requested “only on a ground that could be raised under section 102 or 103”). includes other biosimilar applicant defendants who are similarly motivated to try to invalidate the ’865 patent claims, but who are not subject to any Sotera stipulation. Even if we institute review on Petitioner’s grounds here, those other defendants remain free to litigate the same grounds in the consolidated MDL proceeding. For these reasons and given the particular circumstances of this case, Petitioner’s Sotera stipulation does not sufficiently mitigate the risks of duplicated efforts or inconsistent decisions by making this IPR a “true alternative” to resolution of these issues by the district court. See Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205, Paper 19, 3–4 (PTAB Mar. 28, 2005) (determining on Director Review that a Sotera stipulation did not ensure IPR would be a “true alternative” because Petitioner’s invalidity arguments “include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot” and thus the same or similar issues would remain in the parallel proceeding); SAP America, Inc. v. Cyandia, Inc., IPR2024-01496, Paper 13, 8–9 (PTAB Apr. 7, 2025) (similar).” slip op. at 19

    Discretionary denial
    Patents in suitUS 11,084,865
  • PTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution

    The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.

    In the decision

    …1. Merits: Obviousness over Vardi, IEEE802.11, and Jaflon Petitioner advances arguments that map with particularity every limitation of claim 1 to teachings in Vardi, IEEE802.11, and Jaflon, and sufficiently articulates rationales to combine these references. Pet. 22–41, 69–77. At this…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

      “same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13

    • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

      “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
    § 103 obviousnessDiscretionary denial
    Patents in suitUS 10,694,384
  • PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing

    The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.

    In the decision

    …in the Preliminary Response. Id. As support, Petitioner contends that Patent Owner “chose to rebut Petitioner’s argument regarding Danciu-Mahajan teaching commands in first and second formats by alleging that the source of those commands was inconsistent with the claims, without arguing for any…

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3

    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

      “discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4

    • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

      “Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

      “claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15

    Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
    Patents in suitUS 11,048,751
  • PTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution

    The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

    In the decision

    …Cir. 2016). A reason to combine or modify the prior art may be found explicitly or implicitly in market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

      “Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10

    • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

      “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

    • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

      “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20

    • Skill levelSkill level petitioner adoptedDecided for petitioner

      “patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20

    Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
    Patents in suitUS 11,201,500
  • PTAB · May 4, 2023 · IPR2023-00133 · APJ Ken B Barrett · IPR · Institution

    The Board denied institution under Fintiv because the advanced parallel litigation outweighed the stipulation, and the petition did not present compelling merits for any challenged claim.

    In the decision

    …question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

      “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

      “We agree that Kobayashi provides scant details on the operation of its outer encoder, which Petitioner attempts to fill in with expert testimony on Hamming coders and matrix multiplication generally. See Ex. 1002 ¶¶ 28– 35, 65. Patent Owner, on the other hand, provides argument based on Kobayashi’s disclosure and Petitioner’s own characterization of that disclosure that appears, on this record, to contradict Petitioner’s arguments. Even if, hypothetically, we were to deem Petitioner’s showing on the record before us to be adequate under the lesser reasonable likelihood standard (again, a finding we do not make), we apply a higher compelling merits standard for our analysis of the sixth Fintiv factor, and find Petitioner has not met that higher standard. In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling.” slip op. at 31

    § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
    Patents in suitUS 7,421,032
  • PTAB · May 4, 2023 · IPR2023-00131 · APJ John A Hudalla · IPR · Institution

    The Board denied institution for claims 3–18 and 22 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

    In the decision

    …in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’781 patent and the asserted prior art. C. Claim Interpretation In an inter partes review, we construe each claim using the same…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

      “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14

    • BurdenNot reached

      “Although we need not fully resolve these issues for our “compelling merits” determination, we note that Patent Owner makes several arguments that call into question whether Petitioner would ultimately succeed with its unpatentability challenges relative to its analysis for the recited “codeword.” Petitioner’s contentions hinge on its assertion that an ordinarily skilled artisan “would have understood that this encoded sequence I4 is a codeword because the output of an encoder such as Kobayashi’s precoder is a codeword.” Pet. 15 (citing Ex. 1002 ¶ 68).8 We agree with Patent Owner that Petitioner’s analysis appears to (1) rely on circular reasoning; and (2) run counter to Kobayashi’s disclosure of the inner encoder in Figure 8 as comprising both the precoder and duobinary signaling blocks. See Ex. 1005, 7:9–11, Fig. 8. We also have considered Dr. Valenti’s testimony that an ordinarily skilled artisan would have understood the output of Kobayashi’s precoder to be a codeword. See Ex. 1002 ¶ 45. In support of this testimony, Dr. Valenti cites only general background testimony on error control coding and Kobayashi’s use of “codeword” with respect to the Hamming encoder. See id. Yet Dr. Valenti’s background testimony does not address whether an ordinarily skilled artisan would have regarded a precoder alone to be an 8 Petitioner cites to paragraph 68 of Dr. Valenti’s declaration, but his more relevant testimony supporting this proposition is found at paragraph 45, which we discuss below. encoder. See id. ¶¶ 24–27. And Kobayashi’s characterizations regarding the output of the Hamming encoder, which is a different element, do not necessarily apply to the precoder, which is only a portion of Kobayashi’s inner encoder. See Ex. 1005, 7:50–8:2. Thus, even if we were to find that Petitioner’s contentions support a reasonable likelihood of unpatentability, we would have significant open questions for resolution at trial. Under these circumstances, and based on the present record, we do not find “compelling merits” because Petitioner’s challenges do not plainly lead to a conclusion that one or more claims are unpatentable. For purposes of our analysis under Fintiv, we weigh the merits as being neutral.” slip op. at 22

    Discretionary denialcites Phillips · KSR · Graham
    Patents in suitUS 7,916,781
  • PTAB · Jan 31, 2022 · PGR2021-00104 · APJ Frederick C Laney · PGR · Institution

    The Board denied institution of PGR challenging claims 1, 5, 6, and 10, exercising discretion under § 324(a) based on the Fintiv factors.

    In the decision

    …court. For example, under Petitioner’s Ground 1, although Petitioner’s and its witness’s (Dr. Mudawar’s) interpretations of the prior art as teaching the claimed subject matter are not unreasonable, the interpretations are not particularly clear or strong. Pet. 14–27. Petitioner pieces…

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

      “Thus, a jury trial is scheduled to occur in the related district court litigation approximately four months prior to when a final written decision would be statutorily due in this post-grant review, and the district court has indicated that any changes to the schedule, including the trial date, are disfavored. We find these facts weigh in favor of exercising discretion to deny institution under this factor.” slip op. at 11

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundOther

      “For example, under Petitioner’s Ground 1, although Petitioner’s and its witness’s (Dr. Mudawar’s) interpretations of the prior art as teaching the claimed subject matter are not unreasonable, the interpretations are not particularly clear or strong. Pet. 14–27. Petitioner pieces together portions from Best, Krajewski, and/or Cray that do not explicitly disclose the claimed subject matter, relying instead on Dr. Mudawar to interpret the references’ disclosures as meeting specific claim limitations. Id. Further, Petitioner, for the most part, asserts that each limitation of, for example, independent claim 1, is individually disclosed by one or more of Best, Krajewski, and/or Cray without clearly explaining how one reference’s disclosed apparatus or system would be specifically modified by the ordinarily skilled artisan in view of the teachings of the others. Id. Moreover, when discussing a motivation to combine Best, Krajewski, and/or Cray, Petitioner relies on the fact that they are directed to analogous art and then, primarily, that the features they teach would achieve the same advantages extolled by the ’446 patent itself for its claimed invention, which is not strong support that the prior art would have been combined or modified absent some improper hindsight. Id. at 30–35. Thus, although Petitioner may have made a sufficient showing for” slip op. at 16

    § 103 obviousnessDiscretionary denial
    Patents in suitUS 10,820,446

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.