Inter Partes Reexamination

Inter Partes Reexamination

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Inter Partes Reexamination

            Inter partes reexamination procedures permit a third party to request reexamination of a patent.  The requestor may participate in the reexamination process, including appeals to the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit.

Basics

Basic characteristics of inter partes reexamination

The basic characteristics of inter partes reexamination are as follows:

(A) Any third party requester can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999)

(B) Prior art considered during reexamination is limited to prior patents or printed publications applied under the appropriate parts of 35 U.S.C. §102 and §103;

(C) A substantial new question of patentability must be present for reexamination to be ordered;

(D) If ordered, the actual reexamination proceeding is essentially inter partes in nature;

(E) Decision on the request must be made not later than three months from its filing date, and the remainder of proceedings must proceed with "special dispatch" within the Office;

(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of an inter partes reexamination certificate;

(G) The scope of the patent claims cannot be enlarged by amendment;

(H) Reexamination and patent files are open to the public, but see paragraph (I) below;

(I) The reexamination file is scanned to provide an electronic copy of the file. All public access to and copying of reexamination proceedings may be had from the electronic copy. The paper file is not available to the public.

[MPEP 2609 (July 2008)]

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Statistics

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Statutes

35 U.S.C. §311 - Request for inter partes reexamination

(a) IN GENERAL.— Any third-party requester at any time may file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301.

(b) REQUIREMENTS.— The request shall—

(1 )be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41; and

(2) set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.

(c)COPY.— The Director promptly shall send a copy of the request to the owner of record of the patent.

35 U.S.C. §312 - Determination of issue by Director

(a) REEXAMINATION.— Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.

(b) RECORD.— A record of the Director’s determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.

(c) FINAL DECISION.— A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.

35 U.S.C. §313 - Inter partes reexamination order by Director

If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the ques­tion. The order may be accompanied by the initial action of the Patent and Trademark Office on the mer­its of the inter partes reexamination conducted in accordance with section 314.

35 U.S.C. §314 - Conduct of inter partes reexamination proceedings

(a) IN GENERAL.— Except as otherwise pro­vided in this section, reexamination shall be con­ducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination pro­ceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.

(b) RESPONSE.—

(1) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the Office shall send to the third-party requester a copy of any com­munication sent by the Office to the patent owner con­cerning the patent subject to the inter partes reexamination proceeding.

(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.

(c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dis­patch within the Office.

35 U.S.C. §315 - Appeal

(a) PATENT OWNER.— The patent owner involved in an inter partes reexamination proceeding under this chapter—

(1) may appeal under the provisions of sec­tion 134 and may appeal under the provisions of sec­tions 141 through 144, with respect to any decision adverse to the patentability of any original or pro­posed amended or new claim of the patent; and

(2) may be a party to any appeal taken by a third-party requester under subsection (b).

(b) THIRD-PARTY REQUESTER.— A third-party requester—

(1) may appeal under the provisions of sec­tion 134, and may appeal under the provisions of sec­tions 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and

(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the pro­visions of section 134 or sections 141 through 144.

(c) CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceed­ings.

35 U.S.C. §316 - Certificate of patentability, unpatentability and claim cancellation

(a) IN GENERAL.— In an inter partes reexam­ination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a cer­tificate canceling any claim of the patent finally deter­mined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

(b) AMENDED OR NEW CLAIM.— Any pro­posed amended or new claim determined to be patent­able and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, prior to issuance of a certificate under the provisions of subsection (a) of this section.

35 U.S.C. §317 - Inter partes reexamination prohibited

(a) ORDER FOR REEXAMINATION.— Not­withstanding any provision of this chapter, once an order for inter partes reexamination of a patent has been issued under section 313, neither the third-party requester nor its privies may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued and published under section 316, unless authorized by the Director.

(b) FINAL DECISION.— Once a final deci­sion has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of prov­ing the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination pro­ceeding instituted by a third-party requester is favor­able to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reex­amination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

35 U.S.C. §318 - Stay of litigation

Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.

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Inter Partes Reexamination Rules

Subpart H - Inter Partes Reexamination of Patents that Issued From an Original Application Filed in the United States on or After November 29, 1999 (37 C.F.R. §§ 1.902-1.1.907, 1.913, 1.915, 1.919, 1.923, 1.925, 1.927, 1.931, 1.933, 1.935, 1.937, 1.939, 1.941, 1.943, 1.945, 1.947-1.949, 1.951, 1.953, 1.955-1.959, 1.979, 1.981, 1.983, 1.985, 1.987, 1.989, 1.991, 1.993, 1.995, and 1.997)

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Recently Reported Requests for Inter Partes Reexamination

 

No. 6,488,508

  • Title: INTERACTIVE COMMUNICATION SYSTEM FOR COMMUNICATING VIDEOGAME AND KARAOKE SOFTWARE
  • Reexam. C.N.: 95/001,234
  • Requested Date: September 18, 2009
  • Owners of Record: ADC Technology, Inc., Japan
  • Third Party Requester: Sony Computer Entertainment America Inc., Microsoft Corp., Nintendo of America, Inc.

No. 6,781,231

  • Title: MICROELECTROMECHANICAL SYSTEM PACKAGE WITH ENVIRONMENTALAND INTERFERENCE SHIELD
  • Reexam. C.N.: 95/000,509
  • Requested Date: October 7, 2009 
  • Owners of Record: Knowles Electronics, LLC., Itasca, IL
  • Third Party Requester: Analog Devices, Inc.

No. 6,847,822

  • Title: CELLULAR TELEPHONE SYSTEM THAT USES POSITION OF A MOBILEUNIT TO MAKE CALL MANAGEMENT DECISIONS
  • Reexam. C.N.: 95/001,238
  • Requested Date: September 28, 2009
  • Owners of Record: EMSAT, Advanced Geo-Location Technology, LLC., Loveland, OH
  • Third Party Requester: Cellco Partnership (Verizon Wireless)

No. 6,891,811

    • Title: SHORT MESSAGING SERVICE CENTER MOBILE-ORIGINATED TO HTTPINTERNET COMMUNICATIONS
  • Reexam. C.N.: 95/001,240
  • Requested Date: October 2, 2009   
  • Owners of Record: Telecommunication Systems, Inc., Annapolis, MD
  • Third Party Requester: Sybase, Inc.

No. 7,355,990

  • Title: MOBILE-ORIGINATED TO HTTP INTERNET COMMUNICATIONS
  • Reexam. C.N.: 95/001,241
  • Requested Date: October 2, 2009
  • Owners of Record: Telecommunication Systems, Inc., Annapolis, MD
  • Third Party Requester: Sybase, Inc.  

No. 7,457,802

  • Title: INTERNET SEARCHING ENHANCEMENT METHOD FOR DETERMINING TOPICAL RELEVANCE SCORES
  • Reexam. C.N.: 95/001,233
  • Requested Date: September 17, 2009
  • Owners of Record: Jason Coleman, Dallas, TX, Steven Thrasher, Dallas, TX
  • Third Party Requester: NeXplore Corporation 

No. 6,702,585

  • Title: INTERACTIVE COMMUNICATION SYSTEM FOR COMMUNICATING VIDEOGAME AND KARAOKE SOFTWARE
  • Reexam. C.N.: 95/001,236
  • Requested Date: Sep. 21, 2009
  • Owners of Record: ADC Technology, Inc., Japan
  • Third Party Requester: Sony Computer Entertainment America Inc., Microsoft Corp. Nintendo of America, Inc.  

No. 6,711,426

  • Title: SPECTROSCOPY ILLUMINATOR WITH IMPROVED DELIVERY EFFICIENCYFOR HIGH OPTICAL DENSITY AND REDUCED THERMAL LOAD
  • Reexam. C.N.: 95/001,232
  • Requested Date: Sep. 15, 2009
  • Owners of Record: Spectros Corporation, Portola Valley, CA
  • Third Party Requester: Thermo Fisher Scientific Inc. & NanoDrop Technologies, LLC. 

No. 7,410,571

  • Title: FLASH CHROMATOGRAPHY CARTRIDGE
  • Reexam. C.N.: 95/000,496
  • Requested Date: Sep. 30, 2009
  • Owners of Record: Scientific Plastic Products, Inc., Oceanside, CA
  • Third Party Requester: Biotage AB, Upsala, Sweden  

No. 6,191,964

  • Title: CIRCUIT AND METHOD FOR CONTROLLING A SYNCHRONOUS RECTIFIERCONVERTER
  • Reexam. C.N.: 95/001,231
  • Requested Date: Sep. 11, 2009
  • Owners of Record: Lineage Overseas Corp., Wilmington, DE
  • Third Party Requester: SynQor, Inc. 

No. 6,803,984

  • Title: METHOD AND APPARATUS FOR MANUFACTURING LIQUID CRYSTALDISPLAY DEVICE USING SERIAL PRODUCTION PROCESSES
  • Reexam. C.N.: 95/000,507
  • Requested Date: Sep. 28, 2009
  • Owners of Record: LG Display, Co., LTD., Seoul, Korea
  • Third Party Requester:  Chi Mei Optoelectronics Corp. 

No. 6,875,021

  • Title: INTERACTIVE COMMUNICATION SYSTEM FOR COMMUNICATING VIDEOGAME AND KARAOKE SOFTWARE
  • Reexam. C.N.: 95/001,237
  • Requested Date: Sep. 22, 2009
  • Owners of Record: ADC Technology, Inc., Aichi, Japan
  • Third Party Requester:  Nintendo SCEA and Microsoft  

No. 7,068,668

  • Title: METHOD AND APPARATUS FOR INTERFACING A PUBLIC SWITCHED TELEPHONE NETWORK AND AN INTERNET PROTOCOL NETWORK FOR MULTI MEDIA COMMUNICATION
  • Reexam. C.N.: 95/001,239
  • Requested Date: Oct. 01, 2009
  • Owners of Record: Centre One, San Clemente, CA
  • Third Party Requester: Vonage Holdings, Corp.  

No. 7,218,374

  • Title: LIQUID CRYSTAL DISPLAY DEVICE AND METHOD OF MANUFACTURINGTHE SAME
  • Reexam. C.N.: 95/000,506
  • Requested Date: Sep. 22, 2009
  • Owners of Record: LG Display, Co., LTD., Seoul, Korea
  • Third Party Requester:  Chi Mei Optoelectronics Corp.    

No. 6,564,604

  • Title: PROCESS FOR THE MANUFACTURE OF A PART WITH VERY HIGH MECHANICAL PROPERTIES, FORMED BY STAMPING OF A STRIP OF ROLLED STEEL SHEET AND MORE PARTICULARLY HOT ROLLED AND COATED
  • Reexam. C.N.: 95/001,214
  • Requested Date: Aug. 20, 2009
  • Owners of Record: Usinor, Puteaux, France
  • Third Party Requester: Severstal North America, Inc.

No. 7,016,481

  • Title: REMOTE INTERNET TELEPHONY DEVICE
  • Reexam. C.N.: 95/000,503
  • Requested Date: Aug. 31, 2009
  • Owners of Record: Riparius Ventures, LLC., Hunt Valley, MD
  • Third Party Requester:  RTX Telecom, Skype Technologies

No. 7,139,371

  • Title: REMOTE INTERNET TELEPHONY DEVICE
  • Reexam. C.N.: 95/000,502
  • Requested Date: Aug. 31, 2009
  • Owners of Record: Riparious Ventures, LLC., Timonium, MD
  • Third Party Requester: RTX Telecom, Skype Technologies

No. 6,332,646

  • Title: FOLDABLE CHAIR FRAME
  • Reexam. C.N.: 95/001,226
  • Requested Date: Aug. 25, 2009
  • Owners of Record: Chia Yi Chin JWU Enterprise Co., LTD., Taiwan
  • Third Party Requester: Idea Nuova, Inc. 

No. 6,816,457

  • Title: PREDICTIVE ROUTING TABLE CACHE POPULATION
  • Reexam. C.N.: 95/000,500
  • Requested Date: Aug. 28, 2009
  • Owners of Record: Abdullah Ali Bahattab, Chicago, IL
  • Third Party Requester: Juniper Networks. Inc. 

No. 7,194,094

  • Title: SOUND MASKING SYSTEM
  • Reexam. C.N.: 95/000,499
  • Requested Date: Aug. 24, 2009
  • Owners of Record: Acentech, Inc., Cambridge, MA
  • Third Party Requester: Lencore Acoustics Corp.

No. 7,403,220

  • Title: APPARATUS, METHODS, AND SYSTEM FOR VIEWING AND MANIPULATING A VIRTUAL ENVIRONMENT
  • Reexam. C.N.: 95/000,493
  • Requested Date: Aug. 14, 2009
  • Owners of Record: Gamecaster, Inc., San Diego, CA
  • Third Party Requester: DreamWorks Animation SKG, Inc. 

No. 7,580,733

  • Title: PERSONAL COMMUNICATION DEVICE CONNECTIVITY ARRANGEMENT
  • Reexam. C.N.: 95/001,227
  • Requested Date: Aug. 25, 2009
  • Owners of Record: Ambit Corporation, Manchester, MA
  • Third Party Requester: Aircell LLC 

No. 6,920,124

  • Title: METHOD FOR TRANSMITTING DIGITAL USEFUL DATA
  • Reexam. C.N.: 95/001,225
  • Requested Date: Aug. 24, 2009
  • Owners of Record: IPCOM GMBH & Co., KG, Germany
  • Third Party Requester: HTC Corporation  

No. 7,138,061

  • Title: FLASH CHROMATOGRAPHY CARTRIDGE
  • Reexam. C.N.: 95/000,497
  • Requested Date: Aug. 21, 2009
  • Owners of Record: Scientific Plastic Products, Inc., Oceanside, CA
  • Third Party Requester: Biotage AB, Upsala, Sweden  

No. 7,381,327

  • Title: FLASH CHROMATOGRAPHY CARTRIDGE
  • Reexam. C.N.: 95/000,495
  • Requested Date: Aug. 21, 2009
  • Owners of Record: Scientific Plastic Products, Inc., Oceanside, CA
  • Third Party Requester: Biotage AB, Upsala, Sweden

No. 7,245,636

  • Title: METHOD FOR OPERATING A MOBILE RADIOTELEPHONE NETWORK
  • Reexam. C.N.: 95/001,212
  • Requested Date: Aug. 18, 2009
  • Owners of Record: IPCOM GMBH & Co., KG, Pullach, Germany
  • Third Party Requester: HTC Corporation

No. 7,272,021

  • Title: POWER CONVERTER WITH ISOLATED AND REGULATED STAGES
  • Reexam. C.N.: 95/001,206
  • Requested Date: Aug. 19, 2009
  • Owners of Record: SYNQOR, Inc., Hudson, MA
  • Third Party Requester: Murata Manufacturing Co., LTD.

No. 6,505,172

  • Title: ELECTRONIC SOURCING SYSTEM
  • Reexam. C.N.: 95/000,487
  • Requested Date: Aug. 21, 2009
  • Owners of Record: ePlus, Inc., Herndon, VA
  • Third Party Requester: Lawson Software, Inc.  

No. 7,043,450

  • Title: PAID SEARCH ENGINE BID MANAGEMENT
  • Reexam. C.N.: 95/001,221
  • Requested Date: Aug. 12, 2009
  • Owners of Record: Paid Search Engine Tools, LLC., Loveland, OH
  • Third Party Requester: Yahoo!, Inc.

No. 7,072,190

  • Title: HIGH EFFICIENCY POWER CONVERTER
  • Reexam. C.N.: 95/001,207
  • Requested Date: Aug. 19, 2009
  • Owners of Record: SynQor, Inc., Hudson, MA
  • Third Party Requester: Murata Manufacturing Co., LTD. 

No. 7,363,592

  • Title: TOOL GROUP MANIPULATIONS
  • Reexam. C.N.: 95/001,208
  • Requested Date: Jul. 31, 2009
  • Owners of Record: Gary Odom, Tigard, OR
  • Third Party Requester: Microsoft Corporation  

No. 7,274,926

  • Title: METHOD AND DEVICE FOR TRANSMITTING MESSAGES
  • Reexam. C.N.: 95/001,210
  • Requested Date: Aug. 13, 2009
  • Owners of Record: IPCOM GMBH & Co. KG, Germany
  • Third Party Requester: HTC Corporation

No. 7,333,822

  • Title: METHOD FOR TRANSMITTING MESSAGES IN A TELECOMMUNICATIONNETWORK
  • Reexam. C.N.: 95/001,211
  • Requested Date: Aug. 12, 2009
  • Owners of Record: IPCOM GMBH & Co. KG, Germany
  • Third Party Requester: HTC Corporation

No. 6,987,980

  • Title: TRANSMISSION FRAME AND RADIO UNIT FOR TRANSMITTING SHORT MESSAGES WITH DIFFERENT DATA FORMAT
  • Reexam. C.N.: 95/001,219
  • Requested Date: Aug. 11, 2009
  • Owners of Record: IPCOM GMBH & Co. KG, Germany
  • Third Party Requester: HTC Corporation  

No. 7,536,046

  • Title: METHOD AND APPARATUS FOR CURRENCY DISCRIMINATION ANDCOUNTING
  • Reexam. C.N.: 95/001,220
  • Requested Date: Aug. 12, 2009
  • Owners of Record: Cummins-Allison Corp., Mt. Prospect, IL
  • Third Party Requester:  Mahbub A. Siddiqui, Honolulu, HI

No. 6,610,545

  • Title: NUCLEOTIDE SEQUENCE ENCODING THE ENZYME I-SCEI AND THE USESTHEREOF
  • Reexam. C.N.: 95/000,491
  • Requested Date: Jul. 31, 2009
  • Owners of Record: Institut Pasteur, Paris, France
  • Third Party Requester:  Precision BioSciences, Inc.  

No. 7,562,656

  • Title: AEROSOL MEDICATION INHALATION SYSTEM
  • Reexam. C.N.: 95/001,216
  • Requested Date: Aug. 03, 2009
  • Owners of Record: PRE Holding, Inc., Midlothian, VA
  • Third Party Requester: Monaghan Medical Corp.

No. 6,891,811

  • Title: NUCLEOTIDE SEQUENCE ENCODING THE ENZYME I-SCEI AND THE USES THEREOF
  • Reexam. C.N.: 95/000,490
  • Requested Date: Jul. 31, 2009
  • Owners of Record: Institut Pasteur, Paris, France
  • Third Party Requester: Precision BioSciences, Inc.

No. 7,567,742

  • Title: HOLEY OPTICAL FIBER WITH RANDOM PATTERN OF HOLES AND METHOD FOR MAKING SAME
  • Reexam. C.N.: 95/001,215
  • Requested Date: Jul. 28, 2009
  • Owners of Record: Virginia Tech Intellectual Property, Inc., Blacksburg, VA
  • Third Party Requester: Corning Incorporated

No. 6,304,975

  • Title: INTELLIGENT NETWORK SECURITY DEVICE AND METHOD
  • Reexam. C.N.: 95/000,489
  • Requested Date: Jul. 20, 2009
  • Owners of Record: Enhanced Security Research, LLC., Berkeley, CA
  • Third Party Requester: Juniper Networks, Inc. 

No. 7,503,868

  • Title: AUTOMATIC SPEED CHANGING DEVICE
  • Reexam. C.N.: 95/001,213
  • Requested Date: Jul. 24, 2009
  • Owners of Record: MBI, Co., LTD., Korea
  • Third Party Requester: Shimano, Inc., Japan

No. 6,795,327

  • Title: SEMICONDUCTOR STORAGE METHOD AND DEVICE SUPPORTING MULTI-INTERFACE
  • Reexam. C.N.: 95/001,209
  • Requested Date: Jul. 16, 2009
  • Owners of Record: NETAC Technology, Co., LTD., China
  • Third Party Requester: SanDisk Corporation, Milpitas, CA

RE. 37,590

  • Title: RETRACTABLE SENSOR FOR AN ALARM SYSTEM
  • Reexam. C.N.: 95/000,484
  • Requested Date: Jun. 30, 2009
  • Owners of Record: SE-KURE Controls, Inc., Franklin Park, IL
  • Third Party Requester: Telefonix, Inc.

 

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