`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`ALCATEL-LUCENT USA, INC.
`Petitioner
`
`v.
`
`ADAPTIX, INC.
`Patent Owner
`
`_________________________
`
`Patent 8,934,445
`
`TITLE: MULTI-CARRIER COMMUNICATIONS WITH ADAPTIVE
`CLUSTER CONFIGURATION AND SWITCHING
`
`_________________________
`
`DECLARATION OF DR. SYLVIA HALL-ELLIS
`UNDER 37 C.F.R. § 1.68
`
`I, Sylvia Hall-Ellis, do hereby declare:
`
`1.
`
`I have personal knowledge of the facts set forth herein, and am
`
`competent to testify to the same.
`
`2.
`
`In the preparation of this declaration, I have studied:
`
`a.
`
`Van Nee, et al. “OFDM for Wireless Multimedia
`
`Communications” (1999) (“Van Nee”), Ex. 1011;
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 1 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`b. MARC record for Van Nee, Ex. 1012;
`
`c.
`
`Lajos Hanzo et al., “Single- and Multi-carrier Quadrature
`
`Amplitude Modulation: Principles and Applications for
`
`Personal Communications, WLANs and Broadcasting” (1999)
`
`(“Hanzo”) , Ex. 1014;
`
`d. MARC record for Hanzo, Ex. 1015;
`
`e.
`
`Theodore Rappaport, “Wireless Communications: Principles &
`
`Practice” (1995) (“Rappaport”), Ex. 1016;
`
`f. MARC record for Rappaport, Ex. 1017.
`
`g.
`
`Hermann Rohling and Rainer Grunheid, “Performance
`
`Comparison of Different Multiple Access Schemes for the
`
`Downlink of an OFDM Communication System,” IEEE
`
`Vehicular Technology Conference, 1997 IEEE 47th Vol. 3, pp.
`
`1365-1369, May 7, 1997, (“Rohling”), Ex. 1025;
`
`h. MARC record for Rohling, Ex. 1026.
`
`3.
`
`I was asked to investigate the references Ex. 1011, Ex. 1014, Ex.
`
`1016, and 1025 and to determine their respective dates of public availability, if
`
`any, and specifically, to determine whether those references were published before
`
`December 15, 2000. This declaration sets forth my findings, as well as the bases
`
`for those findings.
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 2 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`4.
`
`I am currently an Adjunct Professor in the School of Information at
`
`San Jose State University and the Director of Grants and Resource Development
`
`for the Colorado Community College System. I was previously the Senior Grant
`
`Administrator for the Morgridge College of Education at the University of Denver.
`
`I was also previously an Associate Professor and lecturer at the University of
`
`Denver, where I received tenure in 2007. I obtained a Masters of Library Sciences
`
`from the University of North Texas in 1972, and a Ph.D in Library Sciences from
`
`the University of Pittsburgh in 1985. I was first employed as a librarian in 1966,
`
`and have been involved in the field of library sciences since, holding numerous
`
`positions.
`
`5.
`
`I have also given over one hundred presentations in the field,
`
`including several on library cataloging systems and MARC standards. My current
`
`research interests include library cataloging systems, metadata, and organization of
`
`electronic resources.
`
`6. My full curriculum vitae is set forth in Ex. 1009. I am being
`
`compensated at a rate of $300.00 per hour, with reimbursement for actual
`
`expenses, for my work related to this Petition for Inter Partes Review. My
`
`compensation is not dependent on and in no way affects the substance of my
`
`statements in this Declaration.
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 3 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`7.
`
`I am a member of the American Library Association (ALA) and its
`
`Association for Library Collections & Technical Services (ALCTS) Division, and I
`
`served as the chair of the Committee for Education and Training of Catalogers and
`
`the Competencies and Education for a Career in Cataloging Interest Group. I also
`
`served as the Chair of the ALCTS Division’s Task Force on Competencies and
`
`Education for a Career in Cataloging. Additionally, I have served as the Chair for
`
`the ALA Office of Diversity’s Committee on Diversity.
`
`II. LIBRARY CATALOGING USING MARC
`
`8.
`
`In general, libraries make purchases of newly published books
`
`throughout the year as the books are published, and libraries then catalog and
`
`shelve the books as soon thereafter as possible in order to make the books available
`
`to their patrons. Thus, books are typically generally available at libraries across the
`
`country within just a few days of publication and arrival in the library.
`
`9.
`
`I am fully familiar with a library cataloging standard known as the
`
`“Machine Readable Cataloging” standard, also known as “MARC,” which is an
`
`industry-wide standard method of organizing library catalog information. MARC
`
`was first developed in the 1960’s by the Library of Congress. A MARC-
`
`compatible library is one that has a catalog consisting of individual MARC records
`
`for each of its items. Today, MARC is the primary communication protocol for the
`
`transfer and storage of bibliographic metadata in libraries.
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 4 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`10. When an Online Computer Library Center (OCLC) participating
`
`institution acquires a work, it creates a MARC record for this work in its computer
`
`catalog system and OCLC automatically supplies the date of creation. The MARC
`
`record creation date reflects the date on or shortly after the item was first acquired
`
`and catalogued by the library that creates the MARC record. Once the MARC
`
`record is created by a cataloger at an OCLC participating member institution, that
`
`record is instantaneously available to any OCLC participating members, and
`
`therefore available to the public.
`
`11. A MARC record comprises several fields, each of which contains
`
`specific data about the work. Each field is identified by a standardized, unique,
`
`three-digit code corresponding to the type of data that follows. I summarize a few
`
`of the pertinent fields below:
`
`a.
`
`b.
`
`c.
`
`Field 001 (“Control Number”). Contains the control number
`
`assigned by the organization creating, using, or distributing the
`
`record.
`
`Field 245 (“Title Statement”). Information describing the title
`
`of the work is recorded in field 245;
`
`Field 246 (“Variant Title”). Variations for the title appear in
`
`field 246;
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 5 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
`
`Field 100 (“Author”). The primary author of the work is
`
`recorded in field 100;
`
`Field 008 (“General Information”). This field comprises the
`
`date the MARC entry was entered on file and the date on which
`
`the MARC entry would have been searchable by other fields of
`
`the MARC record (e.g., Title, Author, General subject matter).
`
`Specifically, the date of creation is identified in the first six
`
`characters, in the format YYMMDD;
`
`Field 020 (“International Standard Serial Number”). A
`
`work’s International Standard Book Number (“ISBN”) is
`
`recorded in field 020;
`
`Field 050 (“Library of Congress Call Number”). An item’s
`
`call number assigned by the Library of Congress is recorded in
`
`field 050;
`
`Field 260 (Bibliographic data). Information such as the place
`
`of publication, name of the publisher, and the copyright year is
`
`recorded in field 260;
`
`Field 040 (“Cataloging Source”). The library that created the
`
`record is recorded in field 040 in subfield “a” with a unique
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 6 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`library code.1 MARC field 040 contains the OCLC symbols of
`
`institutions transcribing, creating, and modifying the record.
`
`For example, the OCLC symbol for the Library of Congress is
`
`“DLC.” Notably, this field may identify more than one
`
`institution; and,
`
`j.
`
`Field 650 (“Topical Subjects”). This field includes the general
`
`subject matter of the work, and terms that would generally be
`
`used to search for and locate the subject of the work.
`
`12. The OCLC was created “to establish, maintain and operate a
`
`computerized library network and to promote the evolution of library use, of
`
`libraries themselves, and of librarianship, and to provide processes and products
`
`for the benefit of library users and libraries, including such objectives as increasing
`
`availability of library resources to individual library patrons and reducing the rate
`
`of rise of library per-unit costs, all for the fundamental public purpose of furthering
`
`
`1 For more information about MARC field 040, please refer to
`http://www.ocic.orgibibformats/en/0xx/040.html . The symbol in subfield “a”
`corresponds to the symbol for the institution inputting the original record. For a list
`of OCLC symbols and
`their corresponding
`institutions, please refer
`to
`http://www.ocic.org/contactsdibraries.en.html.
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 7 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`ease of access to and use of the ever-expanding body of worldwide scientific,
`
`literary and educational knowledge and information.”2
`
`13. Among other services, OCLC and its members are responsible for
`
`maintaining
`
`the WorldCat database
`
`(http://www.worldcat.org/), used by
`
`independent and institutional libraries throughout the world. OCLC is the
`
`international cooperative into which libraries catalog records and others pay to
`
`access MARC records. MARC records that are contributed to the OCLC database
`
`are accessible by any OCLC member institution (and the patrons of those member
`
`institutions).
`
`14. OCLC also provides its members online access to MARC records
`
`through its OCLC Connexion database. When an OCLC member institution
`
`acquires a work, it creates a MARC record for this work in its computer catalog
`
`system in the ordinary course of its business. MARC records created at the Library
`
`of Congress are tape-loaded into the OCLC database through a subscription to
`
`MARC Distribution Services daily or weekly. Once the MARC record is created
`
`by a cataloger at an OCLC member institution or is tape-loaded from the Library
`
`of Congress, the MARC record is then made available to any other OCLC
`
`members online, and the underlying work is then made available to the public. For
`
`2 Third Article, Amended Articles of Incorporation of OCLC Online
`Computer Library Center, Incorporated (available at http://www.ocic.orgien-
`US/cotmcils/documents/amended_articles.html).
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 8 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`example, once a MARC record has been entered, that work is indexed and
`
`searchable by author (Field 100), title (Fields 245 and 246), and general subject
`
`matter (Field 650) worldwide by members. A member of the public could therefore
`
`locate the work via the MARC record, and the owning library would typically
`
`make that work available on request.
`
`15. When any OCLC member institution (such as the Library of
`
`Congress) creates a new MARC record, OCLC automatically supplies the date of
`
`creation for that MARC record in the first six characters of field 008. The MARC
`
`record creation date reflects the date on which, or shortly after which, the item was
`
`first acquired or cataloged. Initially, field 008 of the MARC record is automatically
`
`populated with the date of creation in year, month, day format (YYMMDD) (some
`
`of the newer library catalog systems also include hour, minute, second
`
`(HHMMSS)). Notably, the date represented in this field is system-supplied, and
`
`cannot generally be changed after the MARC entry is created.
`
`III. FINDINGS WITH RESPECT TO PUBLIC AVAILABILITY
`
`A. The Van Nee Textbook (Ex. 1011) Was Available To The Public
`As of October 7, 1999.
`
`16. Ex. 1012 is true and correct printout of the electronic MARC record
`
`maintained by the Library of Congress for the hook “OFDM for Wireless
`
`Multimedia Communications” by Richard Van Nee and Ramjee Prasad (“Van
`
`Nee,” Ex. 1011). Ex. 1012 is accessible as a web page via the Library of Congress
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 9 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`website using a standard web browser (https://catalog.loc.gov), and I personally
`
`accessed and viewed this web page to confirm the accuracy of its contents.
`
`17. Ex. 1012 is a true and correct copy of a web page maintained in the
`
`ordinary course of business by OCLC, and contains MARC information that would
`
`be relied on by librarians such as myself, as well as members of the public at large.
`
`I have confirmed that Ex. 1012 is the MARC record containing information
`
`pertaining to Ex. 1011 by matching the various fields of the MARC record to
`
`identifying information of the reference, including, for example, making sure that
`
`the authors (Richard Van Nee and Ramjee Prasad), title (“OFDM for Wireless
`
`Multimedia Communications”), Publisher (“Artech House”) and, ISBN (“0-89006-
`
`530-6”) are consistent as between the two documents. See Ex. 1011 (Cover,
`
`Copyright page); Ex. 1012 (Fields 245, 100, 260, 020). Accordingly, Ex. 1012 is a
`
`copy of the MARC record for Ex. 1011.
`
`18. Ex. 1012 shows that a cataloguer at the Library of Congress created
`
`MARC control number 42649777 (Field 001) for this title. See Ex. 1012 ( “DLC”
`
`in Field 040 indicates the Library of Congress). The cataloguer created the MARC
`
`entry on October 7, 1999, indicating that the cataloguer had possession of a
`
`physical copy of the Van Nee textbook (Ex. 1011) as of at least that date. Id.
`
`(“991007” in Field 008 indicates date created of October 07, 1999). Once the
`
`MARC entry was created on October 7, 1999, the Van Nee textbook (Ex. 1011)
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 10 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`was effectively indexed in a worldwide electronic database catalog and was made
`
`available to the public. For example, a member of the public could locate the work
`
`(Ex. 1011) via the MARC record (Ex. 1012) in any library computer cataloging
`
`system, and the work could be requested for viewing in person at the Library of
`
`Congress.
`
`B.
`
`The Hanzo Textbook (Ex. 1014) Was Available To The Public As
`of December 17, 1999.
`
`19. Ex. 1015 is true and correct printout of the electronic MARC record
`
`maintained by the Library of Congress for the book “Single and multicarrier
`
`quadrature amplitude modulation: principles and applications for personal
`
`communications, WLANs and Broadcasting” by Lajos Hanzo et al. (“Hanzo,” Ex.
`
`1014). Ex. 1015 is accessible as a web page via the Library of Congress website
`
`using a standard web browser (https://catalog.loc.gov), and I personally accessed
`
`and viewed this web page to confirm the accuracy of its contents.
`
`20. Ex. 1015 is a true and correct copy of a web page maintained in the
`
`ordinary course of business by the Library of Congress, and contains MARC
`
`information that would be relied on by librarians such as myself, as well as
`
`members of the public at large. I have confirmed that Ex. 1015 is the MARC
`
`record containing information pertaining to Ex. 1014 by matching the various
`
`fields of the MARC record to identifying information of the reference, including,
`
`for example, making sure that the authors (L. Hanzo, W. Webb, T. Keller), title
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 11 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`(“Single and multicarrier quadrature amplitude modulation: principles and
`
`applications for personal communications, WLANs and Broascasting [sic]”),
`
`Publisher (“John Wiley & Sons”) and, ISBN (“0-471-49239-6”) are consistent as
`
`between the two documents. See Ex. 1014 (Cover, Copyright page); Ex. 1015
`
`(Fields 245, 100, 260, 020). Accordingly, Ex. 1015 is a copy of the MARC record
`
`for Ex. 1014.
`
`21. Ex. 1015 shows that a cataloguer at the Library of Congress created
`
`MARC control number 43095757 (Field 001) for this title. See Ex. 1015 ( “DLC”
`
`in Field 040 indicates the Library of Congress). The cataloguer created the MARC
`
`entry on December 17, 1999, indicating that the cataloguer had possession of a
`
`physical copy of the Hanzo textbook (Ex. 1014) as of at least that date. Id.
`
`(“991217” in Field 008 indicates date created of December 17, 1999). Once the
`
`MARC entry was created on December 17, 1999, the Hanzo textbook (Ex. 1014)
`
`was effectively indexed in a worldwide electronic database catalog and was made
`
`available to the public. For example, a member of the public could locate the work
`
`(Ex. 1014) via the MARC record (Ex. 1015) in any library computer cataloging
`
`system, and the work could be requested for viewing in person at the Library of
`
`Congress.
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 12 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`C. The Rappaport Textbook (Ex. 1016) Was Available To The Public
`As Of November 30, 1995.
`
`22. Ex. 1017 is true and correct printout of the electronic MARC record
`
`maintained by the Library of Congress for the book “Wireless Communications:
`
`Principles & Practice” by Theodore Rappaport (“Rappaport,” Ex. 1016). Ex. 1017
`
`is accessible as a web page via the Library of Congress website using a standard
`
`web browser (https://catalog.loc.gov), and I personally accessed and viewed this
`
`web page to confirm the accuracy of its contents.
`
`23. Ex. 1017 is a true and correct copy of a web page maintained in the
`
`ordinary course of business by the Library of Congress, and contains MARC
`
`information that would be relied on by librarians such as myself, as well as
`
`members of the public at large. I have confirmed that Ex. 1017 is the MARC
`
`record containing information pertaining to Ex. 1016 by matching the various
`
`fields of the MARC record to identifying information of the reference, including,
`
`for example, making sure that the author (Theodore Rappaport), title (“Wireless
`
`Communications: Principles & Practice”), Publisher (“Prentice Hall PTR”) and,
`
`ISBN (“0-13-375536-3”) are consistent as between the two documents. See Ex.
`
`1016 (Cover, Copyright page); Ex. 1017 (Fields 245, 100, 260, 020). Accordingly,
`
`Ex. 1017 is a copy of the MARC record for Ex. 1016.
`
`24. Ex. 1017 shows that a cataloguer at the Point Loma Nazarene
`
`University Library created MARC control number 3061473 (Field 001) for this
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 13 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`title. See Ex. 1017 (“CPT” in Field 040 indicates the Point Loma Nazarene
`
`University Library). The cataloguer created the MARC entry on November 30,
`
`1995, indicating that the cataloguer had possession of a physical copy of the
`
`Rappaport textbook (Ex. 1016) as of at least that date. Id. (“951130” in Field 008
`
`indicates date created of November 30, 1995). Once the MARC entry was created
`
`on November 30, 1995, the Rappaport textbook (Ex. 1016) was effectively
`
`indexed in a worldwide electronic database catalog and was made available to the
`
`public. For example, a member of the public could locate the work (Ex. 1016) via
`
`the MARC record (Ex. 1017) in any library computer cataloging system, and the
`
`work could be requested for viewing in person at the Point Loma Nazarene
`
`University Library.
`
`D. Rohling (Ex. 1025) Was Available To The Public As of July 17,
`1997.
`
`25. Ex. 1026 is true and correct printout of the electronic MARC record
`
`maintained by the Library of Congress for the article “Performance Comparison of
`
`Different Multiple Access Schemes
`
`for
`
`the Downlink of an OFDM
`
`Communication System,” by Hermann Rohling and Rainer Grunheid (“Van Nee,”
`
`Ex. 1025). Ex. 1026 is accessible as a web page via the Library of Congress
`
`website using a standard web browser (https://catalog.loc.gov), and I personally
`
`accessed and viewed this web page to confirm the accuracy of its contents.
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 14 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`26. Ex. 1026 is a true and correct copy of a web page maintained in the
`
`ordinary course of business by the Library of Congress, and contains MARC
`
`information that would be relied on by librarians such as myself, as well as
`
`members of the public at large. I have confirmed that Ex. 1026 is the MARC
`
`record containing information pertaining to Ex. 1025 by matching the various
`
`fields of the MARC record to identifying information of the reference, including,
`
`for example, making sure that the relevant conference (47th IEEE Vehicular
`
`Technology Conference, 1997, Phoenix, Ariz.), IEEE identification number
`
`(0780336593),
`
`and
`
`web
`
`address
`
`(“http://ieeexplore.ieee.org/servlet/opac?punumber=4664”)
`
`are
`
`consistent
`
`as
`
`between the two documents. See Ex. 1025; Ex. 1026 (Fields 245, 740, 20, 856).
`
`Accordingly, Ex. 1026 is a copy of the MARC record for Ex. 1025.
`
`27. Ex. 1026 shows that a cataloguer at the National Security Agency
`
`created MARC control number 37309457 (Field 001) for this title. See Ex. 1012
`
`(“NSA” in Field 040 indicates the National Security Agency). The cataloguer
`
`created the MARC entry on July 17, 1997, indicating that the cataloguer had
`
`possession of a physical copy of the Rohling article as of at least that date. Id.
`
`(“19970717” in Field 008 indicates date created of July 17, 1997). Once the
`
`MARC entry was created on July 17, 1997, the Rohling article (Ex. 1011) was
`
`effectively indexed in a worldwide electronic database catalog and was made
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 15 of 16
`
`
`
`Hall-Ellis Decl.
`
`
`
`Inter Partes Review of U.S. 8,934,445
`
`available to the public. For example, a member of the public could locate the work
`
`via the MARC record (Ex. 1026) in any library computer cataloging system, and
`
`the work could be requested for viewing in person at the Library of Congress.
`
`IV. CONCLUSION
`
`28. This declaration and my opinions herein are made to the best of my
`
`knowledge and understanding, and based on the material available to me, at the
`
`time of signing this declaration. I declare that all statements made herein on my
`
`own knowledge are true and that all statements made on information and belief are
`
`believed to be true, and further, that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 or Title 18 of the United States
`
`
`
`
`
`
`
`/s/ Sylvia Hall-Ellis
`Sylvia Hall-Ellis
`
`
`
`Code.
`
`DATED: May 9, 2016
`
`
`
`04029-00004/7947359.1
`
`
`
`
`
`Page 16 of 16