`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`
`KINIK COMPANY,
`
`Petitioner
`
`v.
`
`CHIEN-MIN SUNG,
`
`Patent Owner
`
`
`
`U.S. Patent No. 9,724,802
`
`Issue Date: August 8, 2017
`
`Title: CMP Pad Dressers Having Leveled Tips
`and Associated Methods
`
`
`Inter Partes Review No. IPR2021-00638
`
`
`DECLARATION OF SYLVIA HALL-ELLIS, PH.D.
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`KINIK EXHIBIT 1018
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`
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`I.
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`INTRODUCTION
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`1. My name is Sylvia D. Hall-Ellis. I have been retained as an expert by
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`Kinik Company (“Kinik” or “Petitioner”).
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`2.
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`I have written this report at the request of Kinik to provide my expert
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`opinion regarding the authenticity and public availability of a conference paper.
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`My report sets forth my opinions in detail and provides the basis for my opinions
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`regarding the public availability of this publication.
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`3.
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`I reserve the right to supplement or amend my opinions, and bases for
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`them, in response any additional evidence, testimony, discovery, argument, and/or
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`other additional information that may be provided to me after the date of this
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`report.
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`4.
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`As of the preparation and signing of this declaration, libraries across
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`the nation are offering limited services pursuant to guidelines issued by federal and
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`state governments due to the COVID-19 virus. However, were the libraries open, I
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`would expect to be able to obtain paper copies of the documents in this declaration.
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`Additionally, it is my typical practice to obtain a paper copy of each publication to
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`further confirm my opinions that the documents were available prior to the alleged
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`availability date. I reserve the right to supplement my declaration when the
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`libraries reopen to provide such information.
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`1
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`KINIK EXHIBIT 1018
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`5.
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`I am being compensated for my time spent working on this matter at
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`my normal consulting rate of $325 per hour, plus reimbursement for any additional
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`reasonable expenses. My compensation is not in any way tied to the content of this
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`report, the substance of my opinions, or the outcome of this litigation. I have no
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`other interests in this proceeding or with any of the parties.
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`6.
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`All of the materials that I considered are discussed explicitly in this
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`declaration.
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`II. QUALIFICATIONS
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`7.
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`I am currently an Adjunct Professor in the School of Information at
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`San José State University. I obtained a Master of Library Science from the
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`University of North Texas in 1972 and a Ph.D. in Library Science from the
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`University of Pittsburgh in 1985. Over the last 50-plus years, I have held various
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`positions in the field of library and information resources. I was first employed as
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`a librarian in 1966 and have been involved in the field of library sciences since,
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`holding numerous positions.
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`8.
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`I am a member of the American Library Association (ALA) and its
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`Association for Library Collections & Technical Services (ALCTS) Division, and I
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`served on the Committee on Cataloging: Resource and Description (which wrote
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`the new cataloging rules) and as the chair of the Committee for Education and
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`Training of Catalogers and the Competencies and Education for a Career in
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`2
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`KINIK EXHIBIT 1018
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`Cataloging Interest Group. I also served as the Chair of the ALCTS Division’s
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`Task Force on Competencies and Education for a Career in Cataloging.
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`Additionally, I have served as the Chair for the ALA Office of Diversity’s
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`Committee on Diversity, a member of the REFORMA National Board of
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`Directors, and a member of the Editorial Board for the ALCTS premier cataloging
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`journal, Library Resources and Technical Services. Currently I serve as a Co-Chair
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`for the Library Research Round Table of the American Library Association.
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`9.
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`I have also given over one hundred presentations in the field,
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`including several on library cataloging systems and Machine-Readable Cataloging
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`(“MARC”) standards. My current research interests include library cataloging
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`systems, metadata, and organization of electronic resources.
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`10. My full curriculum vitae is attached hereto as Exhibit 1019.
`
`III. LIBRARY CATALOGING PRACTICES
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`11.
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`I am fully familiar with the library cataloging standard known as the
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`MARC standard, which is an industry-wide standard method of storing and
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`organizing library catalog information.1 MARC was first developed in the 1960’s
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`by the Library of Congress. A MARC-compatible library is one that has a catalog
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`consisting of individual MARC records for each of its items. Today, MARC is the
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`
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`1The full text of the standard is available from the Library of Congress at
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`http://www.loc.gov/marc/bibliographic/.
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`3
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`KINIK EXHIBIT 1018
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`primary communications protocol for the transfer and storage of bibliographic
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`metadata in libraries.2
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`12. A MARC record comprises several fields, each of which contains
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`specific data about the work. Each field is identified by a standardized, unique,
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`three-digit code corresponding to the type of data that follow. For example, a
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`work’s title is recorded in field 245, the primary author of the work is recorded in
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`field 100, an item’s International Standard Book Number (“ISBN”) is recorded in
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`field 020, an item’s Library of Congress call number is recorded in field 050, and
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`the publication date is recorded in field 260 under the subfield “c.” If a work is a
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`periodical, then its publication frequency is recorded in field 310, and the
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`publication dates (e.g., the first and last publication) are recorded in field 362,
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`which is also referred to as the enumeration/chronology field.
`
`
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`2Almost every major library in the world is MARC-compatible. See, e.g.,
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`MARC Frequently Asked Questions (FAQ), Library of Congress,
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`https://www.loc.gov/marc/faq.html (last visited February 4, 2021) (“MARC is the
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`acronym for Machine-Readable Cataloging. It defines a data format that emerged
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`from a Library of Congress-led initiative that began nearly forty years ago. It
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`provides the mechanism by which computers exchange, use, and interpret
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`bibliographic information, and its data elements make up the foundation of most
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`library catalogs used today.”). MARC is the ANSI/NISO Z39.2-1994 (reaffirmed
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`2016) standard for Information Interchange Format.
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`4
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`KINIK EXHIBIT 1018
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`13. The library that created the record is recorded in field 040 in subfield
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`“a” with a unique library code. When viewing the MARC record online via Online
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`Computer Library Center’s (“OCLC”) bibliographic database, hovering over this
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`code with the mouse reveals the full name of the library. I used this method of
`
`“mousing over” the library codes in the OCLC database to identify the originating
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`library for the MARC records discussed in this report. Where this “mouse over”
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`option was not available, I consulted the Directory of OCLC Libraries in order to
`
`identify the institution that created the MARC record.3
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`14. MARC records also include several fields that include subject matter
`
`classification information. An overview of MARC record fields is available
`
`through the Library of Congress at http://www.loc.gov/marc/bibliographic/. For
`
`example, 6XX
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`fields
`
`are
`
`termed
`
`“Subject Access Fields.”
`
` See
`
`http://www.loc.gov/marc/bibliographic/bd6xx.html. Among these, for example, is
`
`the 650 field; this is the “Subject Added Entry – Topical Term” field. See
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`http://www.loc.gov/marc/bibliographic/bd650.html. The 650 field is a “[s]ubject
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`added entry in which the entry element is a topical term.” Id. These entries “are
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`assigned to a bibliographic record to provide access according to generally
`
`accepted thesaurus-building rules (e.g., Library of Congress Subject Headings
`
`(LCSH), Medical Subject Headings (MeSH)).” Id. Further, MARC records
`
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`3http://www.oclc.org/contacts/libraries.en.html.
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`5
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`KINIK EXHIBIT 1018
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`include call numbers, which themselves include a classification number. For
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`example, the 050 field is the “Library of Congress Call Number.” See
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`http://www.loc.gov/marc/bibliographic/bd050.html. A defined portion of the
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`Library of Congress Call Number is the classification number, and “source of the
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`classification number
`
`is Library of Congress Classification and the LC
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`Classification-Additions and Changes.” Id. Thus, included in the 050 field is a
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`subject matter classification. Each item in a library has a single classification
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`number. A library selects a classification scheme (e.g., the Library of Congress
`
`classification system just described or a similar scheme such as the Dewey
`
`Decimal classification system) and uses it consistently. When the Library of
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`Congress assigns the classification number, it appears as part of the 050 field. If a
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`local library assigns the classification number, it appears in a 090 field. In either
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`scenario, the MARC record includes a classification number that represents a
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`subject matter classification.
`
`15. 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
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`availability of library resources to individual library patrons and reducing the rate
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`of rise of library per-unit costs, all for the fundamental public purpose of furthering
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`6
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`KINIK EXHIBIT 1018
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`ease of access to and use of the ever-expanding body of worldwide scientific,
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`literary and educational knowledge and information.” 4 Among other services,
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`OCLC and its members are responsible for maintaining the WorldCat database
`
`(http://www.worldcat.org/), used by
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`independent and
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`institutional
`
`libraries
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`throughout the world.
`
`16. OCLC also provides its members online access to MARC records
`
`through its OCLC bibliographic database. When an OCLC member institution
`
`acquires a work, it creates a MARC record for this work in its computer catalog
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`system in the ordinary course of its business. MARC records created at the Library
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`of Congress are tape-loaded into the OCLC database through a subscription to
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`MARC Distribution Services daily or weekly. Once the MARC record is created
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`by a cataloger at an OCLC member institution or is tape-loaded from the Library
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`of Congress, the MARC record is then made available to any other OCLC
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`members online, and therefore made available to the public. Accordingly, once the
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`MARC record is created by a cataloger at an OCLC member institution or is tape-
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`loaded from the Library of Congress or another library anywhere in the world, any
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`publication corresponding to the MARC record has been cataloged and indexed
`
`
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`4Third Article, Amended Articles of Incorporation of OCLC Online
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`Computer Library Center, Incorporated (available at
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`https://www.oclc.org/content/dam/oclc/membership/articles-of-incorporation.pdf).
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`7
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`KINIK EXHIBIT 1018
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`according to its subject matter such that a person interested in that subject matter
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`could, with reasonable diligence, locate and access the publication through any
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`library with access to the OCLC Bibliographic database or through the Library of
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`Congress.
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`17. When an OCLC member institution creates a new MARC record,
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`OCLC automatically supplies the date of creation for that record. The date of
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`creation for the MARC record appears in the fixed field (008), characters 00
`
`through 05. The MARC record creation date reflects the date on which, or shortly
`
`after which, the item was first acquired or cataloged. Initially, field 005 of the
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`MARC record is automatically populated with the date the MARC record was
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`created in year, month, day format (YYYYMMDD) (some of the newer library
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`catalog systems also include hour, minute, second (HHMMSS)). Thereafter, the
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`library’s computer system may automatically update the date in field 005 every
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`time the library updates the MARC record (e.g., to reflect that an item has been
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`moved to a different shelving location within the library). Field 005 is visible
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`when viewing a MARC record via an appropriate computerized interface, but
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`when a MARC record is printed to hardcopy, no “005” label appears. The initial
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`field 005 date (i.e., the date the MARC record was created) does appear, however,
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`KINIK EXHIBIT 1018
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`next to the label “Entered.”5 The date upon which the most recent update to field
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`005 occurred also appears, next to the label “Replaced.” Thus, when an item’s
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`MARC record has been printed to hardcopy—as is the case with the exhibits to this
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`report—the date reflected next to the label “Entered” is necessarily on or after the
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`date the library first cataloged and indexed the underlying item.
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`18. Once one library has cataloged and indexed a publication by creating
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`a MARC record for that publication, other libraries that receive the publication do
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`not create additional MARC records—the other libraries instead rely on the
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`original MARC record. They may update or revise the MARC record to ensure
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`accuracy, but they do not replace or duplicate it. This practice does more than save
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`libraries from duplicating labor. It also enhances the accuracy of MARC records.
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`Further, it allows librarians around the world to know that a particular MARC
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`record is authoritative (in contrast, a hypothetical system wherein duplicative
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`records were created would result in confusion as to which record is authoritative).
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`19. The date of creation of the MARC record by a cataloger at an OCLC
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`member institution reflects when the underlying item is accessible to the public.
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`Upwards of two-thirds to three-quarters of book sales to libraries come from a
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`jobber or wholesaler for online and print resources. These resellers make it their
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`
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`5In this report, I sometimes refer to the “Entered” entry as field 008,
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`characters 00-05.
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`9
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`KINIK EXHIBIT 1018
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`business to provide books to their customers as fast as possible, often providing
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`turnaround times of only a single day after publication. Libraries purchase a
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`significant portion of the balance of their books directly from publishers
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`themselves, which provide delivery on a similarly expedited schedule. In general,
`
`libraries make these purchases throughout the year as the books are published and
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`shelve the books as soon thereafter as possible in order to make the books available
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`to their patrons. Thus, books are generally available at libraries across the country
`
`within just a few days of publication.
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`20.
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`In preparing this report, I used authoritative databases, such as the
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`OCLC bibliographic database, the IEEE Xplore, and the Library of Congress
`
`Online Catalog, to confirm citation details of the various publications discussed.
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`Unless I note otherwise below in reference to a specific serial publication, it is my
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`expert opinion that this standard protocol was followed for each of the serial
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`publications discussed below.
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`21.
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`Indexing. A researcher may discover material relevant to his or her
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`topic in a variety of ways. One common means of discovery is to search for
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`relevant information in an index of periodical and other publications. Having
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`found relevant material, the researcher will then normally obtain it online, look for
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`it in libraries, or purchase it from the publisher, a bookstore, a document delivery
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`service, or other provider. Sometimes, the date of a document’s public
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`10
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`KINIK EXHIBIT 1018
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`accessibility will involve both indexing and library date information. However,
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`date information for indexing entries is often unavailable. This is especially true
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`for online indices.
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`22.
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`Indexing services use a wide variety of controlled vocabularies to
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`provide subject access and other means of discovering the content of documents.
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`The formats in which these access terms are presented vary from service to service.
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`23. Online
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`indexing
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`services
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`commonly provide bibliographic
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`information, abstracts, and full-text copies of the indexed publications, along with
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`a list of the documents cited in the indexed publication. These services also often
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`provide lists of publications that cite a given document. A citation of a document
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`is evidence that the document was publicly available and in use by researchers no
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`later than the publication date of the citing document.
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`24.
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`IEEE Xplore. This scholarly research database includes indexes,
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`abstracts, and full-text for articles and papers on computer science, electrical
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`engineering, and electronics. The database mainly covers material from the
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`Institute of Electrical and Electronics Engineers (IEEE) and the Institution of
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`Engineering and Technology. The IEEE Xplore digital library provides Web
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`access to more than 5.3-million full-text documents from some of the world’s most
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`highly cited publications. The content comprises over 180 journals, over 1,400
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`conference proceedings, more than 3,800 technical standards, over 1,800 eBooks
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`11
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`KINIK EXHIBIT 1018
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`and over 400 educational courses. Approximately 20,000 new documents are
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`added to IEEE Xplore each month. Abstracts are free to access, but access to full
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`text requires a subscription or institutional login.
`
`IV. PRELIMINARIES
`
`25.
`
`Scope of this declaration. I am not an attorney and will not offer
`
`opinions on the law. I am, however, rendering my expert opinion on the
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`authenticity of the documents referenced herein and on when and how each of
`
`these documents was disseminated or otherwise made available to the extent that
`
`persons interested and ordinarily skilled in the subject matter or art, exercising
`
`reasonable diligence, could have located the documents before October 3, 2014,
`
`which is the filing date of U.S. Patent No. 9,724,802 (the “’802 patent”).
`
`26.
`
`I am informed by counsel that a printed publication qualifies as
`
`publicly accessible as of the date it was disseminated or otherwise made available
`
`such that a person interested in and ordinarily skilled in the relevant subject matter
`
`could locate it through the exercise of ordinary diligence.
`
`27. While I understand that the determination of public accessibility under
`
`the foregoing standard rests on a case-by-case analysis of the facts particular to an
`
`individual publication, I also understand that a printed publication is rendered
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`“publicly accessible” if it is cataloged and indexed by a library such that a person
`
`interested in the relevant subject matter could locate it (i.e., I understand that
`
`12
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`KINIK EXHIBIT 1018
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`cataloging and indexing by a library is sufficient, though there are other ways that
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`a printed publication may qualify as publicly accessible). One manner of sufficient
`
`indexing is indexing according to subject matter category. I understand that the
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`cataloging and indexing by a single library of a single instance of a particular
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`printed publication is sufficient, even if the single library is in a foreign country. I
`
`understand that, even if access to a library is restricted, a printed publication that
`
`has been cataloged and indexed therein is publicly accessible so long as a
`
`presumption is raised that the portion of the public concerned with the relevant
`
`subject matter would know of the printed publication. I also understand that the
`
`cataloging and indexing of information that would guide a person interested in the
`
`relevant subject matter to the printed publication, such as the cataloging and
`
`indexing of an abstract for the printed publication, is sufficient to render the
`
`printed publication publicly accessible.
`
`28.
`
`I understand that routine business practices, such as general library
`
`cataloging and indexing practices, can be used to establish an approximate date on
`
`which a printed publication became publicly accessible.
`
`29. Persons of ordinary skill in the art. I am told by counsel that the
`
`subject matter of this proceeding generally relates to the semiconductor industry,
`
`and more specifically, to CMP pad dressers, methods associated with pad
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`conditioning, and CMP polishing of a workpiece.
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`13
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`KINIK EXHIBIT 1018
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`30.
`
`I have been informed by counsel that a “person of ordinary skill in the
`
`art at the time of the inventions” is a hypothetical person who is presumed to be
`
`familiar with the relevant field and its literature at the time of the inventions. This
`
`hypothetical person
`
`is also a person of ordinary creativity, capable of
`
`understanding the scientific principles applicable to the pertinent field.
`
`31.
`
`I am told by counsel that persons of ordinary skill in this subject
`
`matter or art would have had a Bachelor’s degree in an engineering related field,
`
`such as electrical engineering, mechanical engineering, material science, or
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`physics, and a minimum of two to three years of experience in the field of
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`integrated circuit processing and fabrication techniques.
`
`32.
`
`It is my opinion that such a person would have been engaged in
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`research, learning though study and practice in the field and possibly through
`
`formal instruction the bibliographic resources relevant to his or her research. In
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`the time before the filing date of the ’802 patent, such a person would have had
`
`access to a vast array of long-established print resources in the design,
`
`specification, or manufacturing of CMP pad dressers or similar devices, as well as
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`to a rich set of online resources providing indexing information, abstracts, and full
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`text services for design, specification, or manufacturing of CMP pad dressers or
`
`similar devices.
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`14
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`KINIK EXHIBIT 1018
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`V. DOCUMENT 1: EXHIBIT 1015 (“CMP REFERENCE”)
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`33. Document 1 is a true and correct copy of the conference paper “The
`
`Fabrication of Ideal Diamond Disk (IDD) by Casting Diamond Film on Silicon
`
`Wafer” by James C. Sung, Ying-Tung Chen, Ming-Chi Kan, Hsiao-Kuo Chang,
`
`and Michael Sung (hereafter “CMP Reference”) published in the Proceedings of
`
`the International Conference on Planarization (ICPT) / CMP Technology on pages
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`153-157.
`
` The International Conference on Planarization (ICPT) / CMP
`
`Technology was held on October 25-27, 2007, in Dresden, Germany. The exhibit
`
`filed in this proceeding as Exhibit 1015 is a true and correct copy of the CMP
`
`Reference. I obtained this copy of the conference paper from the IEEE Xplore
`
`digital repository through the King Library at San José State University. 6
`
`Specifically, the text of Exhibit 1015 comprises all pages of the document and is
`
`complete within the aforementioned range of pages; no pages are missing, and the
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`text on each page appears to flow seamlessly from one page to the next; further,
`
`there are no visible alterations to the document. Document 1, which comprises
`
`Exhibit 1015, can be found within the custody of a library – a place where, if
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`authentic, a copy of this conference paper and proceedings volume would likely
`
`
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`6https://ieeexplore-ieee-
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`org.libaccess.sjlibrary.org/stamp/stamp.jsp?tp=&arnumber=5760453.
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`15
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`KINIK EXHIBIT 1018
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`be. Document 1 is a true and correct copy in a condition that creates no suspicion
`
`about its authenticity, and Exhibit 1015 is a true and correct copy of Document 1.
`
`34. The Proceedings of the International Conference on Planarization
`
`(ICPT) / CMP Technology volume was distributed to attendees at the event, as
`
`indicated on the program website 7 (see Exhibit 1022, page 26, “Proceedings”
`
`section). Further, a copy of the conference proceedings volume was delivered to
`
`the Deutsche Nationalbibliothek.
`
`35. Attached hereto as Exhibit 1020 is a true and correct copy of the
`
`MARC record for
`
`the Proceedings of
`
`the International Conference on
`
`Planarization (ICPT) / CMP Technology obtained from the OCLC bibliographic
`
`database. I personally identified and retrieved the MARC record that is Exhibit
`
`1020. As previously noted, the library that created the record is recorded in field
`
`040 with a unique library code. For Exhibit 1020, that library code is “GWDNB,”
`
`which means that the MARC record for this proceedings volume was created at the
`
`Deutsche Nationalbibliothek (Frankfort, Germany). The library continues to
`
`update this MARC record and enhanced the MARC record to meet current
`
`cataloging rules. As can be seen in the “Entered” field in the MARC record for
`
`this exhibit, a cataloger at the Deutsche Nationalbibliothek created OCLC record
`
`
`
`7http://194.25.92.244/Conferences_en/ICPT+2007/.
`
`16
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`KINIK EXHIBIT 1018
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`number 198200505 on September 28, 2007, as shown in the “Entered” field
`
`(“20070928”).
`
`36. Exhibit 1020 further includes an entry in field 082 (“671.72”), a
`
`subject matter consistent with the Dewey Decimal classification system. Exhibit
`
`1020 also shows that Exhibit 1015 was catalogued with a German language
`
`descriptor term reading “Chemisch-mechanisches Polieren”8 in the 650_7 field.
`
`Thus, as of its cataloging, the publication corresponding to the MARC record
`
`attached hereto as Exhibit 1020 was indexed according to its subject matter by
`
`virtue of at least two independently sufficient classifications: the field 082 entry
`
`and the field 650 entry. Further, as of September 28, 2007, the MARC record
`
`attached hereto as Exhibit 1020 was accessible through any library with access to
`
`the OCLC bibliographic database or the online catalog at a library, which means
`
`that the corresponding publication was publicly available on or before that same
`
`date through any library with access to the OCLC bibliographic database or
`
`through an individual library.
`
`37. Exhibit 1020 indicates that the Proceedings of the International
`
`Conference on Planarization (ICPT) / CMP Technology which includes the
`
`conference paper titled “The Fabrication of Ideal Diamond Disk (IDD) by Casting
`
`
`
`8Chemisch-mechanisches Polieren (German) = Chemical-mechanical
`
`polishing (English)
`
`17
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`KINIK EXHIBIT 1018
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`Diamond Film on Silicon Wafer” by Sung, et al. as cataloged at the Deutsche
`
`Nationalbibliothek is currently available in print from 3 libraries and digitally from
`
`224 libraries (see Exhibit 1021). In view of above, this conference paper was
`
`publicly available on or shortly after September 28, 2007, because by that date it
`
`had been received, cataloged, and indexed at the Deutsche Nationalbibliothek and
`
`made part of the OCLC bibliographic database. For these reasons, it is my opinion
`
`that Exhibit 1015 was published and accessible to the public on or shortly after
`
`September 28, 2007.
`
`VI. SUMMARY OF OPINIONS
`
`38.
`
`In view of the foregoing, it is my opinion that the publication
`
`described above were publicly available no later than the corresponding date listed
`
`in the table below:
`
`Exhibit
`
`1015
`
`Publication
`
`Sung, James C., Ying-Tung Chen, Ming-Chi Kan,
`Hsiao-Kuo Chang, and Michael Sung. “The
`Fabrication of Ideal Diamond Disk (IDD) by
`Casting Diamond Film on Silicon Wafer.” In
`Proceedings of the International Conference on
`Planarization (ICPT) / CMP Technology (pp.
`153-157). Poster Session 2.04, Defects and
`Metrology, New Materials, Slurry, Pad
`Conditioning, on Friday, October 27, 2007.
`Piscataway, NJ: IEEE, c2007.
`
`Publicly Available
`No Later Than
`September 28, 2007
`
`
`39.
`
`In signing this Declaration, I recognize that the Declaration will be
`
`filed as evidence in a case before the Patent Trial and Appeal Board of the United
`
`18
`
`KINIK EXHIBIT 1018
`
`
`
`States Patent and Trademark Office.
`I also recognize that I may be subject to
`cross-examination in the case and that cross-examination will take place within the
`If cross-examination is required of me, I will appear for cross-
`United States.
`examination within the United States during the time allotted for cross-
`examination.
`40.
`States of America that all statements made herein of my own knowledge are true
`
`I hereby certify under penalty of perjury under the laws of the United
`
`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 of Title 18 of the United States Code.
`
`DATED: March ^ , 2021
`
`By:
`
`^r. Sylvia D. Hall-Eljkf
`
`19
`
`KINIK EXHIBIT 1018
`
`
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