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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner
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`v.
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`NEO WIRELESS LLC
`Patent Owner
`
`_____________________
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
`_____________________
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`DECLARATION OF SYLVIA HALL-ELLIS, PH.D.
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`VWGoA EX1005
`U.S. Patent No. 8,467,366
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
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`I, Sylvia D. Hall-Ellis, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`1. My name is Sylvia D. Hall-Ellis. I have been retained as an expert by
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`Volkswagen Group of America, Inc. (“Petitioner”), who I am informed is
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`Petitioner to this inter partes review (IPR) proceeding.
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`2.
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`I have written this declaration at the request of the Petitioner to
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`provide my expert opinion regarding the authenticity and public availability of
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`several publications identified in Section V below. My declaration sets forth my
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`opinions in detail and provides the basis for my opinions regarding the authenticity
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`and public availability of these publications. If called to testify in the above-
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`captioned matter, I will testify with regard to the opinions and bases set forth
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`below.
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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 to any additional evidence, testimony, discovery, argument,
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`and/or other additional information that may be provided to me after the date of
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`this declaration.
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`4.
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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 proceeding. I have no
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`other interests in this proceeding or with any of the parties.
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`5.
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`All of the materials that I considered and relied upon are discussed
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`explicitly in this declaration.
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`II. QUALIFICATIONS
`I am currently an Adjunct Professor in the School of Information at
`6.
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`San José State University in San José, California. I obtained a Master of Library
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`Science from the University of North Texas in 1972 and a Ph.D. in Library and
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`Information Science from the University of Pittsburgh in 1985. Over the last fifty
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`years, I have held various positions in the field of library and information
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`resources. I was first employed as a librarian in 1966 and have been involved in the
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`field of library sciences since, holding numerous positions.
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`7.
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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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`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, as a member of the REFORMA National Board of
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`Directors, as a member of the Editorial Board for the ALCTS premier cataloging
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`journal, Library Resources and Technical Services, and as a Co-Chair of the
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`Membership Committee for the Library Research Round Table (LRRT). Currently,
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`I serve as a member of the LRRT Nominating Committee.
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`8.
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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.
`
`9.
`
`I have been deposed twenty-six times: (1) Symantec Corp. vs.
`
`Finjan, Inc., Petition for Inter Partes Review of U.S. Patent No. 7,613,926,
`
`May 26, 2016, on behalf of Symantec Corp.; (2) Symantec Corp. vs.
`
`Finjan, Inc., 4:14-cv-2998-HSG (N.D. Cal.), on behalf of Symantec Corp.,
`
`September 14, 2017; (3) one deposition for ten matters: Intellectual Ventures I
`
`LLC vs. AT&T Mobility LLC; AT&T Mobility II LLC, New Cingular Wireless
`
`Services, Inc., SBC Internet Services, Inc., Wayport, Inc., and Cricket Wireless
`
`LLC, C.A. No. 12-193 (LPS); Intellectual Ventures II LLC vs. AT&T Mobility
`
`LLC; AT&T Mobility II LLC, New Cingular Wireless Services, Inc., SBC Internet
`
`Services, Inc., Wayport, Inc., and Cricket Wireless LLC, C.A. No. 13-1631 (LPS);
`
`Intellectual Ventures I LLC vs. T-Mobile USA, Inc. and T-Mobile US, Inc., C.A.
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`No. 13-1632 (LPS); Intellectual Ventures II LLC vs. T-Mobile USA, Inc. and T-
`
`Mobile US, Inc., C.A. No. 13-1633 (LPS); Intellectual Ventures I LLC, vs. Nextel
`
`Operations, Inc., Sprint Spectrum L.P., Boost Mobile, LLC and Virgin Mobile
`
`USA, L.P., C.A. No. 13-1634 (LPS); Intellectual Ventures II LLC vs. Nextel
`
`Operations, Inc., Sprint Spectrum L.P., Boost Mobile, LLC and Virgin Mobile
`
`USA, L.P., C.A. No. 13-1635 (LPS); Intellectual Ventures I LLC, vs. United States
`
`Cellular Corporation, C.A. No. 13-1636 (LPS); Intellectual Ventures I LLC vs.
`
`United States Cellular Corporation, C.A. No. 13-1637 (LPS); Intellectual Ventures
`
`II LLC vs. AT&T Mobility LLC, AT&T Mobility II LLC, New Cingular Wireless
`
`Services, Inc., C.A. No. 15-799 (LPS); Intellectual Ventures I LLC vs. T-Mobile
`
`USA, Inc. and T-Mobile US, Inc., C.A. No. 15-800 (LPS), on behalf of AT&T
`
`Mobility LLC; AT&T Mobility II LLC, Boost Mobile, LLC Cricket Wireless LLC,
`
`Nextel Operations, Inc., New Cingular Wireless Services, Inc., SBC Internet
`
`Services, Inc., Sprint Spectrum L.P., T-Mobile USA, Inc., T-Mobile US, Inc.,
`
`United States Cellular Corporation Virgin Mobile USA, L.P., and Wayport, Inc.,
`
`November 15, 2016; (4) Hitachi Maxell, LTD., v. Top Victory Elec.s (Taiwan) Co.
`
`Ltd., et al., 2:14-cv-1121 JRG-RSP (E.D. Tex.), on behalf of Top Victory
`
`Electronics (Taiwan) Co. Ltd., et. al., January 20, 2016; (5) Sprint Spectrum, L.P.
`
`vs. Gen. Access Solutions, Ltd., Petition for Inter Partes Review of U.S. Patent
`
`No. 7,173,916, IPR2017-01885, on behalf of Sprint Spectrum L.P., July 13,
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`2018; (6) Nichia Corp. vs. Vizio, Inc., 8:16-cv-00545, on behalf of Vizio, Inc.,
`
`October 12, 2018; (7) Intellectual Ventures I LLC, vs. T-Mobile USA, Inc., T-
`
`Mobile US, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson, 2:17-cv-
`
`00577 (JRG) (E.D. Tex), on behalf of T-Mobile USA, Inc., T-Mobile US, Inc.,
`
`Ericsson Inc., and Telefonaktiebolaget LM Ericsson, October 19, 2018; (8) Pfizer,
`
`Inc. vs. Biogen, Inc., Petition for Inter Partes Review of U.S. Patent No.
`
`8,821,873, IPR2017-01168, on behalf of Pfizer, November 3, 2018; (9) Finjan, Inc.
`
`vs. ESET, LLC and ESET SPOL. S.R.O., 3:17-cv-00183-CAB-BGS (S.D. Cal), on
`
`behalf of ESET, January 15, 2019; (10) Finjan, Inc. vs. Cisco Systems, Inc., 5:17-
`
`cv-00072-BLF-SVK (N.D. Cal), on behalf of Cisco Systems, Inc., September 6,
`
`2019; (11) Facebook, Inc., Instagram, LLC and Whatsapp Inc. vs. Blackberry
`
`Limited, Petition for Inter Partes Review of U.S. Patent No. 9,349,120 B2,
`
`IPR2019-00706, on behalf of Facebook, Inc., Instagram, LLC and Whatsapp Inc.
`
`December 20, 2019; (12) 3Shape A/S and 3Shape Inc. v. Align Technology,
`
`Inc., Petition for Inter Partes Review of U.S. Patent No. 7,156,661,
`
`IPR2020-00222 and IPR2020-00223, August 10, 2020, on behalf of 3Shape A/S
`
`and 3Shape Inc.; (13) Finjan Inc. v. Rapid7, Inc. and Rapid7 LLC, 1:18-cv-
`
`01519-MN (D. Del.), September 15, 2020, on behalf of Rapid7 Inc. and Rapid7
`
`LLC; (14) VLSI Technology LLC v. Intel Corporation, 6:19-cv-00254, 6:19-cv-
`
`00255, 6:19-cv-00256, (W.D. Tex.) September 23, 2020, on behalf of the Intel
`
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`Corporation; (15) Finjan Inc. v. SonicWall, Inc., 5:17-cv-04467-BLF-HRL (N.D.
`
`Cal.), October 27, 2020, on behalf of SonicWall, Inc.; (16) VLSI Technology, LLC
`
`v. Intel Corporation, 1:18-cv-00966-CFC-CJB (D. Del.), February 5, 2021, on
`
`behalf of the Intel Corporation; (17) Unified Patents, LLC v. 2BCom, LLC, Petition
`
`for Inter Partes Review of U. S. Patent 7,127,210, IPR2020-00996, February 11,
`
`2021, on behalf of Unified Patents; (18) Finjan, Inc. v. Qualsys Inc., 4:18-cv-
`
`07229-YGR (N.D. Cal.), March 1, 2021, on behalf of Qualsys, Inc.; (19)
`
`Qualcomm, Inc. v. Monterey Research LLC, Petition for Inter Partes Review of U.
`
`S. Patent 6,534,805, IPR2020-01491, May 6, 2021, on behalf of Qualcomm, Inc.;
`
`(20) Hulu, LLC v. Sound View Innovations, LLC, Petition for Inter Partes Review
`
`of U. S. Patent 5,806,062, IPR2018-01039, May 14, 2021, on behalf of Hulu,
`
`LLC; (21) VLSI Technology LLC v. Intel Corporation, 6:19-cv-00254, 6:19-cv-
`
`00255 and 6:19-cv-00256, (W.D. Tex.) August 3, 2021, on behalf of Intel
`
`Corporation; (22) Liquidia Technologies, Inc. v. United Therapeutics
`
`Corporation, Petition for Inter Partes Review of U. S. Patent 10,716,793 B2,
`
`IPR2021-00406, October 20, 2021, on behalf of Liquidia Technologies, Inc.; (23)
`
`EcoFactor, Inc. v. Google, Inc., 6:20-cv-00075 (ADA), 6:20-0078-ADA, and
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`6:20-cv-00080 ADA, (W.D. Tex.), October 27, 2021, on behalf of Google, Inc.;
`
`(24) Liquidia Technologies, Inc. v. United Therapeutics Corporation, Petition for
`
`Inter Partes Review of U. S. Patent 10,716,793 B2, IPR2021-00406, March 11,
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`2022, on behalf of Liquidia Technologies, Inc.; (25) Juniper Networks, Inc. v.
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`Swarm Technology LLC, Petition for Inter Partes Review of U. S. Patent
`
`9,852,004, IPR2021-01445, May 5, 2022, on behalf of Juniper Networks, Inc.;
`
`and, (26) ParkerVision, Inc. v. Intel Corporation, Western District of Texas,
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`6:20-cv-108 (ADA), October 26, 2022, on behalf of the Intel Corporation.
`
`10. My full curriculum vitae is attached hereto as Attachment 6.
`
`III. PRELIMINARIES
`Scope of Declaration and Legal Standards
`A.
`11.
` I am not an attorney and will not offer opinions on the law. I am,
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`however, rendering my expert opinion on the authenticity of the documents
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`referenced herein, and on when and how each of these documents was
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art, exercising reasonable diligence, could
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`have located the documents before the dates discussed below with respect to the
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`specific documents.
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`12.
`
` I am informed by counsel that a printed publication qualifies as
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`publicly accessible as of the date it was disseminated or otherwise made available
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`such that a person interested in and ordinarily skilled in the relevant subject matter
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`could locate it through the exercise of ordinary diligence.
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` While I understand that the determination of public accessibility
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`13.
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`under the foregoing standard rests on a case-by-case analysis of the facts particular
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`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
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`interested in the relevant subject matter could locate it (i.e., I understand that
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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
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`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
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`understand that, even if access to a library is restricted, a printed publication that
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`has been cataloged and indexed therein is publicly accessible so long as a
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`presumption is raised that the portion of the public concerned with the relevant
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`subject matter would know of the printed publication. I also understand that the
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`cataloging and indexing of information that would guide a person interested in the
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`relevant subject matter to the printed publication, such as the cataloging and
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`indexing of an abstract for the printed publication, is sufficient to render the
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`printed publication publicly accessible.
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` I understand that routine business practices, such as general library
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`14.
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`cataloging and indexing practices, can be used to establish an approximate date on
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`which a printed publication became publicly accessible.
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`B.
`15.
`
`Persons of Ordinary Skill in the Art
` I am told by counsel that the subject matter of this proceeding
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`generally relates to cellular communications.
`
`16.
`
` I have been informed by counsel that a person of ordinary skill in the
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`art at the time of the invention (“POSA”) is a hypothetical person who is presumed
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`to be familiar with the relevant field and its literature at the time of the inventions.
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`This hypothetical person is also a person of ordinary creativity, capable of
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`understanding the scientific principles applicable to the pertinent field.
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`17.
`
` I am told by counsel that a person of ordinary skill in this subject
`
`matter or art would have had a bachelor’s degree in electrical engineering,
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`computer engineering, computer science, or an equivalent field, or an advanced
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`degree in those fields, as well as at least 3-5 years of academic or industry
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`experience in mobile wireless communications, or comparable industry experience.
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`I have also been told that experience could take the place of some formal training,
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`as domain knowledge may be learned on the job. I am told by counsel that this
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`description is approximate, and a higher level of education or skill might make up
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`for less experience, and vice versa. I have been further informed by counsel that a
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`person of ordinary skill in the art would have been familiar with and able to
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`understand the information known in the art relating to these fields, including the
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`publications discussed in this declaration.
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`C. Use of Authoritative Databases
` In preparing this report, I used authoritative databases, such as the
`18.
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`OCLC bibliographic database, the Library of Congress Online Catalog, the U.S.
`
`Copyright Office, and the IEEE Xplore database to confirm citation details of the
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`publications discussed. Unless I note otherwise below in reference to a specific
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`serial publication, it is my expert opinion that this standard protocol was followed
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`for the publications discussed in Section V below.
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`19.
`
` 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 found
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`relevant material, the researcher will then normally obtain it online, look for it in
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`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 accessibility
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`will involve both indexing and library date information.
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`20.
`
` 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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` Online indexing services and digital repositories commonly provide
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`21.
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`bibliographic information, abstracts, and full-text copies of the indexed
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`publications, along with a list of the documents cited in the indexed publication.
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`These services also often provide lists of publications that cite a given document.
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`A citation of a document is evidence that the document was publicly available and
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`in use by researchers no later than the publication date of the citing document.
`
`IV. LIBRARY CATALOGING PRACTICES
`A. MARC Records and OCLC
` I am fully familiar with the library cataloging standard known as the
`22.
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`MARC standard, which is an industry-wide standard method of storing and
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`organizing library catalog information. MARC was first developed in the 1960s by
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`the Library of Congress. A MARC-compatible library is one that has a catalog
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`consisting of individual MARC records for works made available at that library.
`
`23.
`
` Since at least the early 1970s and continuing to the present day,
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`MARC has been the primary communications protocol for the transfer and storage
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`of bibliographic metadata in libraries.1 Almost every major library in the world is
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`MARC-compatible. See, e.g., Attachment 2, MARC Frequently Asked Questions
`
`
`1 A complete history of the development of MARC can be found in MARC: Its
`History and Implications by Henrietta D. Avram (Washington, DC: Library of
`Congress, 1975) and is available online from the Hathi Trust.
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`(FAQ), LIBRARY OF CONGRESS, 0002 (“MARC is the acronym for MAchine-
`
`Readable Cataloging. It defines a data format that emerged from a Library of
`
`Congress-led initiative that began nearly [fifty] years ago. It provides the
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`mechanism by which computers exchange, use, and interpret bibliographic
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`information, and its data elements make up the foundation of most library catalogs
`
`used today.”). MARC is the ANSI/NISO Z39.2-1994 standard (reaffirmed in 2016)
`
`for Information Interchange Format. The full text of the standard is available from
`
`the Library of Congress.
`
`24.
`
` 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
`
`field 100, a work’s International Standard Book Number (“ISBN”) is recorded in
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`field 020, a work’s International Standard Serial Number (“ISSN”) is recorded in
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`field 022, and the publication date is recorded in field 260 under the subfield “c.”
`
`In some MARC records, field 264 is used rather than field 260 to record
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`publication information. Information in field 264 is similar to information in field
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`260 (Publication, Distribution, etc. (Imprint)). Field 264 is useful for cases where
`
`the content standard or institutional policies make a distinction between functions.
`
`If a work is a periodical, then its publication frequency is recorded in field 310, and
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`the 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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`25.
`
` The library that initially created the MARC record is reflected in field
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`040 in subfield “a” with that library’s unique library code. Once a MARC record
`
`for a particular work is originally created by one library, other libraries can use that
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`original MARC record to then create their own MARC records for their own
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`copies of the same work. These other libraries may modify or add to the original
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`MARC record as necessary to reflect data specific to their own copies of the work.
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`However, the library that created the original MARC record would still be
`
`reflected in these modified MARC records (corresponding to other copies of the
`
`same work at other libraries) in field 040, subfield “a.” The modifying library (or
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`libraries) is reflected in field 040, subfield “d.”
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`26.
`
` I consulted the Directory of OCLC Libraries in order to identify the
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`institution that created or modified the MARC record. Moreover, when viewing the
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`MARC record online via Online Computer Library Center’s (“OCLC”)
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`bibliographic database, which I discuss further below, hovering over a library code
`
`in field 040 with the mouse reveals the full name of the library. I also used this
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`method of “mousing over” the library codes in the OCLC database to identify the
`
`originating and modifying libraries for the MARC records discussed in this report.
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` MARC records also include one or more fields that show information
`
`27.
`
`regarding subject matter classification. For example, 6XX fields are termed
`
`“Subject Access Fields.” Among these, for example, is the 650 field; this is the
`
`“Subject Added Entry – Topical Term” field. The 650 field is a “[s]ubject added
`
`entry in which the entry element is a topical term.” Attachment 3, 0001. These
`
`entries “are 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)).” Attachment 3, 0001.
`
`28.
`
` Further, MARC records can include call numbers, which themselves
`
`contain a classification number. For example, a MARC record may identify a 050
`
`field, which is the “Library of Congress Call Number.” A defined portion of the
`
`Library of Congress Call Number is the classification number, and the “source of
`
`the classification number is Library of Congress Classification and the LC
`
`Classification-Additions and Changes.” Attachment 4, 0001. Thus, the 050 field
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`may be used to show information regarding subject matter classification. Further,
`
`the 082 field is the “Dewey Decimal Call Number.” A defined portion of the
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`Dewey Decimal Call (DDC) Number is the classification number, which is
`
`included in the 082 field and determined through use of the Dewey Decimal
`
`Classification and Relative Index.
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` Each item in a library has a single classification number. A library
`
`29.
`
`selects a classification scheme (e.g., the Library of Congress Classification scheme
`
`just described or a similar scheme such as the Dewey Decimal Classification
`
`scheme) and uses it consistently. When the Library of Congress assigns the
`
`classification number, it appears as part of the 050 field, as discussed above. For
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`MARC records created by libraries other than the Library of Congress (e.g., a
`
`university library or a local public library), the classification number may appear in
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`a 09X (e.g., 090) field.
`
`30.
`
` When a MARC-compatible library acquires a work, it creates a
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`MARC record for its copy of the work in its computer catalog system in the
`
`ordinary course of its business. This MARC record (for the copy of a work
`
`available at the particular library) may be later accessed by researchers in a number
`
`of ways. For example, many libraries, including the Library of Congress, make
`
`their MARC records available through their website. One could, of course, always
`
`physically visit the library at which the work is available, and request to see that
`
`library’s MARC record for the work. Moreover, members of the Online Computer
`
`Library Center (“OCLC”) can access the MARC records of other member
`
`institutions through OCLC’s online bibliographic database, as I explain further
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`below.
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`B. OCLC
` The OCLC was created to establish, maintain, and operate a
`31.
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`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
`
`ease of access to and use of the ever-expanding body of worldwide scientific,
`
`literary, and educational knowledge and information. Among other services,
`
`OCLC and its members are responsible for maintaining the WorldCat® database,
`
`used by independent and institutional libraries throughout the world. All libraries
`
`that are members of OCLC are MARC-compatible. Like the two superseded
`
`OCLC documents, this revised set of guidelines is intended to assist catalogers in
`
`creating records for electronic resources in WorldCat, the OCLC Online Union
`
`Catalog. These guidelines pertain to OCLC-MARC tagging (that is, content
`
`designation). Bibliographic data are transcribed into the MARC content format
`
`according to internationally developed rules and practices that are included in
`
`manuals (such as the Anglo-American Cataloging Rules, 2nd revision (AACR2),
`
`and Resource Description and Access (RDA)).
`
`- 16 -
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
` When an OCLC member institution acquires a publication, like the
`
`32.
`
`other MARC-compatible libraries discussed above, it creates a MARC record for
`
`this publication in its computer catalog system in the ordinary course of its
`
`business. MARC records created at the Library of Congress were 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
`
`library or may be tape-loaded from the Library of Congress, the MARC record is
`
`then made available to any other OCLC members online, and thereby made
`
`available to the public. Accordingly, once the MARC record is created by a
`
`cataloger at an OCLC member library or is tape-loaded from the Library of
`
`Congress, any publication corresponding to the MARC record has been cataloged
`
`and indexed according to its subject matter such that a person interested in that
`
`subject matter could, with reasonable diligence, locate and access the publication
`
`through any library with access to the OCLC bibliographic database or through the
`
`Library of Congress.
`
`33.
`
` When a MARC-compatible library creates an original MARC record
`
`for a work, the library records the date of creation of that MARC record in field
`
`008, characters 00 through 05, in the ordinary course of its business. For OCLC
`
`member institutions that use OCLC software to create original MARC records, the
`
`date of creation in field 008 is automatically supplied by the OCLC software. The
`
`- 17 -
`
`
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
`MARC record creation date in field 008 thus reflects the date on which, or shortly
`
`after which, a work was first acquired and cataloged by the library that created the
`
`original MARC record.
`
`34.
`
` When other MARC-compatible libraries subsequently acquire their
`
`own copies of the same work, as mentioned, they create MARC records in their
`
`own computer catalog systems for their copies in the ordinary course of business.
`
`They may use a MARC record previously created for that work (by another
`
`MARC-compatible library) to create their own MARC records for their own copies
`
`of that same work. The previously created MARC record, used by subsequently-
`
`acquiring libraries to create MARC records for their own copies, may be obtained
`
`through the OCLC bibliographic database, as described above. If, when creating a
`
`MARC record to represent its own copy of the work, the subsequently-acquiring
`
`library uses the master MARC record in its original form, the subsequently-
`
`acquiring library cannot reenter data into the 008 field; therefore, the date in the
`
`008 field will continue to reflect the date the MARC record was initially created by
`
`the originating library. On the other hand, if the subsequently-acquiring library
`
`modifies the previously created MARC record when creating its own MARC
`
`record for its own copy of the work, the subsequently-acquiring library may enter
`
`into the 008 field of its own MARC record the date its own MARC record was
`
`- 18 -
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`
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
`created.2 But the library that created the original MARC record used by the
`
`subsequently-acquiring library would still be reflected in the MARC record of the
`
`subsequently-acquiring library in field 040, subfield “a.” Thus, the work identified
`
`by any MARC record possessed by any MARC-compatible library would have
`
`been accessible to the public at least as of the date shown in the 008 field, or
`
`shortly thereafter, either from the library that possesses the MARC record itself, or
`
`from the originating library indicated in field 040, subfield “a.” As discussed, a
`
`MARC-compatible library in the ordinary course of its business creates a MARC
`
`record in its own catalog system for a work when it acquires a copy of that work.
`
`35.
`
` Moreover, when a MARC record is created by a library for its own
`
`copy of a work, field 005 is automatically populated with the date that MARC
`
`record was created in year, month, day format (YYYYMMDD). Thereafter, the
`
`library’s computer system may automatically update the date in field 005 every
`
`time the library updates the MARC record (e.g., to reflect that an item has been
`
`
`2 This practice is not required by but is nevertheless consistent with the MARC
`
`standard. Many MARC records exist today whose 008 fields indicate when the first
`
`original MARC record for a work was created, rather than when a derivative
`
`record was created based on the original MARC record by a subsequently-
`
`acquiring library for its own computer catalog system.
`
`- 19 -
`
`
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
`moved to a different shelving location within the library). Attachment 5, 0001.
`
`Thus, the work identified by any MARC record possessed by any MARC-
`
`compatible library would have been accessible to the public at least as of the date
`
`shown in the 005 field, or shortly thereafter, from the library that possesses the
`
`MARC record. As noted, because the 005 field may be updated each time the
`
`library updates its MARC record, the work identified by the MARC record may, in
`
`fact, have been accessible to the public from that library much earlier than the date
`
`indicated in the 005 field.
`
`36.
`
` Based on my personal experience as a professional librarian using the
`
`MARC and OCLC resources, it has been my experience that both resources were
`
`continuously operational and available since at least 1992. Indeed, in the course of
`
`my work, I have extensively used both resources over the past 30+ years, and I
`
`have consistently found the information contained within these resources to be
`
`complete and reliable. I have never found the date of accessibility as indicated in
`
`fields 008, 005, or 955 to be incorrect. And in only a minute number of cases have
`
`I found any errors at all in these records – none of which affected my ability to
`
`render an accurate opinion as to accessibility, indexing, or subject headings.
`
`- 20 -
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`
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`Case IPR2023-00426
`U.S. Patent No. 8,467,366
`
`V.
`
`PUBLICATION IN THIS PROCEEDING
`A. Exhibit 1010: The Mobile Communications Handbook, 2nd ed., by
`Jerry D. Gibson (“Gibson”)
` Exhibit 1010, which I understand is being submitted along with my
`
`37.
`
`Declaration, is a scanned copy of a treatise, The Mobile Communications
`
`Handbook, 2nd ed., by Jerry D. Gibson (hereafter “Gibson”) and issued by CRC
`
`Press with a 1999 copyright date. CRC Press is an established and well-known
`
`publisher. Exhibit 1010 is a true and correct copy of the entire treatise, including
`
`the title page, copyright page, preface, table of contents, 36 chapters, and index as
`
`held in print by the Karl F. Wendt Engineering Library at the University of
`
`Wisconsin – Madison3 (see Attachment 1a). The text in Exhibit 1010 is complete.
`
`No pages are missing, and the text on each page appears to flow seamlessly from
`
`one page to the next. I have been informed by counsel that Exhibit 1010 was
`
`generated by scanning a used copy of Gibson that was purchased from a vendor on
`
`the Internet. I examined the digital copy of Gibson held in the King Library at San
`
`José State University (San José, California) and compared it with the scanned copy
`
`of the book purchased from the Internet. Based on my review, I believe Exhibit
`
`
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