`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OXFORD NANOPORE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.
`Patent Owner
`____________
`
`Case No. Unassigned
`Patent 9,738,929
`____________
`
`DECLARATION OF SYLVIA D. HALL-ELLIS, PH.D.
`
`Oxford, Exh. 1015, p. 1
`
`
`
`I.
`
`INTRODUCTION
`1.
`My name is Sylvia D. Hall-Ellis. I have been retained as an expert by
`
`Oxford Nanopore Technologies, Inc. (Oxford).
`
`2.
`
`I have written this report at the request of Oxford to provide my
`
`expert opinion regarding the authenticity and public availability of several
`
`publications. My report sets forth my opinions in detail and provides the basis for
`
`my opinions regarding the public availability of these publications.
`
`3.
`
`I reserve the right to supplement or amend my opinions, and bases for
`
`them, in response to any additional evidence, testimony, discovery, argument,
`
`and/or other additional information that may be provided to me after the date of
`
`this report.
`
`4.
`
`I am being compensated for my time spent working on this matter at
`
`my normal consulting rate of $300 per hour, plus reimbursement for any additional
`
`reasonable expenses. My compensation is not in any way tied to the content of this
`
`report, the substance of my opinions, or the outcome of this litigation. I have no
`
`other interests in this proceeding or with any of the parties.
`
`5.
`
`All of the materials that I considered are discussed explicitly in this
`
`declaration.
`
`1
`
`Oxford, Exh. 1015, p. 2
`
`
`
`II. QUALIFICATIONS
`6.
`I am currently an Adjunct Professor in the School of Information at
`
`San José State University. I obtained a Masters of Library Science from the
`
`University of North Texas in 1972 and a Ph.D. in Library Science from the
`
`University of Pittsburgh in 1985. Over the last forty-five years, I have held various
`
`positions in the field of library and information resources. I was first employed as
`
`a librarian in 1966, and have been involved in the field of library sciences since,
`
`holding numerous positions.
`
`7.
`
`I am a member of the American Library Association (ALA) and its
`
`Association for Library Collections & Technical Services (ALCTS) Division, and I
`
`served on the Committee on Cataloging: Resource and Description (which wrote
`
`the new cataloging rules) and 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. Currently I serve as a member of the Editorial Board for
`
`the ALCTS premier cataloging journal, Library Resources and Technical Services.
`
`8.
`
`I have also given over one hundred presentations in the field,
`
`including several on library cataloging systems and Machine-Readable Cataloging
`
`2
`
`Oxford, Exh. 1015, p. 3
`
`
`
`(“MARC”) standards. My current research interests include library cataloging
`
`systems, metadata, and organization of electronic resources.
`
`9.
`
`My full curriculum vitae is attached hereto as Exhibit D.
`
`III. LIBRARY CATALOGING PRACTICES
`10.
`I am fully familiar with the library cataloging standard known as the
`
`MARC standard, which is an industry-wide standard method of storing and
`
`organizing library catalog information.1 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 communications protocol for the transfer and storage of bibliographic
`
`metadata in libraries.2
`
`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 follow. For example, a
`
`1 The full text of the standard is available from the Library of Congress at
`http://www.loc.gov/marc/bibliographic/.
`2 Almost every major library in the world is MARC-compatible. See, e.g., MARC
`(FAQ),
`Library
`of
`Congress,
`Frequently
`Asked
`Questions
`https://www.loc.gov/marc/faq.html (last visited September 10, 2018) (“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 forty years
`ago. It provides the mechanism by which computers exchange, use, and interpret
`bibliographic information, and its data elements make up the foundation of most
`3
`
`Oxford, Exh. 1015, p. 4
`
`
`
`work’s title is recorded in Field 245, the primary author of the work is recorded in
`
`Field 100, an item’s International Standard Book Number (“ISBN”) is recorded in
`
`Field 020, an item’s Library of Congress call number is recorded in Field 050, and
`
`the publication date is recorded in Field 260 under the subfield “c.” If a work is a
`
`periodical, then its publication frequency is recorded in Field 310, and the
`
`publication dates (e.g., the first and last publication) are recorded in Field 362,
`
`which is also referred to as the enumeration/chronology field.
`
`12.
`
`The library that created the record is recorded in Field 040 in subfield
`
`“a” with a unique library code. When viewing the MARC record online via Online
`
`Computer Library Center’s (“OCLC”) Connexion database, hovering over this
`
`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
`
`library for the MARC records discussed in this report. Where this “mouse over”
`
`option was not available, I consulted the Directory of OCLC Libraries in order to
`
`identify the institution that created the MARC record.3
`
`13. MARC records also include several fields that include subject matter
`
`classification information. An overview of MARC record fields is available
`
`library catalogs used today.”). MARC is the ANSI/NISO Z39.2-1994 (reaffirmed
`2016) standard for Information Interchange Format.
`3 https://www.oclc.org/en/contacts/libraries.html.
`
`4
`
`Oxford, Exh. 1015, p. 5
`
`
`
`through the Library of Congress at http://www.loc.gov/marc/bibliographic/. For
`
`example, 6XX
`
`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
`
`http://www.loc.gov/marc/bibliographic/bd650.html. The 650 field is a “[s]ubject
`
`added entry in which the entry element is a topical term.” Id. 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)).” Id. Further, MARC records
`
`include call numbers, which themselves include a classification number. For
`
`example, the 050 field is the “Library of Congress Call Number.” See
`
`http://www.loc.gov/marc/bibliographic/bd050.html. A defined portion of the
`
`Library of Congress Call Number is the classification number, and “source of the
`
`classification number
`
`is Library of Congress Classification and
`
`the LC
`
`Classification-Additions and Changes.” Id. Thus, included in the 050 field is a
`
`subject matter classification. Each item in a library has a single classification
`
`number. A library 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. If a
`
`5
`
`Oxford, Exh. 1015, p. 6
`
`
`
`local library assigns the classification number, it appears in a 090 field. In either
`
`scenario, the MARC record includes a classification number that represents a
`
`subject matter classification.
`
`14.
`
`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
`
`ease of access to, and use of, the ever-expanding body of worldwide scientific,
`
`literary and educational knowledge and information.”4 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.
`
`15. 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
`
`6
`
`Oxford, Exh. 1015, p. 7
`
`
`
`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 therefore made available to the public. Accordingly, once the
`
`MARC record is created by a cataloger at an OCLC member institution or is tape-
`
`loaded from the Library of Congress or another library anywhere in the world, 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 Connexion database or through the Library of
`
`Congress.
`
`16. When an OCLC member institution creates a new MARC record,
`
`OCLC automatically supplies the date of creation for that record. The date of
`
`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
`
`MARC record is automatically populated with the date the MARC record was
`
`4 Third Article, Amended Articles of Incorporation of OCLC Online Computer
`Library
`Center,
`Incorporated
`(available
`at
`7
`
`Oxford, Exh. 1015, p. 8
`
`
`
`created in year, month, day format (YYYYMMDD) (some of the newer library
`
`catalog systems also include hour, minute, second (HHMMSS)). 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
`
`moved to a different shelving location within the library). Field 005 is visible
`
`when viewing a MARC record via an appropriate computerized interface, but
`
`when a MARC record is printed to hardcopy, no “005” label appears. The initial
`
`Field 005 date (i.e., the date the MARC record was created) does appear, however,
`
`next to the label “Entered.”5 The date upon which the most recent update to Field
`
`005 occurred also appears, next to the label “Replaced.” Thus, when an item’s
`
`MARC record has been printed to hardcopy—as is the case with the exhibits to this
`
`report—the date reflected next to the label “Entered” is necessarily on or after the
`
`date the library first cataloged and indexed the underlying item.
`
`17. Once one library has cataloged and indexed a publication by creating
`
`a MARC record for that publication, other libraries that receive the publication do
`
`not create additional MARC records—the other libraries instead rely on the
`
`original MARC record. They may update or revise the MARC record to ensure
`
`https://www.oclc.org/content/dam/oclc/membership/articles-of-incorporation.pdf).
`In this report, I sometimes refer to the “Entered” entry as Field 008, characters
`5
`00-05.
`
`8
`
`Oxford, Exh. 1015, p. 9
`
`
`
`accuracy, but they do not replace or duplicate it. This practice does more than save
`
`libraries from duplicating labor. It also enhances the accuracy of MARC records.
`
`Further, it allows librarians around the world to know that a particular MARC
`
`record is authoritative (in contrast, a hypothetical system wherein duplicative
`
`records were created would result in confusion as to which record is authoritative).
`
`18.
`
`The date of creation of the MARC record by a cataloger at an OCLC
`
`member institution reflects when the underlying item is accessible to the public.
`
`Upwards of two-thirds to three-quarters of book sales to libraries come from a
`
`jobber or wholesaler for online and print resources. These resellers make it their
`
`business to provide books to their customers as fast as possible, often providing
`
`turnaround times of only a single day after publication. Libraries purchase a
`
`significant portion of the balance of their books directly from publishers
`
`themselves, which provide delivery on a similarly expedited schedule. In general,
`
`libraries make these purchases throughout the year as the books are published and
`
`shelve the books as soon thereafter as possible in order to make the books available
`
`to their patrons. Thus, books are generally available at libraries across the country
`
`within just a few days of publication.
`
`19. Catalogers can create MARC records for all types of print, online, and
`
`digital resources. For example, MARC records cover serial publications, including
`
`both serially-published monographs and journals. OCLC hosts MARC records for
`
`9
`
`Oxford, Exh. 1015, p. 10
`
`
`
`more than 320 million serial publications. Serial publications are those
`
`publications that have the same collective title but are intended to be continued
`
`indefinitely with enumeration such as a volume or issue number (e.g., magazines,
`
`journals, etc.). In the OCLC Connexion database, the first issue of the serial
`
`publication is typically cataloged (i.e., a corresponding MARC record is created),
`
`but the date is left open-ended with the use of a punctuation mark such as a dash.
`
`OCLC serial publication MARC records represent the entire run of the serial title.
`
`With knowledge of the first issue published, future issues can be predicted based
`
`on the information provided in the MARC record, for example in Field 362. In my
`
`extensive professional experience, is it highly unusual for a library to stop
`
`collecting and shelving a serial publication prior to the end of its publication run.
`
`If a subscription to a serial publication ends its run or is cancelled before the end of
`
`its run, the library will denote that it has stopped receiving new volumes by filling
`
`in the end date in the MARC record.
`
`20.
`
`The handling of printed journal subscriptions is shown on the covers
`
`of individual issues. As was the best practice among libraries, issues arrived at a
`
`central facility and were immediately received, verified as part of a subscription,
`
`checked in, and stamped with the institution’s name and date. Determining that the
`
`issue was part of the library subscription ensured that the entire set of publications
`
`for the year had been received so that they could be professionally bound and
`
`10
`
`Oxford, Exh. 1015, p. 11
`
`
`
`retained. This process also verified that all of the published issues arrived so that
`
`the library staff did not have to request or claim an issue that did not arrive as
`
`expected. In large public libraries with branches and multi-campus libraries within
`
`academic institutions, the journals were sorted and delivered to the subscribing
`
`unit. The issues were frequently stamped again to acknowledge receipt. The new
`
`issue was placed in the public area; the older issue was stored so that it remained
`
`available.
`
`21.
`
`The foregoing process has been standard library practice longer than I
`
`have been working in the profession. I first learned the steps in the process in the
`
`late 1970s and later supervised it. Although the checking in process has become
`
`automated and now links electronically to holdings records for the MARC record
`
`for each serial title, the manual stamping and placing the issue in a public area has
`
`not changed for 50 years. Unless I note otherwise below in reference to a specific
`
`serial publication, it is my expert opinion that this standard protocol was followed
`
`for each of the serial publications discussed below.
`
`22.
`
`In preparing this report, I used authoritative databases, such as the
`
`OCLC Connexion database and the Library of Congress Online Catalog, to
`
`confirm citation details of the various publications discussed. Unless I note
`
`otherwise below in reference to a specific serial publication, it is my expert opinion
`
`that this standard protocol was followed for each of the serial publications
`
`11
`
`Oxford, Exh. 1015, p. 12
`
`
`
`discussed below.
`
`23.
`
`Indexing. A researcher may discover material relevant to his or her
`
`topic in a variety of ways. One common means of discovery is to search for
`
`relevant information in an index of periodical and other publications. Having
`
`found relevant material, the researcher will then normally obtain it online, look for
`
`it in libraries, or purchase it from the publisher, a bookstore, a document delivery
`
`service, or other provider. Sometimes, the date of a document’s public
`
`accessibility will involve both indexing and library date information. However,
`
`date information for indexing entries is often unavailable. This is especially true
`
`for online indices.
`
`24.
`
`Indexing services use a wide variety of controlled vocabularies to
`
`provide subject access and other means of discovering the content of documents.
`
`The formats in which these access terms are presented vary from service to service.
`
`25. Online
`
`indexing
`
`services
`
`commonly provide bibliographic
`
`information, abstracts, and full-text copies of the indexed publications, along with
`
`a list of the documents cited in the indexed publication. These services also often
`
`provide lists of publications that cite a given document. A citation of a document
`
`is evidence that the document was publicly available and in use by researchers no
`
`later than the publication date of the citing document.
`
`12
`
`Oxford, Exh. 1015, p. 13
`
`
`
`IV. PRELIMINARIES
`26.
`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
`
`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 September 24,
`
`2007.
`
`27.
`
`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.
`
`28. 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
`
`“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
`
`cataloging and indexing by a library is sufficient, though there are other ways that
`
`a printed publication may qualify as publicly accessible). One manner of sufficient
`
`indexing is indexing according to subject matter category. I understand that the
`
`13
`
`Oxford, Exh. 1015, p. 14
`
`
`
`cataloging and indexing by a single library of a single instance of a particular
`
`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.
`
`29.
`
`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.
`
`30.
`
`Persons of ordinary skill in the art. I am told by counsel that the
`
`subject matter of this proceeding relates to nanopore sequencing.
`
`31.
`
`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.
`
`14
`
`Oxford, Exh. 1015, p. 15
`
`
`
`32.
`
`I am told by counsel that a person of ordinary skill in this subject
`
`matter or art would be someone with a Ph.D. or an equivalent amount of
`
`experience in molecular biology, genetics, biochemistry or a related field. I was
`
`also informed by counsel that the person of ordinary skill in the art would have
`
`experience in DNA sequencing techniques including Maxam-Gilbert and Sanger
`
`sequencing, as well as other techniques available on or before the priority date of
`
`the patent such as Applied Biosystems/Life Technologies, Solexa/Illumina,
`
`Helicos, and PacBio sequencing.
`
`33.
`
`It is my opinion that such a person would have been engaged in
`
`research, learning though study and practice in the field and possibly through
`
`formal instruction the bibliographic resources relevant to his or her research. In
`
`the 2000s such a person would have had access to a vast array of long-established
`
`print resources in nucleic acid sequencing as well as to a rich set of online
`
`resources providing indexing information, abstracts, and full text services for
`
`nucleic acid sequencing.
`
`V.
`
`Exhibit 1007 (“MINER”)
`34. Attached Exhibit A1 is a copy of Volume 32, Number 17 of the
`
`journal Nucleic Acids Research found in the National Library of Medicine. The
`
`article “Molecular Barcodes Detect Redundancy and Contamination in Hairpin-
`
`Bisulfite PCR” by Brooks E. Miner, Reinhard J. Stöger, Alice F. Burden, Charles
`
`15
`
`Oxford, Exh. 1015, p. 16
`
`
`
`D. Laird, and R. Scott Hansen (hereafter “Miner”) appears beginning on page e135
`
`of this issue dated 2004. The document indicates a publication online September
`
`30, 2004. The exhibit filed in this proceeding as Exhibit 1007 is a true and correct
`
`copy of the article of Exhibit A1 (pages e135, 1-4). I obtained this copy of the
`
`article from the National Library of Medicine which comprises Exhibit 1007.
`
`Specifically, the text of the article is complete; no pages are missing, and the text
`
`on each page appears to flow seamlessly from one page to the next; further, there
`
`are no visible alterations to the document. Exhibit 1007 was found within the
`
`custody of a library – a place where, if authentic, a copy of this journal would
`
`likely be. Exhibit 1007 is a true and correct copy in a condition that creates no
`
`suspicion about its authenticity.
`
`35.
`
`The cover of the 2004 issue of the journal Nucleic Acids Research has
`
`a stamp affixed at the National Library of Medicine which shows that it was
`
`received, verified, and checked in on November 3, 2004. Therefore, this issue of
`
`the journal Nucleic Acids Research would have been available to users at the
`
`National Library of Medicine on that date.
`
`36. Attached hereto as Exhibit A2 is a true and correct copy of the MARC
`
`record for the journal Nucleic Acids Research at the National Library of Medicine.
`
`The library ownership is indicated by the presence of the library’s code (DNLM) in
`
`the 040 field. I personally identified and retrieved the MARC record that is
`
`16
`
`Oxford, Exh. 1015, p. 17
`
`
`
`Exhibit A2. The library continues to update this MARC record and enhanced the
`
`MARC record to meet current cataloging rules.
`
`37. Based on finding a print copy of Exhibit A1 in the National Library of
`
`Medicine and MARC record in its online library catalog attached as Exhibit A2, it
`
`is my opinion that the article “Molecular Barcodes Detect Redundancy and
`
`Contamination in Hairpin-Bisulfite PCR” by Miner et. al. published in the journal
`
`Nucleic Acids Research was available at the National Library of Medicine on
`
`November 3, 2004.
`
`38. As noted in the holdings information, the National Library of
`
`Medicine has received the journal Nucleic Acids Research since January 1974 and
`
`continues to receive the publication. In view of the MARC record for Exhibit
`
`1007, the Miner article was publicly available no later than November 3, 2004,
`
`because the serial title had been received, cataloged, and indexed at the National
`
`Library of Medicine and made part of its online catalog database.
`
`39. Attached hereto as Exhibit A3 is a true and correct copy of the MARC
`
`record for the journal Nucleic Acids Research obtained from the OCLC Connexion
`
`database. I personally identified and retrieved the MARC record that is Exhibit
`
`A3. As previously noted, the library that created the record is recorded in field 040
`
`with a unique library code. For Exhibit A3, that library code is “DLC,” which
`
`means that the MARC record for this serial was cataloged at the Library of
`
`17
`
`Oxford, Exh. 1015, p. 18
`
`
`
`Congress. As can be seen in the “Entered” field in the MARC record for this
`
`exhibit, a cataloger at the Library of Congress created OCLC record number
`
`1791693 on October 15, 1974. The “BLvl” entry in Exhibit A3 is “s,” which
`
`indicates that the journal Nucleic Acids Research is a serial publication. Field 310
`
`of Attachment 1b reads “Semimonthly, May 1979-.” The Field 321 entry of
`
`Attachment 1b indicates that the frequency was monthly (Jan. 1974-Apr. 1979).
`
`Accordingly, the MARC record for Exhibit 1007 corresponds to those issues of the
`
`journal Nucleic Acids Research from the time of the serial title began publication
`
`in January 1974 to the present day. The library continues to update this MARC
`
`record and enhanced the MARC record to meet current cataloging rules.
`
`40.
`
`Exhibit A3 further includes an entry in field 050 (“QP620 ‡b .N8”)—
`
`as described above, this includes a subject matter classification number consistent
`
`with the Library of Congress classification system (analogous to the Dewey
`
`Decimal System). Exhibit A3 further includes an entry in field 082 (“574.8/732”),
`
`a subject matter consistent with the Dewey Decimal System. Exhibit A3 further
`
`includes an English language field 650 entry reading “Nucleic acids ‡v
`
`Periodicals.” Thus, as of its cataloging, the publication corresponding to the
`
`MARC record attached hereto as Exhibit A3 was indexed according to its subject
`
`matter by virtue of at least three independently sufficient classifications: the field
`
`050 entry, the field 082 entry, and the field 650 entry. Further, as of October 15,
`
`18
`
`Oxford, Exh. 1015, p. 19
`
`
`
`1974, the MARC record attached hereto as Exhibit A3 was accessible through any
`
`library with access to the OCLC Connexion database or the online catalog at a
`
`library that subscribed to the serial, which means that the corresponding
`
`publication was publicly available on or before that same date through any library
`
`with access to the OCLC Connexion database or through an individual library.
`
`41.
`
`Exhibit A3 indicates that the journal Nucleic Acids Research as
`
`cataloged at the Library of Congress is currently available from 528 libraries. In
`
`view of the above, this issue of the journal Nucleic Acids Research was publicly
`
`available no later than November 3, 2004, because by that date it had been
`
`cataloged and indexed at the Library of Congress, made part of the OCLC
`
`Connexion database, and received at the National Library of Medicine. For these
`
`reasons, it is my opinion that Exhibit 1007 was published and accessible to the
`
`public no later than November 3, 2004.
`
`VI. EXHIBIT 1008 (“O’DEA”)
`42.
`Exhibit B1 is a copy of Section 5.3 of Volume 2 of the Current
`
`Protocols in Nucleic Acid Chemistry found in the Ebling Library for the Health
`
`Sciences at the University of Wisconsin – Madison. The section “Engineering
`
`Specific Cross-Links in Nucleic Acids Using Glycol Linkers” by Timothy O’Dea
`
`and Larry W. McLaughlin (hereafter “O’Dea”) appears beginning on page 5.3.1.
`
`The exhibit filed in this proceeding as Exhibit 1008 is a true and correct copy of
`
`19
`
`Oxford, Exh. 1015, p. 20
`
`
`
`the article of Exhibit B1 (pages e135, 1-4). I obtained this copy of the section from
`
`the Ebling Library for the Health Sciences at the University of Wisconsin –
`
`Madison which comprises Exhibit 1008. Specifically, the text is complete; no
`
`pages are missing, and the text on each page appears to flow seamlessly from one
`
`page to the next; further, there are no visible alterations to the document. Exhibit
`
`1008 was found within the custody of a library – a place where, if authentic, a copy
`
`of this journal would likely be. Exhibit 1008 is a true and correct copy in a
`
`condition that creates no suspicion about its authenticity.
`
`43. Attached hereto as Exhibit B2 is a true and correct copy of the MARC
`
`record for the Current Protocols in Nucleic Acid Chemistry at the Ebling Library
`
`for the Health Sciences at the University of Wisconsin – Madison. The library
`
`ownership is indicated by the presence of the library’s code (UW) in the second
`
`035 field. I personally identified and retrieved the MARC record that is Exhibit
`
`B2.
`
`44. Based on finding a print copy of Exhibit B1 in the Ebling Library for
`
`the Health Sciences at the University of Wisconsin – Madison and MARC record
`
`in its online library catalog attached as Exhibit B2, it is my opinion that the
`
`Current Protocols in Nucleic Acid Chemistry by O’Dea, et. al. was available at the
`
`Ebling Library for the Health Sciences at the University of Wisconsin – Madison
`
`on April 14, 1999. This Exhibit has a print date of 2000 and is included in the
`
`20
`
`Oxford, Exh. 1015, p. 21
`
`
`
`compilations of the Current Protocols in Nucleic Acid Chemistry. The library
`
`continues to update this MARC record and enhanced the MARC record to meet
`
`current cataloging rules.
`
`45. Attached hereto as Exhibit B2 is a true and correct copy of the MARC
`
`record for the Current Protocols in Nucleic Acid Chemistry obtained from the
`
`OCLC Connexion database. I personally identified and retrieved the MARC
`
`record that is Exhibit B2. As previously noted, the library that created the record is
`
`recorded in field 040 with a unique library code. For Exhibit B2, that library code
`
`is “DLC,” which means that the MARC record for this loose-leaf book was
`
`cataloged at the Library of Congress. As can be seen in the “Entered” field in the
`
`MARC record for this exhibit, a cataloger at the Library of Congress created
`
`OCLC record number 41380325 on April 14, 1999. The library continues to
`
`update this MARC record and enhanced the MARC record to meet current
`
`cataloging rules.
`
`46.
`
`Exhibit B3 further includes an entry in field 050 (“QP620 ‡b .C87
`
`2000”)—as described above, this includes a subject matter classification number
`
`consistent with the Library of Congress classification system (analogous to the
`
`Dewey Decimal System). Exhibit B3 further includes an entry in field 082
`
`(“572.8”), a subject matter consistent with the Dewey Decimal System. Exhibit B3
`
`furt