UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`TESLA, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________________________________________
`Case IPR2025-00221
`U.S. PATENT NO. 11,664,889
`____________________________________________
`
`DECLARATION OF SYLVIA D. HALL-ELLIS, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`Ex.1010 / Page 1 of 48
`TESLA, INC.
`
`
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`TESLA, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________________________________________
`Case IPR2025-00221
`U.S. PATENT NO. 11,664,889
`____________________________________________
`
`DECLARATION OF SYLVIA D. HALL-ELLIS, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`Ex.1010 / Page 1 of 48
`TESLA, INC.
`
`
`
`I.
`
`INTRODUCTION
`1.
`My name is Sylvia D. Hall-Ellis. I have been retained as an expert by
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`Counsel for Tesla (referred to herein as “Tesla”).
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`2.
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`I have written this declaration at the request of Tesla to provide my
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`expert opinion regarding the authenticity and public availability of a publication.
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`My declaration sets forth my opinions in detail and provides the basis for my
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`opinions 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 basis 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. If called to testify in the above-captioned matter, I will testify with
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`regard to the opinions and bases set forth below.
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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 $400 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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`declaration, the substance of my opinions, or the outcome of this proceeding. I
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`have no 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 are discussed explicitly in this
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`declaration.
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`1
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`Ex.1010 / Page 2 of 48
`TESLA, INC.
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`
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`II. QUALIFICATIONS
`6.
`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 and Information Science
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`from the University of Pittsburgh in 1985. Over the last fifty years, I have held
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`various positions in the field of library and information resources. I was first
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`employed as a librarian in 1966 and have been involved in the field of library
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`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,
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`and I served on the Committee on Cataloging: Resource and Description (which
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`wrote the new cataloging rules) and as the chair of the Committee for Education
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`and 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 served as the Chair for the ALA Office of Diversity’s Committee
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`on Diversity, as a member of the REFORMA National Board of Directors, and as a
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`member of the Editorial Board for the ALCTS premier cataloging journal, Library
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`Resources and Technical Services, as a Co-Chair of the Membership Committee
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`for the Library Research Round Table (LRRT) of the American Library
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`2
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`Ex.1010 / Page 3 of 48
`TESLA, INC.
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`
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`Association, and as a member of the LRRT Nominating Committee. Currently I
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`serve as a member of the CORE Margaret Mann Citation 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.
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`9.
`
`I have been deposed thirty-eight 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., Northern
`
`District of California, 14-cv-299-HSG, on behalf of Symantec Corp., September
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`14, 2017; (3) one deposition for ten matters: Intellectual Ventures I LLC vs. AT&T
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`Mobility LLC; AT&T Mobility II LLC, New Cingular Wireless Services, Inc., SBC
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`Internet Services, Inc., Wayport, Inc., and Cricket Wireless LLC, C.A. No. 12-193
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`(LPS); Intellectual Ventures II LLC vs. AT&T Mobility LLC; AT&T Mobility II
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`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
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`LLC vs. T-Mobile USA, Inc. and T-Mobile US, Inc., C.A. No. 13-1632 (LPS);
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`Intellectual Ventures II LLC vs. T-Mobile USA, Inc. and T-Mobile US, Inc., C.A.
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`No. 13-1633 (LPS); Intellectual Ventures I LLC, vs. Nextel Operations, Inc., Sprint
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`Spectrum L.P., Boost Mobile, LLC and Virgin Mobile USA, L.P., C.A. No. 13-1634
`
`3
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`Ex.1010 / Page 4 of 48
`TESLA, INC.
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`
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`(LPS); Intellectual Ventures II LLC vs. Nextel Operations, Inc., Sprint Spectrum
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`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,
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`C.A. No. 13-1637 (LPS); Intellectual Ventures II LLC vs. AT&T Mobility LLC,
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`AT&T Mobility II LLC, New Cingular Wireless Services, Inc., C.A. No. 15-799
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`(LPS); Intellectual Ventures I LLC vs. T-Mobile USA, Inc. and T-Mobile US, Inc.,
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`C.A. No. 15-800 (LPS), on behalf of AT&T Mobility LLC; AT&T Mobility II
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`LLC, Boost Mobile, LLC Cricket Wireless LLC, Nextel Operations, Inc., New
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`Cingular Wireless Services, Inc., SBC Internet Services, Inc., Sprint Spectrum
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`L.P., T-Mobile USA, Inc., T-Mobile US, Inc., United States Cellular Corporation
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`Virgin Mobile USA, L.P., and Wayport, Inc., November 15, 2016; (4) Hitachi
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`Maxell, LTD., v. Top Victory Electronics (Taiwan) Co. Ltd., et al., Eastern District
`
`of Texas, 2:14-cv-1121 JRG-RSP (E.D. Texas), on behalf of Top Victory
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`Electronics (Taiwan) Co. LTD, et. al., January 20, 2016; (5) Sprint Spectrum, L.P.
`
`vs. General Access Solutions, Ltd., Petition for Inter Partes Review of U.S. Patent
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`No. 7,173,916, on behalf of Sprint Spectrum L.P., July 13, 2018; (6) Nichia
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`Corporation vs. Vizio, Inc., Central District of California, 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,
`
`4
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`Ex.1010 / Page 5 of 48
`TESLA, INC.
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`
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`Middle District of Florida, 2:17-cv-00557 (JRG), on behalf of T-Mobile USA, Inc.,
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`T-Mobile US, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson, October
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`19, 2018; (8) Pfizer, Inc. vs. Biogen, Inc., Petition for Inter Partes Review of U.S.
`
`Patent No. 8,821,873, on behalf of Pfizer, November 3, 2018; (9) Finjan, Inc. vs.
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`ESET, LLC and ESET SPOL. S.R.O., Southern District of California, 3:17-cv-
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`00183-CAB-BGS, on behalf of ESET, January 15, 2019; (10) Finjan, Inc. vs.
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`Cisco Systems, Inc., Northern District of California, 5:17-cv-00072-BLF-SVK, 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, on behalf of Facebook, Inc., Instagram, LLC and
`
`Whatsapp Inc. December 20, 2019; (12) 3Shape A/S and Shape Inc. v. Align
`
`Technology, Inc., Petition for Inter Partes Review of U.S. Patent No. 7,156,661,
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`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, District of
`
`Delaware, 1:18-cv-01519-MN, September 15, 2020; (14) VLSI Technology LLC v.
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`Intel Corporation, Western District of Texas, 6:19-cv-00254, 6:19-cv-00255, 6:19-
`
`cv-00256, on behalf of Intel Corporation, September 23, 2020; (15) Finjan Inc. v.
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`Sonicwall, Inc., Northern District of California, 5:17-cv-04467-BLF-HRL, on
`
`behalf of Sonicwall, Inc., October 27, 2020; (16) VLSI Technology, LLC v. Intel
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`Corporation, District of Delaware, 1:18-cv-00966-CFC-CJB, February 5, 2021, on
`
`5
`
`Ex.1010 / Page 6 of 48
`TESLA, INC.
`
`
`
`behalf of the Intel Corporation; (17) Unified Patents, LLC v. Good Kaisha IP
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`Bridge 1, Petition for Inter Partes Review of U. S. Patent 7,817,868, February 11,
`
`2021, on behalf of Unified Patents; (18) Finjan, Inc. v. Qualsys, Inc., Northern
`
`District of California, 4:18-cv-07229-YGR, 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, May 6, 2021, on behalf of Qualcomm, Inc.; (20)
`
`Hulu, LLC v. Sound View Innovations, LLC, Petition for Inter Partes Review of U.
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`S. Patent 5,806,062, May 14, 2021, on behalf of Hulu, LLC; (21) VLSI Technology
`
`LLC v. Intel Corporation, Western District of Texas, 6:19-cv-00254, 6:19-cv-
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`00255 and 6:19-cv-00256, August 3, 2021, on behalf of Intel Corporation; (22)
`
`Liquidia Technologies, Inc. v. United Therapeutics Corporation, Petition for Inter
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`Partes Review of U. S. Patent 10,716,793 B2, October 20, 2021, on behalf of
`
`Liquidia Technologies, Inc.; (23) EcoFactor, Inc. v. Google, Inc., Western District
`
`of Texas, 6:20-cv-00075 (ADA), 6:20-0078-ADA, and 6:20-cv-00080 ADA,
`
`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, March 11, 2022, on behalf of Liquidia Technologies, Inc.; (25)
`
`Juniper Networks, Inc. v. Swarm Technology LLC, Petition for Inter Partes Review
`
`of U. S. Patent 9,852,004, May 5, 2022, on behalf of Juniper Networks, Inc.; (26)
`
`ParkerVision, Inc. v. Intel Corporation, Western District of Texas, 6:20-cv-108
`
`6
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`Ex.1010 / Page 7 of 48
`TESLA, INC.
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`
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`(ADA), October 26, 2022, on behalf of the Intel Corporation; (27) CommScope v.
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`TQ Delta, Petition for Inter Partes Review of U. S. Patents 9,094,348 and
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`10,833,809, February 16, 2023, on behalf of CommScope; (28) WSOU Investments
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`d/b/a Brazos v. Salesforce.com, Inc. for Western District of Texas, 6:20-cv-01164-
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`ADA and 6:20-cv-01170-ADA, April 18, 2023, on behalf of Salesforce; (29)
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`Regents of the University of Minnesota v. AT&T Mobility LLC, District of
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`Minnesota, 14:cv-4999-JRT-TNL & 14-cv-4669-JRT-TNL, May 18, 2023, on
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`behalf of AT & T Mobility LLC; (30) VLSI Technology LLC v. Intel Corporation,
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`Northern District of California, 5:17-cv-0571-BLF-NC, July 11, 2023, on behalf of
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`Intel Corporation; (31) Trustees of Purdue University v. ST Microelectronics,
`
`Western District of Texas, 6:21-cv-00727-ADA, July 27, 2023, on behalf of ST
`
`Microelectronics; (32) Advanced Micro Devices, Inc. v. Realtek Semiconductor
`
`Corp., Petition for Inter Partes Review of U. S. Patents 7,936,245 & 9,590,582,
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`August 10, 2023, on behalf of Advanced Micro Devices, Inc.; (33) Motif
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`Foodworks, Inc. v. Impossible Foods, Inc., Petition for Inter Partes Review of U.
`
`S. Patent 9,943,096, August 24, 2023, on behalf of Motif Foodworks, Inc.; (34)
`
`Network System Technologies, LLC v. Texas Instruments, Inc., Eastern District of
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`Texas, 2:22-cv-00482-RWS, March 20, 2024, on behalf of Texas Instruments, Inc.;
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`(35) Pardalis Technology Licensing, LLC v. International Business Machines,
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`Corporation, Eastern District of Texas, 2:22-cv-00452, May 23, 2024, on behalf of
`
`7
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`Ex.1010 / Page 8 of 48
`TESLA, INC.
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`
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`International Business Machines, Corporation;
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`(36) Pardalis Technology
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`Licensing, LLC v. International Business Machines, Corporation, Eastern District
`
`of Texas, 2:22-cv-00452, May 23, 2024, on behalf of International Business
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`Machines, Corporation; (37) Meta Platforms, InstaGram, Inc., Whatsapp LLC,
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`Facebook Technologies LLC, and Giphy, Inc. v. VL Collective IP LLC, Petition for
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`Inter Partes Review of U. S. Patent 7,436,980, July 18, 2024, on behalf of Meta
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`Platforms, InstaGram, Inc., Whatsapp LLC, Facebook Technologies LLC, and
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`Giphy, Inc.; and, (38) LCY Biotechnology Holding, Inc. v. RadiciChimica S.p.A,
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`Petition for Inter Partes Review of U. S. Patent 11,781,148, August 6, 2024, on
`
`behalf of LCY Biotechnology Holding, Inc. I have testified at trial three times: (1)
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`Advanced Micro Devices, Inc. v. Realtek Semiconductor Corp., U. S. Patents
`
`7,936,245 & 9,590,582, October 20, 2023, International Trade Commission,
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`Washington, DC, on behalf of Advanced Micro Devices, Inc.; (2) Trustees of
`
`Purdue University v. ST Microelectronics, Western District of Texas, 6:21-cv-
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`00727-ADA, November 29, 2023, on behalf of ST Microelectronics; and, (3)
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`Certain Power Converter Modules and Computing Systems Containing the Same,
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`Investigation ITC-337-TA-1370, International Trade Commission, May 1, 2024,
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`on behalf of Delta Electronics, Inc.
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`10. My full curriculum vitae is submitted herewith as Appendix A.
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`8
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`Ex.1010 / Page 9 of 48
`TESLA, INC.
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`
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`III. PRELIMINARIES
`A. Scope of this declaration.
`I have been asked to offer an opinion on the public availability dates
`11.
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`of the following document:
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`a. Chitrapu, Prabhakar. Wideband TDD: WCDMA for the Unpaired
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`Spectrum. Chichester, West Sussex, England: John Wiley, c2004.
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`(“Chitrapu,” Exhibit 1008).
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`12.
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`I am informed by counsel that the alleged priority date for the patent
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`at issue is October 13, 2006. As I will explain below, it is my opinion that the
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`publications discussed in my declaration were publicly accessible before the
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`alleged October 13, 2006, priority date.
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`13.
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`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 disseminated
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`or otherwise made available to the extent that persons interested and ordinarily
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`skilled in the subject matter or art, exercising reasonable diligence, could have
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`located the documents before October 13, 2006.
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`14.
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`I am informed by counsel that an item is considered authentic if there
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`is sufficient evidence to support a finding that the item is what it is claimed to be. I
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`am also informed that authenticity can be established based on the contents of the
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`9
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`Ex.1010 / Page 10 of 48
`TESLA, INC.
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`
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`documents themselves, such as the appearance, contents, substance, internal
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`patterns, or other distinctive characteristics of the item, taken together with all of
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`the circumstances. I am further informed that an item is considered authentic if it
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`is at least 20 years old, in a condition that creates no suspicion of its authenticity,
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`and in a place where, if authentic, it would likely be. Lastly, I have been informed
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`that a document’s authenticity can be established by comparison with an authentic
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`specimen.
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`15.
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`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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`16. While I understand that the determination of public accessibility under
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`the foregoing standard rests on a case-by-case analysis of the facts particular to an
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`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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`10
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`Ex.1010 / Page 11 of 48
`TESLA, INC.
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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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`17.
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`I understand that routine business practices, such as general library
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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. Person of Ordinary Skill in the Art
`I am told by counsel that the subject matter of this proceeding relates
`18.
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`to communications in a wireless network and user equipment “configured to
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`receive a control message over a physical control channel.” ’889 Patent, Abstract.
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`19.
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`I am informed by counsel that a “person of ordinary skill in the art at
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`the time of the invention” (“POSITA”) is a hypothetical person who is presumed to
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`be familiar with the relevant field and its literature at the time of invention. This
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`11
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`Ex.1010 / Page 12 of 48
`TESLA, INC.
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`hypothetical person
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`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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`20.
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`I was told by counsel that a POSITA in October 2006 would have had
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`a working knowledge of the wireless communication art that is pertinent to the
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`’889 patent, including transmission power control procedures in 3GPP systems. A
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`POSITA would have had a bachelor’s degree in electrical engineering, computer
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`engineering, computer science, or a related field and 2-3 years of experience in
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`digital wireless communications protocols. Lack of professional experience can be
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`remedied by additional education, and vice versa.
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`21.
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`It is my opinion that such a person would have been engaged in
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`research, learning through study, and practice in the field and possibly through
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`formal instruction the bibliographic resources relevant to his or her research. By
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`no later than the mid 2000s (and more specifically, before October 13, 2006), such
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`a person would have had access to a vast array of long-established print resources
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`in the field, as well as to a rich set of online resources providing indexing
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`information, abstracts, and full text services for publications relevant to the field of
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`this dispute, including at least the publication discussed in this declaration.
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`12
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`Ex.1010 / Page 13 of 48
`TESLA, INC.
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`
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`C. Authoritative Databases
`In preparing this declaration, I used authoritative databases, such as
`22.
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`the OCLC WorldCat, the Library of Congress Online Catalog, and the U. S.
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`Copyright Office database, to confirm citation details of the publications discussed.
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`23. OCLC WorldCat Database. The OCLC was created “to establish,
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`maintain and operate a computerized library network and to promote the evolution
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`of library use, of libraries themselves, and of librarianship, and to provide
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`processes and products for the benefit of library users and libraries, including such
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`objectives as increasing availability of library resources to individual library
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`patrons and reducing the rate of rise of library per-unit costs, all for the
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`fundamental public purpose of furthering ease of access to and use of the ever-
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`expanding body of worldwide scientific, literary and educational knowledge and
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`information.”1 Among other services, OCLC and its members are responsible for
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`maintaining the WorldCat database, 2 used by independent and institutional
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`libraries throughout the world.
`
`
`
`1 Third Article, Amended Articles of Incorporation of OCLC Online Computer
`Library Center, Incorporated (available at
`https://www.oclc.org/content/dam/oclc/membership/articles-of-incorporation.pdf)
`2 http://www.worldcat.org/
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`13
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`Ex.1010 / Page 14 of 48
`TESLA, INC.
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`24. U. S. Copyright Office. Created by Congress in 1897, the Copyright
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`Office is responsible for administering a complex and dynamic set of laws, which
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`include registration, the recordation of title and licenses, a number of statutory
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`licensing provisions, and other aspects of the 1976 Copyright Act and the 1998
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`Digital Millennium Copyright Act. The public catalog in the Copyright Office
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`includes information filed since 1978.3 Individuals can search by title, personal or
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`corporate name, key word, registration number, and document number. Works
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`filed before 1978 can be located through the Copyright Public Records Reading
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`Room. 4 A researcher can find the date on which an item was published and
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`deposited for copyright.
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`Indexing
`D.
`25. A researcher may discover material relevant to his or her topic in a
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`variety of ways. One common means of discovery is to search for relevant
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`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 a publisher, a bookstore, a document delivery service,
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`or other provider. Sometimes, the date of a document’s public accessibility will
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`
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`3 https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First
`4 https://www.copyright.gov/circs/circ23.pdf
`14
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`Ex.1010 / Page 15 of 48
`TESLA, INC.
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`
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`involve both indexing and library date information. However, date information for
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`indexing entries is often unavailable. This is especially true for online indices.
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`26.
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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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`27. Before the widespread development of online databases to index
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`articles in journals, magazines, conference papers, and technical declarations,
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`libraries purchased printed volumes of indices. Graduate library school education
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`mandated that students learn about the bibliographic control of disciplines, the
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`prominent indexing volumes, and searching strategies required to use them
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`effectively and efficiently. Half of the courses that I studied in library school were
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`focused on bibliography and resources in academic disciplines.
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`28. Librarians consulted with information seekers to verify citations,
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`check availability in union catalogs, printed books catalogs, and the OCLC
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`database, and make formal requests for materials, e.g., books, conference
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`proceedings, journal articles. Requests were transmitted using Telex machines,
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`rudimentary email systems, and the United States Postal Service. During my
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`career, I have performed and supervised staff who handled these resource sharing
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`tasks.
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`15
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`Ex.1010 / Page 16 of 48
`TESLA, INC.
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`29. A major firm known for the breadth of subjects and comprehensive
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`treatment in the preparation of index volumes, the H. W. Wilson Company offered
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`these reference resources since the firm was founded in 1898. The Reader’s Guide
`
`to Periodical Literature is one of the best-known titles available from H. W.
`
`Wilson. Each volume includes a comprehensive index for 300 of the most popular
`
`and important periodicals published in the United States and Canada. Information
`
`seekers have subject access expressed in plain language terminology, author
`
`access, and cross references to find the desired results from their searches. The
`
`family of index titles included Science & Technology Index, Business Periodicals,
`
`Applied Science & Technology Index, Humanities Index, Biological & Agricultural
`
`Index, and Industrial Arts Index. These printed indices have been superseded by
`
`digital database offerings available to information seekers through Ebsco.
`
`30. 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 no later than the
`
`publication date of the citing document.
`
`16
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`Ex.1010 / Page 17 of 48
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`IV. LIBRARY CATALOGING PRACTICES
`
`A. MARC RECORDS AND THE ONLINE LIBRARY CATALOG
`I am fully familiar with the library cataloging standard known as the
`31.
`
`MARC standard, which is an industry-wide standard method of storing and
`
`organizing library catalog information.5 MARC was first developed in the 1960s
`
`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.6
`
`32. MARC is a framework into which descriptive bibliographic data are
`
`transcribed to interact with the software in online library catalogs to provide access
`
`
`
`5 The full text of the standard is available from the Library of Congress at
`http://www.loc.gov/marc/bibliographic/.
`6 Almost every major library in the world is MARC-compatible. See, e.g., MARC
`Frequently Asked Questions (FAQ), Library of Congress,
`https://www.loc.gov/marc/faq.html (last visited October 29, 2024) (“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
`library catalogs used today.”). MARC is the ANSI/NISO Z39.2-1994 (reaffirmed
`2016) standard for Information Interchange Format.
`17
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`Ex.1010 / Page 18 of 48
`TESLA, INC.
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`
`
`to books, journals, and other resources in the collection. The bibliographic data
`
`provide points of access and can be searched by a person of ordinary skill in the art
`
`(“POSITA”) to identify and obtain resources in the library collection. An
`
`information seeker (or POSITA) can search a local online library catalog or the
`
`holdings of a group of libraries in a state or region or in the global catalog
`
`WorldCat.
`
`33. MARC records are not designed for public viewing. Although a
`
`significant number of libraries provide access to the MARC version of a
`
`bibliographic record, the public display is designed to show information in a
`
`succinct manner that is quickly understood and useful to the information seeker.
`
`Libraries determine the default search for the online catalog to make the entry of
`
`search terms efficient and result in a successful search. Information seekers can
`
`enter a keyword, title, author, or standard number for the item. Libraries may also
`
`provide a search capability called “Summon” that allows the information seeker to
`
`enter known information about the item to conduct a search.
`
`34. Since at least the early 1970s and continuing to the present day,
`
`MARC has been the primary communications protocol for the transfer and storage
`
`of bibliographic metadata in libraries.7 As explained by the Library of Congress:
`
`
`7 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
`18
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`Ex.1010 / Page 19 of 48
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`
`
`You could devise your own method of organizing the
`bibliographic information, but you would be isolating your library,
`limiting its options, and creating much more work for yourself. Using
`the MARC standard prevents duplication of work and allows libraries
`to better share bibliographic resources. Choosing to use MARC
`enables libraries to acquire cataloging data that is predictable and
`reliable. If a library were to develop a “home-grown” system that did
`not use MARC records, it would not be taking advantage of an
`industry-wide standard whose primary purpose
`is
`to
`foster
`communication of information.
`Using the MARC standard also enables libraries to make use of
`commercially available library automation systems to manage library
`operations. Many systems are available for libraries of all sizes and
`are designed to work with the MARC format. Systems are maintained
`and improved by the vendor so that libraries can benefit from the
`latest advances in computer technology. The MARC standard also
`allows libraries to replace one system with another with the assurance
`that their data will still be compatible.
`
`a MARC Record Necessary? LIBRARY OF CONGRESS,
`
`Is
`
`Why
`
`http://www.loc.gov/marc/umb/um01to06.html#part2 (last visited October 29,
`
`2024).
`
`Congress, 1975) and available online from the Hathi Trust
`(https://babel.hathitrust.org/cgi/pt?id=mdp.39015034388556;view=1up;seq=1; last
`visited October 29, 2024).
`
`19
`
`
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`Ex.1010 / Page 20 of 48
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`35. Examining the MARC records for a specific item reveals the
`
`comprehensive data transcribed about a particular item at the time that cataloging
`
`and classification occurred. In addition to the creator, title, subjects, and standard
`
`numbers, additional information may provide additional and relevant data
`
`depending on the type of resource. Understanding the full extent of bibliographic
`
`data for an item and the points of access associated with it provides essential
`
`information that can be used to determine the indexing and public availability for
`
`documents described in this Declaration.
`
`B. MARC RECORDS
`36. 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
`
`work’s title is recorded in field 245, the primary author or creator of the work is
`
`recorded in field 100, an item’s International Standard Book Number (“ISBN”) is
`
`recorded in field 020, an item’s International Standard Serial Number (“ISSN”) is
`
`recorded in field 022, 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.”
`
`Id.8 If a work is a periodical, then its publication frequency is recorded in field
`
`
`
`8 In some MARC records, field 264 is used rather than field 260 to record
`publication information. See http://www.loc.gov/marc/bibliographic/bd264.html
`20
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`Ex.1010 / Page 21 of 48
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`
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`310, alternate publication frequency is recorded in field 321, 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.
`
`
`
`See
`
`http://www.loc.gov/marc/bibliographic/bd3xx.html (last visited October 29, 2024).
`
`37. 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”) bibliographic 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 Declaration. Where this “mouse
`
`over” option was not available, I consulted the Directory of OCLC Libraries to
`
`identify the institution that created the MARC record.9
`
`38. 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
`
`fields
`
`are
`
`termed
`
`“Subject Access Fields.”
`
` See
`
`
`(last visited September 2, 2024) (“Information in field 264 is similar to information
`in field 260 (Publication, Distribution, etc. (Imprint)). Field 264 is useful for cases
`where the content standard or institutional policies make a distinction between
`functions”).
`9 https://www.oclc.org/en/contacts/libraries.html
`21
`
`Ex.1010 / Page 22 of 48
`TESLA, I
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