`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of AMERICAN VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`
`
`PATENT OWNER’S LIST OF ANTICIPATED
`MOTIONS IN ADVANCE OF INITIAL CONFERENCE CALL
`
`Case No. IPR2013-00413
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In advance of the Initial Conference Call on February 3, 2014 at 2:00 p.m.,
`
`Patent Owner American Vehicular Sciences (“AVS”) submits the following list of
`
`motions that it anticipates filing during this trial. See Office Patent Trial Practice
`
`Guide, Fed. Reg. Vol. 77, No. 157 at 48765 (Aug. 14, 2012) and 37 C.F.R. §
`
`42.121. This listing is without prejudice to AVS’s right to seek authorization to
`
`bring additional motions as circumstances warrant. See Office Patent Trial
`
`Practice, Fed. Reg. Vol. 77, No. 157 at 48763 (Aug. 14, 2012).
`
`(1)
`
` Motion for Modification of Scheduling Order. AVS has contacted
`
`counsel for Petitioner Toyota Motor Corporation (“Toyota”) to potentially seek
`
`agreement for a joint motion to extend each of Due Dates 1-3 by one week each.
`
`See Paper 17, Scheduling Order (“The parties may stipulate to different dates for
`
`DUE DATES 1-3 (earlier or later, but no later than DUE DATE 4).”).
`
`(2) Motion for Discovery. The parties did not agree, prior to institution of
`
`the trial, to exchange of the initial disclosures set forth in the Office Patent Trial
`
`Practice Guide. Pursuant to 37 C.F.R. § 42.51(a)(2), AVS would move to seek
`
`discovery of such information. AVS may also move for additional discovery
`
`relating to secondary considerations.
`
`(3) Motion to Exclude under 37 C.F.R. § 42.64. The need for, and nature
`
`of, such a motion may be impacted by any supplemental evidence Toyota submits
`
`in response to AVS’s Objections to Evidence.
`
`
`
`1
`
`
`
`(4) Motion to Amend Claims under 37 C.F.R. § 42.121.
`
`(5) Motion to Substitute Lead and/or Back-Up Counsel within the same
`
`law firm.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Thomas J. Wimbiscus/
`
`Thomas J. Wimbiscus
`
`Registration No. 36,059
`
`
`
`
`
`
`
`
`
`
`
`
`
`DATE: January 30, 2014
`
`
`
`
`
`
`
`
`
`MCANDREWS HELD & MALLOY, LTD.
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the PATENT OWNER’S LIST OF ANTICIPATED
`MOTIONS IN ADVANCE OF INITIAL CONFERENCE CALL in connection
`with Inter Partes Review Case IPR2013-00413 was served on this 30th
`day of January by electronic mail to the following:
`
`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Date: January 30, 2014
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`
`
`
`
`
`
`
`
`
`