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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent Number: 8,036,788
`
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`
`Case IPR2013-00417
`
`
`
`AMERICAN VEHICULAR SCIENCES LLC’S
`MANDATORY NOTICE INFORMATION
`(ADDITION OF BACK-UP COUNSEL)
`
`

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`

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`American Vehicular Sciences LLC
`
`
`
`IPR2013-00417
`
`In accordance with the Board’s Conduct of Proceedigns Order dated February
`
`4, 2014, Patent Owner American Vehicular Sciences (“Patent Owner”) has added
`
`Stephanie F. Samz as back-up counsel in this proceeding, and submits the
`
`following updated mandatory notice information in accordance with 37 CFR §
`
`42.8(b) to reflect the addition of Ms. Samz as back-up counsel.
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`American Vehicular Sciences LLC is the owner of the entire interest in
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`U.S. Patent No. 8,036,788 (“the ‘788 Patent”), and thus is a real-party-in-
`
`interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The Patent Owner identifies the following judicial and/or administrative matters
`
`that may affect, or may be affected by, a decision in this Inter Partes Review:
`
`The ‘788 patent is asserted by the Patent Owner in the following litigations
`
`pending in the U.S. District Court for the Eastern District of Texas:
`
`American Vehicular Sciences LLC v. Toyota Motor Corporation, et al., filed June
`
`25, 2012 (6:2012cv00405) (“AVS 405 Litigation”); American Vehicular Sciences
`
`LLC v. BMW AG, et al., filed June 25, 2012 (6:2012CV00412); American
`
`Vehicular Sciences LLC v. Hyundai Motor Co., et al., filed Oct. 15, 201 (6:2012-
`
`CV-00776); American Vehicular Sciences LLC v. Kia Motors Corp., filed Feb. 13,
`
`2013 (6:2013CV00148); American Vehicular Sciences LLC v. American Honda
`

`
`2
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`

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`American Vehicular Sciences LLC
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`
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`IPR2013-00417
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`Motor Co., Inc. et al. filed Mar. 8, 2013 (6:2013CV00226); American Vehicular
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`Sciences LLC v. Mercedes-Benz U.S. Intl., Inc., filed April 3, 2013
`
`(6:2013CV00310). Petitioner is a named defendant in the AVS 405 Litigation.
`
`Patent Owner is not aware of any other litigations or any pending prosecution
`
`involving the ‘788 patent.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owner designates the following counsel:
`
`LEAD COUNSEL
`Name Thomas J. Wimbiscus
`(Reg. No. 36,059)
`(twimbiscus@mcandrews-ip.com)
`Direct: 312-775-8109
`
`BACK-UP COUNSEL
`Name Scott P. McBride
`(Reg. No. 42,853)
`(smcbride@mcandrews-ip.com)
`Direct: 312-775-8131
`Name Stephanie F. Samz
`(Reg. No. 69,845)
`(ssamz@mcandrews-ip.com)
`Direct: 312-775-8089
`
`
`
`Address: MCANDREWS HELD & MALLOY, LTD.
` 500 W. Madison, 34th floor 60661
` (312) 775-8000 (Reception)
` (312) 775-8100 (Facsimile)
`
`
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`
`
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`Please direct all correspondence regarding this proceeding to the lead
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`counsel at the address listed above. Patent Owner also consents to electronic
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`service by e-mail to AVS-IPR@mcandrews-ip.com.
`

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`3
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`American Vehicular Sciences LLC
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`
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`IPR2013-00417
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this proceeding to Deposit Account 13-0017 (Customer ID
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`23446).
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`DATE: February 12, 2014
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`MCANDREWS HELD & MALLOY
`500 West Madison, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
`CUSTOMER NUMBER: 23446
`

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`
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`Respectfully submitted,
`
` /Thomas J. Wimbiscus/
`
`
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`Thomas J. Wimbiscus
`Registration No. 36,059
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`4
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`

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`American Vehicular Sciences LLC
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`
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`IPR2013-00417
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`CERTIFICATE OF SERVICE
`
`I hereby certify that American Vehicular Sciences, LLC’s Mandatory Notice
`Information (Addition of Back-Up Counsel) in Case IPR2013-00417 was served
`on this 12th day of February 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
`
`
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`MCANDREWS HELD & MALLOY
`
`
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`
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`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
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`
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`CUSTOMER NUMBER: 23446
`
`Date: February 12, 2014
`
`
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`

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`5
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`
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`

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