`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
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`AMERICAN VEHICULAR SCIENCES LLC
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`Patent Owner
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`Patent No. 8,036,788
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`__________________________________________________________________
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`Petitioner’s Mandatory Notices – Addition of Back-up Counsel
`37 C.F.R. § 42.8
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`Case No. IPR2013-00417
`__________________________________________________________________
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`Petitioner Toyota Motor Corporation (“Petitioner”) hereby provides notice
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`that it has added Matt Berkowitz as back-up counsel in this proceeding. Pursuant to
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`37 C.F.R. § 42.8(a)(3), Petitioner’s updated mandatory notices are below, reflecting the
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`addition of Mr. Berkowitz.
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`MANDATORY NOTICES (37 C.F.R. § 42.8)
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`Petitioner, Toyota, is the real party-in-interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’788 patent is currently the subject of the following litigations: American
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`Vehicular Sciences LLC v. Toyota Motor Corp. et al., No. 6:12-CV-405 (E.D. Tex.)
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`(hereinafter, “AVS 405 Litigation”); American Vehicular Sciences LLC v. BMW Grp.
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`A/K/A BMW AG et al., No. 6:12-CV-412 (E.D. Tex.); American Vehicular Sciences
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`LLC v. Hyundai Motor Co. et al., No. 6:12-CV-776 (E.D. Tex.); American Vehicular
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`Sciences LLC v. Kia Motors Corp., No. 6:13-CV-148 (E.D. Tex.); American Vehicular
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`Sciences LLC v. American Honda Motor Co., Inc. et al., No. 6:13-CV-226 (E.D. Tex.).
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`Petitioner is a named defendant in the AVS 405 Litigation. The earliest that any of
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`the defendants in the AVS 405 Litigation was served is July 20, 2012. Petitioner is not
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`aware of any other litigations involving the ’788 patent. The petition in this
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`proceeding was filed simultaneously with IPR2013-00412, -00413, -00414, -00415, and
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`-00416. A trial has been instituted in each. While these proceedings do not address
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`the ’788 patent, they relate to patents that were asserted along with the ’788 patent in
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`-1-
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`the AVS 405 Litigation. Petitioner is not aware of any other pending administrative
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`matter that would affect, or be affected by, a decision in this proceeding.
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`C.
`Lead Counsel:
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`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
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`A. Antony Pfeffer (Reg. No. 43,857)
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`Back-up Counsel: Thomas R. Makin (admitted pro hac vice)
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`
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`Matt Berkowitz (Reg. No. 57,215)
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`Electronic Service Information: ptab@kenyon.com and apfeffer@kenyon.com
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`Post and Delivery: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004
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`Telephone: 212-425-7200 Facsimile: 212-425-5288
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`
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`Dated: March 3, 2014
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`DRAFT
`A. Antony Pfeffer (Reg. No. 43,857)
`Lead Counsel for Petitioner
`Kenyon & Kenyon LLP
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`One Broadway
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`New York, NY 10004
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`Tel: 212.425.7200
`Fax: 212.425.5288
`Email: apfeffer@kenyon.com
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`-2-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing Petitioner’s Mandatory
`Notices – Addition of Back-up Counsel was served on March 3, 2014 via e-mail upon the
`following counsel of record for Patent Owner:
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`
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Stephanie F. Samz
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`ssamz@mcandrews-ip.com
`AVS-IPR@mcandrews-ip.com
`MCANDREWS HELD & MALLOY, LTD.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
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`/A. Antony Pfeffer/
`A. Antony Pfeffer (Reg. No. 43,857)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Fax: 212-425-5288
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