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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________________________________________________
`TOYOTA MOTOR CORPORATION,
`Docket No. 4040- 51660US01
`Petitioner
`
`U.S. Patent No. 8,036,788
`
`Filing Date: Aug. 9, 2007
`
`Case No. IPR2013-00417
`
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`
`TRANSMISSION SYSTEMS AND METHODS
`________________________________________________________________
`
`Issue Date: October 11, 2011
`
`Application No. 11/836,274
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`Mail Stop Patent Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`AMERICAN VEHICULAR SCIENCES LLC’s
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(2)
`
`Patent Owner, American Vehicular Sciences LLC hereby files mandatory
`
`notices pursuant to 37 C.F.R. § 42.8(a)(2).
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
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`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-
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`interest.
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`1
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`American Vehicular Sciences LLC
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`IPR2013-00417
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`The Patent Owner identifies the following judicial and/or administrative
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`matters that may affect, or may be affected by, a decision in this Inter Partes
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`Review:
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`
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`The ‘788 patent is asserted by the Patent Owner in the following litigations
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`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
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`25, 2012 (6:2012cv00405) (“AVS 405 Litigation”); American Vehicular Sciences
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`LLC v. BMW AG, et al., filed June 25, 2012 (6:2012CV00412); American
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`Vehicular Sciences LLC v. Hyundai Motor Co., et al., filed Oct. 15, 201 (6:2012-
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`CV-00776); American Vehicular Sciences LLC v. Kia Motors Corp., filed Feb. 13,
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`2013 (6:2013CV00148); American Vehicular Sciences LLC v. American Honda
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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
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`(6:2013CV00310). Petitioner is a named defendant in the AVS 405 Litigation.
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`Patent Owner is not aware of any other litigations or any pending prosecution
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`involving the ‘788 patent.
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`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Patent Owner designates the following counsel:
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`American Vehicular Sciences LLC
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`IPR2013-00417
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`BACK-UP COUNSEL
`Name Scott P. McBride (Reg. No. 42,853)
`(smcbride@mcandrews-ip.com)
`Direct: 312-775-8131
`
`LEAD COUNSEL
`Name Thomas J. Wimbiscus (Reg. No. 36,059)
`(twimbiscus@mcandrews-ip.com)
`Direct: 312-775-8109
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`
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`Address: MCANDREWS HELD & MALLOY, LTD.
` 500 W. Madison, 34th floor 60661
` (312) 775-8000 (Reception)
` (312) 775-8100 (Facsimile)
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`D.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`
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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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`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).
`
`Respectfully Submitted,
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`Date: July 28, 2013 /Scott P. McBride/
`Scott P. McBride
`Reg. No. 42,853
`Attorney for Patent Owner
`American Vehicular Sciences LLC
`
`
`MCANDREWS HELD & MALLOY, LTD.
`500 W. Madison, 34th Floor
`Chicago, IL 60661
`312-775-8000
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`3
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`American Vehicular Sciences LLC
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`IPR2013-00417
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`CERTIFICATE OF SERVICE
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`I hereby certify that true and correct copies of the foregoing American
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`Vehicular Sciences LLC’s Mandatory Notices Under 37 C.F.R. 42.8(a)(2)
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`were served on July 28, 2013 via e-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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`
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`
`
`/Scott P. McBride/
`Scott P. McBride
`Registration No. 42,853
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`
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`MCANDREWS HELD & MALLOY
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
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`CUSTOMER NUMBER: 23446
`
`Date: July 28, 2013
`
`
`
`4

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