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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`
`Patent Owner
`
`
`
`Patent Number: 8,036,788
`
`Issue Date: October 11, 2011
`
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`
`PATENT OWNER’S AMENDED MANDATORY NOTICE
`INFORMATION PURSUANT TO 37 C.F.R. § 42.8
`
`Case IPR2013-00417
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`Patent Owner, American Vehicular Sciences LLC hereby submits its
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`amended mandatory notice information pursuant to 37 C.F.R. § 42.8.
`
`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
`
`U.S. Patent No. 8,036,788 (“the ‘788 Patent”), and thus is a real-party-in-
`
`interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`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
`
`Review:
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`
`
`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. BMW AG, et al., filed June 25, 2012
`
`(6:2012CV00412); American Vehicular Sciences LLC v. Hyundai Motor Co., et
`
`al., filed Oct. 15, 2012 (6:2012-CV-00776); American Vehicular Sciences LLC v.
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`Kia Motors Corp., filed Feb. 13, 2013 (6:2013CV00148); American Vehicular
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`Sciences LLC v. American Honda Motor Co., Inc. et al. filed Mar. 8, 2013
`
`(6:2013CV00226.) On August 4, 2014, American Vehicular Sciences LLC v.
`
`Toyota Motor Corp., et al., was transferred from the Eastern District of Texas,
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`originally filed June 25, 2012 (6:2012cv00405) to the Eastern District of Michigan,
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`
`
`1
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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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`now pending as American Vehicular Sciences LLC v. Toyota Motor Corp., et al.,
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`(2:2014cv13016) (“AVS 13016 Litigation”). Petitioner is a named defendant in the
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`AVS 13016 Litigation. Patent Owner is not aware of any other litigations
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`involving the ‘788 patent. The ‘788 patent is also the subject of an IPR petition
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`filed by American Honda Motor Co., Inc. on April 15, 2014, which is currently
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`pending. See IPR2014-00629. Application No. 14/332,647 claims the benefit of
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`the ‘788 patent application’s filing date and is pending.
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`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 Christopher M. Scharff
`(Reg. No. 53,556)
`(cscharff@mcandrews-ip.com)
`Direct: 312-775-8039
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`
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`
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`Address: MCANDREWS HELD & MALLOY, LTD.
` 500 W. Madison St., 34th floor, Chicago, IL 60661
` (312) 775-8000 (Reception)
` (312) 775-8100 (Facsimile)
`
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`
`
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`2
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`

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`American Vehicular Sciences LLC
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`IPR2013-00417
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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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`
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`Respectfully submitted,
`
` /Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
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`
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`23446).
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`DATE: August 6, 2014
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`
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`
`
`MCANDREWS HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that Patent Owner’s Amended Mandatory Notice
`
`Information Pursuant To 37 C.F.R. § 42.8 in connection with Inter Partes Review
`
`Case IPR2013-00417 was served August 6, 2014 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
`
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`MCANDREWS HELD & MALLOY, LTD.
`
`
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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: August 6, 2014
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`
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`

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