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`______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOYOTA MOTOR CORPORATION
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`Petitioner
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`v.
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`Patent of AMERICAN VEHICULAR SCIENCES
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`Patent Owner
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`
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`Patent No. 5,845,000
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`Issue Date: December 1, 1998
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`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
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`
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`AMERICAN VEHICULAR SCIENCES LLC’S
`MANDATORY NOTICE INFORMATION
`(ADDITION OF BACK-UP COUNSEL AND
`UPDATE TO RELATED MATTERS)
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`Case No. IPR2013-00424
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`American Vehicular Sciences LLC
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`IPR2013-00424
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`In accordance with the Board’s Conduct of Proceedings Order dated
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`February 4, 2014, Patent Owner American Vehicular Sciences (“Patent Owner”)
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`has added Christopher Scharff as back-up counsel in this proceeding, and submits
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`the following updated mandatory notice information in accordance with 37 CFR §
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`42.8(b) to reflect the addition of Mr. Scharff as back-up counsel. Additionally,
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`pursuant to 37 C.F.R. § 42.8(b)(2) submits additional related matters.
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`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. 5,845,000 (“the ‘000 Patent”), and thus is a real-party-in-
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`interest.
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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 '000 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:
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`American Vehicular Sciences LLC v. Toyota Motor Corporation, et al., filed June
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`25, 2012 (6:2012cv00406) (“AVS 406 Litigation). American Vehicular Sciences
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`LLC v. BMW Group, et al., filed June 25, 2012 (6:2012cv00413). American
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`Vehicular Sciences LLC v. Mercedes-Benz U.S. Int’l, Inc., filed April 3, 2013
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`2
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`American Vehicular Sciences LLC
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`IPR2013-00424
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`(6:2013cv308).). Petitioner is a named defendant in the AVS 406 Litigation. Patent
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`Owner is not aware of any other litigations involving the ‘000 patent. The
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`following applications claims the benefit of the ‘000 patent application’s filing date
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`and are pending: 11/558,996, 11/619,863, 11/874,343 and 11/923,929. Since the
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`filing of Patent Owner’s Mandatory Notice, Application No. 12/098,502 has issued
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`to US 8,538,636 and Application No. 13/185,770 has been abandoned, both which
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`claim benefit to the ‘000 patent application’s filing date.
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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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`LEAD COUNSEL
`Name Thomas J. Wimbiscus
`(Reg. No. 36,059)
`(twimbiscus@mcandrews-ip.com)
`Direct: 312-775-8109
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`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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`Address: MCANDREWS HELD & MALLOY, LTD.
` 500 W. Madison, 34th floor 60661
` (312) 775-8000 (Reception)
` (312) 775-8100 (Facsimile)
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`D. Service Information (37 C.F.R. § 42.8(b)(4))
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`3
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`American Vehicular Sciences LLC
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`IPR2013-00424
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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).
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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
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`CUSTOMER NUMBER: 23446
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`Respectfully submitted,
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` /Thomas J. Wimbiscus/
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`Thomas J. Wimbiscus
`Registration No. 36,059
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`4
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`American Vehicular Sciences LLC
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`IPR2013-00424
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`CERTIFICATE OF SERVICE
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`I hereby certify that American Vehicular Sciences, LLC’s Mandatory Notice
`Information (Addition of Back-Up Counsel and Update to Related Matters) in Case
`IPR2013-00424 was served on this 12th day of February by electronic mail to the
`following:
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`
`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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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`CUSTOMER NUMBER: 23446
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`Date: February 12, 2014
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`5
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