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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`American Honda Motor Co., Inc.
`Petitioner
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`v.
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`American Vehicular Sciences LLC
`Patent Owner
`____________
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`Patent No. 8,235,416
`Filing Date: September 12, 2011
`Issue Date: August 7, 2012
`Title: ARRANGEMENT FOR SENSING WEIGHT OF AN OCCUPYING ITEM
`IN A VEHICULAR SEAT
`
`Inter Partes Review No. 2014-00620
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`AMERICAN VEHICULAR SCIENCES LLC’s MANDATORY NOTICES
`UNDER 37 C.F.R. 42.8(a)(2)
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`Patent Owner, American Vehicular Sciences LLC hereby files mandatory
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`notices pursuant to 37 C.F.R. § 42.8(a)(2).
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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. 8,235,416 ("the 416 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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`The '416 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: (1) American
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`Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al., filed March 8,
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`2013 (6:13cv00227); and (2) American Vehicular Sciences LLC v. Hyundai Motor
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`American, et al., filed March 22, 2013, No. 6:13-cv-00270 (E.D. Tex.). AVS also
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`previously asserted the ‘416 patent in the following lawsuits: (1) American
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`Vehicular Sciences LLC v. Subaru of America, Inc., filed March 8, 2013
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`(6:13cv00229); and (2) American Vehicular Sciences LLC v. Mazda Motor of
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`America, Inc., filed March 8, 2013 (6:13cv00231). The ‘416 patent was previously
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`the subject of an IPR petition filed by Aisin Seiki Co. Ltd. filed June 21, 2013. See
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`IPR 2013-00383. Before the Board determined whether or not to institute trial on
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`the Aisin petition, Aisin and AVS reached a settlement agreement, and the petition
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`was dismissed pursuant to 35 U.S.C. § 317. The ‘416 patent is also the subject of
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`an IPR petition filed by Hyundai Motor Co. on April 17, 2014. See IPR 2014-
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`2
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`00659. Application No. 13/566,153 claims the benefit of the ‘416 patent filing
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`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))
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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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`Address: MCANDREWS HELD & MALLOY, LTD.
` 500 W. Madison, 34th floor, Chicago, IL 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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`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
`associated with this proceeding to Deposit Account 13-0017 (Customer ID
`23446).
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`Respectfully submitted,
`By:
`/Thomas J. Wimbiscus/
`
`Thomas J. Wimbiscus
`Reg. No. 36,059
`Attorney for Patent Owner
`American Vehicular Sciences LLC.
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`Dated: May 5, 2014
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`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
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`CERTIFICATE OF SERVICE
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`I hereby certify that American Vehicular Sciences LLC’s Mandatory Notices under
`37 C.F.R. 42.8(a)(2) were served on this 5th day of May by electronic mail to the
`following:
`
`Lead Counsel
`Joseph Melnik (Reg. No. 48,741)
`(jmelnik@jonesday.com)
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, CA 94303
`T: (650) 739-3939
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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
`Date: May 5, 2014
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`Back-up Counsel
`Joseph M. Beauchamp (Reg. No. 46,544)
`(jbeauchamp@jonesday.com)
`H. Albert Liou (Reg. No. 71,504)
`(aliou@jonesday.com)
`JONES DAY
`717 Texas Ave., Suite 3300
`Houston, Texas 77002
`T: (832) 239-3939
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`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`5
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