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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MERCEDES-BENZ USA, LLC
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`Petitioner
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`v.
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`AMERICAN VEHICULAR SCIENCES, LLC
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`Patent Owner
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`Case No. IPR2014-00645
`Patent No. 6,738,697
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`PETITIONER’S MANDATORY NOTICES –
`ADDITION OF BACKUP COUNSEL
`37 C.F.R. § 42.8
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`Petitioner Mercedes-Benz USA, LLC (“Petitioner”) hereby provides notice
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`that it has added Jonathan R. DeFosse as back-up counsel in this proceeding.
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`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioner’s updated mandatory notices are
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`below, reflecting the addition of Mr. DeFosse.
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`MANDATORY NOTICES (37 C.F.R. § 42.8)
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`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`Petitioner, Mercedes-Benz USA LLC, and Mercedes-Benz U.S.
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`International, Inc. (“MBUSI”) are the real-parties-in-interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’697 patent has been asserted by AVS in the following litigations in the
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`U.S. District Court for the Eastern District of Texas: American Vehicular Sciences
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`LLC v. Mercedes-Benz U.S. Intl., Inc., No. 6:13-cv-00310, filed April 3, 2013 (the
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`“310 Litigation”); American Vehicular Sciences LLC v. American Honda Motor
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`Co., Inc. et al., No. 6:13-CV- 226, filed March 8, 2013; American Vehicular
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`Sciences LLC v. Kia Motors Corp., No. 6:13-CV-148, filed February 13, 2013;
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`American Vehicular Sciences LLC v. Hyundai Motor Co. et al., No. 6:12-CV-776,
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`filed October 15, 2012; American Vehicular Sciences LLC v. BMW Group. A/K/A
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`BMW AG et al., No. 6:12-CV-412, filed June 25, 2012; and American Vehicular
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`Sciences LLC v. Toyota Motor Corp. et al., No. 6:12-CV-405, filed June 25, 2012.
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`Petitioner and MBUSI were named as defendants in the 310 Litigation and
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`were served with a Summons and Complaint in that action on April 17, 2013.
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`American Honda Motor Co, Inc. filed a petition for inter partes review of
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`the ‘697 patent on April 15, 2014 in IPR2014-00634 (the “634 Proceeding”). The
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`634 proceeding is pending. Additionally, the ’697 patent was the subject of
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`twoprior petitions for inter partes review filed by Toyota Motor Corporation
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`(“Toyota”) in cases IPR2013-00412 and IPR2013-00413 (the “412 Proceeding”
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`and “413 Proceeding,” respectively). The Patent Trial and Appeal Board (the
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`“Board”) instituted inter partes review in the 412 and 413 Proceedings on January
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`13, 2014. (See Exs. 1007, 1008.) On March 28, 2014, the Board dismissed both
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`Proceedings in response to a settlement between AVS and Toyota concerning the
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`’697 patent. Additionally, pending U.S. Patent App. No. 11/930,590 and
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`numerous other patents and applications claim the benefit of the filing date of the
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`‘697 patent.
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`C. Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`Lead Counsel:
`Scott W. Doyle (Reg. No. 39176)
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`Back-up Counsel: Jonathan R. DeFosse (admitted pro hac vice)
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`Electronic Service: scott.doyle@shearman.com, jonathan.defosse@shearman.com
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`Service Address: Scott W. Doyle, Shearman & Sterling LLP, 801 Pennsylvania
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`Ave., NW, Suite 900, Washington, DC 20004.
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`Telephone:
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`(202) 508-8000
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`Facsimile:
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`(202) 508-8100
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`Dated: June 20, 2014
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`/Scott W. Doyle/
`Scott W. Doyle (Reg. No. 39176)
`Lead Counsel for Petitioner
`SHEARMAN & STERLING LLP
`801 Pennsylvania Ave., NW, Ste. 900
`Washington, DC 20004
`Telephone: (202) 508-8000
`Facsimile: (202) 508-8100
`scott.doyle@shearman.com
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`3
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`CERTIFICATE OF SERVICE
`The undersigned hereby confirms that the foregoing PETITIONER’S
`MANDATORY NOTICES – ADDITION OF BACK-UP COUNSEL was
`served on June 20, 2014, via electronic mail upon the following:
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`Thomas J. Wimbiscus (Reg. No. 36,059)
`Scott P. McBride (Reg. No. 42,853)
`Christopher M. Scharff (Reg. No. 53,556)
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`AVS-IPR@mcandrews-ip.com
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`/Scott W. Doyle/
`Scott W. Doyle (Reg. No. 39176)
`Lead Counsel for Petitioner
`SHEARMAN & STERLING LLP
`801 Pennsylvania Ave., NW, Ste. 900
`Washington, DC 20004
`Telephone: (202) 508-8000
`Facsimile: (202) 508-8100
`scott.doyle@shearman.com
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