`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Mercedes-Benz USA, LLC,
`Petitioner
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`____________
`
`Patent No. 6,738,697
`Filing Date: July 3, 2002
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`Inter Partes Review No. 2014-00645
`
`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))
`
`American Vehicular Sciences LLC is the owner of the entire interest in
`
`U.S. Patent No. 6,738,697 (“the ‘697 Patent”), and thus is a real-party-in-
`
`interest.
`
`
`
`1
`
`
`
`
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The Patent Owner identifies the following judicial and/or administrative
`
`matters that may affect, or may be affected by, a decision in this Inter Partes
`
`Review:
`
`
`
`The ‘697 patent is asserted by the Patent Owner in the following litigations
`
`pending in the U.S. District Court for the Eastern District of Michigan:
`
`American Vehicular Sciences LLC v. Hyundai Motor Co., et al., no. 2:14-cv-13247,
`
`filed August 21, 2014 (originally filed in 2012 in E.D. Tex.); American Vehicular
`
`Sciences LLC v. Kia Motors Corp., et al., no. 2:14-cv-13249 (originally filed
`
`August 21, 2014 in E.D. Tex.); American Vehicular Sciences LLC v. American
`
`Honda Motor Co., Inc. et al., no. 2:14-cv-13251 (E.D. Mich.) (originally filed
`
`August 21, 2014 in E.D. Tex.). Patent Owner is not aware of any other litigations
`
`involving the ‘697 patent.
`
`The ‘697 patent was previously the subject of two IPR petitions (IPR2013-
`
`00412, -00413) filed by Toyota Motor Corp. on July 8, 2013. Toyota and AVS
`
`reached a settlement agreement, and the petitions were dismissed pursuant to
`
`U.S.C. § 317. The ‘697 patent is also the subject of an IPR petition (IPR2014-
`
`00634) filed by American Honda Motor Co. on April 15, 2014 and an IPR petition
`
`
`
`2
`
`
`
`
`
`(see IPR2014-01543) filed by Hyundai Motor Co. on September 25, 2014, which
`
`was joined with IPR2014-00634.
`
`The following applications claim the benefit of the ‘697 patent application’s
`
`filing date and are pending: Application Nos. 11/930,590, 11/940,669, 12/020,684,
`
`13/464,841 13/848,755, 13/964,143, 14/084,924, 14/275,003, 14/332,615,
`
`14/332,622, 14/332,647.
`
`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
`
`
`
`
`
`
`
`
`
`
`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))
`
`Please direct all correspondence regarding this proceeding to the lead
`
`3
`
`
`
`
`
`
`
`
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`counsel at the address listed above. Patent Owner also consents to electronic
`
`service by e-mail to AVS-IPR@mcandrews-ip.com.
`
`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).
`
`
`
`
`
`
`
`Thomas J. Wimbiscus
`
`Respectfully submitted,
`By:
`/Thomas J. Wimbiscus/
`
`
`
`
`
`Reg. No. 36,059
`Attorney for Patent Owner
`American Vehicular Sciences LLC.
`
`
`
`
`
`Dated: November 19, 2014
`
`
`
`
`
`
`
`
`
`
`
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that American Vehicular Sciences LLC’s Mandatory Notices Under
`37 C.F.R. 42.8(a)(2) were served on this 19th day of November by electronic mail to
`the following:
`
`
`
`Lead Counsel
`Scott W. Doyle (Reg. No. 39176)
`scott.doyle@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
`
`
`Back-up Counsel
`Jonathan R. DeFosse (pro hac to be requested)
`jonathan.defosse@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
`
`
`
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`Date: November 19, 2014
`
`
`
`
`
`
`
`
`5
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`
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