`
`____________
`
`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 Texas:
`
`American Vehicular Sciences LLC v. Toyota Motor Corporation, et al., filed June
`
`25, 2012 (6:12CV00405); American Vehicular Sciences LLC v. Hyundai Motor
`
`Co., et al., filed Oct. 15, 2012 (6:12CV00776); American Vehicular Sciences LLC
`
`v. Kia Motors Corp., filed Feb. 13, 2013 (6:13CV00148); American Vehicular
`
`Sciences LLC v. American Honda Motor Co., Inc. et al. filed Mar. 8, 2013
`
`(6:13CV00226); and American Vehicular Sciences LLC v. Mercedes-Benz U.S.
`
`Intl., Inc., filed April 3, 2013 (6:13CV00310) (“AVS 310 Litigation”). Petitioner is
`
`a named defendant in the AVS 310 Litigation. AVS also previously asserted the
`
`‘697 patent in American Vehicular Sciences LLC v. BMW AG, et al., filed June 25,
`
`2012 (6:12CV00412), which was dismissed on or about November 15, 2013. Patent
`
`Owner is not aware of any other litigations involving the ‘697 patent. The ‘697
`
`patent was previously the subject of two IPR petitions filed by Toyota Motor Corp.
`
`on July 8, 2013. See IPR 2013-00412, -413. Before the Board determined whether
`
`
`
`2
`
`
`
`or not to institute trial on the Toyota petitions, 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 filed by American Honda
`
`Motor Co. on April 15, 2014. See IPR 2014-00634. 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,
`
`13/852,119, 13/964,143, 14/026,513 and 14/084,924.
`
`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)
`
`
`
`
`
`3
`
`
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`
`
`Please direct all correspondence regarding this proceeding to the lead
`
`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).
`
`Respectfully submitted,
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Reg. No. 36,059
`Attorney for Patent Owner
`American Vehicular Sciences LLC.
`
`
`
`
`
`Dated: May 7, 2014
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`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 7th day of May 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: May 7, 2014
`
`
`
`
`
`
`
`5
`
`
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