`
`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. 5,845,000
`Filing Date: June 7, 1995
`Issue Date: December 1, 1998
`Title: OPTICAL IDENTIFICATION AND MONITORING SYSTEM USING
`PATTERN RECOGNITION FOR USE WITH VEHICLES
`
`Inter Partes Review No. 2014-00647
`
`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. 5,845,000 ("the ‘000 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 '000 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 (6:12CV00406) American Vehicular Sciences LLC v. Mercedes-Benz U.S.
`
`Int’l, Inc., filed April 3, 2013 (6:13CV308) (“AVS 308 Litigation). Petitioner is a
`
`named defendant in the AVS 308 Litigation. Patent Owner is not aware of any other
`
`litigations involving the ‘000 patent. The ‘000 patent is also the subject of an IPR
`
`petition filed by Toyota Motor Corp. on July 12, 2013 and is currently pending.
`
`See IPR 2013-00424. The following applications claims the benefit of the ‘000
`
`patent application’s filing date and are pending: 11/558,996, 11/619,863,
`
`11/874,343, and 11/923,929.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owner designates the following counsel:
`
`
`
`
`
`
`
`2
`
`
`
`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
`
`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:
`
`
`
`
`3
`
`
`
`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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