`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Hyundai Motor Company
`Petitioner
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`____________
`
`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. 2014-00659
`
`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. 8,235,416 ("the 416 Patent"), and thus is a real-party-in-
`
`interest.
`
`
`
`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 '416 patent is asserted by the Patent Owner in the following litigations
`
`pending in the U.S. District Court for the Eastern District of Texas: (1) American
`
`Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al., filed March 8,
`
`2013 (6:13cv00227); and (2) American Vehicular Sciences LLC v. Hyundai Motor
`
`American, et al., filed March 22, 2013, No. 6:13-cv-00270 (E.D. Tex.). AVS also
`
`previously asserted the ‘416 patent in the following lawsuits: (1) American Vehicular
`
`Sciences LLC v. Subaru of America, Inc., filed March 8, 2013 (6:13cv00229); and (2)
`
`American Vehicular Sciences LLC v. Mazda Motor of America, Inc., filed March 8,
`
`2013 (6:13cv00231). The ‘416 patent was previously the subject of an IPR petition
`
`filed by Aisin Seiki Co. Ltd. filed June 21, 2013. See IPR 2013-00383. Before the
`
`Board determined whether to institute trial on the Aisin petition, Aisin and AVS
`
`reached a settlement agreement, and the petition was dismissed pursuant to 35 U.S.C.
`
`§ 317. The ‘416 patent is also the subject of an IPR petition filed by American Honda
`
`Motor Co., Inc. on April 11, 2014. See IPR 2014-00620. Application No.
`
`
`
`2
`
`
`
`13/566,153 claims the benefit of the ‘416 patent filing application’s filing date and is
`
`pending.
`
`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, 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).
`
`
`
`3
`
`
`
`Respectfully submitted,
`
`Dated: May 8, 2014
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Reg. No. 36,059
`Attorney for Patent Owner
`American Vehicular Sciences LLC.
`
`
`
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`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 8th day of May by electronic mail to the
`following:
`
`
`
`Lead Counsel
`Edward J. Naidich (Reg. No. 43, 826)
`(ed.naidich@finnegan.com)
`Finnegan, Henderson, Farabow,
`Garrett, and Dunner, LLP
`901 New York Ave, NW
`Washington, DC 20001
`T: (202) 408-4000
`
`Back-up Counsel
`Christopher M. Kurpinski (Reg. No. 68,339)
`(christopher.kurpinski@finnegan.com)
`Finnegan, Henderson, Farabow, Garrett, and
`Dunner, LLP
`901 New York Ave, NW
`Washington, DC 20001
`T: (202) 408-4000
`
`
`
`/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 8, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`5
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