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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Hyundai Motor Company
`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. 2014-01543
`
`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.
`
`

`

`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 Mich.: American
`
`Vehicular Sciences LLC v. Hyundai Motor Co., et al., No. 2:14-cv-13247 (“the 247
`
`action, originally filed in E.D. Texas as case no. 6:12-cv-00776 and transferred to the
`
`E.D. of Michigan on August 21, 2014); American Vehicular Sciences LLC v. Kia
`
`Motors, et al., No. 2:14-cv-13249 (“the 249 action, originally filed in E.D. Texas as
`
`case no. 6:13-cv-00148 and transferred to the E.D. of Michigan on August 21, 2014);
`
`and American Vehicular Sciences LLC v. Honda Motor Co., et al. No. 2:14-cv-13251
`
`(“the ‘251 action, originally filed in E.D. Texas as case no. 6:13-cv-00226 and
`
`transferred to the E.D. of Michigan on August 21, 2014). AVS also previously
`
`asserted the ‘697 patent in the following litigations: American Vehicular Sciences
`
`LLC v. Toyota Motor Corporation, et al., E.D. Mich, 2:14-cv-13016, originally filed
`
`in the E.D. of Texas as 6:12-cv-00405 and transferred to the E.D. of Michigan and
`
`dismissed with prejudice on April 11, 2014; American Vehicular Sciences LLC v.
`
`Mercedes-Benz U.S. Intl., Inc., E.D. Texas, filed April 3, 2013 (6:13-cv-00310) and
`
`dismissed on September 11, 2014; and American Vehicular Sciences LLC v. BMW
`
`AG, et al., filed June 25, 2012 (6:12-cv-00412), and dismissed with prejudice on
`
`
`
`2
`
`

`

`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 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 Mercedes-Benz
`
`USA, LLC on April 16, 2014 (see IPR 2014-00645), and 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, 13/964,143, 14/084,924, 14/275,003, 14/332,615, 14/332,622 and
`
`14/332,647. Additionally, Application Nos. 13/852,119, issued as US 8,786,437 and
`
`14/026,513, issued as 8,781,715, also claim benefit to the ‘697 patent application’s
`
`filing date.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owner designates the following counsel:
`
`
`
`3
`
`

`

`
`
`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 Street, 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).
`
`Dated: October 16, 2014
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` By: /Thomas J. Wimbiscus/
`
`Thomas J. Wimbiscus
`Reg. No. 36,059
`Attorney for Patent Owner
`American Vehicular Sciences LLC.
`
`
`
`McANDREWS, HELD & MALLOY, LTD.
`
`4
`
`
`
`

`

`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile: (312) 775-8100
`
`
`
`5
`
`

`

`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 16th day of October 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: October 16, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

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