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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Hyundai Motor Company
`Petitioner
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`v.
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`American Vehicular Sciences LLC
`Patent Owner
`____________
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`Patent No. 8,036,788
`Filing Date: August 9, 2007
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`Inter Partes Review No. 2015-00176
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`
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`AMERICAN VEHICULAR SCIENCES LLC’s
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(2)
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`Patent Owner, American Vehicular Sciences LLC hereby files mandatory
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`notices pursuant to 37 C.F.R. § 42.8(a)(2).
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`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
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`American Vehicular Sciences LLC is the owner of the entire interest in
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`U.S. Patent No. 8,036,788 (“the ‘788 Patent”), and thus is a real-party-in-
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`interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`The Patent Owner identifies the following judicial and/or administrative
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`matters that may affect, or may be affected by, a decision in this Inter Partes
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`Review:
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`The ‘788 patent is asserted by the Patent Owner in the following litigations
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`pending in the U.S. District Court for the Eastern District of Michigan:
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`American Vehicular Sciences LLC v. Hyundai Motor Co., et al., no. 2:14-cv-13247,
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`filed August 21, 2014 (originally filed in E.D. Tex. as case no. 6:12-cv-00776);
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`American Vehicular Sciences LLC v. Kia Motors Corp., et al., no. 2:14-cv-13249,
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`filed August 21, 2014 (originally filed in E.D. Tex. as case no. 6:13-cv-00148);
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`American Vehicular Sciences LLC v. Toyota Motor Corporation, et al., no. 2:14-cv-
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`13016, filed August 4, 2014 (originally filed in E.D. Tex. as case no. 6:12-cv-
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`00405); and, American Vehicular Sciences LLC v. American Honda Motor Co., Inc.
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`et al., no. 2:14-cv-13251, filed August 21, 2014 (originally filed in E.D. Tex. as
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`case no. 6:13-cv-00226). AVS also previously asserted the ‘788 patent in the
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`following case that is now dismissed: American Vehicular Sciences LLC v. BMW
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`AG, et al., filed June 25, 2012 (6:12-cv-00412), which was dismissed on November
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`15, 2013. Patent Owner is not aware of any other litigations involving the ’788
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`patent.
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`The ‘788 patent is subject of IPRs that are currently pending: The ‘788
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`patent is subject of an IPR petition filed by Toyota Motor Corp. on July 8, 2013 in
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`which oral argument was held August 14, 2014. See IPR2013-00417. The ‘788
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`patent is also subject of an IPR petition filed by American Honda Motor Co., Inc.
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`on April 15, 2014. See IPR2014-00629. Patent Owner is not aware of any pending
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`prosecution involving the ‘788 patent.
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`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Patent Owner designates the following counsel:
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`Lead Counsel
`Name Scott P. McBride
`(Reg. No. 42,853)
`(smcbride@mcandrews-ip.com)
`Direct: 312-775-8131
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`Back-Up Counsel
`Name Thomas J. Wimbiscus
`(Reg. No. 36,059)
`(twimbiscus@mcandrews-ip.com)
`Direct: 312-775-8109
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`Name Stephanie F. Samz
`(Reg. No. 69,845)
`(ssamz@mcandrews-ip.com)
`Direct: 312-775-8089
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`Address: MCANDREWS HELD & MALLOY, LTD.
` 500 W. Madison St., 34th floor, Chicago, IL 60661
` (312) 775-8000 (Reception)
` (312) 775-8100 (Facsimile)
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`D.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`Please direct all correspondence regarding this proceeding to the lead
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`counsel at the address listed above. Patent Owner also consents to electronic
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`service by e-mail to AVS-IPR@mcandrews-ip.com.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this proceeding to Deposit Account 13-0017 (Customer ID 23446).
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`Dated: November 10, 2014
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`Respectfully submitted,
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`/Scott P. McBride/
`By:
`Scott P. McBride
`Reg. No. 42,853
`Attorney for Patent Owner
`American Vehicular Sciences LLC
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`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
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`CERTIFICATE OF SERVICE
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`I hereby certify that American Vehicular Sciences LLC’s Mandatory Notices
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`Under 37 C.F.R. 42.8(a)(2) were served on this 10th day of November by electronic
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`mail to the following:
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`
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`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
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`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
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`/Scott P. McBride/
`Scott P. McBride
`Registration No. 42,853
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`MCANDREWS HELD & MALLOY
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`CUSTOMER NUMBER: 23446
`Date: November 10, 2014
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`5
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