`By: Thomas J. Wimbiscus
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: twimbiscus@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-00364
`Patent No. 9,043,093
`_____________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner Mandatory Notices
`IPR2016-00364
`U.S. Patent No. 9,043,093
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner American Vehicular
`
`Sciences LLC (“Patent Owner” and real party in interest), herby submits the
`
`following mandatory notices in connection with Unified Patents Inc. (“UNIFIED”)
`
`Petition for inter parties review of United States Patent No. 9,043,093 Case No.
`
`IPR2016-00364.
`
`PATENT OWNER POWER OF ATTORNEY
`
`A Power of Attorney appointing the undersigned and the undersigned’s firm
`
`is being filed concurrently with these Notices.
`
`REAL PARTY-IN-INTEREST
`
`American Vehicular Sciences LLC is the owner of the entire interest in U.S.
`
`Patent No. 9,043,093 (“the ‘093 Patent”), and thus is a real-party-in-interest.
`
`RELATED MATTERS
`
`Patent Owner identifies the following judicial or administrative matters that
`
`would affect or be affected by a decision in the proceedings:
`
`1.
`
`American Vehicular Sciences LLC v. Hyundai Motor Company et al.,
`
`Case No. 8:15-cv-013898-CJC-JCG (C.D. Cal., filed September 1, 2015);
`
`2.
`
`American Vehicular Sciences LLC v. Nissan Motor Co Ltd et al., Case
`
`No. 8:15-cv-013890-CJC-JCG (C.D. Cal., filed September 1, 2015);
`
`2
`
`
`
`Patent Owner Mandatory Notices
`IPR2016-00364
`U.S. Patent No. 9,043,093
`
`
`3.
`
`American Vehicular Sciences LLC v. Toyota Motor Corporation et al.,
`
`Case No. 8:15-cv-01391-CJC-JCG (C.D. Cal., filed September 1, 2015);
`
`4.
`
`American Vehicular Sciences LLC v. American Honda Motor Co Inc
`
`et al., Case No. 8:15-cv-01392-CJC-JCG (C.D. Cal., filed September 1, 2015); and
`
`5.
`
`Prosecution of Application Serial No. 14/721,136 filed on May 26,
`
`2015 which is currently pending, and which claims priority to the patent currently
`
`at issue.
`
`
`LEAD COUNSEL AND
`SERVICE INFORMATION FOR PATENT OWNER
`
`Pursuant to 37 C.F.R. § 42.8(b)(3) patent owner designates the following
`
`counsel:
`
`Lead Counsel:
`
`Thomas J. Wimbiscus
`Registration No. 36,059
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: twimbiscus@mcandrews-ip.com
`
`Back-Up Counsel
`
`Christopher M. Scharff
`Registration No. 53,556
`McAndrews, Held & Malloy, Ltd.
`
`Back-Up Counsel:
`
`Scott P. McBride
`Registration No. 42,853
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: smcbride@mcandrews-ip.com
`
`Back-Up Counsel:
`
`Ronald H. Spuhler
`Registration No. 52,245
`McAndrews, Held & Malloy, Ltd.
`
`3
`
`
`
`Patent Owner Mandatory Notices
`IPR2016-00364
`U.S. Patent No. 9,043,093
`
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: cscharff@mcandrews-ip.com
`
`
`
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: rspuhler@mcandrews-ip.com
`
`
`SERVICE INFORMATION PURSUANT TO 37 C.F.R. § 42.8(b)(4)
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Patent Owner also consents to electronic service by e-mail to: AVS-
`
`UP@mcandrews-ip.com.
`
`
`Dated: January 7, 2016
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`Email: twimbiscus@mcandrews-ip.com
`
`Lead Counsel for Patent Owner
`
`4
`
`
`
`Patent Owner Mandatory Notices
`IPR2016-00364
`U.S. Patent No. 9,043,093
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
`
`Owner’s Mandatory Notices Under 37 C.F.R. 42.8(a)(2) was served on January
`
`7, 2016, via email to counsel for Petitioners at the following:
`
`David L. Cavanaugh
`Thomas E. Anderson
`Daniel V. Williams
`Wilmer Cutler Pickering Hale and Dorr, LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`david.cavanaugh@wilmerhale.com
`tom.andrerson@wilherhale.com
`daniel.williams@wilmerhale.com
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC, 20009
`jonathan@unifiedpatents.com
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`Date: January 7, 2016
`
`
`
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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