throbber
“N
`
`_ITPrE:3
`
`IN THE UNITED STATES PATENTAND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`\/\_/\/\/\/\z\y\.ré
`
`Opposition No. 91161633
`
`TRANSMITTAL LETTER (GENERAL)
`(With Certificate of Mailing by Express Mail)
`
`Transmitted herewith is the following document in triplicate:
`
`APPLICANT’S SUPPLEMENTAL REPLY AND DECLARATION OF JOSEPH E.
`MUETH
`
`Applicant believes there is no fee due with this communication, however, if there
`
`is a fee due, said insufficiency should be debited to Deposit Account No. 13-4892.
`
`
` Dated: December 17 2004
`27/ F 543%
`
`so EPH E. MUETH, ESQ.’
`JOSEPH E. MUETH LAW CORPORATION
`225 South Lake Ave., 8"‘ Floor
`'
`Pasadena, CA 91101
`Telephone: (626) 584-0396
`Facsimile: (626) 584-6862
`
`I certify that this document is being deposited on December 17, 2004
`with the U.S. Postal Service “Express Mail Post Office to Addressee"
`service under 37 C.F.R. 1.10, Express Mail Label Number ED 261705137US
`and isaddressed to the Box TTAB NO FEE, Commissioner for Trademarks.
`P.O. B
`1451. Ale
`'
`,
`' 22313-14 1.
`/
`
`URA ELARDE
`Dated: December 17, 2004
`
`
`~: _
`12-17-2004
`U.S. Patent & TMOfc/TM Mail Ficpt D2. #66
`
`

`
`
`
`"t
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`if}/E/§/§/\-/§/€%
`
`Opposition No. 91161633
`
`Applicant.
`
`
`APPL|CANT’S SUPPLEMENTAL REPLY
`
`On November 29, 2004, Opposer filed “Opposer’s Request For Applicant To
`
`Respond to Opposer's November 19, 2004 ‘Redline’ Of Applicant’s Protective Order”
`
`and “Opposer’s Response To Applicant's November 19, 2004 Reply In Support Of Its
`
`Motion To Compel Discovery”.
`
`As the attachments to our pending “Motion To Compel Discovery” show,
`
`Applicant EC&C served its Request For Production of Documents” on August 28, 2004.
`
`The Request called, intir E for the production of a “License Agreement” or “Opposer
`
`License” and related follow-on documents (see Notice of Opposition, paragraphs 2, etc.)
`
`upon which Opposer relies. When counsel for Opposer claimed that these documents
`
`were confidential we tendered a proposed Protective Order to counsel for Hera LLC on
`
`October 8, 2004.
`
`

`
`
`
`‘s
`
`Despite our repeated requests, no substantive reply to our Protective Order
`
`proposal was received from Opposer until November 19, 2004, more than 40 days later,
`
`and 10 days & we filed our pending Motion To Compel Discovery. This alone shows
`
`a flagrant disregard for the rules of discovery and hence the ultimate sanction, should
`
`be imposed.
`
`Further, Hera's “Redline” Protective Order response of November 19, 2004 is
`
`clearly improper and unacceptable. The reasons that this is so are set forth in our
`
`Declaration filed herewith. The Redline critically changed the Protective Order to
`
`provide that Howard E. Sandler, President and an owner of Opposer Hera LLC, may
`
`receive and review all designated Confidential information produced by EC&C. This
`
`would render the Protective Order an illusion and a farce. Hera and EC&C are
`
`competitors in the field of the technology for the removal of NO, from the power plant
`
`combustion gas effluent.
`
`It is absurd to propose that Howard E. Sandler be granted
`
`access to EC&C's Confidential information. Mr. Sandler is attempting to use these
`
`proceedings for his personal financial benefit. The submission of the “Redline”
`
`Protective Order is itself evidence of bad faith and an attempt to abuse the discovery
`
`process for nefarious purposes.
`
`App|icant’s Motion To Compel Discovery should be granted.
`
`Our originally requested sanction is clearly insufficient in light to Hera's continued
`
`abuse and delay of discovery.
`
`

`
`
`
`Hera’s Opposition should be dismissed.
`
`Dated: December 17, 2004
`
`Respectfully submitted,
`
`
`
`Jo eph E: Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

`
`
`
`-\I
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the foregoing
`
`APPL|CANT’S SUPPLEMENTAL REPLY is being served on Opposer this 17"‘ day of
`
`December, 2004, by forwarding the same via Express Mail, postage prepaid, addressed
`
`to:
`
`Howard E. Sandler
`
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`
`Lake Forest, CA 92630
`
`Dated: December 17, 2004
`
`/7ZM/W
`
`Joseph E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91161633
`
`) ) ) ) ) ) ) ) )
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`
`DECLARATION OF JOSEPH E. MUETH
`
`I, Joseph E. Mueth, declare as follows:
`
`I am the attorney for Applicant, EC&C Technologies, Inc. (“EC&C”).
`
`I am outside
`
`trademark and patent soliciting counsel to EC&C and have no other affiliation with the
`
`company.
`
`EC&C and Opposer, Hera LLC, are competitors in the field of scrubbing of
`
`combustion gas streams emitted from large stationary sources such as power plants to
`
`remove deleterious gases, for example, nitrogen oxides (NOX).
`
`

`
`
`
`Some years ago, Hera granted a patent license to Environmental Elements Corp.
`
`Hera’s patents were subsequent in time to patents held by EC&C in the field of NO,
`
`removal. When Environmental began to compete with EC&C by landing several
`
`installations at power plants in the Mid-West owned by a large electric utility, American
`
`Electric Power Corporation, EC&C filed a patent infringement suit against
`
`Environmental, EC&C Technologies, Inc. v. Environmental Elements Corp., Civil Action
`
`No. 01-10331JFW(Ex) in the United States District Court for the Central District of
`
`California.
`
`This suit was settled on September 2, 2003, with Environmental agreeing to
`
`withdraw from this line of business. The settlement is embodied in a Consent
`
`Judgment. This settlement left Hera, who was not a named party, without a contractor
`
`capable of dealing with the large public utilities. Since then Hera has been seeking a
`
`replacement for Environmental.
`
`In any event, Hera remains at least a potential
`
`competitor of EC&C in the provision of NO, removal technology.
`
`On October 1, 2004, Howard E. Sandler wrote a letter regarding the instant
`
`proceedings on Hera letterhead. This letter, copy attached, is signed “Howard E.
`
`Sandler, President”. The same Howard E. Sandler is Hera’s attorney of record in this
`
`proceeding.
`
`

`
`
`
`On November 19, 2004, Hera submitted a “Redline Of Applicant's Protective
`
`Order together with “Opposer’s First Request For Production Of Documents”, copies
`
`attached.
`
`Opposer’s Request calls for the production by EC&C of numerous documents of
`
`a confidential nature.
`
`The “Red|ine”, as tendered by'Opposer on November 19, 2004, p. 3 would
`
`provide:
`
`“Trade SecretlCommercia||y Sensitive - Material to be shielded
`
`by the Board from public access, restricted from any access by the
`
`parties, and available for review by counsel for the parties Howard
`
`Sandler, Esq. For Opposer and Joseph Mueth, Esq. For Applicant and,
`
`subject to the provisions of paragraph 4 and 5, by independent experts or
`
`consultants for the parties.”
`
`Thus, as proposed, the Protective Order is an illusion since producing
`
`confidential information to Howard E. Sandler affords no safeguard against improper
`
`use of “Confidential” information and, in fact, any such Confidential information
`
`produced would be to a principal of Hera LLC. On December 9, 2004 we wrote Howard
`
`E. Sandler regarding this matter, copy attached.
`
`

`
`
`
`-a
`.1
`
`No reply has been received.
`
`The Settlement Agreement pertaining to the above-identified patent infringement
`
`litigation contains the usual confidentiality provisions.
`
`“Opposer’s First Request For Production Of Documents”, paragraph 1, seeks
`
`production of the Settlement Agreement. American Electric Power, as party to the
`
`Settlement Agreement has advised that it objects to the production of the agreement
`
`without an appropriate Protective Order and that representation of Hera by Howard E.
`
`Sandler is problematic, copy of letter dated February 17, 2004 from American Electric
`
`Power attached.
`
`I hereby declare that all statements made herein of my own knowledge are true
`
`and that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false statements
`
`and the like so made are punishable by fine or imprisonment, or both, under Section
`1001 -of Title 18 of the United States Code, and that such willful false statements may
`
`jeopardize the validity of the application, any patent issuing thereon, or any patent to
`
`which this verified statement is directed.
`
`Dated: December 17, 2004
`
`

`
`
`
`HERA, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, California 92630
`949.707.5432
`fax:949.707.5435
`
`e-mai|:info@hera||c.com
`
`October 1, 2004
`
`EXPRESS MAIL - RETURN RECEIPT
`
`Joseph E. Mueth, Esq.
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`Re:
`
`Hera vs. EC&C - Opposition No. 91161648 - Response to 1“ Set of Production Requests
`Hera vs. EC&C - Opposition No. 91161633 -Response to 1“ Set of Production Requests
`
`Dear Joe:
`
`Enclosed are Hera’s responses to EC&C’s Production Requests in each of the subject
`Oppositions. I believe that these responses, and produced documents, should sufiice; however,
`should you have any questions, comments, or objections, please call me for a discussion, in order
`to facilitate these matters.
`
`In closing, thank you for your courtesies in agreeing to extend the time for Hera to respond to
`your Discovery Requests until today. Establishing a good professional relationship between
`ourselves will act to facilitate the handling of the instant oppositions, as well as other conflicts
`which may arise between Hera and EC&C.
`
`Sincer y ; <
`
`o ard .Sandle , Presi nt
`
`

`
`
`
`e—mai|:info@heralIc.cor
`
`HERA,LL
`23792 Rockfield Blvd., Suite 10
`Lake Forest, California 9263
`949.707.5413
`
`tax:949.707.543
`
`November 19, 2004
`
`g
`
`VIA EXPRESS MAIL
`
`Joseph E. Mueth, Esq.
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8”‘ Floor
`
`Pasadena, California 91 101
`
`Re:
`
`Trademark Opposition No. 91161648
`Trademark Opposition No. 91161633
`
`Dear Joe:
`
`Enclosed are “Opposer’s First Request for Production of Documents” ineach of the subject
`Oppositions. Please do not hesitate to contact me for an extension should you have a problem in
`meeting the normal 30 day response period .
`
`Additionally enclosed is a “Redline” of your Protective Order draft. Please review the changes
`and call me with your O.K., or to discuss any changes to my suggestions. ‘Once you and I have
`agreed on the changes, I will prepare two formal copies for each Opposition, sign them and send '
`them to you for acceptance.
`
`Sincere ,
`
`E. Sandl r
`
`

`
`
`
`WordPerfect Document Compare Summary
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`OPPOSI'HONS\EC&CTRADEMARK.PROTECTlVE2.wpd
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`
`
`I 279-112
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`‘
`
`4 v.
`
`I Opposer,
`'
`'
`
`EC&C TECHNOLOGIES, INC.
`
`Applicant.
`
`\/\,\_/\/\_/\/\4\/\/\/
`
`Opposition No. 91161648
`
`PROTECTIVE ORDER
`
`Classes of Protected Information.
`
`The Rules of Practice in Trademark Cases provide that all inter partes
`
`proceeding files, as well as the involved registration and application files, are
`
`open to public inspection. The terms of this order are not to be used to
`
`undermine public access to files. When appropriate, however, a party or
`
`witness, on its own or through its attorney, may seek to protect theconfidentiality
`
`of informationrby employing one of the followingadesignations.
`
`Confidential — Material to be shielded by the Board from public access.
`
`

`
`
`
`Highly Confidential - Material to be shielded by the Board from public access
`
`afl subject to agreed restrictions on access even as to the parties and/or their
`
`attorneys.
`
`Trade Secretlcommercially Sensitive - Material to be shielded by the Board
`
`from public access, restricted from any access by the parties, and available for
`
`review by outsidecurrent counsel for the parties jHoward Sandler, Esg. For
`
`0 ‘oser and Joseph Mueth Es . For A licant and, subject to the provisions of
`
`paragraph 4 and 5, by independent experts or consultants for the parties.
`
`2) information Not to Be Designated as'Protected.
`
`lnformation may not be designated as subject to any form of protection if it (a) is,
`
`or becomes, public knowledge, as shown by publicly available writings, other
`
`than through violation of the terms of this document; (b) is acquired by a non-
`
`designating party or non-party witness jother than current, future or prior
`
`licensees of either gag} from a third party lawfully possessing such information
`
`and having no obligation to the owner of the information; (c) was lawfully
`
`possessed -by a non—designating party or non-partywitness prior to the opening
`
`of discovery in this proceeding, and for which there is written evidence of the
`
`lawful possession; (d) is disclosed by a non—designating party or non-party
`
`witness legally compelled to disclose the information; or (e) is disclosed by a
`
`

`
`
`
`non—designating party with the approval of the designating party.
`
`3) Access to Protected Information.
`
`The provisions of this order regarding access to protected information are
`
`subject to modification by written agreement of the parties or their attorneys, or
`
`by motion filed with and approved by the Board.
`
`Judges, attorneys, and other employees of the Board are bound to honor the
`
`parties’ designations of information as protected but are not required to sign
`
`forms acknowledging the terms and existence of this order. Court reporters,
`
`stenographers, video technicians or others who may be employed by the parties
`
`or their attorneys to perform services incidental to this proceeding will be bound
`
`only to the extent that the parties or their attorneys make it a condition of
`
`employment or obtain agreements from such individuals, in accordance with the
`
`provisions of paragraph 4.
`
`Parties are defined as including individuals, officers or corporations, partners of
`
`..partnerships, and management e_mpl_oyees_ of any type of business organigation.
`
`Attorneys for parties are defined as including in-house counsel and outside
`
`counsel, including support staff operating under counsel's direction, such as
`
`

`
`
`
`paralegals or legal assistants, secretaries, and any other employees or
`
`independent contractors operating under counsel's instruction.
`
`independent experts or consultants include individuals retained by a party for
`
`purposes related to prosecution or defense of the proceeding but who are not
`
`otherwise employees of either the party or its attorneys.
`
`-gNon—par‘cy witnesses include any individuals to be deposed during discovery or
`
`vi trial, whether willingly or under subpoena issued by a court of competent
`
`jurisdiction over the witness.
`
`Parties E their attorneys shall have access to information designated as
`
`confidential 9_r highly confidential, subject to any agreed except-ions.
`
`Outside counsel, but not in-house counsel shall have access to information
`
`designated as trade secretlcommercially sensitive.
`
`Independent experts or consultants, non-party witnesses, gig any other
`
`individual nototherwise specifically covered by the terms of this order may be
`
`afforded-access to confidential o_r-highly confidential informationin.accordance
`
`with the terms that follow in paragraph 4. Further, independent experts or
`
`consultants may have access to trade secret/commercially sensitive
`
`information if such access is agreed to by the parties or ordered by the Board, in
`
`5
`
`

`
`
`
`Board, in accordance with the terms that follow in paragraph 4 and 5.
`
`4) Disclosure to Any lndividual.
`
`Prior to disclosure of protected information by any party or its attorney to any
`
`individual not already provided access to such information by the terms of this
`
`order, the individual shall be informed of the existence of this order and provided
`
`with a copy to read. The individual will then be required to certify in writing that
`the order has been read and understoodiand that the termsishall be binding on
`
`the individual. No individual shall receive any protected information until the
`
`party or attorney proposing to disclose the information has received the signed
`
`certification from the individual. A form for such certification is attached to this
`
`order. The party or attorney receiving the completed fog shall retain the
`
`original.
`
`5) Disclosure to independent Experts or Consultants.
`
`in addition to meeting the requirements of paragraph 4, any party or attorney
`
`proposing to share dniscloysed infonnation withman independent expert or
`
`consultant must also notify the party which designated the information as
`protected. Notification must be personally served or forwarded by certified mail,
`
`return receipt requested, and shall provide notice of the name, address,
`
`

`
`
`
`occupation and professional background of the expert or independent
`
`consufiant
`
`The party or its attorney receiving the notice shall have ten (10) business days
`
`to object to disclosure to the expert or independent consultant.
`
`lf objection is
`
`made, then the parties must negotiate the issue before raising the issue before
`
`the Board.
`
`if the parties are unable to settle their dispute, then it shall be the
`
`obligation of the party or attorney proposing disclosure to bring the matter before
`the Board with an explanation of the need for disclosure and a report on the
`efforts the parties havecmade to settle their dispute. The party objecting to
`
`disclosure will be expected to respond with its argument against disclosure or its
`
`objections will be deemed waived.
`
`8) Responses to Written Discovery.
`
`Responses to interrogatories under Federal Rule 33 and requests for
`
`admissions under Federal Rule 36,. and ‘which the responding party reasonably
`
`believes to contain protected information shall be prominently stamped or
`
`marked with the appropriate designation form paragraph 1. Any inadvertent
`
`.disclosurewithout,appropriate designation shall be remedied as soon as the
`
`disclosing party learns of its error, by informing all adverse parties, in writing, of
`
`the error. The parties should inform the Board only if necessary because of the
`
`filing of protected infonnation not in accordance with the provisions of paragraph
`
`

`
`
`
`12.
`
`7) Production of Documents.
`
`If a party responds to requests for production under Federal Rule 34 by making
`
`copies and forwarding the copies to the inquiring party, then the copies shall be
`
`prominently stamped or marked, as necessary, with the appropriate designation
`
`from paragraph 1. lfthe responding party makes documents available for
`
`inspection and copying by the inquiring party, all documents shall be considered
`
`protected during the course of inspection. After the inquiring party informs the
`
`responding party what documents are to be copied, the responding party will be
`
`responsible for prominently stamping or marking the copies with the appropriate
`
`designation from paragraph 1. Anyinadvertent disclosure without appropriate
`
`designation shall be remedied as soon as the disclosing party learns of its error,
`
`by informing all adverse parties, in writing, of the error. The parties should inform
`
`the Board only if necessary because of the filing of protected information not in
`
`accordance with thleprovisions of paragraph 12.
`
`V
`
`8) Depositions.
`
`Protected documents produced during a discovery deposition, or offered into
`
`evidence during a testimony deposition shall be orally noted as such by the
`
`producing or offering party at the outset of any discussion of the document or’
`
`

`
`
`
`information contained in thedocument. in addition, the documents must be
`
`prominently stamped or marked with the appropriate designation.
`
`During discussion of any non—documentary protected information, the interested
`
`party shall make oral note of the protected nature of the infonnation.
`
`The transcript of any deposition and all exhibits or attachments shall be
`
`considered protected for 30 days following the date of service of the transcript by
`
`the party that took the deposition. During that 30-day period, either party may
`
`designate the portions of the transcript, and any specific exhibits or attachments,
`
`that are to be treated as protected, by electing the appropriate designation from
`
`paragraph 1. Appropriate stampings or markings should be made during this
`
`time. if no such designations are made, then the entire transcript and exhibits
`
`will be considered unprotected.
`
`9) Filing Notices of Reliance.
`
`When a party or its attorney files a notice of reliance during the party's testimony
`
`period, the party or attorney is bound to honor designations made by the
`
`adverse party or attorney, or non-party witness, who disclosed the information,
`
`so as to ma_intai‘n”“t‘he'protected status of'the‘information."
`
`10) Briefs.
`
`

`
`
`
`When filing briefs, memoranda, or declarations in support of a motion, or briefs
`
`at final hearing, the portions of these filings that discuss protected information,
`
`whether information of the filing party, or any adverse party, or any non-party
`
`witness, should be redacted. The rule of reasonableness for redaction is
`
`discussed in paragraph ‘l2‘of this order.
`
`11) Handling of Protected information.
`
`Disclosure of information protected under the terms of this order is intended only
`
`to facilitate the prosecution or defense of this case. The recipient of any
`
`protected information disclosed in accordance with the terms of this order is
`
`obligated to maintain the confidentiality of the information and shall exercise
`
`reasonable care in handling, storing, using or disseminating the information.
`
`12) Redaction; Filing Material With the Board.
`
`When a party or attorney must file protected infonnation with the Board, or a
`
`brief that discusses such infonnation, the protected information or portion of the
`
`brief discussing the same should be redacted from the remainder. A rule of
`
`reasonableness should dictate how redaction is effected.
`
`

`
`
`
`Redaction can entail merely covering a portion of a page of material when it is
`
`copied in anticipation of filing but can also entail the more extreme measure of
`
`simply filing the entire page under seal as one that contains primarily
`
`confidential material. if only a sentence or short paragraph of a page of material
`
`is confidential, covering that material when the page is copied would be
`
`appropriate. In contrast, if most of the material on the page is confidential, then
`
`filing the entire page under seal would be more reasonable, even if some small
`
`quantity of non—confidential material is then withheld from the public record.
`
`Likewise, when a multi-page document is in issue, reasonableness would dictate
`that redaction of the portions or pages containing confidential material be
`
`effected when only some small number of pages contain such material. In
`
`contrast, if almost every page of the document contains some confidential
`
`material, it may be more reasonable to simply submit the entire document under
`
`seal. Occasions when a whole document or brief must be submitted under
`
`seal should be very rare.
`
`Protected infonnation, and pleadings, briefs or memoranda that reproduce,
`
`discuss or paraphrase such information, shall be filed with the Board under seal.
`
`The envelopes or containers shall be prominently stamped or marked with a
`
`legend in substantially the following form:
`
`

`
`
`
`CONFIDENTIAL
`
`This envelope contains documents or information that are subject to a protective
`
`order or agreement. The confidentiality of the material is to be maintained and
`
`the envelope is not to be opened, or the contents revealed to any individual,
`
`except by order of the Board.
`
`13) Acceptance of information; Inadvertent Disclosure.
`
`Acceptance by a party or its attorney of information disclosed under designation
`
`as protected shall not constitute an admission that the information’ is, in fact,
`
`entitled to protection. Inadvertent disclosure of information which the disclosing
`
`party intended to designate as protected shall not constitute waiver of any right
`
`to claim the information as protected upon discovery of the error.
`
`14) Challenges to Designations of information as Protected.
`
`If the parties or their attorneys disagree as to whether certain information should
`
`be protected, they are obligated to n_egotiate in good faith regarding the
`designation by the disclosing party._lft_thle,p.ar.fie$.aF€3 unable E0 f€50.'V.€ melt
`
`differences, the party challenging the designation may make a motion before the
`
`Board seeking a determination of the status of the information.
`
`

`
`
`
`A challenge to the designation of information as protected must be made
`
`substantially contemporaneous with the designation, or as soon as practicable V
`
`after the basis for challenge is known. When a challenge is made long after a
`
`designation of information as protected, the challenging party will be expected to_
`
`show why it could not have made the challenge at an earlier time.
`
`The party designating information as protected will, when its designation is
`
`timely challenged,_ bear the ultimate burden of proving that the information
`
`should be protected.
`
`15) Board's Jurisdiction; Handling of Materials After Termination.
`
`The Board's jurisdiction over the parties and their attorneys ends when this
`
`proceeding is terminated. A proceeding is terminated only after a final order is
`
`entered and either all appellate proceedings have been resolved or the time for
`
`filing an appeal has passed without filing of any appeal.
`
`The parties may agree that archival copies of evidence and briefs may be
`
`retained, subject to compliance with agreedsafeguards. O.therw_ise,_wit_hin, 30
`
`days after the final termination of this proceeding, the parties and their attorneys
`
`shall return to each disclosing party the protected information disclosed during
`
`the proceeding, and shall-include any briefs, memoranda, summaries, and the
`
`

`
`
`
`like, which discuss or in any way refer to such information. In the alternative, the
`
`disclosing party or its attorney may make a written request that such materials
`
`be destroyed rather than returned.
`
`16) Other Rights of the Parties and Attorneys.
`
`This order shall not.preclude the parties or their attorneys from making any
`
`applicable claims of privilege during discovery or at trial. Nor shall the order
`
`preclude the filing of any motion with the Board for relief from a‘ particular
`
`provision of this order or for additional protections not provided by this order.
`
`By Agreement of the Following,
`effective
`
`-
`
`(insert Signature Date)
`
`V
`Howard E. Sandler
`_ Attorney for Opposer, Hera, LLC
`
`Joseph E. Mueth
`Attorney for Applicant, EC&C
`Technologies, lnc.
`
`By Order of the Board, effective
`
`.
`
`.
`
`
`[print or type name and title of Board attorney
`orjudge imposing order]
`
`

`
`
`
`JOSEPH E. MU ETH
`LAW CORPOHATION
`PATENTS. TRADEMARKS. COPYRIGHT
`CORPORATE CENTER
`225 SOUTH LAKE AVENUE. 8"‘ FLOOR
`PASADENA, CALIFORNIA 9l|Ol
`max (626) 584-6662
`TELEPHONE (626) 564-0396
`
`December 9, 2004
`
`VIA FACSIMILE
`
`Fax No.: (949)707-5435
`
`Howard E. Sandler, President
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, California 92630
`
`Re:
`
`Hera_v. EC&C - Opposition No. 91161648
`Our Docket: 279-112 (Ammonia On Demand Trademark)
`and
`
`’
`
`Hera v. EC&C - Opposition No. 91161633
`Our Docket: 279-111 (AOD Trademark)
`
`Dear Howard:
`
`We are writing regarding your outstanding discovery requests and your proposed
`revisions to our draft Protective Order.
`
`This letter is not our comprehensive response to your proposals regarding the
`Protective Order and/or your discovery requests.
`
`Regarding the Protective Order, our client is not willing to provide “attorneys eyes
`only” confidential information to you since you are both an attorney and a "principal"
`in Hera LLC, a competitor or potential competitor of EC&C. We suggest you retain
`outside counsel to obviate this problem should you maintain your present position in
`regard to discovery.
`
`Your Protective Order counterproposal is, of course, subject to the foregoing
`objection.
`
`in addition, your cover document states:
`
`“marked with 2? deletions, 4 insertions and 0 moves’’,
`
`

`
`
`
`which does not conform to the document as transmitted. Clarification is requested.
`
`At the present time, discovery is halted in Opposition 91161633 (which we
`assume equally will be applied in Opposition 91161648 in which there is pending our
`uncontested Motion To Consolidate) pending a ruling by the Trademark Trial and
`Appeal Board on our pending Motions To Compel. However, we are writing in an effort
`to resolve other potential problems relating to discovery in these proceedings.
`
`if you wish to discuss these matters, please call us.
`fon/vard to your response.
`
`In any event, we look »
`
`Very/t
`
`I yours,
`
`cc: Dr. Herbert W. Spencer lll
`
`JEM/lv
`
`

`
`P.@2
`
`American Electric Power
`Service Corporation
`1 Riverside Plaza
`Columbus. OH 432154373
`aep.com
`
`Ell-716-l000
`
`9 Dl.f.C—;17-2884
`
`11:26
`
`E A
`
`MERICAN “
`ELECTRIC
`351'!!!
`
`‘ December 15. 2004
`
`. Joseph E. Mueth, Esq.
`i Corporate Center
`- 225 South lake Avenue, 8"‘ Floor
`l Pasadna. California 91101
`
`I Saul Ewing LLP
`j 100 South Charies Street
`': Baltimore, Maryland 21201
`
`I E
`
`Donald R. Hug
`i Environmental Elements Corporation
`I 3700 Koppers Street
`_ Baltimore, Maryland 21227
`
`James L. Reeves
`Assistant General Counsel
`614 716-2956 Telephone
`614 716-1687 Fax
`jlreeves@AEP.com
`
`5 Hamon Research-Cotlrell, Inc.
`I 58 East Main Street
`Somewille, New Jersey 08876
`i Attention: Philip Moynihan
`
`Wahloo, Inc.
`i‘ 3600 East Segersl:rom Avenue
`, Santa Ana, California 92704
`3 Attention: James Clark III
`
`. Re: Setuement Agreement between EC&C Technologies, Inc.,
`I
`Hamon Research-Cottrell, Inc., and Environmental Elements
`Corporation - Effective September 2, 2003. Your docket 279-101
`
`Dear Mr. Mueth:
`
`Ac. we discussed on the telephone today, AEP objects to the production of its
`agreement with Environmental Elements, unless such production is covered by
`an appropriate confidentiality agreement or protective order, which we are happy
`to discuss with the parties. However, it is my understanding that EG&C
`Technologies, Inc. intends to object to the production on grounds of
`confidentiality, further supported by the fact that the attorney representing Hera
`
`I I
`
`I 5
`
`

`
`
`
`DEC:17-2884
`
`11326
`
`P.@3
`
`LLC is a principal in Hera, LLC, making it difficult, from EC&C's perspective, to
`fashion an appropriate confidentiality agreement.
`
`Should this change, and you decide to produce the requested documents, please
`provide me with timely notice of such intent. I would also appreciate it ifyou
`would let me know of any response you receive from Evironmental Elements,
`Corporation. Thank you.
`
`l
`
`Very truly yours,
`
`9-¢%¢%W
`
`James L. Reeves
`Assistant General Counsel
`
`TDTRL P.B3
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the foregoing
`
`DECLARATION OF JOSEPH E. MUETH is being served on Opposer this 17"‘ day of
`
`December, 2004, by fon/varding the same via Express Mail, postage prepaid, addressed
`
`to:
`
`Howard E. Sandier
`
`Hera, LLC
`
`23792 Rockfield Blvd., Suite 100
`Lake Forest, CA 92630
`
`Dated: December 17, 2004
`
`
`
`I
`’
`9 / ~.
`/
`
`/E
`L» '1 /
`
`
`Joseph_'E. Mueth, Esquire
`Joseph E.//Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101

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