TTTA9
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`Opposer
`
`v.
`
`EC&C TECHNOLOGIES, INC.,
`
`)
`
`)
`
`)
`
`)
`
`Opposition Nos. 91 161633
`
`91161648 -
`
`) T
`
`RANSMITTAL LETTER (GENERAL)
`
`Applicant
`
`(With Certificate of Mailing by Express Mail)
`
`Transmitted herewith is the following document in triplicate:
`
`A.
`
`OPPOSER’S PROPOSED AMENDMENT TO APPLICANT’S PROTECTIVE
`
`ORDER (Footnote Identification POF 108140)
`
`B.
`
`OPPOSER’S FOLLOW UP SUPPLEIVIENTAL RESPONSE TO APPLICANT’S
`
`Dated: January 18, 2005
`
`DOCUMENT PRODUCTION REQUEST
`
`Ho ard . Sandler, Esq.
`
`
`
`Hera, LLC
`
`23792 Rockfield Blvd., Suite 140
`
`Lake Forest, CA 92630
`
`hsandler@herallc.com
`
`Tele: 949.707.6543
`
`Fax: 949.707.5435
`
`01 -20-2005
`US. Patent & TMOfcITM Mail Rep! Dt. #64
`
`I certify that this document is being deposited on January 18, 2005
`with the U.S. Postal Service “Express Mail Post Office to Addressee”
`
`service under 37 C.F.Rl.10 Express Mail Label No. ER 192067729
`
`and is addressed to Box 'I'I‘AB NO FEE, Commissioner for Trademarks,
`
`' v = dria VA 22313-1451
` Dated: January 18, 2005
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition Nos. 91 161633
`
`91161648
`
`Date: January 18, 2004
`
`) )
`
`)
`
`)
`
`)
`
`)
`
`)
`
`)
`
`HERA, LLC,
`
`Opposer
`
`v.
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant
`
`
`
`A.
`
`OPPOSER’S PROPOSED AMENDMENT TO APPLICANT’S PROTECTIVE
`
`ORDER (Footnote Identification POF 108140)
`
`B.
`
`OPPOSER’S FOLLOW UP SUPPLEMENTAL RESPONSE TO APPLICANT’S
`
`DOCUMENT PRODUCTION REQUEST.
`
`_l_
`
`As to Sub'ect “A” above:
`
`1.1.
`
`Opposer has enclosed herewith two originally signed copies of a proposed
`
`Protective Order for the subject oppositions, and hereby requests that, if the
`
`Applicant’s attorney finds it acceptable, that both copies be countersigned by, or
`
`on behalf of, the Applicant, and a fiilly signed copy be returned to Oppposer.
`
`1.2
`
`Opposer has additionally enclosed a “redline” copy of Page 1 of the enclosed
`
`Page I of 3
`
`AI
`
`«-r/"I
`
`

`
`
`\»
`Ki
`
`AI
`
`agreement, so that Applicant may readily view the sole addition to Applicant’s
`
`original drafi. This change was made in view of the current discussions between
`
`the parties, wherein they have not reached a final agreement for an all
`
`encompassing Protective Order. In this regard, the currently amended Protective
`Order will be sufficient for Opposer for it only is drawn with respect to the current
`
`Document Production Request. This arrangement will take care of present
`
`problems and permit counsel for both parties to agree firmly as to protective
`
`measures for subsequent discovery matters.
`
`1.3
`
`Opposer has noted Applicant’s remarks with respect to its choice of outside
`
`counsel. In this regard, Opposer has not taken a “cavalier attitude” in this matter,
`but merely wished to make Applicant well aware ofthe fact that the outside
`
`attorney selected is the son-in-law of Opposer’s in-house attorney and principal
`
`and, finther, the Opposer is not turning over all legal matters to him, but only
`
`those matters which are for outside counsel’s eyes only. Furthermore, Mr. Salvin
`
`will be made fully aware of his legal duty not to discuss confidential matters with
`
`any owners of Hera, or its inside counsel. As to Mr. Mueth’s claim that Mr. Salvin
`
`has a financial interest in the outcome of the trademark oppositions, such a claim is
`
`absurd and has absolutely no sound basis in fact. Mr. Salvin has no ownership
`
`interest in Hera, nor has he been given any reason whatsoever to believe that he
`
`will benefit from the outcome of the instant Oppositions. Mr. Salvin will simply be
`
`paid on a hourly basis, in the same manner he has been paid in the past, when
`
`occasionally retained by Hera. Furthermore, if Mr. Mueth elects to proceed with
`
`this tact, Opposer requires case law from Mr. Mueth to support this position. In
`
`any event, in order to insure a current orderly response to matters outstanding,
`
`Applicant’s counsel, at this time may merely identify documents he is not providing
`
`because of this familial relationship and the matter can thereafier be addressed afier
`
`the issue of outside counsel is resolved.
`
`Page 2 of 3
`
`

`
`
`
`2.
`
`As to Subject “B” above:
`
`2.1.
`
`To satisfy Applicant’s continuing objections to Opposer’s prior responses to
`
`Applicant’s Document Production Requests, Opposer is enclosing herewith
`
`complete, partially redacted copies of the License Agreement and Termination
`
`Agreement. The redactions are primarily royalty, technical, and territorial matters,
`
`which have nothing to do with trademark issues and are not mentioned, inferred,
`
`identified, or in any manner germane to such issues. Further, the License
`
`Agreement and Termination Agreement which, while being made available to
`
`Applicant’s counsel, are of a confidential nature and should not be made available
`
`to others, including the Applicant and its owners.
`
`2.2
`
`For the record, Opposer once again makes reference to the fact that Applicant’s
`
`counsel is simultaneously sending trademark and patent issue letters to third
`
`parties regarding the marks in questions, as well as patents allegedly covering the
`
`underlying product. Indeed, such letters have been very recently sent to a Licensee
`
`of Opposer and, as a result of such letters, such Licensee has expressed concern _
`
`because of the nature of the tone and rhetoric in such letters. Opposer mentions
`
`this point, to express its concern that the Applicant’s counsel may unintentionally
`
`use confidential information gained during the trademark oppositions, for matters
`
`relating to the aligned patents.
`
`Dated: January 18, 2005
`
`
`
`23792 Rockfield Blvd., Suite 140
`
`Lake Forest, CA 92560
`
`Page 3 of 3
`
`

`
`
`
`The undersigned hereby certifies that a true and complete copy of the foregoing OPPOSER’S
`PROPOSED AMENDMENT TO APPLICANT’S PROTECTIVE ORDER (Footnote
`Identification POF 108140) and OPPOSER’S FOLLOW UP SUPPLEMENTAL RESPONSE
`TO APPLICANT’S DOCUMENT PRODUCTION REQUEST is being served on Applicant this
`18“‘ day of January 2005, by forwarding same via Express Mail, postage prepaid addressed to:
`
`Joseph E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`
`\
`
`Pasadena,CA91101
`
`Dated: 1/18/05
`
`
`((
`
`
`
`ward E. Sandler
`
`
`
`Hera, LLC
`
`23792 ROckfield Blvd., Suite 140
`
`Lake Forest, CA 92630
`
`

`
`
`
`279-111
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.
`
`Applicant.
`
`§\/§-f\.f\J%\nf§f\.f§/
`
`Opposition No. 91 161633
`Opposition No. 91 161648
`
`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, and only with
`
`resgect to gocuments groduced under a Reguegt for the Production of
`
`Docgmeng, a party or witness, on its own or through its attorney, may seek to
`
`protect the confidentiality of information by employing one of the following
`
`designations.
`
`POF 108140
`
`1
`
`

`
`
`
`279-111
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.
`
`Applicant.
`
`\/s/\/\./g/»/\/\./\/\J
`
`Opposition No. 91161633
`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 tenns of this order are not to be used to
`
`undermine public access to files. When appropriate, however, and only with
`
`respect to documents produced under a Request for the Production of
`
`Documents, a party or witness, on its own or through its attorney, may seek to
`
`protect the confidentiality of information by employing one of the following
`
`designations.
`
`POF 108140
`
`1
`
`

`
`Confidential - Material to be shielded by the Board from public access.
`
`Highly Confidential - Material to be shielded by the Board from public access
`
`and 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 outside counsel for the parties 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.
`
`information 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 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-party witness 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
`
`POF 108140
`
`2
`
`

`
`disclosed by a non-designating party with the approval of the designating party.
`
`3) Access to Protected lnfonnation.
`
`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 tothe extent that the parties or their attorneys make it a conditin 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 employees of any type of business organization.
`
`Attorneys for parties are defined as including in-house counsel and outside
`
`counsel, including support staff operating under counsel’s direction, such as
`
`-
`
`-
`
`POF 108140
`
`3
`
`

`
`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.
`
`Non-party witnesses include any individuals to be deposed during discovery or_
`
`trial, whether willingly or under subpoena issued by a court of competent
`
`jurisdiction over the witness.
`
`Parties and their attorneys shall have access to information designated as
`
`confidential g_r highly confidential, subject to any agreed exceptions.
`
`Outside counsel, but not in-house counsel shall have access to information
`
`designated as trade secretlcommercially sensitive.
`
`Independent experts or consultants, non-party witnesses, am any other
`
`individual not otherwise specifically covered by the terms of this order may be
`
`afforded access to confidential 9; highly confidential information in
`
`accordance with the terms that follow in paragraph 4. Further, independent
`
`experts or consultants may have access to trade secretlcommercially
`
`sensitive information if such access is agreed to by the parties or ordered by the
`
`POF 108140
`
`4
`
`

`
`
`
`Board, in accordance with the terms that follow in paragraph 4 and 5.
`
`4) Disclosure to Any Individual.
`
`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 understood and that the terms shall 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 for shall retain the original.
`
`5) Disclosure to Independent Experts or Consultants.
`
`In addition to meeting the requirements of paragraph 4, any party or attmey
`
`proposing to share disclosed information with an independent expert or
`
`consultant must also notify the party which designated the infonnation 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
`
`POF 108140
`
`5
`
`

`
`consukant
`
`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 have made 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.
`
`6) 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
`
`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 the provisions of paragraph
`
`12.
`
`POF 108140
`
`‘
`
`6
`
`

`
`
`
`7) Production of Documents.
`
`If a party responds to requests for production under Federal Rule 34 by making
`
`copies and fowvarding the copies to the inquiring party, then the copies shall be
`
`prominently stamped or marked, as necessary, with the appropriate designation
`
`from paragraph 1. If the 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 infonns 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. Any inadvertent disclosure without appropriate
`
`A 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 the provisions of paragraph 12.
`
`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 the document. In addition, the documents must be
`
`prominently stamped or marked with the appropriate designation.
`
`POF 108140
`
`7
`
`

`
`
`
`During discussion of any non-documentary protected information, the interested
`
`party shall make oral note of the protected nature of the information.
`
`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 infonnation,
`
`so as to maintain the 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 infonnation,
`
`POF 108140
`
`8
`
`

`
`
`
`whether infonnation 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 12 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 infonnation 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 information with the Board, or a
`
`brief that discusses such information, 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
`
`POF 108140
`
`9
`
`

`
`
`
`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 information, 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 fonn:
`
`CONFIDENTIAL
`
`This envelope contains documents or infonnation that are subject to a protective
`
`order or agreement. The confidentiality of the material is to be maintained and
`
`POF 108140
`
`.10
`
`

`
`
`
`the envelope is not to be opened, or the contents revealed to any individual,
`
`except by order of the Board.
`
`13) Acceptance of lnforrnation; 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 negotiate in good faith regarding the
`
`designation by the disclosing party. If the parties are unable to resolve their
`
`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
`
`after the basis for challengeis known. When a challenge is made long after a
`
`POF 108140
`
`11
`
`

`
`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 agreed safeguards. Otherwise, within 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.
`
`POF 108140
`
`12
`
`

`
`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.
`
`(Insert Signature Date)
`
`Joseph E. Mueth
`Attorney for Applicant, EC&C
`Technologies, Inc.
`
`By Agreement of the Following,
`effective
`
`
`
`‘
`
`Howard E. Sandler
`
`
`
`Attorney for Opposer, Hera, LLC
`
`By Order of the Board, effective
`
`[print or type name and title of Board attorney
`or judge imposing order]
`
`POF 108140
`
`1 3
`
`

`
`TRADE SEC;eE7‘/
`
`COMMERCI/ILLV SE/V3 /T11/E
` \z\.{\z
`LICENSE AGREEMENT
`
`THIS AGREEMENT is made the dates and year indicated below, and effective the 8th day of
`June, 1999, by and between, HERA, LLC, a Delaware limited liability company having a
`principal place of business at Lake Forest, California, U.S.A., and SIIRTEC NIGI S.p.A., an
`Italian Company, having a principal place of business in Milano, Italy (HERA, LLC and
`SIIRTEC NIGI being individually referred to as “HERA” and “S1NI” respectively, and being
`collectively referred to as LICENSOR);
`
`AND
`
`a Delaware Corporation, having a
`ENVIRONIVIENTAL ELEMENTS CORPORATION,
`principal place of business at Baltimore, Maryland, U.S.A. (EEC).
`
`'
`
`~ WHEREAS
`
`the development of design, operation, system and control
`A. LICENSOR is engaged in:
`parameters for certain products (defined in Art.
`1.3 as LICENSED PRODUCTS);
`the
`development of marketing and sales presentations and the preparation of proposals and
`information to
`users
`and
`suppliers of
`the LICENSED PRODUCTS;
`substantial
`commercialization efforts concerning the LICENSED PRODUCTS; and the submission and
`prosecution of patent applications concerning the LICENSED PRODUCTS; and other related
`activities.
`
`B. EEC wishes to obtain a license and support from LICENSOR in order to commercialize the
`LICENSED PRODUCTS.
`
`C. LICENSOR is ready, willing and able to grant such a License and to provide such support.
`
`THE PARTIES HAVE AGREED AS FOLLOWS:
`
`1.0 DEFINITIONS
`
`FIRST LICENSED TERRITORY shall be
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`1.1
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`1.2
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`SECOND LICENSED TERRITORY shall be
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`1.3
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`THIRD LICENSED TERRITORY shall be
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`1.4
`
`LICENSED PRODUCTS shall be the following:
`
`1.4.1
`
`(including urea storage, mixing, handling,
`and processes
`Systems
`ammonia generation, and ammonia delivery subassemblies) for generating
`ammonia from urea on-site and on demand, primarily for supplying
`ammonia for particulate and gaseous emissions control, and also in other
`areas of substantial demand for ammonia.
`
`1.4.2
`
`Subassemblies, components and services for the systems and processes
`specified in Art. 1.4.1.
`
`1.4.3
`
`Such other products as the parties may agree upon in writing.
`
`1
`
`1.4.4 Repair, spare and replacement parts for the equipment and systems as
`specified above.
`
`include, but shall not be limited to, those sales,
`‘TRANSMITTED DATA shall
`marketing,
`financial projections,
`studies, customer
`information, pricing and
`competition information and analysis,
`raw material
`sourcing and pricing
`information, designs, drawings, specifications, patent rights, process parameters,
`G&A layouts, control logic, material specs, site access rights, safety information
`and studies,
`intellectual property information, and the like, concerning the
`LICENSED PRODUCTS, which are of a nature specified in Exhibit “B” attached
`hereto, and are transmitted to EEC during the term of this Agreement, as well as
`items ofa similar nature which were transmitted to EEC prior to the EFFECTIVE
`DATE, and are identified with the Bates designations in Exhibit “C” attached
`hereto. This definition of TRANSMITTED DATA shall also include SPECIFIC
`TRANSMITTED DATA.
`
`SPECIFIC TRANSMITTED DATA shall mean data furnished to EEC in under
`Article 4, which are of a nature requiring generation of data by LICENSOR,
`which is in addition to the TRANSMITTED DATA.
`
`NET SELLING PRICE shall be EEC's gross invoice price for sales or leases of
`the LICENSED PRODUCTS,
`less
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`The base for arriving at
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`the NET SELLING PRICE of the LICENSED PRODUCTS shall
`include
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`1.5.
`
`1.6
`
`1.7
`
`2of19
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`
`If any LICENSED PRODUCTS are
`_
`sold, transferred, leased or consigned by EEC to any purchaser with whom EEC
`does not otherwise deal at arms’ length, or if the LICENSED PRODUCTS are
`mixed with other items being sold by EEC, or otherwise, do not have an
`ascertainable independent fair price, then the NET SELLING PRICE shall be
`considered the NET SELLING PRICE at which EEC, at the time of such sale
`transfer,
`lease or consignment, would invoice the same or similar items to
`purchasers dealing at arms’ length with EEC.
`
`1.8
`
`LICENSOR INVENTIONS shall mean inventions concerning the LICENSED
`PRODUCTS, which are owned or controlled by the LICENSOR and conceived
`prior to the EFFECTIVE DATE, or during the original term ofthis Agreement.
`
`1.9 1
`
`- EEC INVENTIONS shall mean inventions related to LICENSED PRODUCTS
`created solely by EEC, either stand-alone or derivative from TRANSIVIITTED
`DATA.
`V
`
`1.10
`
`LICENSOR PATENTS shall mean those patents which are owned or controlled
`by the LICENSOR and which are
`issued from any of the LICENSOR
`INVENTIONS.
`
`1.11
`
`EEC PATENTS shall mean those patents that are owned or controlled by EEC
`that are used in connection with the market for LICENSED PRODUCTS.
`
`1.12
`
`EFFECTIVE DATE shall be the 8th day of June, 1999.
`
`1.13
`
`ASSISTANCE PERIOD shall be four (4) years from the EFFECTIVE DATE.
`
`1.14
`
`1.15
`
`1.16
`
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`TERM shall be from the EFFECTIVE DATE until termination in accordance with
`the provisions of Article 9 hereof
`
`“First PO” shall be the first purchase order from a customer to EEC for supply of
`equipment using LICENSED PRODUCTS.
`
`2.0 LICENSES GRANTED
`
`2.1
`
`LICENSOR hereby grants to EEC, and EEC hereby accepts, upon the terms and
`conditions herein,
`the exclusive right
`to use the TRANSMITTED DATA in
`connection with the manufacture, use and selling of the LICENSED PRODUCTS
`in the FIRST LICENSED TERRITORY.
`
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`2.2
`
`2.3
`
`2.4
`
`2.5
`
`2.6
`
`LICENSOR hereby grantsto EEC, and EEC hereby accepts, the exclusive right to
`use the TRANSMITTED DATA in connection with the use and selling of the
`LICENSED PRODUCT manufactured by, or on behalf of, EEC in the FIRST
`LICENSED TERRITORY, in the SECOND LICENSED TERRITORY.
`
`LICENSOR hereby grants to EEC, and EEC accepts the non-exclusive right to
`use the TRANSMITTED DATA in connection with the use and selling of the
`LICENSED PRODUCTS, manufactured by, or on behalf of EEC within the
`FIRST LICENSED TERRITORY,
`in the THIRD LICENSED TERRITORY,
`except in those instances where LICENSOR has granted an exclusive license to
`others, in accordance with the provisions of Article. 2.5.
`
`EEC may convert a country from a non-exclusive to exclusive territory by request
`to LICENSOR and upon demonstration of the ability of EEC to meet
`the
`performance conditions for one;ofthe exclusive territories.
`
`LICENSOR shall give EEC prompt notice and‘ a first right of refusal opportunity
`to demonstrate sufficient market presence to covert
`a THIRD LICENSE
`TERRITORY to a SECOND LICENSE TERRITORY before LICENSOR offers
`a license agreement for LICENSED PRODUCTS to another party in any country
`within the THIRD LICENSE TERRITORY.
`
`EEC shall have the right, subject to approval by LICENSOR to grant sublicenses
`hereunder with respect
`to any entity which is at
`least
`owned by EEC.
`LICENSOR shall respond promptly on any requests for sublicensing approval,
`and such approval shall not be unreasonably withheld. No other sublicensing
`rights are granted by this Agreement. EEC shall be responsible for all of its
`sublicensees activities, including reporting and payment of royalties.
`
`3.0 TRANSMITTED DATA TRANSFER
`
`3.1
`
`The package of TRANSMITTED DATA which will be transferred to EEC by
`LICENSOR, will
`include TRANSIVHTTED DATA of a quantity and quality
`sufficient‘
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`Included in this package of TRANSMITTED DATA will be: mass
`A
`balances; design and process parameters; process flow diagram; preliminary
`GA’s; drawings (but not including fabrication drawings, which, if provided, will
`be done as SPECIFIC TRANSMITTED DATA); material. equipment data sheets
`of critical hydrolyzer skid components; control logic and sequencing; and the like,
`to facilitate the design and manufacture for
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`will also include: design parameters and performance criteria and design
`calculations for the dilution skid; current comparative cost, pricing structure and
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`list”; proposal
`operational data; competition information; select customer “hit
`outlines; typical proposal package; NOx and SCR interface data; presentation
`materials, prior art information and analysis; market analysis and projections;
`disclosures of available competitive alternative designs, and start-up assistance on
`the First PO. Transmission of the TRANSIVIITTED DATA to EEC will be on a
`
`reasonably prompt basis and fiilly sufficient, within the parameters outline in this
`Agreement, and timely to allow EEC to be in compliance on its First PO. A more
`detailed presentation of the tangible TRANSMITTED DATA to be transferred is
`specified in Exhibit “B”.
`
`3.2
`
`The parties shall establish a technology transfer schedule over an agreed period of
`time. This schedule will be based on the technology and timing reasonably
`necessary for performance of the First PO and to fulfill the obligations of this
`Agreement in an efficient and timely manner.
`‘
`
`The parties further agree that the basic test of "sufficiency" under Article 3.1 shall
`be
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`3.4
`
`3.5
`
`During the ASSISTANCE PERIOD, LICENSOR shall transmit to EEC additional