IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`\y\/sasaxywasasza
`
`Opposition No. 91161633
`
`TRANSMITTAL LETTER (GENERAL)
`(With Certificate of Mailing by Express Mail)
`
`Transmitted herewith is the following document in triplicate:
`
`APPL|CANT’S MOTION TO COMPEL DISCOVERY
`
`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: November9 2004
`
`Z/mfl
`
`
`PH E. MUETH, ESQ.
`(J9
`EPH E. MUETH LAW CORPORATION
`J
`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 November 9. 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 ER 832380165US
`and is addressed to the Box TTAB NO FEE, Commissioner for Trademarks,
`P.O. ox 145
`e
`n
`'a.VA22 3-1451.
`
`VELARDE
`LA
`Dated: November 9, 2004
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`
`

`
`
`
`
`
`IN THE UNITED STATES" PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91161633
`
`) ) ) ) ) ) ) ) )
`
`EC&C TECHNOLOGIES, INC.,
`
`v.
`
`HERA, LLC,
`
`Applicant,
`
`Opposer.
`
`
`
`BOX TTAB NO FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`APPLICANT’S MOTION TO COMPEL DISCOVERY
`
`The Applicant moves for an order requiring Opposer to produce specified
`
`documents and simultaneously moves to stay all testimony periods pending a resolution
`
`of the discovery motion.
`
`APPLICANT'S MEMORANDUM
`
`

`
`
`
`BACKGROUND
`
`Applicant, EC&C Technologies, Inc. (EC&C)‘ is the owner of U.S. Patent No.
`
`6,077,491 and associated patents relating to the scrubbing of power plant combusion
`
`gases using ammonia to remove oxides of nitrogen. On November 30, 2001, Applicant
`
`sued Environmental Elements Corp. for patent infringement, Civil Action No. CV 01-
`
`10331JFW (Ex) filed in the United States District Court for the Central District of
`
`California and entitled EC&C Technologies, Inc. v. Environmental Elements Corp. After
`
`extensive discovery and pre—trial proceedings, this suit was settled by Settlement
`
`Agreement executed on September 2, 2003 with Environmental Elements Corp. being
`
`permanently enjoined from further acts of infringement.
`
`Included in the Settlement
`
`Agreement was the agreement on the part of Environmental Elements Corp. that it
`
`would abandon its U.S. Trademark Registration No. 2,553,144 for the mark AOD. Upon
`
`the settlement of the litigation, Environmental Elements Corp. filed its Notice of
`
`Abandonment of Registration No. 2,553,144 and the Trademark Office duly canceled
`
`the registration. Also on September 2, 2003 Applicant filed intent-to-use U.S.
`
`Trademark Application No. 78/295543 for the mark AOD. This was done pursuant to
`
`the plan that one or more of Applicant's patent licenses would be licensed to use the
`
`AOD mark.
`
`Prior to settlement, Environmental Elements Corp. was the patent Licensee of
`
`‘In the Notice of Opposition, Opposer erroneously refers to EC&C as “the U2A
`Company”. No such entity exists.
`
`
`
`
`
`

`
`
`
`Opposer, Hera, LLC and it was the practice of the licensed technology which infringed
`
`Applicant’s U.S. Patent No. 6,077,491‘ and associated patents. Environmental
`
`Elements Corp. owned the trademark “AOD” outright.
`
`Opposer has filed a Notice of Opposition (“Notice”) in which it alleges that it has
`
`rights in the AOD mark by virtue of provisions in a “License Agreement”, also referred to
`
`as “Opposer License", with Environmental Elements Corporation (EEC), pursuant to
`
`which and upon the occurrence of certain events, all rights in the AOD trademark would
`
`be returned to Opposer, see Notice at paragraph 2.
`
`Apparently, Opposer claims that when the “License Agreement” with
`
`Environmental Elements Corp. was terminated the rights to the AOD Trademark
`
`somehow were acquired by Opposer. This event allegedly occurred on September 3,
`
`2003, Notice, top of page 8 under “Exhibit 6".
`
`On August 26, 2004, Applicant served “App|icant’s First Request For Production
`
`Of Documents” on Opposer, copy attached. These document requests call for the
`
`production pursuant to Rule 34 FRCP of all documents relating to Opposer’s claim of
`
`ownership of the AOD mark derived from Environmental Elements.
`
`To date, no documents or objections to the document request have been
`
`provided. Opposer’s counsel has alleged that the requested documents may contain
`
`proprietary or confidential information. The undersigned attorney has tendered a form
`
`3
`
`

`
`
`
`of Protective Order, see attached. Nevertheless, Opposer’s counsel has not responded
`
`to the document request and the due date for such response has long since elapsed.
`
`It
`
`appears that Opposer is engaged in an attempt to frustrate discovery.
`
`Applicant submits that as a penalty for its failure to respond to the Rule 34
`
`document request, Opposer should be precluded from offering any evidence that it has
`
`acquired any trademark rights from Environmental Elements Corp.
`
`CONCLUSION
`
`Applicant is entitled to make discovery as to the contents of the License
`
`Agreement with Environmental Elements Corp. and all subsequent agreements with
`
`Environmental Elements Corp. since these agreements are pleaded as the basis for the
`
`Opposition.
`
`In view of the above comments, the documents are directed to subject
`
`matter which is reasonably calculated to lead to admissible evidence.
`
`Dated: November 9, 2004
`
`Respectfully submitted,
`
`
`
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`..%'-...‘-”'=/.u
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`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing APPLlCANT’S
`
`MOTION TO COMPEL DISCOVERY was sent via Express Mail, this 9“ day of
`
`November, 2004, postage prepaid, addressed to counsel for Opposer as follows:
`
`Howard E. Sandler
`
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, CA 92630
`
`Dated: November9, 2004
`
`_ / 7 M/
`
`
`
`E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`
`
`
`
`

`
`
`
`STATEMENT BY COUNSEL IN AN ATTEMPT TO RESOLVE
`
`On October 8, 2004, the undersigned discussed the Rule 34 Document Request
`
`with counsel for Opposer. Mr. Sandler expressed concern that the requested
`
`documents might contain confidential or proprietary information. Accordingly, on
`
`October 8, 2004, we faxed a draft “Protective Order” to Mr. Sandler in a good faith effort
`
`to address these concerns, see attachment. Follow up letters were sent on October 13"‘
`
`and October 25"‘, 2004. On November 2, 2004, we called Mr. Sandler to advise him of
`
`our intention to file this Motion. Mr. Sandler responded by a FAX letter dated November
`
`3, 2004, copy attached.
`
`I hereby certify that the above statements with respect to conversation with
`
`opposing counsel are true.
`
`
`
`Attorney for Applicant
`
`
`
`

`
`.2
`
`J
`
`P
`
`13
`
`\
`
`\.\
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91161633
`
`.
`
`EU‘ll:
`
`susvamsus
`
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`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`I
`
`‘
`
`' Applicant.
`
`APPLICANT’S FIRST REQUEST
`FOR PRODUCTION OF DOCUMENTS
`
`Pursuant to Rule 34 of the Federal Rules of Civil Procedure and Rule 2.120 of
`
`the Trademark Rules of Practice, Applicant hereby serves Applicant’s First Request for
`
`Production of Documents and requests that Opposer, within thirty "days, produce copies
`
`of the documents setforthbelow at the offices of Applicant’s attorneys, subject to the .
`
`following definitions and instructions:
`
`DEFINITIONS AN_D INSTRUCTIONS
`
`1. “Opposer” means Hera, LLC, its successors in interest, parents, subsidiaries,
`
`divisions, licensees and related organizations and their officers, directors, employees,
`
`agents, representatives, and all other Persons acting or purporting to act on its behalf,
`
`as the context hereof may require.
`
`

`
`
`
`2. “Document” means, without limitation, contracts, agreem
`
`ents, memoranda of
`
`invoices, packing slip
`H printed mater, notes, papers, books, notebooks, computation sheets, reports,
`photographs, drawings, charts, catalogs, brochures, records,
`memoranda, data sheets,
`graphs, sketches, publications, reprints, tables, letters, price lists, bulletins,
`announcements, analyses or statistical data, written communications of any kind,
`s, oral communications, recordings (tape, disc or other) or oral communications,
`grams, telefaxes and other messages, writings and
`within Opposer's
`
`instructions, cables, telegrams, radio
`printed materials of any.kind whether or not they are privileged or
`
`record
`
`possession, custody or control.
`
`3. Unless the request asks for all documents, or each document, the documents
`uced are those documents that are sufficient to provide the
`that need to be prod
`described information as well as those documents that Opposer intends to rely on as
`
`evidence.
`
`If Opposer objects to the production of any document which falls within a
`4.
`request based on claim of privilege or a claim that such documents constitute attorney
`work product, the following information is requested:
`
`(—a)
`(b)
`
`The date of the document;
`The name of the document's originator, the name of the person to
`
`2
`
`
`
`

`
`
`
`.5
`
`L,
`
`)
`
`whom it is addressed and the names of all persons who were
`
`shown copies;
`
`’
`
`(c)
`
`A general description of the type of document and the subject
`
`matter to which it pertains; and
`
`(d)
`
`The-basis for withholding the document.
`
`DOCUMENTS TO BE PRODUCED
`
`1. The “OPPOSER License" referred to in paragraphD2 of the Notice of
`
`Opposition.
`
`,2. All documents that relate to the “OPPOSER License" referred to in paragraph
`
`2 of the Notice of Opposition.
`
`3. All documents that relate to creation, consideration, design, development,
`
`selection, adoption and first ‘use of the mark referred to in U.S. Trademark Serial No.
`
`75/638370.
`
`,
`
`4. All documents that relate to creation, consideration, design, development, ‘
`selection, adoption, first use and registration of the mark referred to in U.S. Trademark
`
`Registration No. 2,553,144.
`
`5. All documents which refer to the “AOD" trademark.
`
`
`
`

`
`
`1;)
`
`
`is
`
`6. The “assignment of rights” referred to in paragraph 2 of the Notice of
`
`*
`
`Opposition.
`
`7. All documents that relate to the “assignment of rights" referred to in paragraph
`
`2 of the Notice of Opposition.
`
`8. All documents that relate to the alleged termination of_the license with EEC,
`
`as set forth in paragraph 4 of the Notice of Opposition.
`
`Dated: August 26, 2004
`
`Respectfully submitted, _
`
`If
`
`Z
`
`ph E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`f
`
`X
`
`
`
`
`

`
` E
`
`CERTIFICATE OF SERVICE
`
`—
`
`The undersigned hereby certifies that a true and complete copy of the foregoing
`iAPPL|CANT_’S FIRST REQUEST FOR PRODUCTION OF DOCUMENTS is being
`served onlopposer this 26"‘ day of August, 2004, by fon/varding the same via Ejtpress
`
`' Mail, postage prepaid, addressed to:
`
`Hovvard E. Sandier
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, CA 92630
`
`Dated: August 26, 2004
`
`
`
`
`J
`eph E. Mueth, Esquire
`Joseph E. Mue.th Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`'
`
`
`
`

`
`11/83/2664 ‘17:82
`
`949-767-5335
`
`HERA LLC
`
`.
`
`'
`
`_
`
`PAGE
`
`81/B1
`
`
`Direct e-mail: hsandler@herallg.g_gm 1
`
`7
`
`JOSEPH £. nurm
`
`.“’ uw conrosmou
`
`.’
`
`H.ERA,LLC
`23792 Rockfield Blvd, Suite 100
`Lake ‘Forest. California 92630
`.
`Tel. 949.707.5432
`F_ax 949.707.5435
`vwww.nerallc.com ,
`e.~mail:info@herallc.com
`
`.
`
`November 3, 2994
`
`5
`
`"
`
`FAX-626.584.6862
`
`.
`Joseph E. Meuth, Esq.
`225 South Lake Avenue, 8"’ Floor
`Pasadena, California 91101
`‘
`
`'
`
`'
`
`‘
`
`_
`l ( ~
`(Y
`
`l
`\,
`l
`"*9 /)5 " V
`‘
`,
`\ \
`Q "1 6\
`
`Re: Your Client EC&C - Trademark Matters
`
`H Dear Joe: I
`
`i
`
`I
`
`In response to your recent fax, has well as our conversation this date, please note the following:
`
`1.
`
`2.
`
`I have had a difficult time in attempting to determine exactly what Hera/EEC contract
`. documentation had,been disclosed to EC&C during the.EEC/EC&C infiingement litigation.
`As mentioned, I have-finally traced. the “keeper of the documents” back to Sherry Flax of the
`Saul Ewingfirm (410 332.8784). Sherry advised that the docs are currently in storage;
`however. she will call them up within the next few days, and thereafter determine what
`documents were disclosed, for whose eyes, and under what sort of protective order. As I
`mentioned to you, the fact that EEC had disclosed these does to EC&C et 211, without
`advising Hera, was a surprise to me, and I can better address your current document request,
`after I have an idea as to what has already has been disclosed, and to whom,
`4
`-
`
`I
`
`I will start on modifying the Protective Agreement which you hadpreviously forwarded to
`me; however, as mentioned, I would appreciate your having anelectronic copy of your draft .
`sent to me via E-Mail (either in Word or WordPerfect format). so that I can providedyou with
`a redline copy indicating the changes required by Hera.
`.
`.
`
`Sorry for the delay; however, I cannot push EEC or their counsel any faster than I have. Should you
`feel dissatisfied with my best efibtts in being cooperative, there is not much fiirther that! can do.
`In '
`any event, I expect to have a Redline ofyour drafi to you by Monday evening, November 8, latest.
`
`Sincerely,
`
`
`
`

`
`
`
`' JOSEPH E. MUETH
`LAW CORPORATION
`PATENTS. TQAOEMARKS. COPYRIGHT
`conpoam-': ccm-an
`225 $_OUTH LAKE AVENUE. Q" FQOOR
`PASADENA. CALIFORNIA 9ll0l
`FAX (625) 554-6362
`-
`
`i FAXTRlANSM|SSlON A
`
`DATE:
`
`/0'3 PQ94
`
`To TELEPHONE NO.: Wflfik 207/ 59/55
`ORlGlNAL SENT BY MAIL: YES
`NO X
`
`NUMBER oi= PAGES TR_ANSMli'TED (lncluding'Cover Sheet): éb '
`.AWN: A
`AMESSAGE: g2)Z¢4&,g_¢¢a432%;
`'
`. _
`
`
`
`This message isintended only for the use of the individual or entity to which it is addressed, and may
`contain information that is privileged. confidential and exempt from disclosure under applicable law.
`If the
`_ reader of this message is not the intended recipient, or the employee or agent responsible for delivering the
`‘message to the intended recipient. you are hereby notified that any dissemination, distribution or copying of this
`communication is strictly prohibited.
`If you have received this communication in error. please notify us
`immediately by telephone. and return the original to us by postal service at the address noted above. Thank
`you.
`'
`
`FROM: JOSEPH E. MUETH, ESQ.
`‘
`
`FAX: (626) 584-6862 .
`y TEL: (626) 584-03964 g
`
`t
`
`'
`
`_OURDOCKET: 0724/(H
`
`77'//2—/
`
`
`
`

`
`W
`
`.4":"
`
`‘*1\
`
`-7
`
`-1-1“)
`
`' JOSEPH E. MU ETH
`LAW CORPORATOON
`PATENTS, TRADEMARKS, COPYRIGHT
`~ ccal=oRATa ceru-ran
`225 sour:-r LAKE AVENUE. 5" FLOOR
`
`PASADENA, CALIFORNIA 91101
`FAX (626) sen»-case
`.
`TELEPHONE (626) 534-0395
`
`October '25, 2004
`
`. VIA FACSIMILE
`Fax No.: (949) 707-5435
`
`Howard E. Sandler, President
`Hera, LLC
`23792 Rockfield Blvd., _Suite 100
`Lake Forest, California 92630
`
`
`
`Re:
`
`V
`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:
`
`On October 22"‘, you advised that we could expect to receive a response to our
`document request,
`V
`_
`—
`-
`’
`
`To date, we have not received. a response.
`
`Please advise whether you intend to respond.
`
`Very truly yours,
`
`

`
`,}-‘
`
`~
`
`
`
`TRANSMISSION VERIFICATIN REPaffi)
`
`
`
`.
`
`ECM
`
`1@;’25 14: 36
`19497675435
`66: 60: 31
`B2
`UK
`STANDARD
`
`’
`
`TIME : 1ax25/2664 14:31
`
`
`
`
`
`
`DATEJIME
`FAX NO. {NAME
`DURATION
`PAGE(S}
`RESULT
`MODE
`
`.
`
`_
`
`

`
`I)
`
`V1
`
`JOSEPH E. MUETH
`LAW CORIFORATION
`PATENTS. TRADEMARKS. COF\'R|GH7
`< CORPORATE CENTER
`
`225 SOUTH LAK€ A\/£_NU£. 6”‘ FLOOR
`PASADENA, CALIFORNIA 9llOl
`nxx (626) 554-5352
`T£L€Pl'-(ONE (626) 584-0396
`
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`
`DATE:
`
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`
`TO TELEPHONE NO.:
`
`2 Z7? 7 07’ 5.453 5
`
`ORlGlNAL SENT BY MAlL: YES i
`
`No X
`
`. NUMBER OF PAGES TRANSMITTED (Including Cover Sheet):
`9’
` ATTN:
`
`l MESSAGE:
`
`
`
`This message is intended only for the use of the individual or entity to which it" is addressed, and may
`contain information that is privileged. confidential and exempt from disclosure under applicable law.
`If the
`. reader of thismessage is not the intended recipient,'or the employee or agent responsible for delivering the
`message to the intended recipient, you are hereby notified that any dissemination. distribution or copying of this
`communication is strictly prohibited.
`if you have received this communication in error, please notify us
`immediately by telephone, and return the original to us by postal service at the address noted above. Thank
`.you.
`«
`‘
`-
`«
`.
`
`FROM: JOSEPH E. MUETH, ESQ.
`.
`
`'
`
`'
`
`1
`
`FAX:_ (626) 584-6862
`TEL: (626) 584-0396
`
`.
`
`i
`
`.
`
`OUR DOCKET: £22»/yfi"0;; 7 x/ 5?7%//.2
`
`
`
`

`
`
`
`JOSEPH E. MUETH
`{AW CQRPORATION .
`PATENTS. THADEMARK5. COPYRIGHT
`CORPORATE CENTER
`
`225 SOUTH LAKE x§.v6Nu:. a" neon
`PASADENA, CALIFORNIA 9ll0i
`FAX (626) 534-5362
`-
`TELEPHONE (625) 534-0396
`
`October 13, 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
`H
`,
`‘/
`Hera v. EC&C - Opposition No. 91161633,-
`Our Docket: 279-111 (AOD Trademark)
`
`4
`
`Dear Howard:
`
`Further to our FAX of October 8, 2004, in whichwe transmitted a draft form of
`Protective Order,
`.
`V “
`.
`'
`
`if we are
`"Please advise your client's position relative to the Protective Order.
`unable to arrive at a mutually satisfactory resolution which allows for full text document
`productionfwe intend to file a Motion To Compel withthe Trademark Trial and Appeal '
`Board.
`-
`‘
`.
`
`-
`
`We await your early response.
`
` seph E. Mueth
`
`JEM/lv
`
`
`
`
`
`

`
` _ TRANSMISSION VERIFICATION REPORTS .-
`
`,
`
`TIME : 1a/13k2ae4 14:41
`
`
`DATE.TIME
`19/13 14:41
`FAX ND./NAME
`19497375435
`DURATION
`aa:ea:32'
`PAGE-1(5)
`" B2
`RESULT
`UK
`_ MODE
`STANDARD
`ECM
`
`
`
`
`.
`
`-
`
`

`
`JOSEPH E. MUETH '
`' LAW CORPORATION
`PATENTS. TRADEMARKS. COPYRIGHT
`' CORFORATE CENTER
`22S_ SOUTH LAKE AVENUE. 6"‘ FLOOR
`
`.
`
`PASADENA, CALiFORNlA 9liOl
`FAX (635) 5B4'G36Z
`TELEPHONE (626) 554-0396
`
`E
`
`E
`
`FAXTRANSMISSION
`
`DATE: 9 M» Fm‘/‘
`
`To TELEPHONE NO.:
`
`94 4" 7 01-554 3 3‘
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`JMESSAGZE:
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`This message is intended only for the use ofthe individual or entity to which it is ‘addressed, and may
`contain information that is privileged. confidential and exempt from disclosure under applicable law.
`if the
`reader of, this message is not the intended recipient, or the employee or agent responsible for delivering the
`message to the intended recipient, you are hereby notified that'any dissemination, distribution or copying of this_
`communication is strictly prohibited;
`if you have receivedthis communication in error. please notify us
`.
`immediately by telephone, and return the original to us by postal service at theaddress noted above. Thank
`you.
`
`F.ROM.:‘JOSEP.H E. MUETH, ESQ.
`a
`V.
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`FAX: (626) 584-6862
`TEL: (626) 58440396 .
`
`<
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`OU'R'DOCKETl a7Z~////V 0? 7??//3A5‘
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`
`
`JOSEPH E. MUETH
`LAW CORPORATION
`P/KTEVNTS. TRADEMARKS. COPYRIGHT
`CORPORATE CENTER A
`_ 225 SOUTH LAKE‘. AVENUE. 8"‘ FLOOR
`PASADENA. CALIFORNIA 9llOl
`max (626) 534-5352
`TELEPHOIQE (626) 584-0396 '
`
`October 8, 2004
`
`VIA FACSIMILE.
`Fax No.2 (949) 707-5435
`
`Howard E. ‘Sandler, President
`Hera, LLC
`_
`237-92‘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
`.
`-
`V
`Hera v. EC&C - Opposition No.j91161633 / .
`Our Docket: 279-111 (AOD Trademark) '_
`
`Dear Howard:
`
`Further to our telecon regarding our request for the full texts of the “Opposer _
`License" and the document entitled “Termination Of Hera/SlNl EEC June 8, 1999
`License Agreement”, we encloseherewith the propose_d Protective Order in each A
`- Opposition Proceeding to govern the production of these documents. Thetext of the
`- proposed Protective Order is in‘ accordance with the standard recommended form of
`Orderpresently appearing on the Trademark Office website.
`
`_
`
`The terms of the proposed Protective Ordershould address any reasonable
`concerns. This is particularly true since the “Opposer License" was terminated by the
`parties more than one year ago and is no longer in effect. We also wish to confirm that
`this same “Opposer License” was produced under Protective Order by Environmental
`Elements to EC&C’s patent litigationcounsel in the patent infringement action between
`EC&C and Environmental.
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`il
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`.3
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`We expectto reach an accommodation and thereb
`Motion" To Compet Discovery with the TTAB.
`
`y obviate the need for filing a
`
`We await you response.
`
`. Very truly yours,
`
`
`
`JEM/Iv
`Attachments
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`IN THE.UNlTED STATES PATENT AND TRADEMARK oi=PIcE
`
`BEFORE THE TRADEMARK TRlAL AND APPEAL BOARD
`
`279-1 1 1
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`‘HERA, LLC,
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`W
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`A
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`v,
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`Opposer,
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`'
`;
`Opposition. NO. 91161633
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` ‘-’\./\./\{§/\2\z\./\/g/
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`EC&C TECl'.-lNOLOGlES, lNC.
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`_ Applicant.
`
`PROTECTIVE ORDER %
`Classes of Protected Information.
`I
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`.-
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`ThevRules'of l?ractice in Trademark Cases provide that all inter partes '
`proceeding files, as well asthe involved regist'ration and application files, are ‘A
`open to public inspection. The terms of this order are not to be used to ‘
`.
`undermine public accessto files. ‘When appropriate, hoyvever; aparty or witness,-
`‘ onits own orthrough its attorney, may seek to protect the confidentiality of
`"information by employing one of the following designations.
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`'
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`g
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`- Confidential - Material toube-shielded by the Board from public access.
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`Highly Confidential‘.-4 Material to be shielded by the Board ‘from public access
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`so;«
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`g_n_q subject to agreed restrictions on access even as to the parties and/or their
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`attorneys.
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`Trade Secretlcommercially Sensitive - Materialto be shielded by the Board
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`from public access, ‘restricted from any access by the parties, and available for
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`review by- outside counsel for the parties and, subject to the provisions of A
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`paragraph 4 and 5, by independent experts or consultants for the parties.
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`2) information Not to Be Designated as'l5rotected.
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`.
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`‘ 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 I
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`than through violation of the terms of this document; (b) isiacquired by a non-
`designatingparty or non-party witness from a third party lawfully. possessing such
`by information and having no obligation to the "owner ofthe information; (c) was
`lawfully possessed by a «non-designating party or non-party witness prior to the '
`A opening of discovery in this proceeding, andzufor which there is written evidence of"
`the lawful possessionfi (d) is disclosed by a non-designating party ‘or ‘non-party
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`,
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`witness legally compelled to disclose the. information; or (e) is disclosed by a l
`non-designating’ party with the approval of the designating party.:
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`.3) Access to Protected Information.
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`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
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`_ filed with andeapproved by the Board..
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`Judges, attorneys, and other employees of the Board are bound to honor the
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`parties’ designations of information as protected but are not required to sign
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`forms acknowledging the terms and existence of this order. Court reporters,
`stenographers, video technicians or others who may be employed by the parties
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`or their attorneys to perform servicesincidental to this proceedingwill be bound '
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`'
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`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
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`provisions of paragraph 4;
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`‘
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`Parties are defined as including individuals, officers or ‘corporations, partners of"
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`partnerships, and management employees ofuany type of business organization.
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`Attorneys for parties are defined as including in-house counsel and outside
`~ counsel, including support staff operatingunder’ counsel's direction, such as '
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`- paralegals or legal assistants, secretaries, -and any other employees or
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`independent contractors operating under counsel's instruction.
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`Independent experts oreconsultants include individuals retained by a party for
`purposes related to prosecution or'defen_se'of the proceeding but who are not f
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`3 .
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`otherwise employees of either the party or its attorneys.-
`_ Non-party witnesses include any individuals to be deposed during discovery or
`trial, whether vvillingly or under subpoena issued by a court of competent
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`jurisdiction over the witness.
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`‘
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`‘Parties _a_n_d_ their attorneys shall have access to. information designated as
`confidential gr highly confidential, subject to any agreed exceptions.
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`Outside counsel, butnot in-house counsel shall have access to information
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`designated as trade secretlcommercially sensitive.
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`'
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`Independent experts or consultants, non-party wiutnesses, and any‘ other
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`individual not otherwise specifically covered by the terms‘ of this order. may be
`afforded access. to confidential
`highly confidential information in
`.
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`accordance with the terms that follow in paragraph» 4. _Fu_rther, independent.
`experts or consultants may-have ‘access to trade secretlcommercially .
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`-
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`"
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`sensitive information if"such access is agreed to by the parties or ordered by the i
`Board, in accordance. with the terms that follow in paragraph 4 and 5.
`.
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`i
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`. 4) Disclosure to Any Individual.»
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`~ Prior to disclosure of protected information by any party or its attorney to any i
`individual not ‘already provided access to such information by the" terms orfthis
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`order, the individual shall be‘ informed of the existence of this order.and provided 7
`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‘
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`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.
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`5) Disclosure to Independent Experts or Consultants._
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`V
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`in addition to meeting ‘the requirements of paragraph 4, any party or. attorney V
`W. proposing to share disclosed information with an independent expertor
`consultant must also notify the party which designated the information ‘as .
`protected. Notification must be personally served or forwarded bycertified"mail,
`. return receiptjrequested, and shall provide notice of the name, address,
`. occupation and professional background ofthe expert or independent consultant.
`".The party or its attorney receiving the notice shall have ten (10) businessdays to
`“object to disclosure to theexpert
`independent consultant.
`if objection is made,
`then the parties: must negotiate the issue before raising the issue before the
`Board. ’ if the partiestare unable to settle their dispute, then itlshall be the ‘
`‘obligation of the party or attorney proposing disclosure to bring the matter before ‘
`the Board with an explanation ofthe need for disclosure and a report on the I
`efforts the parties have made to settle their dispute. The ‘party objecting to
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`disclosure will be expectedto respond with its argument against disclosure or its .
`. objections will be deemed waived.
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`6) Responses towritten Discovery.
`
`Responses to interrogatoriesunder Federal Rule 33 and requests foradmissions.
`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 ofthe filing of protected
`I
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`information not in accordance with’ the provisions of paragraph 12.
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`7) Production of Documents.
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`.
`
`If a party responds to requests for production under. Federal-Rule 34 by making
`copies and fonivarding the copies to the inquiring party, then the copiesyshall be '
`. prominently stamped or marked, as necessary, withthe apphropriategdesignation.
`. from paragraph 1. If the respondingparty makes documentsavailable for
`inspection and copying by the inquiring party, all documents shall be considered
`
`_ protected during the course of inspection. Afterthe inquiring party informs the
`responding party what documents are to be copied,~the responding party will be ~'
`responsible for prominently starnpingor: marking the copies with the appropriate
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`designation from paragraph 1. Any inadvertent disclosure without appropriate
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`designation shall be remedied as soon as the disclosing partylearns of its error,
`' by informing all adverse parties, in writing, of the error. The parties should inform
`the Board only if necessarybecause of the filingof protected information not; in
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`accordance v_vith'the provisions of paragraph 12.
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`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 partyxat the outset of anydiscussion of the document or.
`information contained in the document. 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 ofthe protected nature of the information.
`. Thetranscript of any deposition and all exhibitsor attachments shall be .
`considered protected for 30 days following the datecf‘ service of the. transcript by.
`the -partythat took the deposition. During t,_l§1at3O-.day.period,V either party may
`designate the portionsnof-the transcript, and any specific exhibits or attachments,‘
`‘ that are
`be treated as protected,.by electing the appropriate designationfrom
`paragraph 1. Appropriate starnpings or markings should be made duringthis _'
`time. If no suchdesignations are made-, thenthe entire transcript and exhibits will
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` 47
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`be considered unprotected.
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`9) Filing Notices of Reliance.
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`‘When a partyor itsattorney files .a notice of reliance during the party's testimony ‘
`period, the party or attorney is bound to honor designations made by the adverse .
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`party or. attorney, or non-party witness, who disclosed the information, so -as to
`maintain the protectedvstatus of the information.
`
`10) Briefs.
`
`When filing briefs, m-emoranda, or declarations in support of a motion-, or briefs"at
`final hearing, the portions of these filings that discuss protected ~informati_on,'
`'_ whether information of the filing party, or any adyerseparty, orany non-party
`~ witness", shouldbe redacted.‘ The rule of reasonableness for redaction is
`discussed in_ parag_raph '12 of this order.
`_
`-
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`11) "Handling of Protected Information.» ’
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`Disclosure of information protected underthe terms of this order is intended ‘only
`to facilitate the prosecution or defense of this case. The recipient of any
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`protected information disclosed in accordance with the terms of this order is
`obligated to maintain the confidentiality of the information and‘ shall exercise ‘
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`reasonable care in handling, storing, using_ or disseminating the information. .
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`~
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`12) Redaction; Filing Material With the Board.
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`’
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`V When a party or attorney mustfile protected information with the Board,."or a brief
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`.that discusses such information, the protected information or portion of the brief
`discussing the same should be redacted from the remainder. A rule of
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`reasonableness should dictate how redaction is effected.
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`'
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`Redaction can entail’ merely covering a portion of a page of material when it is
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`copied in anticipationof filing but can also entai