throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`Applicant.
`
`§/\-/\-/§I\2\./\.f§I§f
`
`Opposition No. 91161648
`
`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
`
`
`
`
`
`
`
`/SEPH 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 261705123US
`and is addressed to the Box TTAB NO FEE, Commissioner for Trademarks,
`P.O. B
`1451,
`ria,
`22313-14 1.
`
`LARDE
`U
`Dated: December 17. 2004
`
`|IIIlI|||IlI|||||IlI|||||lI|||||IIl|||I|ll|||||II|
`
`12-20-2004
`U.S. Patent & TMOfcITM Mail Rcpt D1. #66
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91161648
`
`) ) ) ) ) ) ) ) )
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.,
`
`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 App|icant’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, mg 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.
`
`

`

`
`
`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 after 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 “Red|ine” 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’ éph E. Mueth, Esquire
`
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8”‘ Floor
`Pasadena, California 91101
`
`

`

`
`
`i-\
`5.
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the foregoing
`
`APPLICANT’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
`
`
`
`
`;. ph E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8”‘ Floor
`Pasadena, California 91101
`
`

`

`
`
`

`

`
`
`1
`
`Q)
`
`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.
`
`

`

`
`
`'1
`
`On November 19, 2004, Hera submitted a “Red|ine Of App|icant’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 “Redline”, as tendered by Opposer on November 19, 2004, p. 3 would
`
`provide:
`
`“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 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.
`
`

`

`
`
`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 December 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 suffice; 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
`
`J‘
`
`o ard .Sand1e , Presi nt
`
`

`

`
`
`~ HERA, LL
`23792 Rockfield Blvd., Suite 1C
`Lake Forest, California 9265
`949707.543
`
`fax:949.707.54€
`
`e-mail:info@heraIlc.co
`
`VIA EXPRESS MAIL
`
`
`
`November 19, 2004
`
`Joseph E. Mueth, Esq.
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8”‘ Floor
`
`Pasadena, California 91101
`
`Re:
`
`Trademark Opposition No. 91161648.
`Trademark Opposition No. 91161633
`
`Dear Joe:
`
`Enclosed are “Opposer’s First Request for Production of Documents” in each 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 'andI have
`agreed on the changes, I will prepare two formal copies for each Opposition, sign them and send
`them to you for acceptance.
`
`Sincere
`
`,
`
`fig
`
`/.E.San
`
`r
`
`

`

`
`
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`

`279-112
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HERA, LLC,
`
`v.
`
`Opposer,
`
`EC&C TECHNOLOGIES, INC.
`
`Applicant.
`
`\/\;\/\/\_/\/eggs./xy
`
`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 the confidentiality
`
`of information by employing one of the following designations.
`
`Confidential - Material to be shielded by the Board from public access.
`
`

`

`Highly Confidential - Material to be shielded by the Board from public access
`
`§_lj_(1 subject to agreed restrictions on access even as to the parties and/ortheir
`
`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 otitsidecurrent counsel for the parties gt-loward Sandler, Esg. For
`
`0 oser and Jose h Mueth Es . ForA 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.
`
`information may not be designated as subject to any fonn 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 gother than current, future or grior
`
`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-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 disclosed by a
`
`3
`
`

`

`non-designating party with the approval of the designating party.
`
`3) Access to Protected lnforrnation.
`
`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 a_ccordance 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
`
`

`

`
`
`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 eitherthe party or its attorneys.
`
`Non-party witnesses include any individuals to be deposed during discovery or
`trial, whetherwillingly or under subpoena issued by a court of competent
`
`jurisdiction over the witness.
`
`Parties _a_g_d their attorneys shall have access to information designated as
`
`confidential o_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 consultan13,.non-party witnesses, :_an_d any other
`
`individual not otherwise specifically covered by the terms of this order may be
`
`afforded access to confidential o_r highly confidential information in accordance
`
`with the tenns 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 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 understoodand 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 fog shall retain the
`
`original.
`
`5) Disclosure to Independent Experts or Consultants.
`
`in addition to meeting the requirements.of paragraph 4, anyparty or attorney
`
`proposing to share disclosed information with an independent expert or
`
`consultant must also notify the party which designated the information as
`
`protected. Notification must be personally served or fon/varded by certified mail,
`
`return receipt requested, and shall provide notice of the name, address,
`
`8
`
`

`

`
`
`occupation and professional background of the expert or independent
`
`consuhant
`
`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.
`
`lfthe 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 needgfor disclosure anda 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 fonn 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 infonn 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. 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 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. 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.
`
`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.
`
`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 information,
`
`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 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 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 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 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.
`
`10
`
`

`

`
`
`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
`
`‘ guantity of non—confidential material is then withheld from the public record.
`
`Likewise, when a multi—page document is in issue, reasonableness would dictate
`I
`
`that redaction of the portions or pages containing confidential material be
`
`effected when only some small number of pages contain such material. In
`
`
`conLrast, if almost every page of the document contains some confidential
`
`ma erial, it may be more reasonable to simply submit the entire document under
`
`se i. Occasions when a whole document or brief must be submitted under
`
`se I should be very rare.
`
`Pr tected 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:
`
`11
`
`

`

`
`
`CONHDENTIAL
`
`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
`
`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
`
`asprotected 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 oflnformation 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. lf 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.
`
`12
`
`

`

`
`
`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 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 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, summariesgand the
`
`'13
`
`

`

`
`
`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 A
`
`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
`
`
`
`Howard E. Sandler
`Attorney for Opposer, Hera, LLC
`
`(Insert Signature Date)
`
`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]
`
`14
`
`

`

`
`
`JOSEPH E. MUETH
`LAW CORPORATION
`PATENTS, TRADEMARKS, COPYRIGHT
`CORPORATE CENTER
`225 SOUTH LAKE AVENUE. 8'“ FLOOR
`
`PASADENA, CALIFORNIA 9ll0I
`FAX (626) 554-6862
`TELEPHONE (626) 584-0396
`
`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.
`forward to your response.
`
`In any event, we look
`
`Very,t
`
`l yours,
`
`cc: Dr. Herbert W. Spencer lll
`
`JEM/Iv
`
`

`

`
`
`P.@2
`
`American Electric Power
`Service Corporation
`1 Flrvarsrda Plaza
`Columbus, OH 432l5~2373
`il€|'J.C0lll
`
`61¢-718-1000
`
`DEC- 1 7-2884
`
`1 1 = 26
`
`2'.
`
`“ m
`
`AMERICAN ‘°
`ELECTRIC
`KW!!!
`
`' December 15. 2004
`
`, Joseph E. Mueth, Esq.
`, Corporate Center
`- 225 South Lake Avenue, 8"‘ Floor
`1 Pasadna, California 91101
`
`I Saul Ewing LLP
`; 100 South Charles Street
`: Baltimore, Maryland 21201
`
`Donald R. Hug
`Environmental Elements Corporation
`3700 Koppers Street
`, Baltimore, Maryland 21227
`
`Hamon Research~Cottrell, Inc.
`I 58 East Main Street
`Somerville, New Jersey 08876
`5 Attention: Philip Moynihan
`
`Wahloo, Inc.
`i‘ 3600 East Segerstrom Avenue
`Santa Ana, California 92704
`Attention: James Clark 111
`
`A 1
`
`James L. Reeves
`Assistant General Counsel
`614 716-2956 Telephone
`614 716-1687 Fax
`jiI.‘eeveS@AEP.com
`
`. Re: Settlement Agreement between EC&C Tedmologies, Inc.,
`|
`Hamon Research-Cottrell, Inc., and Environmental Elemens
`Corporation — Effective September 2, 2003. Your docket 279-101
`
`I
`
`I Dear Mr. Mueth:
`
`l i
`
`M 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, whidi we are happy
`to discuss with the parties. However, it is my understanding that EG&C
`Technologies, Inc. intends to objed to the production on grounds of
`confidentiality, further supported by the fact that the attorney representing Hera
`
`

`

`
`
`DEC-17-2BZ4
`
`11126
`
`I.»
`
`'9
`
`pg-
`
`P.B3
`
`LLC is a principal in Hera, LLC, making it difficull; from EC&C’s perspective, to
`fashion an appropriate confidenfiality 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 if you
`would let me know of any response you receive from Evironmental Elements,
`Corporafion. Thank you.
`
`Very truly yours,
`
`9M%W
`
`James L. Reeves
`Assistant General Counsel
`
`TUTRL P.Z3
`
`

`

`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. Sandler
`
`Hera, LLC
`23792 Rockfield Blvd., Suite 100
`Lake Forest, CA 92630
`
`Dated: December 17, 2004
`
`-
`
`Joseph E. Mueth, Esquire
`Joseph E. Mueth Law Corporation
`225 South Lake Avenue, 8"‘ Floor
`Pasadena, California 91101
`
`

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