`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Civil Action No. 19-1334-CJB
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`MIDWEST ENERGY EMISSIONS
`CORP. and MES INC.,
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`Plaintiffs,
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`v.
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`ARTHUR J. GALLAGHER & CO., et al.,
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`Defendants.
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`James M. Lennon, DEVLIN LAW FIRM, Wilmington, DE; Bradley W. Caldwell, Jason D.
`Cassady, John Austin Curry, Justin T. Nemunaitis, Daniel R. Pearson, Adrienne R. Dellinger,
`CALDWELL CASSADY CURRY P.C., Dallas, TX; Attorneys for Plaintiffs.
`
`Kenneth L. Dorsney and Cortlan S. Hitch, MORRIS JAMES LLP, Wilmington, DE; Jeff Dyess,
`Paul Sykes and Benn Wilson, BRADLEY ARANT BOULT CUMMINGS LLP, Birmingham,
`AL; Jessica Zurlo, BRADLEY ARANT BOULT CUMMINGS LLP, Washington, D.C.,
`Attorneys for Defendants CERT Operations IV LLC, CERT Operations V LLC, CERT
`Operations RCB LLC, Senescence Energy Products, LLC, Rutledge Products, LLC, Springhill
`Resources LLC, Buffington Partners LLC, Bascobert (A) Holdings LLC, Larkwood Energy
`LLC, Cottbus Associates LLC, CERT Operations II LLC, and Marquis Industrial Company,
`LLC.
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`Jack B. Blumenfeld, Brian P. Egan and Anthony D. Raucci, MORRIS, NICHOLS, ARSHT &
`TUNNELL LLP, Wilmington, DE; Richard W. Mark, Joseph Evall and Paul J. Kremer,
`GIBSON, DUNN & CRUTCHER LLP, New York, NY; David Glandorf, GIBSON, DUNN &
`CRUTCHER LLP, Denver, CO; Attorneys for Defendants AJG Iowa Refined Coal LLC, Arbor
`Fuels Company, LLC, Belle River Fuels Company, LLC, Canadys Refined Coal, LLC, Chouteau
`Fuels Company, LLC, Coronado Refined Coal, LLC, DTE Energy Resources, LLC, Erie Fuels
`Company, LLC, George Neal North Refined Coal, LLC, George Neal Refined Coal, LLC,
`Hastings Refined Coal, LLC, Huron Fuels Company, LLC, Jasper Fuels Company, LLC,
`Jefferies Refined Coal, LLC, Joppa Refined Coal LLC, Louisa Refined Coal, LLC, Newton
`Refined Coal, LLC, Portage Fuels Company, LLC, Superior Fuels Company 1, LLC, Walter
`Scott Refined Coal LLC, and Williams Refined Coal, LLC.
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`Nicole A. DiSalvo, Jessica R. Kunz and Daniel S. Atlas, SKADDEN, ARPS, SLATE,
`MEAGHER & FLOM LLP, Wilmington, DE; Douglas R. Nemec and Leslie A. Demers,
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP, New York, NY; Attorneys for
`Defendant Alistar Enterprises, LLC.
`
`
`MEMORANDUM OPINION
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`
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 2 of 14 PageID #: 16408
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`November 3, 2023
`Wilmington, Delaware
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`
`BURKE, United States Magistrate Judge
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`This is a patent action filed by Plaintiffs Midwest Energy Emissions Corp. (“Midwest
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`Energy”) and MES Inc. (“MES” and collectively with Midwest Energy, “Plaintiffs” or “ME2C”)
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`against 34 Defendants, in which Plaintiffs assert five patents-in-suit. The Court has set out a
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`listing of all of the parties and asserted patents in its recent October 16, 2023 Memorandum
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`Opinion (“October 16, 2023 MO”), (D.I. 586 at 2); it incorporates that discussion by reference
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`here. Presently pending before the Court is Defendants’ motion for summary judgment No. 6:
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`no contributory infringement under 35 U.S.C. § 271(c) (the “Motion”). (D.I. 568) ME2C
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`opposes the Motion. For the reasons set forth below, the Motion is DENIED.1
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`I.
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`BACKGROUND
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`ME2C commenced this action on July 17, 2019. (D.I. 1) Defendants filed the instant
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`Motion on March 23, 2023. (D.I. 527; see also D.I. 568) The Motion was fully briefed as of
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`April 18, 2023, (D.I. 555), and the Court held oral argument on the Motion (as well as other
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`summary judgment motions) on May 17, 2023, (D.I. 581 (“Tr.”)). A trial is set to begin on
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`November 13, 2023. (D.I. 507)
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`
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`The Court here writes primarily for the parties, and so any facts relevant to this
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`Memorandum Opinion will be discussed in Section III below.
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`II.
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`STANDARD OF REVIEW
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`1
`The parties have jointly consented to the Court’s jurisdiction to conduct all
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`proceedings in this case, including trial, the entry of final judgment and all post-trial
`proceedings. (D.I. 398)
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`2
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`
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 3 of 14 PageID #: 16409
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`The Court incorporates by reference the standard of review for summary judgment
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`motions, which it set out in the October 16, 2023 MO, (D.I. 586 at 3-4), and the summary
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`judgment-related legal standards specifically relating to claims of patent infringement, which it
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`set out in an October 17, 2023 Memorandum Opinion, (D.I. 588 at 3).
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`III. DISCUSSION
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`This case relates to mercury control at coal-fired power plants (“power plants”). (See
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`D.I. 546, ex. A at 10, at ¶ 24) In 1990, Congress required the United States Environmental
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`Protection Agency (“EPA”) to prepare regulations addressing air pollutants, including mercury.
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`(Id. at 18, at ¶ 45) Then in 2004, Congress created a new tax credit to promote the production of
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`refined coal (“Section 45 tax credits”); pursuant to this law, a refined coal producer can claim a
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`tax credit for each ton of refined coal sold to a power plant that results in a 40% reduction in
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`mercury emissions and a 20% reduction in NOx emissions. (Id. at 20-22, at ¶¶ 52-53) In 2011,
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`the EPA finalized national standards to reduce mercury (and other toxic air pollutants) from
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`power plants, which are known as the Mercury and Air Toxics Standards (“MATS”). (Id. at 19,
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`at ¶ 50; see also D.I. 406 at ¶ 55) Most power plants were required to comply with this rule by
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`2015, unless granted a one-year extension to 2016. (D.I. 546, ex. A at 19-20, at ¶ 50)
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`The inventors of the asserted patents were researchers at the Energy & Environmental
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`Research Center (“EERC”) studying the issue of mercury capture. (Id. at 19, at ¶¶ 48-49) The
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`asserted claims of the asserted patents2 relate to methods for reducing mercury emissions from
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`2
`The '147 patent issued on May 1, 2012. (D.I. 533, ex. 2 at 1) The '114 patent
`issued on July 9, 2019. (Id., ex. 1 at 1) The '225 patent issued on March 17, 2020. (Id., ex. 3 at
`1) The '517 patent issued on March 24, 2020. (Id., ex. 4 at 1) The '430 patent issued on June 2,
`2020. (Id., ex. 5 at 1)
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`
`3
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 4 of 14 PageID #: 16410
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`power plants with the use of bromine-enhanced coal (or “refined coal”) and a sorbent such as
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`activated carbon. (D.I. 533, exs. 1-5; see also D.I. 546, ex. A at 19, at ¶ 49 & at 32, at ¶ 70)
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`In this case, ME2C asserts that Defendants are liable for, inter alia, contributory
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`infringement of certain method claims of the asserted patents by manufacturing and then selling
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`refined coal to non-party power plants. (D.I. 546, ex. A at 123, at ¶ 99; see also D.I. 406 at ¶¶
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`67, 208, 217) Specifically, Defendants3 are alleged to have: (1) purchased un-refined coal from
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`their power plant customers; (2) added Mer-Sorb, which contains a bromide compound, to the
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`coal;4 (3) sold the now refined coal back to the power plant (at a cheaper price than what the
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`power plant paid for the coal); and (4) physically transferred the coal back to the power plant on
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`conveyer belts leading to the combustion chambers of the power plants. (D.I. 546, ex. A at 119-
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`24, at ¶¶ 98-99) The power plants are alleged to then inject activated carbon (“ACI”) to the
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`process in which refined coal is combusted—which enables additional mercury capture so that
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`
`3
`There are 28 “RC Defendants” that owned or leased a Refined Coal Facility that
`manufactured and sold refined coal to a power plant during the relevant time. (D.I. 546, ex. A at
`119-20, at ¶ 98; D.I. 528 at 4) Five of the remaining defendants (four CERT Operations
`Defendants and AJG Iowa Refined Coal LLC) are alleged to have participated in the operation,
`production and delivery of refined coal to the power plants, and DTE Energy Resources, LLC is
`alleged to have either been the alter ego of Defendants that engaged in contributory infringement
`or to have used such Defendants as its agent. (D.I. 528 at 4; D.I. 546, ex. A at 46-56, at ¶¶ 85-
`94; D.I. 545 at 10-11) The Court recently granted summary judgment in favor of Defendants as
`to Plaintiffs’ contributory infringement claims against the CERT Operations Defendants and
`AJG Iowa Refined Coal LLC. (D.I. 593 at 8) So for purposes of this Motion, it appears that
`contributory infringement claims against 29 Defendants (the 28 RC Defendants and DTE) are
`still at issue.
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`To determine the amount of Mer-Sorb to apply, Defendants relied on reports
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`provided by the EERC following refined coal testing; Defendants would apply an amount
`sufficient to achieve mercury emissions reductions that would qualify for Section 45 tax credits.
`(D.I. 546, ex. A at 42, at ¶ 81; id. at 62-63, at ¶ 99)
`4
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` 4
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 5 of 14 PageID #: 16411
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`the power plants can meet MATS requirements—in a manner that allegedly amounts to direct
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`infringement of the patents. (Id. at 62-63, at ¶ 99; id. at 125, at ¶ 102)
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`The instant Motion focuses on ME2C’s contributory infringement claims. (D.I. 568 at ¶
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`1) To prove contributory infringement, a patentee must demonstrate that an alleged contributory
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`infringer has sold, offered to sell or imported into the United States a material or apparatus for
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`use in practicing a patented process “knowing the same to be especially made or especially
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`adapted for use in an infringement of such patent, and not a staple article or commodity of
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`commerce suitable for substantial noninfringing use[.]” 35 U.S.C. § 271(c); see also Lucent
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`Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1320 (Fed. Cir. 2009).
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`With the Motion, Defendants move for summary judgment of no contributory
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`infringement for two reasons. First, they argue that refined coal has “[a]lways [h]ad [s]ubstantial
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`[n]on-[i]nfringing [u]ses.” (D.I. 528 at 21 (emphasis omitted)) Second, they contend that
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`refined coal is not especially made or adapted for use with ACI. (Id. at 24) The Court will
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`assess each argument in turn.
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`A.
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`Substantial Non-infringing Use
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`To establish contributory infringement, ME2C must prove, inter alia, that there are no
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`substantial non-infringing uses for the refined coal at issue. Toshiba Corp. v. Imation Corp., 681
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`F.3d 1358, 1362 (Fed. Cir. 2012). “[N]on-infringing uses are substantial when they are not
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`unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.” Id. (quoting
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`Vita–Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009)).
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`Defendants begin by noting that the accused product here is refined coal (i.e., coal that
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`has been treated with added bromide); they then assert that when assessing the issue of
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`substantial non-infringing uses, one must not look solely at the accused uses of refined coal
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`5
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 6 of 14 PageID #: 16412
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`during the accused time period (i.e., as to refined coal sold by a particular Defendant to a specific
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`power plant after MATS went into effect). (D.I. 528 at 22; D.I. 555 at 9) Instead, the proper
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`inquiry, according to Defendants, looks at all uses of refined coal, even refined coal (1) produced
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`by entities other than the Defendants and (2) produced before the damages periods here. (Tr. at
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`109 (“[T]he bottom line is you look at all uses of the accused product.”)) And when that is done,
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`Defendants assert that “there is no dispute that that [refined coal] was in widespread non-
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`infringing use throughout the United States for the duration of the Section 45 program, which ran
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`from 2009 to 2021, both before and after each patent-in-suit issued.” (D.I. 528 at 22) More
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`specifically, Defendants point to refined coal that was sold to: (1) power plants that never used
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`ACI and that have not been sued in this case; (2) power plants before they installed ACI systems;
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`and (3) power plants that did not use their ACI systems continuously—all of which amounts to,
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`according to Defendants, nearly 60% of all refined coal produced in this period. (Id. at 22-23;
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`D.I. 555 at 8; Defendants’ Summary Judgment and Daubert Motions Slides at Slide 23)
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`Plaintiffs, for their part, contend that Defendants are wrongly focusing on refined coal in
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`general—instead of on the refined coal that was sold and delivered by Defendants to the relevant
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`power plants during the relevant damages period. (D.I. 545 at 15-17; Tr. at 128-29) The start
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`date for the damages period in this case ranges from July 17, 2013 through July 17, 2019,
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`depending on the particular Defendant at issue. (See D.I. 547, ex. A. at ex. C-1; id., ex. B at ex.
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`D-2, D-3)5 It is not disputed that during the damages period, Defendants only sold coal to plants
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`with ACI systems—it is not the case that in this period Defendants sold some refined coal to the
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`5
`For certain Defendants, the damages period begins before the federal government
`enacted MATS because certain states had earlier passed their own state versions of MATS. (See
`Tr. at 125-26)
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`6
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 7 of 14 PageID #: 16413
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`accused power plants with ACI systems, and additional coal to power plants that did not have
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`ACI systems. (Tr. at 110-11, 129-31)
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`The Court sides with Plaintiffs here. (See id. at 129) As the Court has previously held in
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`this case, the “proper inquiry is whether the accused refined coal ‘as sold and delivered’ lacks
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`substantial non-infringing use.” Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co.,
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`Civil Action No. 19-1334-RGA-CJB, 2021 WL 2036671, at *13 (D. Del. May 20, 2021)
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`(emphasis added; internal quotation marks and citations omitted), adopted in relevant part, 2021
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`WL 4350591 (D. Del. Sept. 24, 2021); see also, e.g., In re Bill of Lading Transmission &
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`Processing Sys. Pat. Litig., 681 F.3d 1323, 1338 (Fed. Cir. 2012) (“For purposes of contributory
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`infringement, the inquiry focuses on whether the accused products can be used for purposes
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`other than infringement.”) (certain emphasis added; certain emphasis omitted); Hodosh v. Block
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`Drug Co., Inc., 833 F.2d 1575, 1578 (Fed. Cir. 1987) (noting that the language of the
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`contributory infringement statute “deals with the material actually sold by the accused and the
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`uses made of it by its purchasers”) (emphasis added); Env’t Mfg. Sols., LLC v. Peach State Labs,
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`Inc., No. 6:09-cv-395-Orl-28DAB, 2011 WL 1262659, at *16 (M.D. Fla. Mar. 31, 2011)
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`(explaining that “the question of whether urea hydrochloride itself is suitable for substantial non-
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`infringing use is not relevant to the present contributory infringement analysis” and instead “the
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`relevant question is whether the Accused Products are staple articles of commerce with
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`substantial non-infringing use”) (emphasis in original); cf. Nalco Co. v. Chem-Mod, LLC, 883
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`F.3d 1337, 1357 (Fed. Cir. 2018) (finding that the plaintiff adequately stated a claim for
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`contributory infringement where it pleaded that “[a]s sold and delivered to the Refined Coal
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`LLCs or operators of coalfired power plants using the Chem-Mod[] Solution, the proprietary
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`additives MerSorb and S-Sorb, which are specifically formulated to be used with the Chem-
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`7
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 8 of 14 PageID #: 16414
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`Mod[] Solution in coal-fired power plants, have no substantial noninfringing uses” and “[w]hen a
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`coal-fired power plant or a Refined Coal LLC receives MerSorb and S-Sorb it purchased, [the
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`buyer] has no other use for MerSorb and S-Sorb except to use those additives in the Chem-
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`Mod[] Solution”) (emphasis added).
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`In light of this caselaw, to determine whether the “no substantial non-infringing uses”
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`element of Plaintiffs’ contributory infringement claim has been met, we must look not to whether
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`refined coal, as a general matter, has any substantial non-infringing uses. Rather, we must focus
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`on whether the accused refined coal, as it was sold and delivered by Defendants to their power
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`plant customers, could practically be used for purposes other than infringement. In other words,
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`we need to be asking whether—after the accused refined coal was sold and delivered to the
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`power plants at issue—it is reasonable to believe that something else could have been done with
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`it other than injecting activated carbon to the process in which it was combusted?6
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`6
`Defendants argue that non-infringing use of a product before the relevant patent
`issues “is proof of substantial non-infringing use”; in support, they cite to one district court case
`from 13 years ago: Tyco Healthcare Grp. LP v. Biolitec, Inc., No. C-08-3129 MMC, 2010 WL
`3324893, at *2-3 (N.D. Cal. Aug. 23, 2010). (D.I. 528 at 22; Tr. at 108) In that case, the court
`explained that the defendant offered undisputed evidence that it sold the accused consoles before
`the patents were issued, “and there is no evidence, or even allegation, that the consoles
`[defendant] sold after the subject patents issued were in any manner adapted or changed.” Tyco
`Healthcare, 2010 WL 3324893, at *3. Here, the accused refined coal is a specific refined coal
`that has been sprayed with a specific amount of Mer-Sorb that is then sold to a specific power
`plant that subsequently utilizes its ACI system to capture additional mercury. (D.I. 546, ex. A at
`62-63, at ¶ 99; D.I. 545 at 17) And so in this case, unlike in Tyco, the refined coal that
`Defendants sold after the subject patents were issued was specifically adapted for use by
`particular power plants. Moreover, the contributory infringement statute “does not require that
`the [component or material at issue] have been originally designed with the goal of infringing a
`patent.” Cipla Ltd. v. Sunovion Pharms. Inc., 174 F. Supp. 3d 869, 873 (D. Del. 2016) (rejecting
`the defendant’s argument that the fact that its new drug application was approved more than
`seven years before the asserted patent issued meant that continuing to make that product after the
`patent’s issuance cannot satisfy the “made or adapted for use” element of contributory
`infringement).
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`
`8
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 9 of 14 PageID #: 16415
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`Plaintiffs assert that the accused refined coal, as sold and delivered to Defendants’ power
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`plant customers, has no substantial non-infringing use; they argue that this is so because the
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`plants had to combust the refined coal at issue while using in-house ACI systems in order to: (1)
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`meet the plants’ mercury emissions limits set out in MATS; and (2) remain operational. (D.I.
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`545 at 15; Tr. at 124, 133) And Plaintiffs muster some evidence in support of this position. (D.I.
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`545 at 15)7 For example, Plaintiffs’ expert, Philip J. O’Keefe, explains that power plants must
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`comply with Title V of the Clean Air Act (“CAA”) in order to operate; they are accordingly
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`issued permits that require them to control emissions that contribute to air pollution in order to
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`stay operational. (D.I. 546, ex. A at 15-16, at ¶¶ 40-41 & n.4) Mr. O’Keefe further explained
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`that before providing the coal to the power plants, Defendants apply a specific amount of Mer-
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`Sorb to the coal as indicated by the EERC test reports (which identify the amount of Mer-Sorb
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`required for refined coal to meet the mercury capture threshold for Section 45 tax credits), and
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`the power plants must capture additional mercury using their ACI systems in order to meet
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`MATS requirements. (Id. at 62-63, at ¶ 99) The deponent for the Mid-American power plants,8
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`William Whitney, testified that ACI is listed in the plants’ permits, which means that the plant is
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`required to operate with ACI in order to comply with the mercury emissions limits set out in the
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`permits. (D.I. 548, ex. 1 at 12, 45-46; D.I. 546, ex. A at 16 n.4 & 17 n.6; Plaintiffs’ Dispositive
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`Motions Hearing Slides at Slides 25-26) A May 2015 e-mail from an individual employed by
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`CERT LLC notes that power plants were relying on Mer-Sorb together with ACI “to meet their
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`
`7
`Defendants’ contention in their reply brief that Plaintiffs “offer no evidence that
`power plants that burned Refined Coal without ACI before MATS came into effect could not
`continue to do so after MATS went into effect” is therefore without merit. (D.I. 555 at 11)
`
` 8
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`Certain AJG RC Defendants contracted to sell refined coal to certain Mid-
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`American power plants. (D.I. 546, ex. A at 58, at ¶ 96; D.I. 528 at ix)
`9
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 10 of 14 PageID #: 16416
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`MATS compliance standards.” (D.I. 548, ex. 20; see also D.I. 532 at ¶ 2) A deponent who was
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`in charge of AJG’s refined coal program, Sally Batanian,9 hypothesized that if a power plant
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`using ACI to comply with mercury regulations turned off its ACI system, the mercury emissions
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`would increase and the plant would be subject to penalties from the EPA. (D.I. 546, ex. A at 62-
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`63, at ¶ 99 & n.83) The Court agrees with Plaintiffs that this evidence supports a finding that the
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`accused refined coal has no substantial non-infringing uses.
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`Defendants do have a no-contributory-infringement argument that considers the proper
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`material to look at in the “no substantial non-infringing use” analysis (i.e., that takes into account
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`the accused refined coal, as it is sold and delivered to Defendants’ power plant customers). In
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`that regard, Defendants argue that even their power plant customers that had ACI systems in
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`place during the relevant time periods (i.e., after MATS went into effect) did not use their ACI
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`systems continuously during those periods. (D.I. 528 at 22-23; D.I. 555 at 12; Tr. at 115-16) To
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`that end, Defendants’ expert, Dr. Constance Senior, explains that ACI systems require regular
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`maintenance, during which the ACI system is shut off; she asserts that the power plants at issue
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`here likely continued to burn refined coal during these periods. (D.I. 529, ex. 1 at ¶¶ 195-96)
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`Plaintiffs retort that these interruptions are “minimal” and that they demonstrate “at most
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`. . . the existence of a fact dispute as to whether such an interruption constitutes a substantial
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`non-infringing use.” (D.I. 545 at 17) In support, Plaintiffs cite to the deposition testimony of
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`Mr. Whitney, who: (1) estimated that the Mid-American power plants turn off their ACI systems
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`for maintenance only for a total of “hours” in a given year and (2) described the plants’ use of
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`
`9
`It appears that Ms. Batanian worked for “AJG Coal LLC [or] other Arthur J.
`Gallagher & Co. entities”—entities that allegedly ran the AJC RC LLC Defendants. (D.I. 546,
`ex. A at 47, at ¶ 87)
`
`10
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`
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 11 of 14 PageID #: 16417
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`ACI systems as “continuous[].” (D.I. 548, ex. 1 at 11-12, 45-46) Mr. O’Keefe also provided a
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`chart estimating the amount of time the relevant power plants combusted coal while the ACI
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`system was operating; it suggests that plants were combusting coal while the ACI system was
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`shut off approximately 1-10% of time. (D.I. 546, ex. C at ¶ 18; see also D.I. 556, ex. 50 at 304-
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`07)10 Similarly, Defendants’ own expert, Dr. Senior, opined that “it is plausible that at least 5%
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`of each plant’s Refined Coal was burned without activated carbon treatment of the flue gas after
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`MATS compliance commenced.” (D.I. 529, ex. 1 at ¶ 121)
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`A genuine issue of material fact exists regarding whether a power plant’s burning of
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`refined coal while its ACI system is shut down for maintenance constitutes a substantial non-
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`infringing use. See, e.g., Johns Hopkins Univ. v. Alcon Lab’ys, Inc., Civil Action No. 15-525-
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`SLR-SRF, 2018 WL 11424700, at *14 (D. Del. Apr. 5, 2018) (concluding that whether the
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`defendant’s product had substantial non-infringing uses presented a question of fact for the jury,
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`where the testimony suggested that the non-infringing use at issue occurred with regard to either
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`2-8%, approximately 5%, or approximately 15% of all uses in the relevant time period), report
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`and recommendation adopted, 2018 WL 11424387 (D. Del. Apr. 25, 2018); Fuji Mach. Mfg. Co.
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`v. Hover-Davis, Inc., 60 F. Supp. 2d 111, 120 (W.D.N.Y. 1999) (denying a motion for summary
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`judgment on the question of whether an allegedly infringing product was suitable for a
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`substantial non-infringing use, where there was a dispute of fact over “how” the accused product
`
`
`10
`There are two power plants to which certain Defendants provided refined coal in
`the relevant time period—the Cope and Williams plants—wherein it appears undisputed that the
`plants only used ACI in the combustion process on a “‘temporary basis[.]’” (D.I. 528 at 23
`(citation omitted)) Plaintiffs, however, confirm that they are not accusing any Defendant of
`contributory infringement with regard to the provision of refined coal to those plants. (D.I. 545
`at 16 n.10) If the Court understands things correctly, this would seem to mean that the Motion is
`moot as to contributory infringement claims against Defendants Canadys Refined Coal, LLC and
`Williams Refined Coal, LLC. (See D.I. 528 at ix)
`11
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`Case 1:19-cv-01334-CJB Document 611 Filed 11/03/23 Page 12 of 14 PageID #: 16418
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`was used). Defendants cite to a few district court cases that granted summary judgment of no
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`contributory infringement, where the courts concluded that there were necessarily substantial
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`non-infringing uses for the products at issue because about 5% or more of those uses were non-
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`infringing. (D.I. 528 at 21-22 (citing cases)) But even Defendants acknowledge that there is no
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`hard and fast numerical threshold in the law as to the amount of use that must be non-infringing
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`for a use to be deemed “substantial.” (Id. at 21) And in the Court’s view, in light of the record
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`here, a reasonable jury could conclude that a power plant’s periodic shutting-off of its ACI
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`system for maintenance (assuming that refined coal continued to be burned during that period)
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`amounted to only an “occasional” and not “substantial” period of non-infringing use. See John
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`Hopkins Univ., 2018 WL 11424700, at *14; cf. C.R. Bard, Inc. v. Advanced Cardiovascular Sys.,
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`Inc., 911 F.2d 670, 674 (Fed. Cir. 1990) (concluding that a reasonable jury could conclude that
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`substantial non-infringing uses existed for the accused product, but where there was evidence
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`that 40-60% of such uses were non-infringing).11
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`B.
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`Especially Made or Especially Adapted for Use in an Infringement of the
`Patent
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`To prove contributory infringement, Plaintiffs must also demonstrate that the refined coal
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`was “especially made or especially adapted for use in an infringement of [the] patent, and not a
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`staple article or commodity of commerce suitable for substantial noninfringing use[.]” Lucent
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`
`11
`Defendants also suggest that the EERC’s use of refined coal without ACI for
`testing purposes demonstrates that the refined coal at issue has substantial non-infringing uses.
`(D.I. 528 at 23) However, and even assuming that this “use” counts as a use of Defendant-
`produced refined coal, (see Tr. at 135), such use seems de minimis in comparison to how the
`power plants were using refined coal. (D.I. 548, ex. 33 at 4 (explaining that additives were
`applied to the coal by hand in EERC testing); D.I. 546, ex. C at ¶ 6 (Mr. O’Keefe opining that
`EERC testing does not permit Defendants to obtain Section 45 tax credits and therefore would
`not be a commercially viable operation); see also Tr. at 135)
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`Techs., Inc., 580 F.3d at 1320. Defendants argue that the refined coal at issue cannot meet this
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`element because it is made by mixing coal with bromine in an amount specified by the EERC
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`test report to qualify for Section 45 tax credits—not to encourage ACI use by power plants. (D.I.
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`528 at 24; D.I. 555 at 7-8) Plaintiffs, for their part, retort that the accused refined coal, as
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`delivered, has no other use other than to be combusted at a specific power plant where ACI will
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`be used (and thus “is especially made or adapted for use as an infringement”). (D.I. 545 at 18-
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`19; D.I. 546, ex. A at 41-46, at ¶¶ 79-84; id. at 60-62, at ¶¶ 97-98; id. at 128-30, at ¶¶ 114-18)
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`Plaintiffs’ evidence establishes a genuine issue of material fact as to whether the Accused
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`Products were especially made or especially adapted for use in the infringement of the asserted
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`patents. See, e.g., Env’t Mfg. Sols., LLC, 2011 WL 1262659, at *16.
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`IV. CONCLUSION
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`For the foregoing reasons, Defendants’ Motion is DENIED. An appropriate Order will
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`issue.
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`Because this Memorandum Opinion may contain confidential information, it has been
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`released under seal, pending review by the parties to allow them to submit a single, jointly
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`proposed, redacted version (if necessary) of the Memorandum Opinion. Any such redacted
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`version shall be submitted no later than November 8, 2023 for review by the Court. It should be
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`accompanied by a motion for redaction that shows that the presumption of public access to
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`judicial records has been rebutted with respect to the proposed redacted material, by including a
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`factually-detailed explanation as to how that material is the “kind of information that courts will
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`protect and that disclosure will work a clearly defined and serious injury to the party seeking
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`closure.” In re Avandia Mktg., Sales Pracs. & Prods. Liab. Litig., 924 F.3d 662, 672 (3d Cir.
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`13
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`2019) (internal quotation marks and citation omitted). The Court will subsequently issue a
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`publicly-available version of its Memorandum Opinion.
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`14
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