Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 1 of 10 PageID #: 16440
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`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.
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`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.
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`
`MEMORANDUM OPINION
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`

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`Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 2 of 10 PageID #: 16441
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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. 8:
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`invalidity of asserted claims under 35 U.S.C. §§ 102 (“Section 102”), 103 (“Section 103”) and
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`112 (“Section 112”) (the “Motion”). (D.I. 570) ME2C opposes the Motion. For the reasons set
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`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. 570) The Motion was fully briefed as of
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`April 18, 2023. (D.I. 555) A trial is set to begin on November 13, 2023. (D.I. 507)
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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 614 Filed 11/03/23 Page 3 of 10 PageID #: 16442
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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)
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`The burden of proving invalidity rests with the patent challenger at all times, who must
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`establish a patent’s invalidity by clear and convincing evidence in order to prevail. Microsoft
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`Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). Clear and convincing evidence places within
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`the mind of the fact finder “an abiding conviction that the truth of [the] factual contentions are
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`highly probable.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed.
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`Cir. 2009) (quoting Colorado v. New Mexico, 467 U.S. 310, 316 (1984)) (alteration in original).
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`III. DISCUSSION
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`The asserted claims of the asserted patents relate to methods for reducing mercury
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`emissions from power plants with the use of bromine-enhanced coal (or “refined coal”) and a
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`sorbent such as activated carbon. (D.I. 533, exs. 1-5; see also D.I. 546, ex. A at 19, at ¶ 49, D.I.
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`546, ex. A at 32, at ¶ 70) According to Defendants, all asserted claims cover adding additives
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`containing bromine to coal before the coal is combusted. (See D.I. 528 at 27) The '147 patent
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`was issued on May 1, 2012 from an application that was filed on April 6, 2009. (D.I. 533, ex. 2
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`at 1) The '225 patent was issued on March 17, 2020 from an application that was filed on May
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`14, 2015. (Id., ex. 3 at 1) The '114 patent was issued on July 9, 2019 from an application that
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`was filed on May 14, 2018. (Id., ex. 1 at 1) The '517 patent was issued on March 24, 2020 from
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`an application that was filed on June 4, 2018. (Id., ex. 4 at 1) The '430 patent was issued on
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`June 2, 2020 from an application that was filed on May 8, 2018. (Id., ex. 5 at 1)
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`Each asserted patent purports to claim priority to Provisional Application 60/605,640 (the
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`“'640 Provisional”), which is dated August 30, 2004. (D.I. 533, ex. 1 at 2; id., ex. 2 at 1; id., ex.
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`3
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`Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 4 of 10 PageID #: 16443
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`3 at 1; id., ex. 4 at 2; id., ex. 5 at 2; see also id., ex. 6 at 1; D.I. 546, ex. B at ¶ 53)2 The '640
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`Provisional contains Figure 2 which, along with accompanying text (together with the figure,
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`“Fig. 2”), depicts the addition of the bromine additive to the coal before going into the boiler,
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`within the boiler, or after the boiler. (D.I. 533, ex. 6 at ME2C-RC-00055880-81 (noting that
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`“[t]he [bromine] additive can be injected where desired (e.g., before, after, or within the boiler”);
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`see also D.I. 530, ex. A at ¶ 264) Fig. 2 was not included in the first non-provisional application
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`filed in the family, and it did not appear in any applications thereafter until 2018.3 (D.I. 528 at
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`27, 33; D.I. 545 at 23; see also D.I. 530, ex. A at ¶¶ 180, 202) The early utility applications that
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`did not include Fig. 2 stated that the '640 Provisional was “hereby incorporated by reference[.]”
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`(See D.I. 528 at 10; D.I. 546, ex. B at ¶ 54)
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`With the Motion, Defendants argue that the absence of Fig. 2 in intervening applications
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`defeats a claim of priority to the '640 Provisional. (D.I. 528 at 28) And without the benefit of
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`that priority date, Defendants contend that the asserted claims of the '114, '225, '430 and '517
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`patents are invalid under Section 102 and 103. (Id. at 33-34) Moreover, Defendants assert that
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`the omission of Fig. 2 from the applications leading to the '147 patent and the '225 patent means
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`that the claims of these patents lack written description support for adding bromine to coal before
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`combustion (and are thus invalid under Section 112(a)). (Id. at 33)
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`2
`Defendants argue that the asserted claims of the '114, '225, '430 and '517 patents
`are anticipated or rendered obvious by, inter alia, prior art references Sjostrom, Eckberg and
`Olson-646, which post-date Plaintiffs’ claimed August 30, 2004 priority date. (See D.I. 530, ex.
`A at ¶¶ 19, 21, 25, 27) Thus, in order for these references to render the claims invalid,
`Defendants must show that these patents have a later priority date. (See D.I. 545 at 21)
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`This means that Fig. 2 was not included in the applications leading to the '147
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`patent and the '225 patent. (See D.I. 528 at 33; D.I. 530, ex. A at ¶¶ 179-80, 202)
`4
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` 3
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`Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 5 of 10 PageID #: 16444
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`Below, the Court first assesses Defendants’ Section 102/103 arguments. Then it will turn
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`to Defendants’ written description argument.
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`A.
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`Section 102/103
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`Generally, a patent’s effective filing date (i.e., the priority date), is the date on which the
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`patent application was filed with the United States Patent and Trademark Office (“PTO”), unless
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`the patentee claims the benefit of an earlier-filed application pursuant to 35 U.S.C. § 120
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`(“Section 120”). See Cozy, Inc. v. Dorel Juv. Grp., Inc., CIVIL ACTION NO. 21-10134-JGD,
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`2023 WL 4137380, at *2-4 (D. Mass. June 22, 2023). Section 120 provides in relevant part as
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`follows:
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`An application for patent for an invention disclosed in the manner
`provided in section 112(a) . . . in an application previously filed in
`the United States, . . . which names an inventor or joint inventor in
`the previously filed application shall have the same effect, as to
`such invention, as though filed on the date of the prior application,
`if filed before the patenting or abandonment of or termination of
`proceedings on the first application or on an application similarly
`entitled to the benefit of the filing date of the first application and
`if it contains or is amended to contain a specific reference to the
`earlier filed application[.]
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`35 U.S.C. § 120. Accordingly, a patentee claiming priority to an earlier application must
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`establish that, inter alia, the invention described in the new application was disclosed in
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`accordance with 35 U.S.C. § 112(a) “in an application previously filed in the United States[.]”
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`Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1349 (Fed. Cir.
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`2010) (internal quotation marks and citation omitted).4 The United States Court of Appeals for
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`4
`Section 112 requires a patent specification to “contain a written description of the
`invention, and of the manner and process of making and using it, in such full, clear, concise, and
`exact terms as to enable any person skilled in the art to which it pertains, or with which it is most
`nearly connected, to make and use the same[.]” 35 U.S.C. § 112(a).
`5
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`Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 6 of 10 PageID #: 16445
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`the Federal Circuit has explained that the purpose of Section 120 “is to provide clear notice to
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`the public of the patentee’s claimed priority date.” Droplets, Inc. v. E*TRADE Bank, 887 F.3d
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`1309, 1320 (Fed. Cir. 2018). “Determination of a patent’s priority date is purely a question of
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`law if the facts underlying that determination are undisputed.” Id. at 1315 (internal quotation
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`marks and citation omitted).
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`Defendants first argue that Fig. 2 is “essential material,” and thus it cannot be
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`incorporated by reference into any of the asserted patents because, pursuant to 37 C.F.R. § 1.57
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`(“Section 1.57”), “[e]ssential material”—which the regulation defines as “material that is
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`necessary to . . .[p]rovide a written description of the claimed invention[] . . . as required by”
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`Section 112— may only be incorporated “by reference to a U.S. patent or U.S. patent application
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`publication[.]” (D.I. 528 at 28-29 (quoting 37 C.F.R. § 1.57(d)); D.I. 555 at 15-16)5 The '640
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`Provisional is neither of these things. (D.I. 528 at 29); see also Nomadix, Inc. v. Second Rule
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`LLC, Case No. CV 07-01946 DDP (VBKx), 2009 WL 10668158, at *25 (C.D. Cal. Jan. 16,
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`2009) (explaining that provisional applications are unpublished and are not patents or patent
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`applications).
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`However, on this record, the Court cannot conclude that Fig. 2 is essential material.
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`Defendants’ expert, Dr. Stephen Niska, asserts that Fig. 2 is essential material because having
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`reviewed “all of the intervening patent applications, [he concludes that] a POSITA—regardless
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`of how defined—would not understand any of them to provide written description support for
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`adding bromine-containing additives to coal prior to combustion unless the POSITA was
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`specifically instructed that such applications included Figure 2 and its accompanying
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`5
`For purposes of the Motion, Defendants do not dispute that the '640 Provisional
`supports the claims of the asserted patents. (D.I. 528 at 28 & n.13, 31 & n.16; D.I. 545 at 24)
`6
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`

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`description.” (D.I. 530, ex. C at ¶ 21) However, as the Court will set out below, there is
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`evidence of record that the intervening applications may provide such written description support.
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`See infra at 8-10.
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`Defendants next argue that regardless of whether the '640 Provisional is “essential,” the
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`applicants did not properly incorporate by reference the application in the relevant priority
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`chains. (D.I. 528 at 29; D.I. 555 at 17) The Federal Circuit has explained that “[t]o incorporate
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`material by reference, the host document must identify with detailed particularity what specific
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`material it incorporates and clearly indicate where that material is found in the various
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`documents.” Zenon Env’t, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)
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`(internal quotation marks and citation omitted) (emphasis in original). “Whether and to what
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`extent a patent incorporates material by reference [] is a legal question[.]” Hollmer v. Harari,
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`681 F.3d 1351, 1355 (Fed. Cir. 2012). The standard that applies to this question is whether one
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`reasonably skilled in the art would understand that the host document “describes the material to
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`be incorporated by reference with sufficient particularity.” Zenon, 506 F.3d at 1379 (internal
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`quotation marks and citation omitted).
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`The intervening applications in the priority chain with respect to the '114 patent state that
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`the '640 Provisional is “hereby incorporated herein by reference to the extent appropriate.” (D.I.
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`530, ex. A at ¶ 170; D.I. 533, ex. 12 at 25-27) Similarly, with respect to the '225, '430 and '517
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`patents, the intervening patents to which they claim priority state that priority is claimed to the
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`'640 Provisional “to the extent appropriate[.]” (D.I. 530, ex. A at ¶ 170; D.I. 533, ex. 12 at 19-
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`21) Defendants contend that this language, in just incorporating the '640 Provisional “to the
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`extent appropriate,” is not a complete incorporation and fails to convey what specifically is
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`incorporated. (D.I. 528 at 30; D.I. 555 at 17)
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`7
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`Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 8 of 10 PageID #: 16447
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`Here, the Court agrees with Defendants.6 In arguing that the applicants properly
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`incorporated by reference the '640 Provisional, Plaintiffs contend that “[t]he patentee need not
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`identify specific portions of the application or otherwise expressly state that the prior application
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`is incorporated ‘in its entirety.’” (D.I. 545 at 25-26) They cite in support to: (1) MPEP
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`201.06(c), which notes that the phrase “hereby incorporated by reference” is sufficient to
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`incorporate a prior application; and (2) Harari v. Lee, 656 F.3d 1331, 1335-36 (Fed. Cir. 2011)
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`which held that entire applications were incorporated by the language that the disclosures of the
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`applications are “hereby incorporate[d] by reference.” (Id.) But Plaintiffs are sidestepping the
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`fact that the relevant language at issue here is not simply that the application was “incorporated
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`by reference,” full stop, but that it is “incorporated by reference to the extent appropriate.” Cf.
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`Zenon, 506 F.3d at 1379 (concluding that incorporating only “relevant disclosures” of a prior
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`patent does not incorporate the entirety of the document). This language does not tell us what is
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`incorporated (or to what “extent”), or where that material is found in the '640 Provisional. (D.I.
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`528 at 30; D.I. 555 at 17; D.I. 530, ex. C at ¶¶ 27-28)
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`Finally, Defendants argue that the '114, '225, '430 and '517 patents lose their priority
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`claims in the absence of Fig. 2 throughout the priority chains. (D.I. 528 at 30-33; D.I. 555 at 17-
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`19) That is not the end of the inquiry, however, because Plaintiffs point to allegedly alternate
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`support for adding bromine to coal before combustion that Defendants say fails. (D.I. 545 at 28-
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`30)
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`Plaintiffs’ expert details how the intervening applications contain additional disclosures
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`that support claims reciting the addition of bromine to coal before combustion. (D.I. 546, ex. B
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`6
`In inter partes review proceedings, the Patent Trial and Appeal Board agreed with
`Defendants on this issue. (D.I. 556, ex. 41 at 30-31; id., ex. 42 at 31-32)
`8
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`Case 1:19-cv-01334-CJB Document 614 Filed 11/03/23 Page 9 of 10 PageID #: 16448
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`at ¶¶ 86-89, 91-93, 96-102; Plaintiffs’ Dispositive Motions Hearing Slides at Slides 61-66)
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`Defendants’ expert explains why he disagrees with Plaintiffs’ expert in this regard. (D.I. 530, ex.
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`A at ¶¶ 289-90; id., ex. C at ¶¶ 35-37, 45-46) These are disputes of material fact that the jury
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`must resolve. Thus, in the end, the Court must deny this portion of Defendants’ Motion.
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`B. Written Description
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`Defendants contend that because the applicants did not copy Fig. 2 into the applications
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`leading to the '147 and '225 patents, these patents lack written description of adding bromine to
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`coal before combustion and are therefore invalid under Section 112(a). (D.I. 528 at 33; D.I. 555
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`at 19) The test for sufficiency of a patent’s written description, as required by Section 112(a), “is
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`whether the disclosure of the application relied upon reasonably conveys to those skilled in the
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`art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad
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`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The written description
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`inquiry is a question of fact. Id. “Compliance with the written description requirement . . . is
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`amenable to summary judgment in cases where no reasonable fact finder could return a verdict
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`for the non-moving party.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed.
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`Cir. 2008). “A party must prove invalidity for lack of written description by clear and
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`convincing evidence.” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed.
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`Cir. 2015).
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`Because the '225 patent contains similar disclosures that Plaintiffs’ expert relies upon in
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`the above argument, there is a dispute of fact as to whether the '225 patent’s specification
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`provides sufficient support for the patent’s claims. (D.I. 545 at 31; see also '225 patent, col.
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`20:34-35) As for the '147 patent, the claims require “injecting the particulate sorbent material at
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`a sorbent material injection rate and injecting separately the bromine containing promoter[.]”
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`9
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`(See, e.g., '147 patent, col. 24:35-37; see also D.I. 545 at 31) Plaintiffs’ expert opines that the
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`specification provides support for this limitation. (D.I. 546, ex. B at ¶¶ 228-33) This portion of
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`Defendants’ Motion is therefore denied.
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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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`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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`10
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