Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 1 of 8 PageID #: 16566
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Civil Action No. 19-1334-CJB
`
`
`
`MIDWEST ENERGY EMISSIONS
`CORP. and MES INC.,
`
`
`
`
`
`
`
`
`
`
`Plaintiffs,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`ARTHUR J. GALLAGHER & CO., et al.,
`
`
`
`
`
`
`Defendants.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`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.
`
`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.
`
`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
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 2 of 8 PageID #: 16567
`
`November 8, 2023
`Wilmington, Delaware
`
`
`BURKE, United States Magistrate Judge
`
`This is a patent action filed by Plaintiffs Midwest Energy Emissions Corp. (“Midwest
`
`Energy”) and MES Inc. (“MES” and collectively with Midwest Energy, “Plaintiffs” or “ME2C”)
`
`against 34 Defendants, in which Plaintiffs assert five patents-in-suit. The Court has set out a
`
`listing of all of the parties and asserted patents in its October 16, 2023 Memorandum Opinion
`
`(“October 16, 2023 MO”), (D.I. 586 at 2); it incorporates that discussion by reference here.
`
`Presently pending before the Court is Defendants’ motion for summary judgment No. 7: no
`
`inducement under 35 U.S.C. § 271(b) (“Motion”). (D.I. 569) ME2C opposes the Motion. For
`
`the reasons set forth below, the Motion is DENIED.1
`
`I.
`
`BACKGROUND
`
`ME2C commenced this action on July 17, 2019. (D.I. 1) Defendants filed the instant
`
`Motion on March 23, 2023. (D.I. 527; see also D.I. 569) The Motion was fully briefed as of
`
`April 18, 2023. (D.I. 555) A trial is set to begin on November 13, 2023. (D.I. 507)
`
`As the Court writes primarily for the parties here, any facts relevant to this Memorandum
`
`Opinion will be discussed in Section III below.
`
`II.
`
`STANDARD OF REVIEW
`
`The Court incorporates by reference the standard of review for summary judgment
`
`motions, which it set out in the October 16, 2023 MO, (D.I. 586 at 3-4), and the summary
`
`
`1
`The parties have jointly consented to the Court’s jurisdiction to conduct all
`
`proceedings in this case, including trial, the entry of final judgment and all post-trial
`proceedings. (D.I. 398)
`
`2
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 3 of 8 PageID #: 16568
`
`judgment-related legal standards specifically relating to claims of patent infringement, which it
`
`set out in an October 17, 2023 Memorandum Opinion, (D.I. 588 at 3). Further relevant legal
`
`standards will be discussed below in Section III.
`
`III. DISCUSSION
`
`In this case, ME2C asserts that all Defendants indirectly infringed certain method claims
`
`of the asserted patents by manufacturing and selling refined coal to non-party power plants. (D.I.
`
`406 at ¶¶ 67, 208, 217; D.I. 546, ex. A at 123, at ¶ 99) The non-party power plants are alleged to
`
`add activated carbon to the process in which refined coal is combusted, in a manner that amounts
`
`to direct infringement of the patents. (D.I. 406 at ¶¶ 208, 217; D.I. 546, ex. A at 125, at ¶ 102;
`
`D.I. 546, ex. A at 127, at ¶ 108)
`
`The Motion here is brought by all Defendants. It seeks summary judgment with respect
`
`to all of the asserted claims of all asserted patents regarding Plaintiffs’ induced infringement
`
`allegations against them, made pursuant to 35 U.S.C. § 271(b) (“Section 271(b)”). (D.I. 573 at
`
`2)
`
`Section 271(b) states that “[w]however actively induces infringement of a patent shall be
`
`liable as an infringer.” 35 U.S.C. § 271(b) (emphasis added). Inducement requires a showing
`
`that the alleged inducer knew of the patent, knowingly induced the infringing acts, and possessed
`
`a specific intent to encourage another’s infringement of the patent. Vita-Mix Corp. v. Basic
`
`Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009). With regard to the active inducement
`
`requirement, the United States Court of Appeals for the Federal Circuit has explained that a
`
`patentee must plead and prove that the accused inducer “took an affirmative act to encourage
`
`[direct] infringement[,]” Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014);
`
`see also Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 760 (2011) (“The addition of the
`
`3
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 4 of 8 PageID #: 16569
`
`adverb ‘actively’ suggests that the inducement must involve the taking of affirmative steps to
`
`bring about the desired result[.]”), which in turn “led to [such] infringement[,]” Power
`
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315, 1331 (Fed. Cir. 2016)
`
`(citation omitted). The Federal Circuit has explained that while this “affirmative act”
`
`requirement “has connotations of active steps knowingly taken . . . . the term is [otherwise] as
`
`broad as the range of actions by which one in fact causes, or urges, or encourages, or aids
`
`another to infringe a patent[.]” Tegal Corp. v. Tokyo Electron Co., 248 F.3d 1376, 1378-79 (Fed.
`
`Cir. 2001) (citations and emphasis omitted). Indeed, to “induce” can mean, inter alia, “[t]o lead
`
`on; to influence; to prevail on; to move by persuasion or influence.” Glob.-Tech Appliances,
`
`Inc., 563 U.S. at 760 (internal quotation marks and citation omitted). The induced infringer must
`
`encourage the performance of every single step in the patented method. Ericsson, Inc. v. D-Link
`
`Sys., Inc., 773 F.3d 1201, 1219 (Fed. Cir. 2014). And with regard to the specific intent
`
`requirement, such intent can be shown by circumstantial evidence, but the mere knowledge of
`
`possible infringement will not suffice. Vita-Mix Corp., 581 F.3d at 1328.
`
`With their Motion, Defendants press three arguments. The Court will address them in
`
`turn.
`
`
`
` Defendants’ first argument is that Defendants could not have acted to cause any power
`
`plant (the alleged direct infringers) to perform the activated carbon step of the claimed methods.
`
`(D.I. 528 at 25) This is purportedly because “the record shows that the accused power plants
`
`made their own decisions about how to meet mercury emissions regulations.” (Id.) In support of
`
`that proposition, Defendants cited to the deposition testimony of only two power plant
`
`representatives. (Id. at 26) In one case, the representative states that his power plant coordinated
`
`with refined coal providers only on the amount of bromine additive added to the coal and not on
`
`4
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 5 of 8 PageID #: 16570
`
`the amount of activated carbon used in the combustion process. (D.I. 533, ex. 16 at 22-23) The
`
`other representative (who appears to work for a power plant no longer at issue with regard to the
`
`induced infringement claims here)2 states that the activated carbon equipment was installed at his
`
`plant to help comply with certain mercury emissions limits, and that it was not often used. (Id.,
`
`ex. 17 at 11-12)
`
`
`
`As an initial matter, what representatives of two of the many power plants at issue in this
`
`case had to say on this matter falls far short of a demonstration of why all implicated power
`
`plants chose to utilize activated carbon. But assume that at the time they first started receiving
`
`refined coal from a Defendant, each power plant at issue had made an independent decision that
`
`it was in their interest to use activated carbon when combusting the coal (in order to satisfy
`
`certain mercury emissions regulations, or for other reasons). Defendants cite to no authority for
`
`the proposition that an entity that has decided that it may wish to take an action relevant to patent
`
`infringement cannot nevertheless be further encouraged (or influenced, or moved) to do so by
`
`another party. Even if one is predisposed to do something, one might still be further spurred on
`
`to do so by the act of another.
`
`
`
`On this “spurred on” point, Defendants make one last, one-sentence argument (in support
`
`of which they cite to or refer to no evidence of record): that there is “not a shred of evidence that
`
`the use of Refined Coal spurred a power plant to install or use” activated carbon. (D.I. 528 at 26)
`
`As the Court noted in its October 19, 2023 Memorandum Order and reiterated recently in its
`
`November 6, 2023 Oral Order, a party bringing a summary judgment motion may not simply
`
`
`2
`The Court notes that this representative appears to be discussing the Cope Station
`power plant. (D.I. 533, ex. 17 at 11-12) The former named Defendant that supplied this plant
`with refined coal was Canadys Refined Coal, LLC (“Canadys”), and it appears that Plaintiffs are
`no longer pursuing claims against Canadys. (See D.I. 528 at ix; D.I. 598 at 1 n.2)
`5
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 6 of 8 PageID #: 16571
`
`state, in a conclusory fashion, that the non-moving party has “no evidence” to support its
`
`position. (D.I. 590 at 4-5; D.I. 622) Instead, the movant must make some effort to engage with
`
`the evidence of record on the point; the movant must in some way identify or point out those
`
`portions of the record that support its position that summary judgment is warranted. (D.I. 590 at
`
`5); see also Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Here, in the report of their
`
`expert Philip J. O’Keefe, Plaintiffs had put forward record evidence that they felt demonstrated
`
`the encouragement of infringement. (See D.I. 546, ex. A at 67-87) Indeed, in their answering
`
`brief, Plaintiffs made reference to that very evidence (along with other portions of the record)—
`
`evidence that does appear to be relevant to each of the elements of the induced infringement
`
`claims at issue here. (D.I. 545 at 20) In the Court’s view, Defendants had an obligation in their
`
`opening brief to identify or point out something about the evidence of record and articulate why
`
`that evidence was wanting or why it supported its summary judgment motion. (See D.I. 590 at 4-
`
`7) They failed to do so, and only engaged with the substantial record here in a few pages of
`
`briefing, which led to the Court having a poor record on which to make a determination about a
`
`key claim relating to all Defendants in the case. As a result, the Court cannot countenance
`
`Defendants’ “not a shred of evidence”-type argument.
`
`
`
`Defendants’ second argument was that “[a]s a matter of law . . . the mere sale” or
`
`provision of refined coal by a Defendant to a power plant cannot amount to an inducing act.
`
`(D.I. 528 at 26) But in its prior ruling on a motion to dismiss in this case, the Court has
`
`determined that Defendants’ provision of refined coal—in a circumstance where they and the
`
`power plants know that the power plants will surely combust the coal while using activated
`
`6
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 7 of 8 PageID #: 16572
`
`carbon—could possibly be enough to induce infringement. (D.I. 513 at 4-5)3 And to the extent
`
`that Defendants argue that there is “no evidence that any Defendant ‘knew’ that[,]” (D.I. 528 at
`
`26), again, Defendants did not really cite to or engage with any of the record evidence on this
`
`point (and Plaintiffs’ proffered evidence appears as if it could support the knowledge element).
`
`So the Court cannot grant summary judgment here.
`
`Defendants’ third and final argument is that there is “no evidence” that Defendants
`
`intended that their power plant customers would use activated carbon in combination with
`
`refined coal in an infringing manner, such that Defendants could not have specifically intended
`
`infringement to occur. (Id. at 27) Again though, Defendants did not engage with any of the
`
`record in making this argument; they simply said there was “no evidence” in this regard and left
`
`the Court and Plaintiffs to figure out what portion of that significant record would be at issue as
`
`to this summary judgment motion. That is insufficient.
`
`IV.
`
`CONCLUSION
`
`3
`In support of their argument here, Defendants cite to HZNP Meds. LLC v. Actavis
`Laby’s UT, Inc., 940 F.3d 680, 701 (Fed. Cir. 2019) for the proposition that “mere knowledge
`about a product’s characteristics or that it may be put to infringing uses is not enough” to be
`liable for induced infringement. (D.I. 528 at 27) Of course, the statement of the law in HZNP is
`correct; an induced infringer cannot be found liable simply because it knows that the direct
`infringer will infringe; the inducer needs to do something to encourage that infringement. But in
`HZNP, the patented method required three distinct steps involving the use of an inventive drug
`formulation, and the accused infringer’s label for the drug, which was alleged to induce
`infringement, only required the first step of the method and did not require the second or third
`step at all. 940 F.3d at 702. Here the factual scenario at play is just different, as it is alleged that
`the infringing methods require use of refined coal in conjunction with the use of activated
`carbon, and the alleged induced infringer’s act of providing the refined coal (coal that allegedly
`has no other significant non-infringing use) will necessarily lead to the power plant’s use of
`activated carbon to combust the coal (and thus direct infringement). In sum, the facts of HZNP
`are just apples to oranges with regard to the facts here.
`7
`
`

`

`Case 1:19-cv-01334-CJB Document 631 Filed 11/08/23 Page 8 of 8 PageID #: 16573
`
`In the end, the Court is not prepared to adjudicate a case-dispositive motion as to
`
`inducement claims against over 30 Defendants—in a case with a very substantial record—based
`
`on one-line “no evidence”-type arguments raised by the movants. That is not the way the
`
`summary judgment process should fairly work. And it does not agree with Defendants’ legal
`
`arguments here. For the foregoing reasons, the Court finds that Defendants’ Motion should be
`
`DENIED. An appropriate Order will issue.
`
`8
`
`