Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 1 of 11 PageID #: 17555
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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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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`Civil Action No. 19-1334-CJB
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`REDACTED VERSION
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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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`

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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 2 of 11 PageID #: 17556
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`MEMORANDUM OPINION
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`October 16, 2023
`Wilmington, Delaware
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`BURKE, United States Magistrate Judge
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`In this 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 Defendants Canadys Refined Coal, LLC; Coronado Refined Coal, LLC; George Neal
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`Refined Coal, LLC; George Neal North Refined Coal, LLC; Hastings Refined Coal, LLC;
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`Jefferies Refined Coal, LLC; Joppa Refined Coal, LLC; Louisa Refined Coal, LLC; Walter Scott
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`Refined Coal, LLC and Williams Refined Coal, LLC (the “AJG RC Defendants”); Arbor Fuels
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`Company LLC; Superior Fuels Company LLC; Belle River Fuels Company, LLC; Huron Fuels
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`Company, LLC; Chouteau Fuels Company, LLC; Portage Fuels Company LLC; Erie Fuels
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`Company, LLC; Jasper Fuels Company LLC and Newton RC LLC (the “DTE RC Defendants”);
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`Bascobert (A) Holdings, LLC; Buffington Partners, LLC; Cottbus Associates, LLC; Larkwood
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`Energy, LLC; Marquis Industrial Company, LLC; Rutledge Products, LLC; Senescence Energy
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`Products, LLC and Springhill Resources, LLC (the “CERT RC Defendants”); CERT Operations
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`II LLC; CERT Operations IV LLC; CERT Operations V LLC; and CERT Operations RCB LLC
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`(the “CERT Operations Companies Defendants”); Alistar Enterprises, LLC; AJG Iowa Refined
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`Coal LLC and DTE Energy Resources, LLC (“collectively, “Defendants”), ME2C alleges
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`infringement of United States Patent Nos. 8,168,147 (the “'147 patent”), 10,343,114 (the “'114
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`patent”), 10,589,225 (the “'225 patent”), 10,596,517 (the “'517 patent”) and 10,668,430 (the
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`“'430 patent” and collectively with the other patents, the “asserted patents”). (D.I. 406 at ¶¶ 40-
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`2
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 3 of 11 PageID #: 17557
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`44) Presently pending before the Court is Defendants’ motion for summary judgment No. 1:
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`non-infringement based on licensed use of process (the “Motion”). (D.I. 563) ME2C opposes
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`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. 563) The Motion was fully briefed as of
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`April 18, 2023. (D.I. 555)
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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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`Summary judgment is appropriate where “the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
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`R. Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine
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`issue of material fact. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585
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`n.10 (1986). If the moving party has sufficiently demonstrated the absence of such a dispute, the
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`nonmovant must then “come forward with specific facts showing that there is a genuine issue for
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`trial.” Id. at 587 (internal quotation marks, citation and emphasis omitted). If the nonmoving
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`party fails to make a sufficient showing in this regard, then the moving party is entitled to
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`judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). During this
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`process, the Court will “draw all reasonable inferences in favor of the nonmoving party, and it
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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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`3
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 4 of 11 PageID #: 17558
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`may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing
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`Prods., Inc., 530 U.S. 133, 150 (2000).
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`However, in order to defeat a motion for summary judgment, the nonmoving party must
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`“do more than simply show that there is some metaphysical doubt as to the material facts.”
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`Matsushita Elec. Indus. Co., 475 U.S. at 586. The “mere existence of some alleged factual
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`dispute between the parties will not defeat an otherwise properly supported motion for summary
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`judgment; the requirement is that there be no genuine issue of material fact.” Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). Facts that could alter
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`the outcome are “material,” and a factual dispute is “genuine,” only where “the evidence is such
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`that a reasonable jury could return a verdict for the nonmoving party.” Id. at 248. “If the
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`evidence is merely colorable . . . or is not significantly probative . . . summary judgment may be
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`granted.” Id. at 249-50 (internal citations omitted).
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`A party asserting that a fact cannot be—or, alternatively, asserting that a fact is—
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`genuinely disputed must support the assertion either by “citing to particular parts of materials in
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`the record, including depositions, documents, electronically stored information, affidavits or
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`declarations, stipulations (including those made for purposes of the motion only), admissions,
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`interrogatory answers, or other materials;” or by “showing that the materials cited do not
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`establish the absence or presence of a genuine dispute, or that an adverse party cannot produce
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`admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1)(A) & (B).
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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 coal-fired power plants (“power plants”) with the use of bromine-enhanced coal
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`(or “refined coal”) and a sorbent such as activated carbon. (D.I. 533, exs. 1-5; see also D.I. 546,
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`4
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 5 of 11 PageID #: 17559
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`ex. A at ¶¶ 49, 70) ME2C alleges that Defendants induced and contributed to infringement of
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`certain method claims of the asserted patents by manufacturing and selling refined coal to non-
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`party power plants. (D.I. 406 at ¶¶ 67, 208, 217; D.I. 546, ex. A at ¶ 99) The power plants are
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`alleged to add activated carbon to the process in which refined coal is combusted, in a manner
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`that amounts to direct infringement of the patents. (D.I. 406 at ¶¶ 208, 217; D.I. 546, ex. A at ¶¶
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`102, 108)
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`The original Complaint in this action included as Defendants certain power plant
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`operators. (See D.I. 1 at ¶¶ 116, 132, 138, 148-49) ME2C subsequently granted licenses to four
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`of the power plant operators—Vistra (the “Vistra license”), NRG (the “NRG license”), Talen and
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`AECI, (D.I. 533, exs. 7-10)—and dismissed these entities (and related entities) from the case,
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`(D.I. 167; D.I. 249; D.I. 266; D.I. 267). The licenses to Vistra and NRG are the licenses relevant
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`to the instant Motion.2 The effective date of the Vistra license is July 30, 2020, and the effective
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`date of the NRG license is January 5, 2021. (D.I. 533, exs. 7, 8)
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`To prevail under their theory of indirect infringement, Plaintiffs must prove that
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`Defendants’ actions led to direct infringement of the asserted patents. See, e.g., Dynacore
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`Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed. Cir. 2004). Direct
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`infringement requires the use of a patented invention “without authority.” 35 U.S.C. § 271(a).
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`With their Motion, as an initial matter, all Defendants moved for summary judgment with
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`respect to any sale or provision of refined coal to a licensed power plant after the effective date
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`of the relevant license. (D.I. 527 at ¶ 1; 555 at 1; D.I. 573 at 1) Here, Defendants’ position is
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`that because ME2C has authorized the Vistra and NRG power plants to use its patents pursuant
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`2
`ME2C is not pursuing any claim against any current Defendant for providing
`refined coal to the Talen-related and AECI-related power plants. (D.I. 545 at 5 n.2)
`5
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 6 of 11 PageID #: 17560
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`to the licenses, these entities cannot directly infringe the asserted patents. This, in turn, means
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`that Defendants that provided refined coal to these power plants after the respective licenses
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`were signed cannot indirectly infringe the asserted patents (since there would be no direct
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`infringement in those scenarios). (D.I. 528 at 14)
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`Plaintiffs, however, have stated that they are not alleging any claims that have to do with
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`provision of refined coal to a licensed power plant after the date of the licenses. (D.I. 545 at 4 &
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`5 n.2) Rather, with respect to any power plant that obtained a license, ME2C is only alleging
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`“indirect infringement for sales of refined coal that occurred before the date of those licenses.”
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`(Id. at 4; see also D.I. 528 at 13; D.I. 533, ex. 14 at ex. C-1) With Plaintiffs affirming that they
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`do not intend to press claims regarding the provision of refined coal to a licensed power plant
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`after the date of the licenses at issue, it appears that the right thing for the Court to do is to
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`DENY the Motion as MOOT with regard to any such claims. See e.g., Ross v. Kopocs, No. 1:14-
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`cv-60-SKL, 2015 WL 1650910, at *2 (E.D. Tenn. Apr. 13, 2015); Hopper v. M/V UBC
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`SINGAPORE, Civil Action No. H-09-1223, 2010 WL 2977296, at *5 (S.D. Tex. July 20, 2010);
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`Cryovac Inc. v. Pechiney Plastic Packaging, Inc., 430 F. Supp. 2d 346, 355 (D. Del. 2006). So
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`the Court will do that here.
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`Additionally, certain Defendants who sold refined coal to Vistra-related and NRG-related
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`power plants are seeking a broader grant of summary judgment. These nine Defendants3 not
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`3
`More specifically, Defendants Chouteau Fuels Company LLC, Jasper Fuels
`Company LLC, Joppa Refined Coal LLC, Newton RC LLC, and Bascobert (A) Holdings, LLC
`seek summary judgment of noninfringement of all asserted claims of all asserted patents with
`respect to any sale or provision of refined coal to a power plant covered by the Vistra license.
`(D.I. 527 at ¶ 1; D.I. 573 at 1) Defendants Alistar Enterprises, LLC, Rutledge Products, LLC,
`Senescence Energy Products, LLC, and Spring Hill Resources, LLC seek summary judgment of
`noninfringement of all asserted claims of all asserted patents with respect to any sale or provision
`of refined coal to a power plant covered by the NRG license. (D.I. 527 at ¶ 1; D.I. 573 at 1)
`6
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 7 of 11 PageID #: 17561
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`only sold refined coal to power plants covered by the Vistra or NRG licenses after those licenses
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`were signed, but they also sold such coal to the plants before license execution. And with the
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`instant Motion, these Defendants are also seeking summary judgment for those pre-license sales.
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`So the issue here is whether the Vistra and NRG license grants cover this pre-license conduct.
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`(D.I. 545 at 4 & 5 n.2)
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`In their opening brief, Defendants argue that the licenses contain “complete releases”
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`from all pre-license infringement claims, as they “retroactively authorized the power plants’
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`activity,” thus: (1) negating any claim of direct infringement for pre-license conduct; and (2)
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`precluding any claim of indirect infringement predicated on such activity. (D.I. 528 at 14; see
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`also id. at 12)4 Defendants appear to be referring to Section 3.1 of the Vistra and NRG licenses,
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`(id. at 12, 14)—wherein ME2C
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` (D.I. 533, ex. 7 at § 3.1; id., ex. 8 at § 3.1) In their
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`reply brief, Defendants also point to certain covenants included in both licenses
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` (D.I. 555 at 2 (citing D.I. 533, ex. 7 at § 2.2; id., ex. 8 at § 2.2)) Defendants
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`These nine Defendants are the Defendants who have claims against them that are relevant to this
`motion and that are not moot.
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`4
`In support, Defendants cite solely to JVC Kenwood Corp. v. Nero, Inc., 797 F.3d
`1039 (Fed. Cir. 2015). (D.I. 528 at 14) However, JVC Kenwood is not particularly helpful with
`respect to the issue before the Court. That is because in that case, the United States Court of
`Appeals for the Federal Circuit did not assess whether the license at issue retroactively reached
`pre-license conduct. 797 F.3d at 1045-46; see also (D.I. 545 at 5-6).
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`7
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 8 of 11 PageID #: 17562
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`contend that these broad releases and covenants convey an intent to grant retrospective rights,
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`and cover the assertion of claims against indirect infringers. (Id.)
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`Summary judgment is not warranted here. To the extent that Defendants are arguing that
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`the licenses authorized the power plants’ conduct even before the effective dates of the licenses,
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`that would seem to depend on the particular language in the particular license at issue. See, e.g.,
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`Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 501 (1964) (“A release given a
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`direct infringer in respect of past infringement, which clearly intends to save the releasor’s rights
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`against a past contributory infringer, does not automatically surrender those rights.”); Berall v.
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`Teleflex Med. Inc., No. 10-CV-5777 (LAP), 2021 WL 9629067, at *3 (S.D.N.Y. Sept. 13, 2021)
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`(“[T]he Agreement does not establish that Aircraft’s sales of the McGrath Laryngoscope—all of
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`which occurred prior to the execution of the Agreement—were authorized, let alone that they
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`were sanctioned at the time they were made. Instead, the Agreement simply represents the
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`parties’ bargain that Aircraft would not face liability for its past infringing acts.”) (emphasis in
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`original); Canon Inc. v. Tesseron Ltd., 146 F. Supp. 3d 568, 577-78 (S.D.N.Y. 2015) (explaining
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`that “whether a license or sublicense may have retroactive effect depends upon whether the
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`licensor has conferred that right”).
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`Here, while the licenses include releases that absolve the power plants from liability for
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`any claims relating to pre-license infringement, the licenses also “clearly intend[] to save
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`[ME2C’s] rights against” past indirect infringers. Aro, 377 U.S. at 501.
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`8
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 9 of 11 PageID #: 17563
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`. (D.I. 533, ex. 7 at § 3.1; id., ex. 8 at § 3.1)5 To the
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`extent that the releases leave any doubt, however, the licenses contain another key provision that
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`Defendants failed to meaningfully address (despite ME2C’s focus on it in ME2C’s answering
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`brief). (D.I. 545 at 6) This provision provides that:
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`(D.I. 533, ex. 7 at § 2.5; id., ex. 8 at § 2.5 (emphasis added) (cited in D.I. 545 at 6)) Defendants’
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`only reference to this provision comes in the Statement of Facts section of their opening brief.
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`There, they acknowledge that ME2C is purporting to “reserve its right to ‘pursue’ third parties
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`for infringement” with this provision, but posit that the provision “apparently does not apply to
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`Refined Coal suppliers” because: (1) ME2C has dismissed the defendants that supplied refined
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`coal to Talen and AECI after execution of those licenses (which have similar provisions); and (2)
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`ME2C is not seeking damages from Vistra’s or NRG’s refined coal suppliers for the period after
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`the effective dates of the Vistra and NRG licenses. (D.I. 528 at 12-13)
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`Nevertheless, the plain language of this “Notwithstanding” provision expressly preserves
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`ME2C’s “ability to pursue infringement claims” against refined coal entities that operated at
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`9
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 10 of 11 PageID #: 17564
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`Vistra and NRG power plants—despite what any other portion of the agreement might otherwise
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`suggest. See, e.g., MSPA Claims 1, LLC v. Kingsway Amigo Ins. Co., 950 F.3d 764, 773 (11th
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`Cir. 2020) (explaining that the “ordinary meaning of ‘notwithstanding’ is ‘in spite of,’ or
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`‘without prevention or obstruction from or by[]’” and that “[a]nother way to think about the
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`‘notwithstanding’ phrase is that it ‘merely shows which provision prevails in the event of a
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`clash’”—and that in the event of a clash, it is the “notwithstanding” provision that prevails)
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`(internal quotation marks and citations omitted).6 The fact that ME2C made agreements to
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`dismiss other refined coal suppliers unaffiliated with Vistra or NRG, or that it is not alleging
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`indirect infringement for sales of refined coal that occurred post-license, does not change the
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`import of this language. See Aro, 377 U.S. at 500 (“With respect to the post-agreement sales the
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`agreement necessarily absolved Aro of liability . . . because it had the effect of precluding any
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`direct infringement to which Aro could contribute. With respect to the pre-agreement sales,
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`however, Aro’s contributory infringement had already taken place at the time of the agreement. .
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`. . it cannot be held, in the teeth of its contrary language and intention, to have erased the extant
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`infringement.”). Thus, with regard to any pre-license infringement claims as to the nine
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`Defendants at issue, the Court DENIES the Motion.
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`IV. CONCLUSION
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`For the foregoing reasons, the Court finds that Defendants’ Motion should be DENIED.
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`An appropriate Order will issue.
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`6
`The parties did not discuss what jurisdiction’s law would apply to an analysis of
`the text of the license agreements at issue, effectively indicating that the answer would not alter
`the outcome here.
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`10
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`Case 1:19-cv-01334-CJB Document 667 Filed 02/13/24 Page 11 of 11 PageID #: 17565
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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 October 19, 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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`11
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