Case 1:19-cv-01334-CJB Document 695 Filed 03/05/24 Page 1 of 5 PageID #: 17974
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`Kenneth L. Dorsney
`302.888.6800
`kdorsney@morrisjames.com
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`March 5, 2024
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`VIA CM/ECF & HAND DELIVERY
`The Honorable Christopher Burke
`United States District Court
`844 North King Street
`Wilmington, DE 19801
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`Re:
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`Midwest Energy Emissions Corp., et. al v. Arthur J. Gallagher & Co., et al.,
`C.A. No. 19-1334-CJB
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`Dear Judge Burke:
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` The Parties respectfully write pursuant to Your Honor’s order at the conclusion of the jury
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`trial in the above matter on March 1, 2024, which directed the Parties to file a form of judgment
`for the Court to enter. The Parties have a dispute over whether a judgment should be entered at
`this time.
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`CERT Defendants’ Position:
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`The Parties agreed in the Pretrial Order to a bifurcated trial, where the issues of
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`unenforceability and implied license would be tried to the Court at a bench trial. (D.I. 659, ¶ 61).
`Because the Court has yet to rule on the unenforceability of the patents and whether there was an
`implied license, we respectfully submit that a “final judgment” is premature and would be
`improper at this time. State National Ins. Co. v. Cty. of Camden, 824 F.3d 399, 408 (3d Cir. 2016)
`(“A final judgment is one which ends the litigation on the merits and leaves nothing for the court
`to do but execute the judgment.”). The CERT Defendants request that the Court reserve entering
`a judgment in this matter until after the conclusion of the bench trial addressing these equitable
`issues. A similar procedure was followed at least in CAO Lighting, Inc. v. General Electric
`Company et al, C.A. No. 20-cv-681-GBW (D.I. 419). In addition, CERT noted in the Pretrial
`Order (D.I. 659, Ex. 22 p.20 n.24, p. 51 n.78) that the Court’s previous disposition of the defense
`of express license as a matter of law in its denial of summary judgment should be put into a form
`to preserve the issue for appeal upon entry of final judgment. For example, a stipulated summary
`judgment in favor of Plaintiffs on that issue should be entered before final judgment. If the Court
`is inclined to enter an order in the form of a judgment, and with respect to Plaintiffs proposed form
`of judgment, the CERT defendants respectfully request that any such order expressly state that it
`is “partial” and not state that it is “final.” The CERT defendants believe that any order that could
`potentially be interpreted to trigger post-trial briefing under Rules 50 and 59 before all defenses
`are adjudicated would be contrary to the Federal Rules, would lead to inefficient and piecemeal
`litigation, and would place an unnecessary burden on the Court in dealing with multiple sets of
`post-trial briefs.
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`F 302.571.1750
`T 302.888.6800
`| Wilmington, DE 19801-1494
`500 Delaware Avenue, Suite 1500
`Mailing Address P.O. Box 2306 | Wilmington, DE 19899-2306 www.morrisjames.com
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`Case 1:19-cv-01334-CJB Document 695 Filed 03/05/24 Page 2 of 5 PageID #: 17975
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`The Honorable Christopher J. Burke
`March 5, 2024
`Page 2
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`Plaintiffs’ Position:
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`Pursuant to the Court’s order, ME2C provides the attached proposed form of judgment and
`requests that the Court enter this judgment. Mar. 1, 2024 Trial Tr. at 1319-1320:3. Defendants
`have not offered an alternative proposal nor identified any substantive disputes with the form of
`this judgment, and there is simply no reason why the Court cannot enter judgment on the issues
`resolved at trial. See, e.g., Judgment, American Axle & Mfg, Inc. v. Neapco Holdings, LLC, C.A.
`No. 15-1168, D.I. 350, (entering judgment despite open issues—including equitable relief in the
`form of an injunction—in post-trial briefing schedule); Judgment, Prolitec Inc. v. ScentAir Techs.,
`LLC, C.A. No. 20-984, D.I. 307 (entering judgment after jury verdict with ScentAir filing papers
`on its prosecution history estoppel defense after said judgment). Entering judgment now will
`ensure that post-judgment motion practice will proceed in a timely and efficient manner as it will
`start the clock on post-trial motions as the Court directed. Mar. 1, 2024 Trial Tr. at 1320:1-1320:3.
`If Defendants intend to proceed with their equitable defenses, they can propose a plan for doing
`so and the parties can work to resolve those outstanding issues. Whether they ultimately request
`a bench trial, evidentiary hearing, or some other approach—and Defendants have not informed
`ME2C of their specific plans—there is no reason to delay entering judgment on the issues resolved
`at trial. That is true even if the Court will eventually need to enter a “final judgment” later in the
`case. Indeed, entering judgment now will encourage both sides to resolve any outstanding
`equitable issues as quickly as possible so that this nearly five-year old case can finally conclude.
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`The Parties are available at the Court’s convenience to address any questions or concerns.
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`Respectfully submitted,
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`/s/ Kenneth L. Dorsney
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`Kenneth L. Dorsney (#3726)
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`cc: All counsel of record (via CM/ECF and electronic mail)
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`Case 1:19-cv-01334-CJB Document 695 Filed 03/05/24 Page 3 of 5 PageID #: 17976
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiffs,
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`Defendants.
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`C.A. No. 19-1334 (CJB)
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`JURY TRIAL DEMANDED
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`MIDWEST ENERGY EMISSIONS CORP.
`and MES Inc.,
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`ARTHUR J. GALLAGHER & CO., et al.,
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`v.
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`[PROPOSED] JUDGMENT
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`Pursuant to Rule 58 of the Federal Rules of Civil Procedure and in accordance with the
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`jury’s unanimous verdict (D.I. 692), the Court hereby ENTERS JUDGMENT as follows:
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`Judgment is hereby entered in favor of Plaintiffs Midwest Energy Emissions Corp. and
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`MES Inc. (“Plaintiffs”) and against Defendants CERT Operations RCB LLC, Senescence Energy
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`Products LLC, Bascobert (A) Holdings LLC, Larkwood Energy LLC, Rutledge Products LLC,
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`Cottbus Associates LLC, CERT Operations II LLC, Marquis Industrial Company LLC, CERT
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`Operations IV LLC, Springhill Resources LLC, CERT Operations V LLC, and Buffington
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`Partners LLC (collectively, “CERT”) that CERT induced infringement of claims 25 and 26 of
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`U.S. Patent No. 10,343,114 and claims 1 and 2 of U.S. Patent No. 10,596,517;
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`Judgment is hereby entered in favor of Plaintiffs and against Defendants Senescence
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`Energy Products LLC, Bascobert (A) Holdings LLC, Larkwood Energy LLC, Rutledge Products
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`LLC, Cottbus Associates LLC, Marquis Industrial Company LLC, Springhill Resources LLC,
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`and Buffington Partners LLC that these specific Defendants contributed to infringement of
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`claims 25 and 26 of U.S. Patent No. 10,343,114 and claims 1 and 2 of U.S. Patent No.
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`10,596,517;
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`Case 1:19-cv-01334-CJB Document 695 Filed 03/05/24 Page 4 of 5 PageID #: 17977
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`Judgment is hereby entered in favor of Plaintiffs and against CERT that CERT willfully
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`infringed claims 25 and 26 of U.S. Patent No. 10,343,114 and claims 1 and 2 of U.S. Patent No.
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`10,596,517;
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`Judgment is hereby entered in favor of Plaintiffs and against CERT that all claims of U.S.
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`Patent Nos. 10,343,114 and 10,596,517 are not invalid;
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`Judgment is hereby entered in favor of Plaintiffs and against CERT for damages in the
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`amounts provided below, subject to fees and enhancement under 35 U.S.C. § 284, motions for
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`which may be subsequently brought and relief awarded:
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`Defendants
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`CERT Operations RCB LLC, for the amount of:
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`Senescence Energy Products LLC, for the amount of:
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`Bascobert (A) Holdings LLC, for the amount of:
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`Larkwood Energy LLC, for the amount of:
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`Rutledge Products LLC, for the amount of:
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`Cottbus Associates LLC, for the amount of:
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`CERT Operations II LLC, for the amount of:
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`Marquis Industrial Company LLC, for the amount of:
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`CERT Operations IV LLC, for the amount of:
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`Springhill Resources LLC, for the amount of:
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`CERT Operations V LLC, for the amount of:
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`Buffington Partners LLC, for the amount of:
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`Amount
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`$35,341,918
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`$2,129,349
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`$1,296,829
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`$20,017,888
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`$615,338
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`$11,282,514
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`$11,119,113
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`$11,119,113
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`$447,025
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`$447,025
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`$10,173,949
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`$10,173,949
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`Judgment is hereby entered that Plaintiffs are entitled to from CERT pre-judgment
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`interest applicable to all sums awarded herein, at the prime rate, compounded quarterly, from the
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`date of infringement through the date of entry of this Judgment;
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`Case 1:19-cv-01334-CJB Document 695 Filed 03/05/24 Page 5 of 5 PageID #: 17978
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`Judgment is hereby entered that, pursuant to 28 U.S.C. § 1961, Plaintiffs are entitled to
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`from CERT post-judgment interest applicable to all sums awarded herein, at the statutory rate,
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`from the date of entry of this Judgment until paid; and
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`Judgment is hereby entered that pursuant to Federal Rule of Civil Procedure 54(d) and 28
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`U.S.C. § 1920, Plaintiffs are the prevailing party in this case and shall recover their costs from
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`CERT.
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`This judgment is subject to modification based on the Court’s ruling on the parties’ post-
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`trial motions brought under Fed. R. Civ. P. 50, 54, 59, and 35 U.S.C. §§ 284, 285.
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`Dated:______________
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`____________________________________
`Magistrate Judge Christopher J. Burke
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