Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 1 of 29 PageID #: 18076
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 19-1334 (CJB)
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`)))))))))
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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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`Plaintiffs,
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`v.
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`Defendants.
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`CERT DEFENDANTS’ BRIEF IN SUPPORT OF MOTION FOR NEW TRIAL
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`Dated: April 5, 2024
`
`
`
`Kenneth L. Dorsney (#3726)
`Cortlan S. Hitch (#6720)
`MORRIS JAMES LLP
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801
`(302) 888-6800
`kdorsney@morrisjames.com
`chitch@morrisjames.com
`
`Attorneys for Defendants
`CERT Operations IV LLC,
`CERT Operations V LLC,
`CERT Operations RCB LLC,
`CERT Operations II LLC,
`Senescence Energy Products, LLC,
`Springhill Resources LLC,
`Buffington Partners LLC,
`Bascobert (A) Holdings LLC,
`Larkwood Energy LLC,
`Cottbus Associates LLC,
`Marquis Industrial Company, LLC,
`Rutledge Products, LLC
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`

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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 2 of 29 PageID #: 18077
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`Table of Contents
`
`I.
`Introduction ............................................................................................................................. 1
`II.
`Legal Standard ..................................................................................................................... 1
`III. A New Trial is Warranted on the Contributory Infringement Verdict Because the Jury
`Instructions Contained Prejudicial Errors and the Verdict is Against the Clear Weight of the
`Evidence .......................................................................................................................................... 1
`A. Instructing the Jury that It Could Only Consider Refined Coal “as Sold and Delivered
`During the Damages Period” when Evaluating Substantial Non-infringing Uses Was Erroneous
`and Prejudicial ............................................................................................................................ 1
`B. The Jury’s Verdict of Contributory Infringement Is Against the Clear Weight of the
`Evidence. ..................................................................................................................................... 3
`IV. A New Trial Is Warranted on the Induced Infringement Verdict Because the Jury
`Instructions Contained Prejudicial Errors Requiring a New Trial and the Verdict is Against the
`Clear Weight of the Evidence ......................................................................................................... 4
`A. Failing to Instruct the Jury that CERT Must Actually Encourage Performance of Each Step
`Was Erroneous and Prejudicial ................................................................................................... 4
`B. Failing to Instruct the Jury that CERT’s Actions, Rather Than Other Factors, Must Have
`“Actually Caused” the Power Plants to Perform Each and Every Step Was Erroneous and
`Prejudicial ................................................................................................................................... 6
`C. The Jury’s Verdict of Induced Infringement Is Against the Clear Weight of the Evidence. 6
`V. The Jury’s Verdict of Willfulness Is Against the Clear Weight of the Evidence. ................... 8
`VI. Refusing to Instruct the Jury that it Should Disregard Value or Revenue Associated with
`Section 45 Tax Credits Was Erroneous and Prejudicial ................................................................. 9
`VII. The Trial Record is Based on Prejudicial Evidentiary Errors Requiring a New Trial. ..... 10
`A. Permitting Mr. O’Keefe to Testify to Subjects that Were Beyond His Expertise or that Are
`Not the Subject of Expert Testimony Was Erroneous .............................................................. 10
`B. The Court Erroneously Permitted Plaintiffs’ Expert Mr. Green to Testify as to a Reasonable
`Royalty Based on Licenses That Are not Comparable and Were not Properly Apportioned. .. 13
`C. The Court Erroneously Allowed Testimony Regarding the Money Received by Jeff Green
`Over the Life of the Refined Coal Program. ............................................................................. 15
`VIII.
`The Jury’s Damages Award Was Against the Clear Weight of the Evidence. .............. 17
`IX. A New Trial Is Required on Infringement of Claim 2 of the 517 Patent and Consequently
`on Damages Because the Jury’s Award May Be Based on a Claim That Is Not Infringed. ......... 18
`X. Conclusion ............................................................................................................................. 20
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`i
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 3 of 29 PageID #: 18078
`
`Table of Authorities
`
`Cases
`Aqua Connect, Inc. v. TeamViewer US, Inc.,
` C.A. No. 18-1572-MN, 2023 WL 6387791 (D. Del. Sept. 29, 2023) ...................................... 19
`
`AVM Techs., LLC v. Intel Corp.,
` 334 F. Supp. 3d 623 (D. Del. 2018) .................................................................................... 3, 7, 8
`
`Bullen v. Chaffinch,
` 336 F. Supp. 2d 342 (D. Del. 2004) ............................................................................................ 1
`
`Crowley v. Chait,
` 322 F. Supp. 2d 530 (D.N.J. 2004) ........................................................................................... 12
`
`Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc.,
` 946 F.3d 1367 (Fed. Cir. 2020)................................................................................................... 8
`
`Environmental Manufacturing Solutions, LLC v. Peach State Labs, Inc.,
` No. 6:09-cv-395-Orl-28DAB, 2011 WL 1262659 (M.D. Fla. Mar. 31, 2011) ........................... 2
`
`Ericsson, Inc. v. D–Link Sys., Inc.,
` 773 F.3d 1201 (Fed. Cir. 2014)............................................................................................... 1, 9
`
`Evolved Wireless, LLC v. Apple Inc.,
` No. CV 15-542-JFB-SRF, 2019 WL 3765926 (D. Del. Aug. 9, 2019) .................... 1, 13, 15, 17
`
`Global-Tech Appliances, Inc. v. SEB S.A.,
` 563 U.S. 765 (2011) .................................................................................................................... 5
`
`Golden v. U.S.,
` 955 F.3d 981 (Fed. Cir. 2020)..................................................................................................... 6
`
`GREE, Inc. v. Supercell Oy,
` 2020 WL 4288350 (E.D. Tex. 2020) ........................................................................................ 13
`
`Hodosh v. Block Drug Co., Inc.,
` 833 F.2d 1575 (Fed. Cir. 1987)................................................................................................... 2
`
`HZNP Medicines LLC v. Actavis Lab’ys UT, Inc.,
` 940 F.3d 680 (Fed. Cir. 2019)..................................................................................................... 5
`
`In re Bill of Lading Transmission & Processing Sys. Pat. Litig.,
` 681 F.3d 1323 (Fed. Cir. 2012)................................................................................................... 2
`
`
`
`ii
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`

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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 4 of 29 PageID #: 18079
`
`In re Paoli R.R. Yard PCB Litig.,
` 35 F.3d 717 (3d Cir.1994)......................................................................................................... 10
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
` 607 F. Supp. 3d 464 (D. Del. 2022) .......................................................................................... 14
`
`Island Intellectual Prop. LLC v. Deutsche Bank AG,
` 2012 WL 526722 (S.D.N.Y. Feb. 14, 2012) ............................................................................. 13
`
`Kia v. Imaging Sciences Intern., Inc.,
` CA No. 08–5611, 2010 WL 3431745 (E.D. Pa. Aug. 30, 2010) .............................................. 12
`
`LaserDynamics, Inc. v. Quanta Computer, Inc.,
` 694 F.3d 51 (Fed. Cir. 2012)......................................................................................... 16, 17, 18
`
`Lexmark Int’l., Inc. v. Static Control Components, Inc.,
` 572 U.S. 118 (2014) .................................................................................................................... 6
`
`Microsoft Corp. v. DataTern, Inc.,
` 755 F.3d 899 (Fed. Cir. 2014)................................................................................................. 5, 7
`
`Orbital Eng’g, Inc. v. Buchko,
` 578 F.Supp.3d 727 (W.D. Pa. 2022) ......................................................................................... 13
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
` 904 F.3d 965 (Fed. Cir. 2018)................................................................................................... 15
`
`Takeda Pharm. U.S.A., Inc. v. West-Ward Pharm. Corp.,
` 785 F.3d 625 (Fed. Cir. 2015)..................................................................................................... 7
`
`TC Tech. LLC v. Sprint Corp.,
` 1:16-CV-00153-RGA, 2019 WL 5295232 (D. Del. Oct. 18, 2019) ......................................... 14
`
`University of Texas Southwestern Med. Center v. Nassar,
` 570 U.S. 338 (2013) .................................................................................................................... 6
`
`Vectura Ltd. v. GlaxoSmithKline LLC,
` 397 F. Supp. 3d 579 (D. Del. 2019) ............................................................................................ 1
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
` 503 F.3d 1295 (Fed. Cir. 2007)........................................................................................... 19, 20
`
`Vita-Mix v. Basic Holding, Inc.,
` 581 F.3d 1317 (Fed. Cir. 2009)................................................................................................... 8
`
`
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`iii
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 5 of 29 PageID #: 18080
`
`Waldorf v. Shuta,
` 142 F.3d 601 (3d Cir. 1998)...................................................................................................... 10
`
`WesternGeco L.L.C. v. ION Geophysical Corp.,
` 913 F.3d 1067 (Fed. Cir. 2019)................................................................................................. 20
`
`Wrinkl, Inc. v. Facebook, Inc.,
` No. 20-cv-1345-RGA, 2021 WL 4477022 (D. Del. Sep. 30, 2021) ........................................... 9
`
`Statutes
`
`26 U.S.C. § 45 ................................................................................................................................. 9
`
`35 U.S.C. § 271(c) .......................................................................................................................... 3
`Rules
`
`Fed. R. Civ. P. 59 ............................................................................................................................ 1
`Fed. R. Evid. 702 .................................................................................................................... 10, 14
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`iv
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 6 of 29 PageID #: 18081
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`Table of Exhibits1
`
`A
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`Trial transcripts, dated February 26-March 1, 2024
`
`PTX-001
`
`U.S. Patent No. 10,343,114
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`PTX-003
`
`U.S. Patent No. 10,596,517
`
`PTX-077
`
`PTX-102
`
`PTX-193
`
`PTX-196
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`PTX-199
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`PTX-202
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`PTX-205
`
`PTX-208
`
`PTX-211
`
`12/1/2018 Larkwood Fuel Company Refined Coal Facility Independent
`Engineering Technical Due Diligence Review by Sargent & Lundy for
`J.P.Morgan (CERT-0017228)
`11/1/2019 Spring Hill Resources Refined Coal Facility Located at the Big
`Cajun II Power Plant Independent Engineering Technical Due Diligence by
`Sargent Lundy for J.P. Morgan (CERT-0023675)
`2/13/2013 Refined Coal Sales Agreement (Antelope Valley Station) Between
`Marquis Industrial Company, LLC and Basin Electric Power Cooperative
`(CERT_0009823)
`9/21/2011 Refined Coal Sales Agreement (Big Cajun II Generation Facility)
`Between Spring Hill Resources, LLC and Louisiana Generating LLC
`(CERT_0008315)
`11/4/2011 Refined Coal Sales Agreement (Rush Island Project Generation
`Facility) Between Buffington Partners, LLC and Union Electric Company
`D/B/A Ameren Missouri (CERT_0008446)
`12/20/2013 Amended and Restated Refined Coal Sales Agreement (WA Parish
`Generation Facility) between Senescence Energy Products, LLC, and NRG
`Texas Power LLC (CERT_0007346)
`5/10/2019 Refined Coal Sales Agreement (Coleto Creek Power Station)
`Between Bascobert (A) Holdings, LLC and Coleto Creek Power, LLC
`(CERT_0008039)
`12/20/2013 Amended and Restated Refined Coal Sales Agreement (Limestone
`Generation Facility) Between Rutledge Products, LLC and NRG Texas Power
`LLC (CERT_0017134)
`3/11/2014 Amended And Restated Refined Coal Sales Agreement (Labadie
`Energy Center) Between Larkwood Energy, LLC and Union Electric Company
`D/B/A Ameren Missouri (CERT_0008205)
`
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`1 Defendants will work with Plaintiffs to submit the trial transcripts and admitted trial exhibits cited
`in post-trial briefing in the format the Court prefers after post-trial briefing is complete. The
`physical trial exhibits are available for the Court’s inspection upon request.
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`v
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 7 of 29 PageID #: 18082
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`PTX-214
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`PTX-232
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`PTX-545
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`PTX-685
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`PTX-688
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`PTX-689
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`PTX-690
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`PTX-693
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`PTX-763
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`DTX-19
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`DTX-20
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`DTX-21
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`DTX-23
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`DTX-1514
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`12/20/2013 Amended and Restated Refined Coal Sales Agreement (Laramie
`River Station) Between Cottbus Associates, LLC and Basin Electric Power
`Cooperative (CERT_0008871)
`5/19/2015 Email Barr Linton to Daniel Murray et al. RE: Draft of proposed
`chem mod amendment (CERT-0012805)
`12/1/2018 Senescence Energy Refined Coal Facility Independent Engineering
`Technical Due Diligence Review by Sargent & Lundy for J.P.Morgan (CERT-
`0017480)
`3/11/2016 Email Jeff Green to Leah Schaatt et al. re: FW: Limestone
`Production Questions from Enterprise (CERT-0014763)
`3/10/2016 Email Jeff Green to tfriddle@pathfindercap.com et al. re: FW:
`Potential investor question on Labadie Hg article (CERT-0013695)
`11/1/2019 Bascobert Energy Refined Coal Facility Located at the Coleto Creek
`Power Plant Independent Engineering Technical Due Diligence by Sargent &
`Lundy for J.P.Morgan (CERT-0023407)
`12/1/2018 Rutledge Products Refined Coal Facility Independent Engineering
`Technical Due Diligence by Sargent & Lundy for J.P.Morgan (CERT-
`0017369)
`3/10/2015 Email Barr Linton to Adam Korfhage et al. re: Request by Basin
`Electric (CERT-0012785)
`11/9/2023 License Agreement between Alistar Enterprises, LLC and Midwest
`Energy Emission Corp. and MES Inc. (ME2C-RC-00279708)
`7/30/2020 Fleetwide License and Supply Agreement by and between Vistra
`Corp. and Midwest Energy Emissions Corp. (ME2C-RC-00066901)
`12/1/2020 Fleetwide License and Supply Agreement by and between American
`Electric Power Service Corporation and Midwest Energy Emissions Corp.
`(ME2C-RC-00072205)
`1/5/2021 Fleetwide License and Supply Agreement by and between NRG
`Energy, Inc., NRG Texas Power LLC, Midwest Generation EME, LLC,
`Midwest Generation, LLC and Midwest Energy Emissions Corp. (ME2C-RC-
`00072225)
`1/5/2021 License Agreement by and between Brandon Shores, LLC, Talen
`Generation LLC, Talen Montana, LLC, H.A. Wagner LLC, and Midwest
`Energy Emissions Corp. (ME2C-RC-00072253)
`Flash Report (Spreadsheet) (CERT-0039422)
`
`DTX-1968
`
`Chart (CERT-0043026)
`
`vi
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 8 of 29 PageID #: 18083
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`DTX-1980
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`10/4/2010 IRS Notice 2010-54 Production Tax Credit for Refined Coal
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`
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`vii
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 9 of 29 PageID #: 18084
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`I.
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`Introduction
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`The CERT Defendants (“CERT”) move for a new trial on the jury’s verdict for contributory
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`infringement and induced infringement because the because the jury instructions contained
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`prejudicial errors and the verdict is against the clear weight of the evidence. CERT moves for a
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`new trial on willful infringement because the verdict is against the clear weight of the evidence.
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`CERT also moves for a new trial because the trial record is based on prejudicial evidentiary errors
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`and for a new trial on damages because the jury verdict is against the clear weight of the evidence.
`II.
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`Legal Standard
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`After a jury trial, a party may move for a new trial. Fed. R. Civ. P. 59. A court has broad
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`discretion to grant a new trial, including where “the jury’s verdict is against the clear weight of the
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`evidence” and if “substantial trial errors were made.” Bullen v. Chaffinch, 336 F. Supp. 2d 342,
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`347 (D. Del. 2004). In considering a motion for new trial, the record “need not [be] view[ed]…in
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`the light most favorable to the verdict winner.” Vectura Ltd. v. GlaxoSmithKline LLC, 397 F. Supp.
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`3d 579, 586 (D. Del. 2019), aff’d, 981 F.3d 1030 (Fed. Cir. 2020). “A jury verdict will be set aside
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`only if the jury instructions were legally erroneous and the errors had prejudicial effect.” Ericsson,
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`Inc. v. D–Link Sys., Inc., 773 F.3d 1201, 1225 (Fed. Cir. 2014) (internal quotation marks omitted).
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`“Discretionary evidentiary rulings give rise to reversible error where a substantial right of the party
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`is affected.” Evolved Wireless, LLC v. Apple Inc., No. CV 15-542-JFB-SRF, 2019 WL 3765926,
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`at *2 (D. Del. Aug. 9, 2019) (internal quotation marks omitted).
`III. A New Trial is Warranted on the Contributory Infringement Verdict Because the
`Jury Instructions Contained Prejudicial Errors and the Verdict is Against the Clear
`Weight of the Evidence
`A.
`
`Instructing the Jury that It Could Only Consider Refined Coal “as Sold and
`Delivered During the Damages Period” when Evaluating Substantial Non-
`infringing Uses Was Erroneous and Prejudicial
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`For contributory infringement, the Court instructed the jury that it the plaintiff had to prove
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`1
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 10 of 29 PageID #: 18085
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`that “that the defendant knew that the refined coal supplied to that power plant, as sold and
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`delivered during the damages period, is not a staple article or commodity of commerce capable of
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`substantial non-infringing use.” Ex. A (Trial Tr.) at 1295:7-11. CERT objected to limiting the
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`instruction to refined coal “as sold and delivered during the damages period” and requested that
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`language be removed. Ex. A (Tr.) at 1153; see D.I. 669, Ex. 22 at 45.
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`The instruction given was erroneous. The Federal Circuit rejected a narrowed focus when
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`evaluating substantial non-infringing uses in In re Bill of Lading Transmission & Processing Sys.
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`Pat. Litig., 681 F.3d 1323 (Fed. Cir. 2012). There, the plaintiff grounded contributory infringement
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`on the allegation that “as customized by the relevant Appellee for their trucking customers, the
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`process for scanning and wirelessly transmitting bills-of-lading from the truck cab to the back
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`office for the preparation of loading manifests has no other substantial non-infringing use.” Id. at
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`1337–38 (internal quotation marks omitted). The Federal Circuit rejected those allegations as “too
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`narrow[]” because “they say nothing more than ‘if you use this device to perform the patented
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`method, the device will infringe and has no noninfringing uses.’” Id. at 1338. Here, the Court’s
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`instruction improperly focused on the use of specific accused products by specific customers found
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`to be direct infringers, rather than the proper inquiry of “whether the accused products can be used
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`for purposes other than infringement.” Id.
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`As discussed in CERT Defendants’ Brief in Support of Motion for Judgment as a Matter
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`of Law (“JMOL Br.,” filed contemporaneously herewith), neither Hodosh v. Block Drug Co., Inc.,
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`833 F.2d 1575 (Fed. Cir. 1987), nor Environmental Manufacturing Solutions, LLC v. Peach State
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`Labs, Inc., No. 6:09-cv-395-Orl-28DAB, 2011 WL 1262659 (M.D. Fla. Mar. 31, 2011), nor Nalco
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`supports the Court’s narrower instruction. See JMOL Br. at § IV.C, pp. 15-16.
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`The error was prejudicial because it instructed the jury to ignore unrebutted evidence
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`2
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 11 of 29 PageID #: 18086
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`showing that refined coal made with calcium bromide has substantial non-infringing uses,
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`including use of refined coal by the power plants involved in this case without (including prior to
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`any possible use of) ACI, the sale of refined coal to power plants that never used ACI, and the use
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`of refined coal before the asserted patents issued, both with and without activated carbon, when
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`evaluating contributory infringement. Ex. A at 942:11-944:1, 950:7-961:16, 968:4-969:1, 976:6-
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`977:12, 977:23-978:12, 1033:3-1046:18, 1068:20-1069:15, 1070:7-1075:16, & 1077:3-1078:10;
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`DTX 1514 (Flash Report). Had that limiting language been removed as CERT requested, the jury
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`would have understood that it was required to consider such uses when evaluating contributory
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`infringement and would have had ample evidence to return a verdict of no contributory
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`infringement. Instead, the failure to give the proper instruction contributed to a verdict against the
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`clear weight of the evidence, as discussed below.
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`B.
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`The Jury’s Verdict of Contributory Infringement Is Against the Clear Weight
`of the Evidence.
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`If the Court determines that JMOL of no contributory infringement is not appropriate, see
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`JMOL Brief at § IV, pp. 12-17, then the Court should order a new trial on this issue because the
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`verdict is against the clear weight of the evidence and would result in a miscarriage of justice were
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`it to stand. AVM Techs., LLC v. Intel Corp., 334 F. Supp. 3d 623, 626-27 (D. Del. 2018). Liability
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`for contributory infringement requires that a defendant sell a material “for use in practicing a
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`patented process, constituting a material part of the invention, knowing the same to be especially
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`made or especially adapted for use in an infringement of such patent, and not a staple article or
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`commodity of commerce suitable for substantial noninfringing use.” 35 U.S.C. § 271(c). The
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`record demonstrates that: 1) under the proper standard, refined coal has unrebutted substantial non-
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`infringing uses and 2) the CERT Defendants believed and knew that refined coal was made and
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`adapted to qualify for Section 45 tax credits and did not know or believe it was made and adapted
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`3
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 12 of 29 PageID #: 18087
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`for an infringing use.
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`With regard to substantial non-infringing use, it is undisputed there are substantial non-
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`infringing uses for refined coal made with calcium bromide. Mr. O’Keefe’s opinions to the
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`contrary and the evidence underlying them depend on improperly limiting the scope of the
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`substantial non-infringing use inquiry to specific refined coal sold to specific customers during the
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`damages period. See JMOL Br. at § IV.C, pp. 16-17.
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`As to “especially made and adapted,” the evidence showed that refined coal was made and
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`adapted to qualify for Section 45 tax credits. The formulation of MerSorb and SSorb Defendants
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`used to make refined coal was based on testing by third-party EERC—testing in which activated
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`carbon could not even be used—to certify that refined coal qualified for tax credits. The
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`formulation was not made or designed to work with or accommodate ACI use by power plants.
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`The formulation remained the same before and after the asserted patents issued and in half the
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`accused plants before and after the plant began using ACI. JMOL Brief at § IV.A, pp. 13-14.
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`Against that significant evidence, the only evidence offered in favor of a finding that the CERT
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`Defendants knew that refined coal was especially made and adapted for an infringing use is
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`evidence that the CERT Defendants knew about Plaintiffs’ patents and knew that power plants
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`using refined coal also used ACI. Ex. A at 629:23-630:3. Thus, the verdict against the clear weight
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`of the evidence and a new trial is warranted.
`IV. A New Trial Is Warranted on the Induced Infringement Verdict Because the Jury
`Instructions Contained Prejudicial Errors Requiring a New Trial and the Verdict is
`Against the Clear Weight of the Evidence
`A.
`
`Failing to Instruct the Jury that CERT Must Actually Encourage Performance
`of Each Step Was Erroneous and Prejudicial
`
`For induced infringement, CERT requested that the Court instruct the jury that the
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`Plaintiffs must show “that the defendants encouraged the power plants to perform each and every
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`
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`4
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 13 of 29 PageID #: 18088
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`step of the asserted claim.” Ex. A at 1142:9-13. The Court declined to do so. Ex. A at 1145:7-9.
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`The failure to give the requested instruction was erroneous. The Supreme Court and
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`Federal Circuit have repeatedly emphasized that the affirmative acts of alleged inducement must
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`encourage the infringing acts. “To prove inducement of infringement, unlike direct infringement,
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`the patentee must show that the accused inducer took an affirmative act to encourage infringement
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`with the knowledge that the induced acts constitute patent infringement. Absent the knowledge
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`and affirmative act of encouragement, no party could be charged with inducement.” Microsoft
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`Corp. v. DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014) (citing Global-Tech Appliances, Inc.
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`v. SEB S.A., 563 U.S. 754, 765 (2011) (emphasis added). Similarly, the Supreme Court has
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`explained that inducement “premises liability on purposeful, culpable expression and conduct” by
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`the accused inducer. See Global-Tech, 563 U.S. at 763 (emphasis added). Where an accused
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`inducer’s expression—instructions provided to the direct infringers describing each step of the
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`infringing method—did not actually encourage infringement, there was no inducement as a matter
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`of law. HZNP Medicines LLC v. Actavis Lab’ys UT, Inc., 940 F.3d 680, 701-02 (Fed. Cir. 2019).
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`Failing to give the requested instruction was prejudicial because it invited the jury to find
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`liability for induced infringement based solely on the sale of refined coal without the requisite
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`evidence that any affirmative actions by CERT actually encouraged any power plant to perform
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`each and every step of the asserted claims. Had the instructions been given as CERT requested,
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`the jury would have understood that it was required to find affirmative acts through which CERT
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`actually encouraged a power plant to perform each and every step of an asserted claim. The record
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`supported a finding of no induced infringement on that basis. Instead, the failure to give the proper
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`instruction contributed to a verdict against the clear weight of the evidence, as discussed below.
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`5
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 14 of 29 PageID #: 18089
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`B.
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`Failing to Instruct the Jury that CERT’s Actions, Rather Than Other Factors,
`Must Have “Actually Caused” the Power Plants to Perform Each and Every
`Step Was Erroneous and Prejudicial
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`For induced infringement, CERT requested that the Court instruct the jury that the
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`Plaintiffs must show “that the Defendant’s actions, as opposed to other factors, actually caused the
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`power plant to perform each and every step of the asserted claim.” Ex. A at 1145:22-1146:6. The
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`Court declined to give that instruction. Ex. A at 1146:9-23. The failure to give the requested
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`instruction was erroneous. In the context of statutory torts, “[i]t is . . . textbook tort law that an
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`action is not regarded as a cause of an event if the particular event would have occurred without
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`it.” University of Texas Southwestern Med. Center v. Nassar, 570 U.S. 338, 347 (2013) (internal
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`quotations and citation omitted).2 Failing to give the requested instruction was prejudicial because
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`it invited the jury to find liability for induced infringement even if, as the record showed, the actual
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`cause of an accused power plant’s use of ACI or an ESP or baghouse to perform either of two steps
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`of the patented method was some other factor, such as its decision to comply with MATS, or if a
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`power plant would have used ACI or an ESP or baghouse regardless of whether it was using refined
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`coal. Had the instruction been given as CERT requested, the jury would have understood that it
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`was required to find for CERT if any factor other than CERT’s affirmative acts caused a power
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`plant to perform at least one step of an asserted claim.
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`C.
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`The Jury’s Verdict of Induced Infringement Is Against the Clear Weight of
`the Evidence.
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`If the Court determines that JMOL of no inducement of infringement is not appropriate,
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`2 Patent infringement is a tort, e.g., Golden v. U.S., 955 F.3d 981, 987 (Fed. Cir. 2020), and as such
`incorporates a proximate cause requirement, see Lexmark Int’l., Inc. v. Static Control Components,
`Inc., 572 U.S. 118, 132 (2014) (construing the Lanham Act to include a proximate cause
`requirement and stating “Congress, we assume, is familiar with the common-law rule and does not
`mean to displace it sub silentio. We have thus construed federal causes of action in a variety of
`contexts to incorporate a requirement of proximate causation.”).
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`6
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 15 of 29 PageID #: 18090
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`see JMOL Br. at § III, pp. 1-12, then the Court should order a new trial on this issue because the
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`verdict is against the clear weight of the evidence and would result in a miscarriage of justice were
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`it to stand. AVM Techs., 334 F. Supp. 3d at 626-27. Again, there is no evidence in the record that
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`any CERT Defendant ever instructed a power plant to use ACI, conditioned the sale of refined
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`coal on the use of ACI, or otherwise encouraged a power plant to begin using or continue to use
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`ACI. Rather, the record establishes that refined coal use and ACI use are not linked because power
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`plants use ACI and particulate removal equipment separate and unrelated to refined coal use, i.e.,
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`accused power plants used and have continued to use ACI and particulate removal equipment to
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`comply with the federal government’s MATS regulations even after stopping their use of refined
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`coal in 2021. The record, in the form of Mr. O’Keefe’s unqualified admission, further establishes
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`that the only reason power plants use ACI is to comply with the EPA’s MATS regulations, that is,
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`that the EPA’s MAT’s regulations are the cause of a power plant’s ACI use. Likewise, Mr.
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`O’Keefe admitted that the CERT Defendants did not cause the accused power plants to use ESPs
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`or baghouses. Ex. A at 657:4-658:17, 702:7-23.
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`Balanced against that significant evidence that the CERT Defendants have not actively
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`encouraged any power plant to infringe and are not the cause of any power plant’s infringement,
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`the only evidence offered in favor of a finding of induced infringement is that the CERT
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`Defendants sold refined coal to power plants with knowledge that the power plant would also use
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`ACI. This evidence should be determined to be insufficient as a matter of law, considering the
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`Federal Circuit’s repeated rulings that simply selling a product with knowledge that it may be used
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`to infringe is, as a matter of law, not sufficient for inducement. Microsoft, 755 F.3d at 905
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`(“[S]imply selling a product capable of being used in an infringing manner is not sufficient to
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`create a substantial controversy regarding inducement.”); Takeda Pharm. U.S.A., Inc. v. West-
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`7
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`Case 1:19-cv-01334-CJB Document 721 Filed 04/05/24 Page 16 of 29 PageID #: 18091
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`Ward Pharm. Corp., 785 F.3d 625, 630 (Fed. Cir. 2015) (“[The] sale of a lawful product by lawful
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`means, with the knowledge that an unaffiliated, third party may infringe, cannot, in and of itself,
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`constitute inducement of infringement.”); Vita-Mix v. Basic Holding, Inc., 581 F.3d 1317, 1329
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`(Fed. Cir. 2009) (“[I]ntent to induce infringement cannot be inferred even when the defendant has
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`actual knowledge that some users of its product may be infringing the patent”). If not, the verdict
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`against the clear weight of the evidence and a new trial is warranted.
`V.
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` The Jury’s Verdict of Willfulness Is Against the Clear Weight of the Evidence.
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`If the Court determines that JMOL of no willful infringement is not appropriate, see JMOL
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`Br. at §VI, pp. 17-20, then the Court should order a new trial on this issue because the verdict