DCT
1:19-cv-01334
Midwest Energy Emissions Corp v. Arthur J Gallagher & Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Midwest Energy Emissions Corp. and MES Inc. (Delaware and North Dakota)
- Defendant: Arthur J. Gallagher & Co., ET AL. (various, many incorporated in Delaware)
- Plaintiff’s Counsel: Caldwell Cassady Curry PC; Devlin Law Firm LLC
- Case Identification: 1:19-cv-01334, D. Del., 05/03/2022
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware as each defendant is incorporated in and/or resides in the district.
- Core Dispute: Plaintiff alleges that Defendants' process for producing and using "refined coal" to reduce mercury emissions from coal-fired power plants—a process allegedly motivated by federal tax credits—infringes five patents related to mercury capture technology.
- Technical Context: The technology involves using bromine-based additives in conjunction with activated carbon sorbents to oxidize and capture mercury from the flue gas of coal combustion facilities.
- Key Procedural History: The operative complaint is the Fourth Amended Complaint. The original complaint, filed July 17, 2019, provided notice of U.S. Patent Nos. 10,343,114 and 8,168,147. Plaintiff alleges that subsequent notice regarding U.S. Patent Nos. 10,589,225, 10,596,517, and 10,668,430 was provided on June 29, 2020. These notice dates are relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-08-30 | Earliest Priority Date for all Patents-in-Suit |
| 2011-01-01 | ME2C and Dynegy begin evaluating ME2C process |
| 2012-01-01 | ME2C contracts with Luminant to test patented methods |
| 2012-05-01 | ’147 Patent Issued |
| 2016-01-01 | General compliance deadline for EPA MATS rule |
| 2019-07-09 | ’114 Patent Issued |
| 2019-07-17 | Original Complaint Filed |
| 2020-03-17 | ’225 Patent Issued |
| 2020-03-24 | ’517 Patent Issued |
| 2020-06-02 | ’430 Patent Issued |
| 2020-06-29 | Notice of ’225, ’517, and ’430 patents allegedly provided |
| 2022-05-03 | Fourth Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,343,114 - "Sorbents for the Oxidation and Removal of Mercury"
The Invention Explained
- Problem Addressed: The patent's background describes that conventional methods for removing mercury from flue gas, such as injecting activated carbon, are inefficient, expensive, require high sorbent-to-mercury ratios, and can contaminate fly ash, which prevents its subsequent sale and reuse (’114 Patent, col. 2:9-19).
- The Patented Solution: The invention introduces a "promoted sorbent" created by reacting a base sorbent (like activated carbon) with a halogen or halide "promoter" (such as bromine) (’114 Patent, Abstract). This reaction, which can occur before injection or "in-flight" within the gas stream, creates a highly reactive material that more effectively oxidizes and captures mercury, thereby reducing the amount of sorbent needed and lowering costs (’114 Patent, col. 3:2-15).
- Technical Importance: This method provided a more economical and efficient pathway for coal-fired power plants to comply with increasingly stringent federal environmental regulations concerning mercury emissions (Compl. ¶¶ 53-55).
Key Claims at a Glance
- The complaint asserts infringement of at least one of claims 1-30, with an exemplary analysis of independent method claim 25 (Compl. ¶¶ 245, 247).
- Essential elements of Claim 25:
- A method of separating mercury from a mercury-containing gas.
- Combusting coal in a combustion chamber to provide the mercury-containing gas, where the coal or combustion chamber contains an added bromine-based compound (Br2, HBr, or a bromide compound).
- Injecting a sorbent material comprising activated carbon into the mercury-containing gas downstream of the combustion chamber.
- Contacting mercury in the gas with the sorbent to form a mercury/sorbent composition.
- Separating the mercury/sorbent composition from the gas to form a cleaned gas.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent but asserts the entire claim set.
U.S. Patent No. 8,168,147 - "Sorbents for the Oxidation and Removal of Mercury"
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’114 Patent: the inefficiency and high cost of existing mercury sorbents used in coal combustion flue gas (’147 Patent, col. 2:9-19).
- The Patented Solution: The invention describes a method for separating mercury by "promoting" a particulate sorbent, like activated carbon, with a bromine-containing promoter in gaseous, vapor, or non-aqueous liquid form (’147 Patent, col. 4:31-41; Abstract). The patent explains that the activated carbon has specific chemical sites ("graphene sheets having carbene species edge sites") that react with the promoter to form a "promoted brominated sorbent" that is highly effective at oxidizing and capturing elemental mercury (’147 Patent, col. 4:36-41).
- Technical Importance: This technology provided a chemical basis for enhancing the performance of activated carbon, allowing for more efficient mercury capture to meet regulatory standards (Compl. ¶¶ 53-55).
Key Claims at a Glance
- The complaint asserts infringement of at least one of claims 17-20, with an exemplary analysis of independent method claim 17 (Compl. ¶¶ 270, 272).
- Essential elements of Claim 17:
- A method for separating mercury from a mercury-containing gas.
- Promoting at least a portion of a particulate sorbent material comprising activated carbon by chemically reacting it with a bromine-containing promoter to form a promoted brominated sorbent.
- The promoter must be in gaseous, vapor, or non-aqueous liquid form.
- The activated carbon contains specific graphene sheets with carbene species edge sites that react with the promoter.
- Chemically reacting elemental mercury in the gas with the promoted brominated sorbent to form a mercury/sorbent chemical composition.
- Separating particulates, including ash and the mercury/sorbent composition, from the gas.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent but asserts claims 17-20.
U.S. Patent No. 10,589,225 - "Sorbents for the Oxidation and Removal of Mercury"
- Patent Identification: U.S. Patent No. 10,589,225, "Sorbents for the Oxidation and Removal of Mercury," issued March 17, 2020.
- Technology Synopsis: This patent relates to a method for treating mercury-containing gas by combusting a mixture that includes coal and a bromine-based additive. A particulate sorbent of activated carbon is then added to the resulting gas to capture the mercury (Compl. ¶¶ 298-303).
- Asserted Claims: The complaint asserts infringement of at least one of claims 1-29, with an exemplary analysis of independent claim 1 (Compl. ¶¶ 296-298).
- Accused Features: The accused features are the Defendants' processes of providing coal treated with bromine compounds to power plants that then combust the mixture and inject activated carbon downstream (Compl. ¶¶ 301, 303-304).
U.S. Patent No. 10,596,517 - "Sorbents for the Oxidation and Removal of Mercury"
- Patent Identification: U.S. Patent No. 10,596,517, "Sorbents for the Oxidation and Removal of Mercury," issued March 24, 2020.
- Technology Synopsis: This patent describes a method for reducing mercury by combusting coal that comprises a bromine-based additive to form a mercury-containing gas. The mercury is then collected from the gas with a sorbent comprising activated carbon (Compl. ¶¶ 319-324).
- Asserted Claims: The complaint asserts infringement of at least one of claims 1-30, with an exemplary analysis of independent claim 1 (Compl. ¶¶ 317-319).
- Accused Features: The accused features are the Defendants' processes where coal containing a bromine additive is combusted at a power plant, and activated carbon is subsequently added to the flue gas to collect the mercury (Compl. ¶¶ 322, 324-325).
U.S. Patent No. 10,668,430 - "Sorbents for the Oxidation and Removal of Mercury"
- Patent Identification: U.S. Patent No. 10,668,430, "Sorbents for the Oxidation and Removal of Mercury," issued June 2, 2020.
- Technology Synopsis: This patent claims a method of separating mercury by combusting coal with a bromine-based additive (added either to the coal or the combustion chamber) and then injecting a sorbent of activated carbon downstream to contact and separate the mercury (Compl. ¶¶ 340-349).
- Asserted Claims: The complaint asserts infringement of at least one of claims 1-29, with an exemplary analysis of independent claim 1 (Compl. ¶¶ 338-340).
- Accused Features: The accused features are the Defendants' processes in which power plants combust coal with a bromine additive and inject activated carbon downstream to capture mercury from the resulting gas (Compl. ¶¶ 343, 345, 350).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the methods performed by the Defendants and the operators of coal-fired power plants ("Accused Coal Plants") connected to Defendants' "Refined Coal" facilities ("Accused RC Facilities") (Compl. ¶¶ 202-203, 208).
Functionality and Market Context
- The complaint alleges that Defendants operate RC facilities that receive coal, add a bromine and/or bromide compound (such as CaBr2) to it to create "refined" coal, and then provide that refined coal to an associated power plant (Compl. ¶¶ 68-69, 208). The power plant then combusts the refined coal and injects a separate sorbent material, comprising activated carbon, downstream of the combustion chamber to capture mercury from the flue gas (Compl. ¶202). The complaint alleges this entire process is part of a "scheme" designed to allow Defendants to claim federal Section 45 tax credits, which require demonstrating a significant reduction in mercury emissions (Compl. ¶¶ 57, 75, 214). The use of bromine additives is alleged to enhance the performance of the activated carbon, thereby achieving the required emissions reduction (Compl. ¶82). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
10,343,114 Patent Infringement Allegations
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of separating mercury from a mercury-containing gas. | The power plants perform this method to comply with federal and/or state mercury regulations. | ¶248 | col. 33:48-67 |
| combusting coal in a combustion chamber to provide the mercury-containing gas, wherein the coal comprises added Br2, HBr, a bromide compound, or a combination thereof, added to the coal upstream of the combustion chamber... | Power plants connected to an Accused RC Facility burn coal that has been treated with a bromide compound by Defendants upstream of the combustion chamber. | ¶250 | col. 36:10-24 |
| injecting a sorbent material comprising activated carbon into the mercury containing gas downstream of the combustion chamber. | The power plants inject activated carbon sorbent downstream of the combustion chamber. | ¶252 | col. 33:60-63 |
| contacting mercury in the mercury-containing gas with the sorbent, to form a mercury/sorbent composition. | Mercury in the flue gas exiting the combustion chamber makes contact with the injected sorbent. | ¶254 | col. 33:64-65 |
| separating the mercury/sorbent composition from the mercury-containing gas, to form a cleaned gas. | The power plants use equipment to collect the sorbent and captured mercury to comply with regulations. | ¶256 | col. 33:66-67 |
- Identified Points of Contention:
- Scope Questions: A central issue may be one of divided infringement. The Defendants are alleged to perform the step of adding the bromide compound to the coal, while the power plant operators perform the combusting and injecting steps (Compl. ¶¶ 202, 208, 250, 252). The analysis will question whether Defendants' control, direction, and financial incentives are sufficient to attribute the power plants' actions to them for infringement liability purposes.
- Technical Questions: What evidence does the complaint provide that the "added" bromide compound, applied to coal as it moves along a conveyor belt, constitutes coal that "comprises" the additive as required by the claim? (Compl. ¶68).
8,168,147 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for separating mercury from a mercury containing gas. | The power plants perform this method to comply with federal and/or state mercury regulations. | ¶273 | col. 24:32-41 |
| promoting at least a portion of a particulate sorbent material comprising activated carbon by chemically reacting the sorbent material with a bromine containing promoter to form a promoted brominated sorbent, wherein the bromine containing promoter is in gaseous form... | When coal with added bromine/bromide is combusted, the bromine becomes gaseous and comes into contact with the separately injected activated carbon, allegedly causing the claimed chemical reaction "in-flight". | ¶275 | col. 24:32-41 |
| ...and wherein the activated carbon contains graphene sheets having carbene species edge sites which react with the bromine containing promoter... | The complaint alleges that the contact between the gaseous bromine and the activated carbon causes the recited chemical reaction to occur. | ¶275 | col. 24:36-41 |
| chemically reacting elemental mercury in the mercury containing gas with the promoted brominated sorbent to form a mercury/sorbent chemical composition. | After being "promoted," the sorbent reacts with and captures elemental mercury in the flue gas. | ¶277 | col. 24:42-45 |
| separating particulates from the mercury containing gas, the particulates including ash and the mercury/sorbent chemical composition. | The power plants use equipment to collect the sorbent and captured mercury to comply with regulations. | ¶279 | col. 24:46-49 |
- Identified Points of Contention:
- Scope Questions: Does the term "promoting," which requires a chemical reaction, read on the alleged "in-flight" contact between two separately introduced materials (gaseous bromine from coal and particulate activated carbon) within the turbulent environment of a flue gas stream? (Compl. ¶281).
- Technical Questions: What evidence does the complaint provide that the specific chemical reaction recited in the claim—the reaction of a gaseous bromine promoter with "graphene sheets having carbene species edge sites" on the activated carbon—actually occurs in the accused process? (Compl. ¶275).
V. Key Claim Terms for Construction
The Term: "promoting... by chemically reacting" (’147 Patent, Claim 17)
- Context and Importance: This term is central to the infringement theory for the ’147 Patent. The dispute may turn on whether the alleged "in-flight" interaction between gaseous bromine from combusted coal and separately injected activated carbon constitutes the claimed "promoting" via a "chemical reaction," or if the claim requires a more deliberate, pre-combustion treatment of the sorbent itself. Practitioners may focus on this term because it defines the core inventive step alleged to be practiced by the Defendants' unique, divided process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the parent ’114 Patent, which is part of the same family, explicitly describes methods for "in-flight preparation" where the "base sorbent is promoted within the flue gas stream" by introducing the base sorbent and promoter separately (’114 Patent, col. 5:42-45). This language may support an interpretation that covers the alleged process.
- Evidence for a Narrower Interpretation: The specification also describes detailed methods for pre-treating sorbents to create a "product-promoted sorbent" before injection, including reacting the sorbent with a promoter in a solvent and then drying it (’114 Patent, col. 9:10-24). This could support an argument that "promoting" requires the formation of a distinct, pre-reacted sorbent material, not just incidental contact in the flue gas.
The Term: "wherein the coal comprises added... bromide compound... added to the coal upstream of the combustion chamber" (’114 Patent, Claim 25)
- Context and Importance: The infringement allegation hinges on Defendants adding a bromide compound to coal on a conveyor belt shortly before combustion (Compl. ¶68). The construction of "comprises added" will determine if this on-site, just-in-time application meets the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, simply requiring the compound to be "added to the coal upstream." The patent does not appear to specify a required duration, method, or degree of incorporation for the "adding" step.
- Evidence for a Narrower Interpretation: Defendants may argue that the term, in the context of creating what is marketed as "refined coal," implies a more substantial treatment process that alters the coal's properties, rather than a mere surface application. The specification's focus on creating "promoted sorbents" could be used to argue for a more integrated process than what is alleged (’114 Patent, col. 3:2-15).
VI. Other Allegations
Indirect Infringement
- The complaint heavily relies on theories of induced and contributory infringement. It alleges inducement by asserting Defendants provide the "refined coal" along with technical support, operational instructions, and strong financial incentives (tax credits) that intentionally cause the power plants to perform the final infringing steps of combustion and sorbent injection (Compl. ¶¶ 216-217, 262-263). Contributory infringement is alleged on the basis that the Defendants' "refined coal" is a material part of the invention and has no substantial non-infringing use, as it is specifically tailored for the patented process at a particular plant (Compl. ¶¶ 260-261, 264).
Willful Infringement
- Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge through Defendants' attendance at industry conferences where the technology was presented, direct business interactions with Plaintiff, and general market awareness (Compl. ¶¶ 102, 182-187). Post-suit knowledge is based on the filing of the original complaint on July 17, 2019, and subsequent updates providing notice of newly issued patents (Compl. ¶¶ 219, 221).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of liability for divided actions: can Plaintiff prove that Defendants, by supplying treated coal and managing a tax credit scheme, exercise sufficient control or have the specific intent required to be held liable for inducing the direct infringement performed by the third-party power plant operators?
- A key legal and technical question will be one of claim scope: does the incidental, "in-flight" contact between gaseous bromine released from combusted coal and a separately injected activated carbon meet the ’147 Patent's requirement of "promoting" a sorbent "by chemically reacting," or does the claim require a more deliberate, antecedent creation of a distinct promoted sorbent?
- A central evidentiary question will be one of materiality for contribution: can Plaintiff demonstrate that the Defendants' "refined coal," when supplied to a specific power plant, has no substantial non-infringing use other than to be used in the patented method, thereby satisfying a key element of contributory infringement?