Midwest Energy Emissions Corp. v. Tucson Electric Power Company

Midwest Energy Emissions Corp. (MEEC), an environmental services and technology company also known as ME2C Environmental and recently rebranded as Birchtech Corp., has filed a patent infringement suit against Tucson Electric Power Company (TEP). MEEC develops and provides proprietary mercury capture solutions, specifically its Sorbent Enhancement Additive (SEA®) Technologies, designed to reduce mercury emissions from coal-fired power plants. Tucson Electric Power Company, a subsidiary of Fortis, is an electric utility that delivers power to customers in southern Arizona. The core of the dispute involves TEP's alleged use of MEEC's patented mercury emissions reduction technologies without a license. These technologies involve methods for controlling mercury at coal-fired power plants, often utilizing bromine-enhanced coal (or "refined coal") in conjunction with a sorbent like activated carbon.

The specific patent asserted in this case, U.S. Patent No. 10,589,225, is one of several patents held by MEEC generally titled "Sorbents for the Oxidation and Removal of Mercury." These patents describe methods and materials for capturing pollutants, particularly mercury, from flue gas generated by gasification systems, often involving halogen additives and activated carbon. The lawsuit was initially filed on July 17, 2024, in the U.S. District Court for the District of Arizona under case number 3:24-cv-08145, and was assigned to Judge Diane J. Humetewa. However, this case, along with several others filed by MEEC against various power utilities, was subsequently consolidated into Multidistrict Litigation (MDL) No. 4:24-md-3132 in the U.S. District Court for the Southern District of Iowa, presided over by Judge Stephen H. Locher, for coordinated or consolidated pretrial proceedings.

This litigation is notable as it represents a continuation of MEEC's aggressive patent enforcement strategy within the coal-fired utility sector. MEEC has a history of pursuing patent infringement claims against numerous defendants, including a prior litigation effort in the District of Delaware against over 70 defendants that resulted in significant settlements and a substantial $57 million jury verdict in March 2024. The consolidation into an MDL highlights the prevalence of these patent disputes in the energy industry and aims to streamline discovery, prevent inconsistent rulings on critical issues such as claim construction and patent validity, and conserve judicial and party resources across the multiple similar cases.

Midwest Energy Emissions Corp. (MEEC) filed a patent infringement lawsuit against Tucson Electric Power Company (TEP) and other defendants in the U.S. District Court for the District of Arizona on July 17, 2024. This case, identified as 3:24-cv-08145, is part of a broader patent enforcement effort by MEEC concerning its mercury emissions reduction technologies, specifically U.S. Patent No. 10,589,225, among others.

Here's a chronological breakdown of the key legal developments and outcome:

Filing & Initial Pleadings:

• July 17, 2024: Midwest Energy Emissions Corp. filed the patent infringement complaint against Tucson Electric Power Company and other defendants in the District of Arizona. The lawsuit sought damages, costs, legal expenses, a finding of willful infringement, and an injunction against further infringement.
• September 5, 2024: A stipulation for extension of time was filed, and subsequently granted, extending the defendants' deadline to respond to the complaint to October 15, 2024. This extension was requested to allow additional time for investigation and discussion of potential resolution.

Pre-trial Motions of Substance & MDL Consolidation:

• December 12, 2024: The U.S. Judicial Panel on Multidistrict Litigation (JPML) issued an order centralizing several patent infringement actions brought by Midwest Energy Emissions Corp. in the Southern District of Iowa as MDL No. 4:24-md-3132. The case against Tucson Electric Power Company (3:24-cv-08145) was among those transferred and consolidated for coordinated or consolidated pretrial proceedings. The MDL was assigned to Judge Stephen H. Locher. The asserted patents in the MDL, including 10,589,225, all relate to "Sorbents for the Oxidation and Removal of Mercury."
• January 10, 2025: An Order on Motions to Dismiss and Motion to Sever was issued in the MDL (4:24-md-3132).
• April 18, 2025: An Order re: Petitioners' Deadline to File Surreply was issued in the MDL (4:24-md-3132).
• May 22, 2025: An Order Denying Without Prejudice Pre-Institution Stay was issued in the MDL (4:24-md-3132).

Parallel PTAB IPR/PGR Proceedings:

• Prior to December 12, 2024: Midwest Energy Emissions Corp. (which changed its corporate name to Birchtech Corp. effective October 17, 2024, but continues litigation under its former name) had previously been involved in extensive patent litigation in the District of Delaware (1:19-cv-01334) against over 70 defendants. That action involved at least two of the patents asserted in the current MDL.
• March 26, 2025: The USPTO released a memorandum on an Interim Process for PTAB Workload Management, which is referenced in an IPR proceeding related to a Midwest Energy Emissions Corp. patent.
• July 2, 2025: An Inter Partes Review (IPR) proceeding, IPR2025-00423, was instituted by the Patent Trial and Appeal Board (PTAB) challenging claims 1-4 and 6-29 of U.S. Patent No. 10,668,430, which is related to the patents in the MDL and also concerns methods and materials for pollutant removal from flue gas. The petitioners in this IPR include Berkshire Hathaway Energy Company and other entities, some of whom are also defendants in the MDL. Another concurrent IPR, IPR2025-00422, was also filed challenging the same claims of the '430 patent. The Board instituted trial in these proceedings.

Outcome/Present Posture:
The case Midwest Energy Emissions Corp. v. Tucson Electric Power Company (3:24-cv-08145) is currently consolidated within MDL No. 4:24-md-3132 in the Southern District of Iowa for coordinated or consolidated pretrial proceedings. The MDL is active, with various orders on motions issued in early to mid-2025, indicating that pretrial proceedings are ongoing. The existence of parallel IPRs on a related patent suggests that patent validity challenges are also being pursued concurrently with the infringement litigation.

It is worth noting that Midwest Energy Emissions Corp. secured a $57 million patent infringement verdict in a separate Delaware case (1:19-cv-01334) on March 1, 2024, for infringement of U.S. Patent Nos. 10,343,114 and 10,596,517. This verdict was recognized as one of the Top 100 Verdicts of 2024. This prior successful litigation demonstrates MEEC's history of enforcing its patent portfolio.The patent infringement lawsuit Midwest Energy Emissions Corp. v. Tucson Electric Power Company (3:24-cv-08145) began in the U.S. District Court for the District of Arizona and has since been consolidated into a multidistrict litigation (MDL). The case involves U.S. Patent No. 10,589,225, among others, related to mercury emissions reduction technologies.

Here is a chronological summary of the key legal developments and the current posture of the litigation:

Filing & Initial Pleadings:

• July 17, 2024: Midwest Energy Emissions Corp. (MEEC) initiated the patent infringement lawsuit against Tucson Electric Power Company and several other defendants in the District of Arizona. The complaint sought damages, costs, and legal expenses, along with a finding of willful infringement and an injunction against further infringing activities. The defendants in this specific case included Tucson Electric Power Co., San Carlos Resources Inc., Salt River Project Agricultural Improvement and Power District, Tri-State Generation and Transmission Association Inc., Springerville Unit 3 Holding LLC, and Springerville Unit 3 Partnership LP.
• September 5, 2024: The parties stipulated to, and the court granted, an extension for the defendants to file their response to the complaint. The new deadline was set for October 15, 2024, to allow more time for investigation and potential resolution discussions.

Pre-trial Motions of Substance & MDL Consolidation:

• December 12, 2024: The U.S. Judicial Panel on Multidistrict Litigation (JPML) ordered the centralization of multiple patent infringement cases filed by Midwest Energy Emissions Corp. into MDL No. 4:24-md-3132 in the Southern District of Iowa. The case against Tucson Electric Power Company (3:24-cv-08145) was transferred to and consolidated within this MDL for coordinated or consolidated pretrial proceedings. The MDL was assigned to Judge Stephen H. Locher. The asserted patents in the MDL, including 10,589,225, are all titled "Sorbents for the Oxidation and Removal of Mercury."
• January 10, 2025: In the MDL, an Order on Motions to Dismiss and a Motion to Sever was issued.
• April 18, 2025: An Order regarding Petitioners' Deadline to File Surreply was issued in the MDL.
• May 22, 2025: An Order Denying Without Prejudice Pre-Institution Stay was issued in the MDL.

Parallel PTAB IPR/PGR Proceedings:

• March 26, 2025: An Interim Process for PTAB Workload Management memorandum was issued by the USPTO, which has been referenced in an IPR proceeding involving a Midwest Energy Emissions Corp. patent.
• July 2, 2025: The Patent Trial and Appeal Board (PTAB) instituted Inter Partes Review (IPR) proceedings, specifically IPR2025-00423 and IPR2025-00422, challenging claims 1-4 and 6-29 of U.S. Patent No. 10,668,430. This patent, related to the ones in the MDL, concerns methods and materials for pollutant removal. Petitioners in these IPRs include entities like Berkshire Hathaway Energy Company, some of whom are also defendants in the MDL. The Board decided to institute trial in these proceedings.

Outcome/Present Posture:
The case Midwest Energy Emissions Corp. v. Tucson Electric Power Company (3:24-cv-08145) is currently active and is being managed as part of MDL No. 4:24-md-3132 in the Southern District of Iowa. The MDL is in the pretrial phase, with various motions addressed in early to mid-2025, indicating ongoing proceedings. The parallel IPR challenges against a related patent underscore a broader effort by defendants to contest the validity of MEEC's patent portfolio.

It is relevant to note that Midwest Energy Emissions Corp. previously secured a $57 million patent infringement verdict on March 1, 2024, in a separate case in the U.S. District Court for the District of Delaware (1:19-cv-01334). That verdict, which found infringement of U.S. Patent Nos. 10,343,114 and 10,596,517, was recognized as a top U.S. verdict for 2024. This demonstrates MEEC's track record in enforcing its patent rights.

Midwest Energy Emissions Corp. (MEEC) is represented by a team of attorneys from several law firms. The primary counsel appearing in the initial District of Arizona case (3:24-cv-08145) and subsequently in the MDL (4:24-md-3132) include:

Caldwell Cassady Curry PC

• Bradley W. Caldwell (Lead Counsel) - Partner, Caldwell Cassady Curry PC, Dallas, Texas. Caldwell has extensive experience in high-stakes patent litigation, including securing a $302.4 million patent infringement verdict for VirnetX against Apple and a $57 million jury verdict for MEEC in a previous patent infringement case.
• Justin T. Nemunaitis (Lead Counsel) - Partner, Caldwell Cassady Curry PC, Dallas, Texas. Nemunaitis is a seasoned trial attorney specializing in patent infringement cases. He has represented MEEC in various patent disputes, including the previous Delaware action that resulted in a significant jury verdict.
• Richard A. Cochrane (Lead Counsel) - Partner, Caldwell Cassady Curry PC, Dallas, Texas. Cochrane is noted for his work in complex patent litigation.

Nyemaster Goode PC

• Jeffrey D. Harty (Local Counsel) - Shareholder, Nyemaster Goode PC, Des Moines, Iowa. Harty is a registered patent attorney with significant experience in intellectual property litigation, representing both patent owners and alleged infringers. His practice includes patent infringement, inter partes review (IPR) proceedings, and post-grant review (PGR) proceedings at the Patent Trial and Appeal Board. He is admitted to practice before the U.S. Patent and Trademark Office and the Federal Circuit Court of Appeals.
• Allison E. Kerndt (Local Counsel) - Shareholder, Nyemaster Goode PC, Des Moines, Iowa. Kerndt is a registered patent attorney with experience in patent and trademark application preparation and prosecution, as well as intellectual property litigation, including appearances before the U.S. International Trade Commission.
• Michael W. Thrall (Local Counsel) - Shareholder, Nyemaster Goode PC, Des Moines, Iowa. Thrall has appeared as counsel for Midwest Energy Emissions Corp. in related MDL cases.

Howard Kercsmar & O'Hara PLLC

• G. Stephen Kercsmar (Local Counsel) - Partner, Howard Kercsmar & O'Hara PLLC, Scottsdale, Arizona. Kercsmar is listed as counsel for Plaintiff in the initial District of Arizona filing.
• Steven J. O'Hara (Local Counsel) - Partner, Howard Kercsmar & O'Hara PLLC, Scottsdale, Arizona. O'Hara is listed as counsel for Plaintiff in the initial District of Arizona filing.
• Carrie A. Houtchen (Local Counsel) - Attorney, Howard Kercsmar & O'Hara PLLC, Scottsdale, Arizona. Houtchen is listed as counsel for Plaintiff in the initial District of Arizona filing.

It is common for lead counsel from a specialized patent litigation firm to work with local counsel in the district where the case is originally filed, and then collaborate with local counsel in the transferee district once consolidated into an MDL. The attorneys from Caldwell Cassady Curry PC appear to be the primary litigation team, while those from Nyemaster Goode PC and Howard Kercsmar & O'Hara PLLC provide local support in Iowa (the MDL venue) and Arizona (the initial filing venue), respectively.

Tucson Electric Power Company (TEP) is represented by both in-house counsel and external legal teams.

In-house Counsel for Tucson Electric Power Company:

• Amy Welander
  • Role: Vice President, General Counsel, Chief Compliance Officer and Corporate Secretary
  • Firm: Tucson Electric Power Company (In-house)
  • Office Location: Tucson, Arizona
  • Note: Joined TEP in 2008 as in-house regulatory counsel, focusing on federal regulatory matters and transactions, including FERC compliance.
• Megan Hendrickson
  • Role: Attorney
  • Firm: Tucson Electric Power Company (In-house)
  • Office Location: Tucson, Arizona
• Bradley Carroll
  • Role: Member
  • Firm: Tucson Electric Power Company (In-house)
  • Office Location: Tucson, Arizona
• Megan Decorse
  • Role: Attorney
  • Firm: Tucson Electric Power Company (In-house)
  • Office Location: Tucson, Arizona

External Counsel for Tucson Electric Power Company:

• Court S. Rich
  • Role: Co-Founder and Director of Energy and Utility Infrastructure Department
  • Firm: Rose Law Group pc
  • Office Location: Scottsdale, Arizona
  • Note: Practices in energy, utilities, municipal law, regulatory law, land use and zoning, and project permitting. Has represented large energy developers and users, and has experience with power purchase agreements with utilities including TEP.

It's important to note that with the consolidation into MDL No. 4:24-md-3132, additional counsel may appear for Tucson Electric Power Company in the Southern District of Iowa as the case proceeds through coordinated pretrial proceedings. The information above is based on the initial filing in the District of Arizona and TEP's publicly listed in-house legal team.