Pacificorp et al v. Birchtech Corp.

The Inter Partes Review (IPR) case IPR2025-00688, Pacificorp et al v. Birchtech Corp., involved a challenge to US Patent 10933370, which was terminated on February 10, 2026. This IPR was one of four parallel petitions filed by petitioners Pacificorp and MidAmerican Energy Company against two patents owned by Birchtech Corp.: US Patent 10933370 and US Patent 10926218.

The petitioners, Pacificorp and MidAmerican Energy Company, are operating electric utility companies. Pacificorp is a regulated electric utility company that generates, transmits, distributes, and sells electricity to over 2 million customers across six western states. It operates a diverse portfolio of generation resources, including coal, natural gas, hydroelectric, solar, and geothermal. Birchtech Corp., the patent owner, is an environmental services and technology company specializing in activated carbon technologies for air and water purification. They provide patented Sorbent Enhancement Additive (SEA) technologies for mercury emissions capture in the coal-fired utility sector and are developing solutions for "forever chemicals" like PFAS and PFOS. The patents at issue, US 10933370 and US 10926218, broadly relate to technologies for mercury removal at coal-combustion facilities. For example, US Patent 10933370's abstract describes a flooring system for generating electricity from users as they walk, using multiple sensors to characterize footsteps and estimate their location. While this abstract appears to be for a different technology than Birchtech's primary business, the PTAB decision and other sources consistently link these patents to mercury removal, suggesting the abstract might be misleading or there's a disconnect in public data.

The procedural posture of this case is an Inter Partes Review before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. IPRs serve as an administrative proceeding for challenging the validity of issued patents based on prior art, offering a potentially faster and less expensive alternative to district court litigation for validity challenges. This specific case is notable because it was part of a precedential Director Review decision issued by USPTO Director John Squires on January 12, 2026. The Director vacated the initial decisions to institute all four parallel IPR petitions (two against each of the two patents), ruling that the Board had abused its discretion by instituting multiple petitions challenging the same claims under different priority dates. The Director emphasized that typically, one petition should be sufficient to challenge the claims of a patent, and parallel petitions are generally an inefficient use of Board resources, even in cases involving priority date disputes. The matter was remanded to the Board with instructions to institute at most one petition challenging each patent and to resolve any priority disputes if necessary.

The case "Pacificorp et al v. Birchtech Corp.", IPR2025-00688, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. While IPRs are often filed in response to or in parallel with patent infringement lawsuits, the provided case number refers specifically to the PTAB action.

Here are the key legal developments and outcome for IPR2025-00688, along with details of related parallel patent infringement litigation:

IPR Proceeding: IPR2025-00688

Filing & Initial Pleadings (IPR Petition)

• 2025-03-24: PacifiCorp and MidAmerican Energy Company ("Petitioners") filed a petition for Inter Partes Review (IPR2025-00688) challenging the patentability of U.S. Patent No. 10,933,370, owned by Birchtech Corp. This was one of four parallel IPR petitions filed by the Petitioners against two Birchtech patents (U.S. Patent Nos. 10,933,370 and 10,926,218). For each patent, the Petitioners filed two IPRs, presenting different prior art theories tied to competing priority date positions.

PTAB Institution Decision & Director Review

• Before January 12, 2026: The Patent Trial and Appeal Board initially granted institution of all four IPR proceedings, including IPR2025-00688.
• Post-Institution: Birchtech Corp., the Patent Owner, filed a request for Director Review, arguing that instituting multiple parallel petitions against the same claims was an inefficient use of Board resources.
• 2026-01-12: John A. Squires, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, issued a precedential decision in PacifiCorp et al. v. Birchtech Corp. (Paper 40, encompassing IPR2025-00687, -00688, -00717, -00718). The Director agreed with Birchtech, ruling that the Board abused its discretion by instituting two petitions challenging the same claims of the '370 patent (and the '218 patent). The Director emphasized that, absent exceptional circumstances, "one petition should be sufficient to challenge the claims of a patent in most situations" and that parallel petitions effectively expand the permitted word count and impose unnecessary burdens on the Board and the patent owner. The decision vacated the institution decisions and remanded the proceedings to the Board with instructions to either resolve the priority date issue or, at most, institute the first-ranked petition for each patent.

Outcome

• 2026-02-10: IPR2025-00688 was terminated. The status is recorded as "Not Instituted - Procedural," which aligns with the Director's decision to vacate the initial institution and remand the case.

Parallel District Court Patent Infringement Litigation

Underlying Litigation

• The IPRs initiated by PacifiCorp and MidAmerican Energy Company were filed in the context of ongoing patent infringement litigation where Birchtech Corp. asserted its patents.
• 2019-07: Birchtech Corp. filed an initial patent infringement lawsuit in the U.S. District Court of Delaware against 43 defendants, including four major power utilities and numerous refined coal companies.
• 2023 Late: Birchtech obtained a pre-trial settlement with some defendants (AJ Gallagher, DTE, and a CERT Defendant).
• 2024-03: A jury in the U.S. District Court of Delaware rendered a verdict of $57 million in favor of Birchtech Corp. against the remaining "CERT Defendants," with a unanimous finding of willful infringement, inducing infringement, and contributory infringement.
• 2024-07: Birchtech filed three separate lawsuits against 14 additional defendants.
• 2024-12: These new lawsuits were consolidated and centralized in the Southern District of Iowa.
• 2025-12-18: U.S. District Court Judge Christopher J. Burke issued a final memorandum opinion, resolving outstanding issues regarding the final calculation of the judgment amount from the March 2024 jury verdict. The Court declined to increase the verdict based on willful infringement but awarded pre-judgment interest compounded quarterly at the prime rate and post-judgment interest.
• 2025-12-23: Birchtech announced that the final judgment amount was expected to be approximately $78 million, with additional interest accruing daily until paid.

Effect of IPR on Litigation

• The Director's decision to vacate the institution of IPR2025-00688 (and its companion IPRs) means that the PTAB did not proceed to a full trial on the merits to determine the patentability of U.S. Patent No. 10,933,370 based on these specific petitions. This outcome prevents the petitioners from using this IPR pathway to invalidate the patent on the grounds presented in the procedurally deficient multiple petitions. This procedural denial likely strengthens Birchtech's position in the ongoing or related district court infringement litigation, as the patent's validity was not challenged to a final written decision at the PTAB through these particular proceedings.

The counsel of record representing the petitioner(s), Pacificorp et al (which includes PacifiCorp and MidAmerican Energy Company), in IPR2025-00688, based on the Director Review decision (Paper 40 in IPR2025-00687, which applies to IPR2025-00688), appear to include attorneys from several law firms. While specific roles (lead, of counsel, local, in-house) are not explicitly detailed in the provided search results for each attorney in this specific IPR, PTAB rules generally require designation of lead counsel and at least one backup counsel.

Based on the email addresses listed in Paper 40, the following attorneys and firms are identified:

• David Tobin

  • Role: Likely counsel.
  • Firm: McDermott Will & Emery LLP (from @mwe.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

• Brent P. O'Bryan (likely "boaks" is a typo and should be "bobryan" or similar for Brent O'Bryan, a partner at MWE who does PTAB work, or if it's "boaks" it might refer to another individual. Given the commonality of the name Brent O'Bryan and his PTAB experience, this is a strong possibility, though not definitively confirmed from the alias alone. Re-evaluating based on the provided email "boaks@mwe.com").

  • Role: Likely counsel.
  • Firm: McDermott Will & Emery LLP (from @mwe.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

• Syed K. Fareed

  • Role: Likely counsel.
  • Firm: McDermott Will & Emery LLP (from @mwe.com).
  • Office Location: Needs further search.
  • Relevant Experience: Has represented PacifiCorp and MidAmerican Energy Company in related litigation.

• Charles Tatum (likely "ctatum" from @mwe.com).

  • Role: Likely counsel.
  • Firm: McDermott Will & Emery LLP (from @mwe.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

• R.S. Johnson (likely "rsjohnson" from @fredlaw.com).

  • Role: Likely counsel.
  • Firm: Fredrikson & Byron, P.A. (from @fredlaw.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

• Thomas C. Patton (likely "tpatton" from @fredlaw.com).

  • Role: Likely counsel.
  • Firm: Fredrikson & Byron, P.A. (from @fredlaw.com).
  • Office Location: Needs further search.
  • Relevant Experience: Has represented MidAmerican Energy Company and PacifiCorp in related litigation.

• Michelle Kemp (from "kemp-ptab@perkinscoie.com").

  • Role: Likely counsel.
  • Firm: Perkins Coie LLP (from @perkinscoie.com).
  • Office Location: Needs further search.
  • Relevant Experience: Has appeared for Alliant Energy Defendants, Interstate Power and Wisconsin Power in related litigation.

• Michael Piery (from "michael.piery@quarles.com").

  • Role: Likely counsel.
  • Firm: Quarles & Brady LLP (from @quarles.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

• Lauren Bolcar (from "lauren.bolcar@quarles.com").

  • Role: Likely counsel.
  • Firm: Quarles & Brady LLP (from @quarles.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

• Hani Hamad (from "hhamad@caldwellcc.com").

  • Role: Likely counsel.
  • Firm: Caldwell Intellectual Property Law (from @caldwellcc.com).
  • Office Location: Needs further search.
  • Relevant Experience: Needs further search.

To provide a complete answer, further searches are needed to confirm the full names for all aliases, their office locations, and specific patent litigation experience or notable cases. However, without direct access to the PTAB docket for specific appearance counsel entries beyond the general list of emails in Paper 40, definitive roles and detailed experience for each attorney specifically in this IPR are challenging to ascertain with certainty solely from these search results.

Given the information at hand:
The petitioners, Pacificorp and MidAmerican Energy Company, were represented by attorneys from multiple firms. Based on the email addresses provided in Paper 40 of IPR2025-00687 (which applies to IPR2025-00688), the firms involved include McDermott Will & Emery LLP, Fredrikson & Byron, P.A., Perkins Coie LLP, Quarles & Brady LLP, and Caldwell Intellectual Property Law.

• Syed K. Fareed (McDermott Will & Emery LLP) - Syed Fareed has represented PacifiCorp in related litigation.
• Thomas C. Patton (Fredrikson & Byron, P.A.) - Thomas Patton has represented MidAmerican Energy Company and PacifiCorp in related litigation.
• Michelle Kemp (Perkins Coie LLP) - Michelle Kemp has appeared for other petitioners (Alliant Energy Defendants, Interstate Power, and Wisconsin Power) in related litigation alongside PacifiCorp and MidAmerican Energy Company.

The specific roles (e.g., lead counsel, backup counsel) for each attorney within IPR2025-00688 are not explicitly stated in the public search results, but PTAB rules require such designations. Further detail on office locations and specific patent litigation experience for all listed attorneys would require examining individual firm profiles and docket entries not fully exposed in the general search results.

Caldwell Cassady & Curry, P.C. represented Birchtech Corp. (Patent Owner) in IPR2025-00688. The counsel of record for Birchtech Corp. included:

• Hamad M. Hamad - Lead Counsel

  • Firm: Caldwell Cassady & Curry, P.C. (Dallas, Texas).
  • Experience: Mr. Hamad is a principal at Caldwell Cassady & Curry and is recognized for his work before the Patent Trial and Appeal Board (PTAB), ranking among the top attorneys representing patent owners. He has extensive experience in intellectual property disputes and complex commercial litigation, including cases involving multimedia content protection, digital encryption, and virtual private networks. He has been involved in high-stakes patent infringement cases, securing significant verdicts against major technology companies.

• Justin T. Nemunaitis - Counsel (pro hac pending)

  • Firm: Caldwell Cassady & Curry, P.C. (Dallas, Texas).
  • Experience: Mr. Nemunaitis is a principal at Caldwell Cassady & Curry focusing on patent infringement disputes and complex commercial litigation. He has been a member of trial teams that secured substantial patent infringement jury verdicts and has assisted clients in fending off attempts to invalidate patents through post-grant proceedings before the PTAB. His experience spans various technologies including digital content distribution, fiber optic networking, and wireless communications standards.

• Richard A. Cochrane - Counsel (pro hac pending)

  • Firm: Caldwell Cassady & Curry, P.C. (Dallas, Texas).
  • Experience: Mr. Cochrane is noted for his work before the PTAB, being recognized as one of the most active and best-performing attorneys for patent owners in the 2025 Patexia PTAB Intelligence Report. He has contributed to significant patent infringement verdicts and settlements for clients.

These attorneys were listed in a motion to seal in the related IPR2025-01324, which also concerned patent 10933370 and involved Birchtech Corp. as Patent Owner. Furthermore, official USPTO documents for the cluster of IPRs, including IPR2025-00688, indicate that the parties filed similar papers across these cases, strongly suggesting consistent representation by the same counsel for Birchtech Corp.