Petitioner (specific name unknown) v. Patent Owner (Birchtech Corp. as assignee, specific name for this case unknown)

Case Overview: IPR2025-00687 - PacifiCorp and MidAmerican Energy Company v. Birchtech Corp.

This Inter Partes Review (IPR) proceeding, IPR2025-00687, involves Petitioners PacifiCorp and MidAmerican Energy Company challenging a patent owned by Birchtech Corp. before the Patent Trial and Appeal Board (PTAB). PacifiCorp is a major electric utility company serving customers across six Western states, including Oregon, Washington, California, Utah, Wyoming, and Idaho. MidAmerican Energy Company is also an electric and natural gas utility company, providing service to customers in Iowa, Illinois, South Dakota, and Nebraska. Both petitioners are operating companies within the energy sector, with significant operations involving power generation, including coal-fired plants. The Patent Owner, Birchtech Corp. (formerly Midwest Energy Emissions Corp.), is an operating company specializing in specialty activated carbon technologies for air and water purification, primarily focusing on mercury emissions capture for the coal-fired utility sector, as well as developing technologies for PFAS/PFOS removal. Birchtech actively enforces its patented technologies, including its SEA® sorbent technologies, across the U.S. coal fleet.

The IPR challenged the validity of U.S. Patent No. 10,933,370, which is directed to methods and systems for mercury emissions control, particularly related to injecting sorbents into flue gas streams to capture mercury. The technology asserted by Birchtech Corp. generally covers innovative solutions for air purification, specifically mercury emissions reduction from industrial sources like coal-fired power plants, which is directly relevant to the operations of the Petitioners. While an IPR itself does not involve an "accused product" in the traditional sense of infringement litigation, such proceedings are typically initiated by entities whose products or services are allegedly infringing, or who anticipate being accused of infringing, the challenged patent.

Procedurally, the case was heard by the Patent Trial and Appeal Board (PTAB), a specialized administrative court within the U.S. Patent and Trademark Office (USPTO) that reviews the patentability of claims in issued patents. The case status is recorded as "Settlement." However, before settlement, the proceedings garnered significant attention due to a Director Review decision issued on January 12, 2026 (Paper 40). USPTO Director John A. Squires vacated the Board's decision to institute multiple parallel IPR petitions (including IPR2025-00687) challenging the same patent claims under different priority dates, finding that such duplicative filings were an inefficient use of Board resources and not justified as "rare circumstances" under PTAB guidance. The Director remanded the cases with instructions for the Board to institute, at most, one petition per patent. The PTAB provides a cost-effective and expedited alternative to district court litigation for challenging patent validity, and this case's development regarding petition multiplicity highlights ongoing efforts by the USPTO Director to streamline and rationalize PTAB proceedings.

This case is notable because the Director Review decision (Paper 40) in PacifiCorp and MidAmerican Energy Company v. Birchtech Corp., IPR2025-00687, was designated as precedential by the USPTO. This designation means the decision sets an important precedent for future PTAB cases, specifically clarifying the Board's policy against the filing of multiple, overlapping petitions by the same petitioner against the same patent claims, even when asserting different priority dates. This ruling impacts IPR assertion patterns and reinforces the principle that, absent rare exceptions, a single petition should be sufficient to present all unpatentability arguments against a challenged patent. The eventual settlement indicates the parties reached an agreement, but the precedential Director's decision remains a significant development in PTAB practice.

IPR2025-00687, involving U.S. Patent No. 10,933,370 and Birchtech Corp., concluded in a settlement. The case saw significant development at the Patent Trial and Appeal Board (PTAB), particularly regarding the USPTO Director's review of parallel petitions.

Key Legal Developments and Outcome:

• Filing of IPR Petitions (2025-03-24): PacifiCorp and MidAmerican Energy Company (collectively, "Petitioners") filed IPR2025-00687, challenging U.S. Patent No. 10,933,370, owned by Birchtech Corp.. Petitioners also filed parallel IPR petitions, including IPR2025-00688, IPR2025-00717, and IPR2025-00718, challenging the '370 patent and U.S. Patent No. 10,926,218. These parallel petitions were filed to present unpatentability arguments under different potential priority dates for the challenged patents.

• Initial Institution by PTAB (Date Unknown - prior to 2026-01-12): The PTAB initially instituted all four parallel IPR proceedings, including IPR2025-00687, for both patents.

• Request for Director Review (Date Unknown - prior to 2026-01-12): Birchtech Corp. filed a request for Director Review of the PTAB's decisions to institute multiple parallel petitions.

• Director's Precedential Decision Vacating Institution (2026-01-12): USPTO Director John A. Squires issued a precedential decision (Paper 40) in PacifiCorp v. Birchtech Corp., IPR2025-00687. The Director vacated the Board's decisions to institute the parallel petitions challenging the same patent claims. He clarified that such parallel petitions are generally "rare" and are usually not justified, as petitioners typically have sufficient word count and flexibility to present all unpatentability grounds, even those involving priority date disputes, within a single petition per patent. The Director remanded the cases to the Board to determine which single petition challenging each patent should be instituted. This decision highlighted the USPTO's focus on efficient administration of IPR proceedings and its expectation that petitioners consolidate arguments.

• Settlement and Final Disposition (2026-02-10): Following the Director's remand, IPR2025-00687 reached a settlement on February 10, 2026. This resolution prevented the Board from issuing a new institution decision or proceeding to a final written decision. A related parallel IPR, IPR2025-00688, was listed as "Not Instituted - Procedural" with a settlement date of 2026-02-06, indicating a broader resolution across the related IPRs.

Parallel District Court Litigation Context:

While the provided case details specifically refer to the IPR, it's important to note that these IPRs likely arose in the context of broader patent infringement litigation. Birchtech Corp. had ongoing patent infringement lawsuits against energy companies related to its "specialty activated carbon technologies." In December 2025, Birchtech announced a final judgment decision from the U.S. District Court of Delaware, increasing a March 2024 jury verdict to approximately $78 million against "operating companies of refined coal" and "major energy companies". The petitioners in the IPRs, PacifiCorp and MidAmerican Energy Company, are energy companies, suggesting these IPRs were part of a larger dispute concerning Birchtech's patents in that industry.

The counsel of record representing the petitioner(s) (PacifiCorp and MidAmerican Energy Company) in IPR2025-00687 are from McDermott Will & Schulte LLP.

Here is a breakdown of the attorneys:

Lead Counsel:

• David Tobin
  • Role: Lead Counsel
  • Firm: McDermott Will & Schulte LLP (formerly McDermott Will & Emery LLP)
  • Office: Dallas, TX
  • Experience: Focuses on intellectual property matters, with a particular emphasis on patent post-grant trials before the PTAB and patent litigation in district courts and the ITC. He has represented both petitioners and patent owners in post-grant trials and has experience across various fields including telecommunications, computer hardware and software, e-commerce, renewable energy generation, and medical devices. He previously served as lead counsel for a power generation company in patent litigation that settled favorably after the PTAB instituted IPR petitions.

Backup Counsel:

• Brian W. Oaks

  • Role: Backup Counsel
  • Firm: McDermott Will & Schulte LLP
  • Office: Austin, TX
  • Experience: Brian Oaks is involved in IPR proceedings and is listed as counsel for petitioners in other IPR cases. His firm, McDermott Will & Schulte LLP, specializes in patent litigation and PTAB proceedings.

• Syed K. Fareed

  • Role: Backup Counsel
  • Firm: McDermott Will & Schulte LLP
  • Office: Austin, TX
  • Experience: Guides multinational clients through high-stakes intellectual property disputes, often serving as lead counsel in high-tech patent litigation across various forums including district courts, the Federal Circuit, ITC, and the USPTO (PTAB). His technology sector experience includes computer software, e-commerce, telecommunications, data processing, and semiconductors. He has served as lead counsel for a power generation company in litigation where a stay was secured pending IPR, leading to a favorable settlement. He is recognized for his work in patent litigation.

• Christian Tatum

  • Role: Backup Counsel
  • Firm: McDermott Will & Schulte LLP
  • Office: Austin, TX
  • Experience: Focuses his practice on intellectual property matters, including patent litigation and post-grant proceedings (PTAB). He has experience with clients in energy generation, aerospace, and semiconductor sectors. Prior to rejoining McDermott, he clerked for Chief Judge Rodney Gilstrap in the Eastern District of Texas, gaining significant trial and Markman hearing experience.

The case IPR2025-00687 involves PacifiCorp and MidAmerican Energy Company as Petitioners against Birchtech Corp. as Patent Owner. The case concerns U.S. Patent No. 10,933,370. While the case is noted as "Settlement", prior to settlement, there was a Director Review decision on January 12, 2026, which vacated institution decisions in this and related IPRs and remanded the cases. This Director Review document (Paper 40 in IPR2025-00687) is a key source for identifying counsel.

Based on the available information from the Director Review decision (Paper 40), the document primarily discusses the Director's decision regarding institution of parallel petitions. It identifies the parties as "PACIFICORP and MIDAMERICAN ENERGY COMPANY, Petitioner, v. BIRCHTECH CORP., Patent Owner." However, the publicly available snippets of Paper 40 do not explicitly list the names of the attorneys representing Birchtech Corp.

Further searches for counsel in IPR2025-00687 or for Birchtech Corp.'s PTAB counsel in general did not yield specific attorney names directly linked to this IPR. While Birchtech Corp. has been involved in other patent litigation, including a Delaware patent infringement verdict where Caldwell Cassady & Curry served as lead trial counsel for Midwest Energy Emissions Corp. (which is linked to Birchtech's technology), that case is distinct from the IPR. Birchtech Corp.'s leadership includes David M. Kaye as Director and General Counsel, who is an attorney and partner at Kaye Cooper Kay & Rosenberg, LLP in Roseland, New Jersey, specializing in business, corporate, and securities matters. However, his role as in-house general counsel does not automatically mean he was counsel of record for the IPR proceedings, which typically involve outside patent counsel.

Given the information at hand, the specific counsel of record representing Birchtech Corp. in IPR2025-00687 cannot be definitively identified from the provided search results. The available documents focus on the procedural aspects of the IPR and the Director's review, rather than the appearance of counsel for the Patent Owner.

Therefore, the counsel of record representing Birchtech Corp. in IPR2025-00687 cannot be identified with the provided information. Filings related to appearances of counsel are not publicly detailed in the search results.