Unified Patents Inc. v. Birchtech Corp. f/k/a Midwest Energy Emissions Corp.

This case involves an Inter Partes Review (IPR) petition, IPR2025-01323, filed by Unified Patents Inc. against Birchtech Corp., formerly known as Midwest Energy Emissions Corp. (ME2C Environmental), regarding U.S. Patent No. 10,589,225. Unified Patents is a member-based organization that aims to deter frivolous patent litigation and improve patent quality by challenging patents, particularly those asserted by Non-Practicing Entities (NPEs). Birchtech Corp. is an operating company specializing in activated carbon technologies for air and water purification, notably providing patented Sorbent Enhancement Additive (SEA®) technologies for mercury emissions capture in the coal-fired utility sector. Birchtech has been aggressively enforcing its patent portfolio through litigation, securing a significant jury verdict in Delaware and initiating other lawsuits across the U.S.

The asserted patent, U.S. Patent No. 10,589,225, is titled "Mercury control using sorbent enhancement additives" and generally describes methods for controlling mercury emissions from a combustion system's flue gas stream by injecting a sorbent enhancement additive (SEA). This technology is central to Birchtech's environmental solutions for coal-fired power plants. The procedural posture of this case is before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. The petition was filed in 2025, but its status indicates it was "Not Instituted - Procedural." This means the PTAB, presided over by administrative patent judges, declined to initiate the IPR for reasons unrelated to the merits of the patent's validity. The PTAB serves as a critical venue for challenging patent validity outside of district court litigation, potentially offering a more streamlined and cost-effective alternative.

This case is notable due to several factors. First, while Unified Patents typically targets NPEs, Birchtech is an operating company with an active and expanding business in environmental technologies, aggressively protecting its intellectual property through litigation. Birchtech's recent success in a Delaware patent infringement case, resulting in an approximate $78 million judgment, underscores the value and enforceability of its patent portfolio. Second, the "Not Instituted - Procedural" status is particularly significant. This type of denial often arises from procedural flaws in the petition, such as issues related to parallel district court litigation (under the Fintiv factors) or, notably in recent PTAB decisions involving Birchtech, concerns over parallel petitions challenging the same patent claims, especially when priority dates are disputed. A precedential PTAB decision from January 2026, PacifiCorp v. Birchtech Corp. (IPR2025-00687), specifically addressed the rarity of instituting parallel petitions and clarified that the Board should either resolve priority disputes at institution or institute only the first-ranked petition, suggesting a potential reason for the procedural denial in IPR2025-01323.

This case, IPR2025-01323, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a traditional patent infringement litigation in a district court. As such, many of the typical events of a district court litigation, such as the filing of a complaint and answer, discovery milestones, claim construction (Markman) hearings, trial, or post-trial motions, do not apply. The proceeding focuses on the patentability of claims of U.S. Patent No. 10,589,225.

Key Legal Developments and Outcome for IPR2025-01323

1. Filing of IPR Petition (2025)

• Unified Patents Inc. filed a petition for Inter Partes Review (IPR) against U.S. Patent No. 10,589,225, owned by Birchtech Corp. f/k/a Midwest Energy Emissions Corp. The petition was assigned IPR2025-01323. The petition challenged the patentability of certain claims of the '225 patent.

2. Non-Institution - Procedural (Prior to 2026-05-22)

• The Patent Trial and Appeal Board (PTAB) declined to institute an IPR trial for IPR2025-01323. The petition was not instituted due to procedural reasons. While the specific details of the procedural reason for non-institution are not immediately available without access to the full PTAB order, common procedural grounds for denying institution include issues with standing, petition completeness, payment of fees, or failing to meet deadlines.

3. Related District Court Litigation

• A search for patent infringement litigation involving U.S. Patent No. 10,589,225 and Birchtech Corp. or Midwest Energy Emissions Corp. does not readily reveal any ongoing or recently concluded district court patent infringement cases. The focus of the available public information is solely on the IPR proceeding.

Final Disposition/Present Posture:
The IPR proceeding IPR2025-01323 is closed, with the petition having been denied institution on procedural grounds. No trial was ever commenced at the PTAB.

Disclaimer: This summary is based on publicly available information regarding the IPR proceeding. A comprehensive review of all sealed or non-public court documents, if any exist, could potentially reveal additional details.
The search for "IPR2025-01323 Unified Patents Inc. v. Birchtech Corp. f/k/a Midwest Energy Emissions Corp." directly yielded information from the USPTO PTAB website. This is the primary source for IPR details.
I will use the USPTO PTAB search for IPR2025-01323.
Then, I will look for any linked district court cases in the PTAB record or conduct a separate search for "Birchtech Corp. Midwest Energy Emissions Corp. patent infringement 10589225" to confirm the absence of district court litigation.This case, IPR2025-01323, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a traditional patent infringement litigation in a district court. However, the patent owner, Birchtech Corp. (formerly Midwest Energy Emissions Corp.), has been involved in extensive parallel patent infringement litigation in district courts related to its mercury emissions control technology.

Key Legal Developments for IPR2025-01323

1. IPR Petition Filing (2025)

• Unified Patents Inc. filed a petition for Inter Partes Review (IPR2025-01323) against U.S. Patent No. 10,589,225, owned by Birchtech Corp. f/k/a Midwest Energy Emissions Corp.

2. Non-Institution - Procedural

• The Patent Trial and Appeal Board (PTAB) declined to institute an IPR trial for IPR2025-01323 on procedural grounds. The specific procedural reason for non-institution is not readily available in the provided search results but typically involves issues such as meeting the statutory requirements for institution, joinder, or timeliness.

Parallel Patent Infringement Litigation by Birchtech Corp. (f/k/a Midwest Energy Emissions Corp.)

While IPR2025-01323 itself did not proceed to trial, Birchtech Corp. has actively enforced its patent portfolio, including patents related to mercury capture technology, in various U.S. District Courts.

1. Initial Litigation and Verdict in Delaware (C.A. No. 1:19-01334)

• Filing (July 2019): Midwest Energy Emissions Corp. (now Birchtech Corp.) initiated a patent infringement lawsuit in the U.S. District Court for the District of Delaware against 43 defendants, including major power utilities and refined coal companies. The asserted patents included U.S. Patent Nos. 10,343,114 and 10,596,517.
• Settlements (Late 2023): Prior to trial, Birchtech Corp. reached pre-trial settlements with several defendants, including AJ Gallagher and DTE.
• Trial and Verdict (March 2024): Following a five-day jury trial in the U.S. District Court for the District of Delaware against the remaining "CERT Defendants" (operating companies of refined coal), a jury returned a $57 million patent infringement verdict in favor of Birchtech Corp. The jury found willful infringement, inducing infringement, and contributory infringement of patents 10,343,114 and 10,596,517.
• Post-Trial Motions (May 2024 - September 2025): The Court held a bench trial regarding an implied license defense on May 30, 2024, concluding that the defendants failed to prove such a license. Defendants also filed motions for Judgment as a Matter of Law (JMOL) of no induced infringement, no contributory infringement, and no willful infringement, which the Court denied as of September 25, 2025.
• Final Judgment (December 2025): U.S. District Court Judge Christopher J. Burke issued a final memorandum opinion and called for a proposed final judgment by December 23, 2025. The final judgment amount was increased to approximately $78 million due to pre-judgment interest compounded quarterly at the prime rate and post-judgment interest.

2. Subsequent Litigation and Centralization in Iowa (MDL No. 3132)

• New Lawsuits (July 2024): In July 2024, Birchtech Corp. filed three separate patent infringement lawsuits against 14 additional defendants, including major coal-fired power utilities, in U.S. District Courts in Arizona, Iowa, and Missouri. These lawsuits also sought injunctions and damages for the unlicensed use of their patented mercury emissions reduction technologies.
• Centralization (December 2024): On December 12, 2024, the U.S. Judicial Panel on Multidistrict Litigation (JPML) ordered the centralization of these three actions, along with any related cases, into the Southern District of Iowa as MDL No. 3132. The centralization was aimed at eliminating duplicative discovery and preventing inconsistent pre-trial rulings, especially regarding claim construction and patent validity. Five of the six patents identified in the complaints were asserted across all three initial actions.
• Additional Lawsuit and Transfer (January-February 2025): On January 23, 2025, Birchtech Corp. filed another patent infringement lawsuit against Evergy, a major power utility, in the U.S. District Court for the Western District of Missouri. This case was subsequently transferred to the consolidated MDL in the Southern District of Iowa.
• Current Status: As of December 2025, the consolidated Iowa lawsuit included two remaining defendants after several others obtained license agreements with Birchtech.

Effect of IPR on Litigation

The IPR petition (IPR2025-01323) concerning patent 10,589,225 was not instituted due to procedural reasons, meaning the patentability of its claims was not substantively reviewed by the PTAB. Therefore, this specific IPR had no direct effect on Birchtech's ongoing district court patent infringement litigation. Birchtech has continued to pursue its infringement claims in district court, securing a significant verdict in Delaware and centralizing new litigation in Iowa.

Unified Patents Inc. typically leverages a combination of its in-house legal team and external law firms to handle its inter partes review (IPR) petitions before the Patent Trial and Appeal Board (PTAB). While specific counsel for IPR2025-01323 are not explicitly named in publicly available information, based on Unified Patents' common practice and similar "Not Instituted - Procedural" IPRs, the following are likely involved:

In-House Counsel (Unified Patents Inc.): Unified Patents employs a team of Senior Patent Counsel who are responsible for managing and litigating patent office proceedings internally, including drafting IPR petitions. Potential individuals from their team who frequently work on PTAB matters include:

• Jonathan Stroud (COO & CLO)
  • Role: Chief Operating Officer & Chief Legal Officer
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Oversees legal strategy and operations for Unified Patents.
• Jenn Bisk (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Experience in patent office proceedings, including IPRs.
• Kyla Bulter (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.
• Kelly Hughes (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.
• Jessica L.A. Marks (SEP & Foreign Managing Counsel, Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Has spoken on PTAB-related topics.
• T.J. Murphy (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.
• Vinu Raj (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.
• Jordan Rossen (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Experienced in representing clients before the PTAB, ITC, District Courts, and Federal Circuit.
• Andrea Shoffstall (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.
• David Seastrunk (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.
• Jason Wejnert (Senior Patent Counsel)
  • Role: Senior Patent Counsel
  • Firm: Unified Patents Inc. (Washington, DC / San Jose, CA)
  • Note: Involved in patent office proceedings, including IPRs.

Outside Counsel (Likely Firm):

• Morgan, Lewis & Bockius LLP
  • Role: External Counsel (Petitioner's Counsel)
  • Firm: Morgan, Lewis & Bockius LLP (Global firm with relevant offices, e.g., Washington, DC or Silicon Valley)
  • Note: This firm is listed as petitioner's counsel for other IPRs filed by Unified Patents that were "Not Instituted - Procedural" in 2025 (e.g., IPR2025-01041 and IPR2025-01003), suggesting they are a frequent external firm for Unified Patents' PTAB challenges. The firm has a large Intellectual Property practice, including significant experience in PTAB proceedings. Key attorneys at the firm with PTAB experience include Michael Lyons (Silicon Valley) and Louis Beardell (focus on patent portfolio development and enforcement).

Due to the "Not Instituted - Procedural" status and lack of direct docket access, definitive identification of the specific individuals from Morgan, Lewis & Bockius LLP for this particular IPR is not possible without further information.

Birchtech Corp. f/k/a Midwest Energy Emissions Corp. is represented by Caldwell Cassady & Curry P.C. in this Inter Partes Review (IPR) and related patent matters. The following attorneys are identified as counsel of record for the defendant:

• Hamad M. Hamad

  • Role: Counsel of record.
  • Firm: Caldwell Cassady & Curry P.C., Dallas, Texas.
  • Experience: Registered Patent Attorney (Reg. No. 64,641). He is actively involved in IPR proceedings, as evidenced by his filings in IPR2025-01322 on behalf of Birchtech Corp.

• Justin T. Nemunaitis

  • Role: Counsel of record (pro hac forthcoming/pending in related IPR).
  • Firm: Caldwell Cassady & Curry P.C., Dallas, Texas.
  • Experience: Principal at Caldwell Cassady & Curry. He was part of the lead trial counsel team for Midwest Energy Emissions Corp. in a successful $57 million patent infringement verdict in the U.S. District Court for the District of Delaware. His experience includes high-stakes civil litigation, including patent infringement cases.

• Richard Cochrane (also identified as Richard A. Cochrane in some filings)

  • Role: Counsel of record (pro hac forthcoming/pending in related IPR).
  • Firm: Caldwell Cassady & Curry P.C., Dallas, Texas.
  • Experience: Played a vital role in the Caldwell Cassady & Curry team that secured a $57 million patent infringement verdict for Midwest Energy Emissions Corp. in Delaware.

Birchtech Corp. (formerly Midwest Energy Emissions Corp.) has consistently relied on Caldwell Cassady & Curry P.C. for its patent litigation, including numerous district court cases and related IPR proceedings before the Patent Trial and Appeal Board.