Union Electric Company v. Birchtech Corp.

This case, IPR2025-01324, involves Union Electric Company challenging a patent owned by Birchtech Corp. before the Patent Trial and Appeal Board (PTAB). Union Electric Company, operating as Ameren Missouri, is a major electric power utility that provides electricity generation, transmission, and distribution, along with natural gas distribution, across central and eastern Missouri. Birchtech Corp., formerly Midwest Energy Emissions Corp., is an environmental technology company specializing in activated carbon technologies for air and water purification. Birchtech provides patented Sorbent Enhancement Additive (SEA) technologies for mercury emissions capture in the coal-fired utility sector and is also developing water purification solutions for "forever chemicals." Birchtech has a history of asserting its intellectual property through patent infringement lawsuits against power utilities regarding its mercury emissions reduction technologies, suggesting it operates with characteristics of a patent assertion entity (PAE) in protecting its core IP.

The patent at issue in this IPR is US Patent 10933370. While public patent search databases like Google Patents for this specific number (10933370) predominantly describe a "flooring system for generating electricity from users as they walk" by an assignee unrelated to Birchtech, specialized patent litigation databases such as RPX Insight explicitly identify Birchtech Corp. as the patent owner for US10933370B2 in the context of this IPR. Given Birchtech's business model, which centers on mercury emissions capture technologies for coal-fired power plants, it is highly probable that the patent, as owned and asserted by Birchtech, pertains to these environmental control systems, and the discrepancy in public search results may be due to a patent number misidentification or indexing issue in general search engines. The alleged infringement or the underlying dispute that prompted this IPR would therefore likely involve Union Electric's use of mercury emissions control technologies in its coal-fired power operations.

The procedural posture is an Inter Partes Review (IPR) filed at the Patent Trial and Appeal Board (PTAB) with case number IPR2025-01324. IPRs are administrative proceedings where third parties challenge the validity of an issued patent based on prior art patents and printed publications. This IPR was filed on July 18, 2025, and was terminated on November 20, 2025. Notably, it was terminated with a status of "Not Instituted - Procedural." Non-institution often occurs when the parties reach a settlement, or when the PTAB exercises its discretion to deny institution, for instance, due to parallel district court litigation or other policy considerations. This venue matters because IPRs offer a potentially faster and less expensive route to challenge patent validity compared to district court litigation, and their outcome can significantly influence infringement lawsuits.

This case is notable due to Birchtech's active and successful patent enforcement strategy against major utility companies. Union Electric's decision to file an IPR was likely a defensive maneuver in response to actual or threatened patent infringement litigation by Birchtech. The "Not Instituted - Procedural" outcome, particularly when several other IPRs filed against Birchtech on related patents by other utilities were explicitly terminated due to settlement, strongly suggests that Union Electric and Birchtech reached a confidential agreement or license arrangement. This pattern highlights Birchtech's effectiveness in leveraging its patent portfolio to secure licensing agreements from operating companies in the energy sector, impacting market dynamics for environmental compliance technologies.

The provided case, IPR2025-01324, is an Inter Partes Review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. It concerns US Patent 10933370 and involves Union Electric Company as the petitioner and Birchtech Corp. as the patent owner. The IPR was filed on July 18, 2025, and terminated on November 20, 2025.

Here's a chronological summary of the key legal developments and outcome for IPR2025-01324 and related proceedings:

1. Parallel District Court Litigation and Patent Assertions:

• 2024-07-30: Midwest Energy Emissions Corp. (referred to as "ME2C Environmental," and likely related to Birchtech Corp., given similar patent assertions and the specific patent at issue in this IPR) filed patent infringement lawsuits against 14 defendants, including major coal-fired power utilities, in U.S. District Courts in Arizona, Iowa, and Missouri.
• Union Electric Co. was specifically named as a defendant in a suit filed in the U.S. District Court for the Eastern District of Missouri. These lawsuits claimed infringement of patents related to ME2C Environmental's mercury emissions reduction technologies.
• The lawsuits sought damages, costs, legal expenses, a finding of willful infringement, and an injunction against further infringement.
• 2024-12-24: Three separate lawsuits filed in July 2024 against 14 defendants were consolidated and centralized in the Southern District of Iowa.
• 2025-12-18: In a separate but related patent infringement case in the U.S. District Court of Delaware (initially filed in July 2019), Birchtech Corp. was awarded a $57 million jury verdict with a unanimous finding of willful infringement in March 2024. The court later increased the judgment amount to approximately $78 million by awarding pre-judgment and post-judgment interest.

2. IPR Filing and Termination:

• 2025-07-18: Union Electric Company filed a petition for Inter Partes Review (IPR) against Birchtech Corp. challenging U.S. Patent 10933370 (IPR2025-01324). This IPR was one of several filed by Union Electric Co. and other energy companies against Birchtech Corp. concerning similar patents.
• 2025-11-20: IPR2025-01324 was terminated. The reason for termination was "Not Instituted - Procedural". This indicates that the PTAB decided not to institute the IPR based on procedural grounds, rather than reaching a decision on the merits of the patentability challenge. This happened before any institution decision was formally issued.

3. Context of PTAB Discretionary Denials:

• The termination of IPR2025-01324 as "Not Instituted - Procedural" aligns with broader trends at the PTAB regarding discretionary denials, particularly in cases with parallel district court litigation.
• In March 2025, the USPTO rescinded a prior guidance memorandum (the "Vidal memo") concerning discretionary denials under the Fintiv factors, giving the PTAB more discretion to deny IPR petitions when parallel infringement litigation is ongoing.
• The Fintiv factors consider the proximity of the court's trial date to the PTAB's projected statutory deadline, the investment in the parallel proceeding, the overlap of issues, whether the IPR petitioner is also the defendant in the parallel litigation, and whether the petitioner waited too long to file.
• In November 2025, the Director of the USPTO issued notices identifying decisions where institution was denied based on discretionary factors.
• 2026-01-12: In other IPRs involving Birchtech Corp. and similar petitioners (PacifiCorp et al. v. Birchtech Corp., IPR2025-00687, -00688, -00717, -00718), the Director of the USPTO later found that the Board abused its discretion in granting institution of multiple petitions challenging the same claims, leading to a denial of institution and termination of those proceedings. While specific details for IPR2025-01324 are "Not Instituted - Procedural", it is highly probable that the discretionary denial framework, especially in light of the ongoing district court litigation involving Union Electric Company, played a role in its termination.

Outcome:
The IPR proceeding, IPR2025-01324, was terminated on November 20, 2025, without institution, based on procedural grounds. This means the PTAB did not review the merits of the patentability challenge against US Patent 10933370 in this specific IPR. The termination likely allowed the parallel district court patent infringement litigation involving Union Electric Company and Birchtech Corp. to proceed without the IPR's direct influence on the validity of the patent.

In the Inter Partes Review (IPR) case IPR2025-01324, Union Electric Company v. Birchtech Corp., the following attorneys are identified as counsel of record for Union Electric Company:

• Robert M. "Bob" Evans, Jr.

  • Role: Lead Counsel, Intellectual Property Litigation Practice Group Leader.
  • Firm: Lewis Rice LLC, St. Louis, MO.
  • Experience: Mr. Evans is a nationally recognized intellectual property litigator with extensive experience in complex IP disputes in federal courts throughout the U.S. and before the Patent Trial and Appeals Board (PTAB). He has a background in winning jury verdicts in high-stakes patent litigation and securing summary judgment in disputes involving significant sums. He also has substantial appellate experience.

• Richard Bennett Walsh, Jr.

  • Role: Counsel, Firm Chairman.
  • Firm: Lewis Rice LLC, St. Louis, MO.
  • Experience: Mr. Walsh is the Chairman of Lewis Rice and maintains an active practice in complex commercial litigation, including intellectual property, antitrust, and securities litigation. He has litigated high-stakes cases in various venues across the country, encompassing intellectual property matters related to computer systems, mechanical apparatuses, and chemical, electrical, and medical products and processes.

These attorneys represented Union Electric Co. (d/b/a Ameren Missouri) in related patent infringement litigation consolidated in MDL No. 3132, In Re: Midwest Energy Emissions Corp. Patent Litigation, in the Southern District of Iowa, where they filed motions to appear pro hac vice. Lewis Rice LLC has a prominent patent litigation practice with notable courtroom and PTAB experience.

Birchtech Corp. was represented by counsel from Caldwell Cassady & Curry P.C. in patent litigation matters related to the technology at issue, making it highly probable they would have represented Birchtech in IPR2025-01324, despite its procedural termination. The firm has a strong track record of representing Birchtech (formerly Midwest Energy Emissions Corp.) in high-stakes patent infringement cases.

While specific filings detailing counsel appearances for Birchtech Corp. in IPR2025-01324, which was "Not Instituted - Procedural," are not readily available in the provided search snippets, Caldwell Cassady & Curry P.C. has served as lead trial counsel for Birchtech (under its former name, Midwest Energy Emissions Corp.) in other significant patent enforcement efforts. For example, they secured a $57 million patent infringement verdict (later increased to approximately $78 million) in a Delaware federal jury trial concerning mercury emissions reduction technologies.

One attorney from Caldwell Cassady & Curry, Richard Cochrane, has declared his involvement as an attorney in pending litigation concerning one of Birchtech's patents (the '517 Patent) and stated his participation in multiple patent infringement matters for Caldwell Cassady & Curry P.C.

Based on available information regarding Birchtech's broader patent litigation, the following individuals and firm are identified as likely counsel for the defendant:

• Richard Cochrane
  • Role: Attorney (likely lead counsel or senior counsel in PTAB proceedings)
  • Firm: Caldwell Cassady & Curry P.C., Dallas, TX
  • Experience: Mr. Cochrane has experience in business and patent litigation, particularly in mechanical engineering and energy-related technology. He has participated in multiple patent infringement matters with Caldwell Cassady & Curry P.C. and was involved in litigation concerning Birchtech's '517 Patent.

Caldwell Cassady & Curry P.C. is a Dallas-based trial firm specializing in high-stakes civil litigation, including intellectual property infringement. The firm has a strong reputation for preparing and trying high-tech cases to verdict, with a track record of securing significant verdicts and settlements for their clients in patent infringement disputes. Many of their attorneys hold degrees in STEM fields, including electrical engineering, chemical engineering, mathematics, and computer science.