Wisconsin Power & Light Co. et al. v. Birchtech Corp.

This Inter Partes Review (IPR2025-00281) involved several prominent energy companies, Wisconsin Power & Light Co., MidAmerican Energy Co., Interstate Power & Light Co., WEC Energy Group Inc., Berkshire Hathaway Energy Co., and PacifiCorp, challenging U.S. Patent No. 10,596,517, owned by Birchtech Corp. The Petitioners are all major utility companies or holding companies operating across multiple states, providing electricity and natural gas to millions of customers. For instance, Wisconsin Power & Light Co. and Interstate Power & Light Co. are subsidiaries of Alliant Energy Corporation, while MidAmerican Energy Co. and PacifiCorp are part of Berkshire Hathaway Energy. Birchtech Corp., formerly Midwest Energy Emissions Corp., is a clean technology company focused on specialty activated carbon technologies for air and water purification, particularly mercury emissions capture from the coal-fired utility sector. While an operating company, Birchtech has actively engaged in extensive patent enforcement campaigns against numerous energy companies since 2019, leading to significant judgments and settlements.

The patent at issue, U.S. Patent No. 10,596,517, is titled "Sorbents for the oxidation and removal of mercury." It describes a halogen/halide promoted activated carbon sorbent designed for efficient removal of mercury from flue gas streams, featuring a halide-modified carbon that reacts with bromine or other halogens. This technology is commercially known as Birchtech's SEA® (Sorbent Enhancement Additive) technologies, which are applied for mercury emissions capture in the coal-fired utility sector. The IPR was likely initiated as a defensive measure by the energy companies in response to ongoing or threatened patent infringement litigation by Birchtech, which has secured substantial verdicts and licensing agreements from other utilities for the use of its mercury reduction technologies.

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. The case number is IPR2025-00281. The IPR concluded in a settlement, indicating that the parties reached a resolution outside of a full Board decision on the patent's validity. This case is notable due to its linkage to a broader, aggressive patent assertion strategy by Birchtech Corp. against the energy sector, particularly coal-fired utilities, regarding environmental compliance technologies. The involvement of multiple major utility companies as petitioners underscores the widespread impact of Birchtech's patent enforcement. The settlement of this IPR, in particular, may signify a broader resolution, possibly including licensing agreements, which aligns with Birchtech's stated business goal of obtaining license and/or supply agreements from utilities utilizing its patented SEA® technology without authorization.

IPR2025-00281, Wisconsin Power & Light Co. et al. v. Birchtech Corp., was an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) challenging U.S. Patent No. 10,596,517, owned by Birchtech Corp. While an IPR is not a patent infringement litigation itself, it is often filed in parallel with such litigation to challenge patent validity. This IPR concluded in a settlement.

Key legal developments and outcomes are as follows:

Filing & Initial Pleadings (IPR):

• 2025-01-24: Wisconsin Power & Light Co., MidAmerican Energy Co., Interstate Power & Light Co., WEC Energy Group Inc., Berkshire Hathaway Energy Co., and PacifiCorp (collectively, "Petitioners") filed a petition for Inter Partes Review, IPR2025-00281, challenging U.S. Patent No. 10,596,517.
• Parallel Filings: On the same date, the same Petitioners filed a companion IPR, IPR2025-00280, also challenging patent 10,596,517.

Pre-trial Motions of Substance (IPR & Related Litigation):

• 2025-05-22: In a related multidistrict patent infringement case, In re: Midwest Energy Emissions Corp. Patent Litigation, MDL No. 4:24-md-03132-SHL-WPK (S.D. Iowa), which involved patent 10,596,517 among others, various defendants including some of the IPR petitioners, moved to stay the district court proceedings pending the outcome of IPRs. The court denied these motions to stay without prejudice, concluding that a stay was not warranted before the PTAB decided whether to institute review proceedings.
• 2025-10-23: The PTAB issued its decision instituting Inter Partes Review for IPR2025-00281 and IPR2025-00280.

Parallel PTAB IPR/PGR Proceedings:

• In addition to IPR2025-00281 and IPR2025-00280, another IPR, IPR2025-01117, was filed against patent 10,596,517 by Union Electric Co. on 2025-06-06. However, this petition was "Not Instituted - Procedural" on 2025-11-20.

Settlement & Final Disposition:

• 2026-01-09: IPR2025-00281 was terminated due to a settlement between the Petitioners and Birchtech Corp. The companion IPR2025-00280 was also terminated on the same date due to settlement.

Context of Related District Court Litigation:

• Birchtech Corp. has been actively involved in numerous patent infringement lawsuits against power utilities and refined coal companies, dating back to July 2019.
• March 2024: Birchtech Corp. was awarded a $57 million jury verdict in a patent infringement trial in the U.S. District Court of Delaware against refined coal companies (referred to as "CERT Defendants"), with the jury finding willful, inducing, and contributory infringement.
• July 2024: Birchtech filed three separate lawsuits against 14 additional defendants, which were later consolidated and centralized in the Southern District of Iowa in December 2024 as part of the multidistrict litigation (MDL) mentioned above.
• 2025-01-23 (filed) / 2025-02-05 (announced): Birchtech filed a patent infringement lawsuit against Evergy in the U.S. District Court for the Western District of Missouri, which was subsequently transferred to the Southern District of Iowa as part of the ongoing MDL.
• 2025-12-18 to 2025-12-23: U.S. District Court Judge Christopher J. Burke issued a final memorandum opinion following the March 2024 Delaware jury verdict, resolving outstanding issues. Birchtech anticipated a final judgment of approximately $78 million, incorporating pre-judgment interest compounded quarterly at the prime rate and post-judgment interest, with the final judgment ordered to be submitted by December 23, 2025. This significant award was seen by Birchtech as a validation of its patented technology claims.

The settlement of IPR2025-00281, along with the other IPRs challenging patent 10,596,517, likely stems from broader licensing and settlement discussions occurring within the context of Birchtech's ongoing and successful district court patent infringement campaign.

The following counsel are identified as representing the plaintiff(s) (Petitioners in this Inter Partes Review) in Wisconsin Power & Light Co. et al. v. Birchtech Corp., IPR2025-00281:

Outside Counsel

• Brian W. Oaks
  • Role: Lead Counsel
  • Firm: McDermott Will & Emery
  • Office Location: Unspecified (McDermott Will & Emery has numerous offices; his online profile does not specify a primary office, but often patent litigators operate from major hubs like Washington D.C., Boston, Chicago, or Texas).
  • Experience Note: Mr. Oaks focuses on intellectual property law, with a significant emphasis on patent post-grant trials (including IPRs and PGRs), patent litigation, and patent portfolio development and management. He has led over 200 post-grant trials and has experience challenging numerous patents in the Patent Trial and Appeal Board (PTAB) on behalf of electric power generation companies, which aligns directly with the petitioners in this case.

In-House Counsel (representing various Petitioners)

• Margaret "Peggy" C. Kelsey

  • Role: In-House Counsel
  • Firm: WEC Energy Group Inc. (Executive Vice President, General Counsel and Corporate Secretary)
  • Office Location: Milwaukee, WI (WEC Energy Group Inc., 231 W. Michigan St., P.O. Box 1331, Milwaukee, WI 53201)
  • Experience Note: Ms. Kelsey is responsible for all legal matters affecting WEC Energy Group and previously served as general counsel for Modine Manufacturing Co., and was a partner at Quarles & Brady LLP in their litigation group.

• Christianne Whiting

  • Role: In-House Counsel
  • Firm: WEC Energy Group Inc. (Director of Litigation)
  • Office Location: Unspecified (WEC Energy Group is based in Milwaukee, WI).
  • Experience Note: Ms. Whiting is the director of litigation for WEC Energy Group and previously served as assistant general counsel and then deputy general counsel for the Public Service Commission of Wisconsin. She began her legal career in private practice, litigating on behalf of clients in regulated industries.

• Natalie L. Hocken

  • Role: In-House Counsel
  • Firm: Berkshire Hathaway Energy Co. (Senior Vice President, Chief Legal Officer)
  • Office Location: Unspecified (Berkshire Hathaway Energy is headquartered in Des Moines, Iowa).
  • Experience Note: Ms. Hocken manages all legal, corporate communications, environmental policy, and insurance functions for Berkshire Hathaway Energy. Prior to this role, she held various legal and operational leadership positions at PacifiCorp and was an energy attorney with law firms Heller Ehrman LLP and LeBoeuf Lamb Greene & MacRae LLP.

While "Oaks, Brian et al." is mentioned in the PTAB records for IPR2025-00281, a comprehensive list of all "et al." counsel from McDermott Will & Emery or any other outside firms directly from the public docket for this specific IPR was not available through the conducted web search without direct access to the full PTAB-E2E/P-TACTS filings. The identified in-house counsel are for the named plaintiff companies, who are typically represented by external specialized patent counsel for PTAB proceedings.

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print(google_search.search(queries=["IPR2025-00281 Birchtech Corp. counsel", "Birchtech Corp. patent litigation counsel", "Birchtech Corp. PTAB IPR counsel", "Birchtech Corp. v. Wisconsin Power & Light Co. counsel", "IPR2025-00281 Birchtech Corp. settlement counsel"]))
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The user is asking for the counsel of record representing Birchtech Corp. (the defendant/Patent Owner in the IPR). I need to find the names, roles, firms, and locations of the attorneys, and a brief note on their relevant experience. I will use web search with specific queries targeting the IPR case number and Birchtech Corp.'s patent litigation activities.Birchtech Corp. was represented by counsel from Caldwell Cassady & Curry LLP in its patent enforcement efforts, including those related to U.S. Patent No. 10,596,517. The firm has served as patent licensing counsel for Birchtech (formerly Midwest Energy Emissions Corp.) since 2018.

The following attorneys have been identified as representing Birchtech in related patent litigation:

• Brad Caldwell (Lead Trial Counsel)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Served as lead trial counsel in a case where a federal jury awarded Midwest Energy Emissions Corp. a $57 million patent infringement verdict for infringement of U.S. Patent Nos. 10,343,114 and 10,596,517.
• Justin Nemunaitis (Firm Principal)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Presented witnesses at trial in a significant patent infringement case for Birchtech.
• Daniel Pearson (Firm Principal)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Presented witnesses at trial in a significant patent infringement case for Birchtech.
• Warren McCarty (Firm Principal)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Presented witnesses at trial in a significant patent infringement case for Birchtech.
• Adrienne Dellinger (Attorney)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Played a vital role in the trial team for Birchtech's patent infringement case.
• Aisha Mahmood Haley (Attorney)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Played a vital role in the trial team for Birchtech's patent infringement case.
• Richard Cochrane (Attorney)
  • Firm: Caldwell Cassady & Curry LLP, Dallas, Texas
  • Experience: Played a vital role in the trial team for Birchtech's patent infringement case.

These individuals and their firm have a demonstrated history of representing Birchtech Corp. in high-stakes patent litigation concerning its mercury-capture technology, including the patent at issue in this IPR. While the exact roles (e.g., lead counsel, of counsel) specifically for the IPR2025-00281 settlement are not explicitly detailed in the provided search results, their involvement in the broader patent enforcement campaign, particularly relating to the challenged patent, indicates their representation of Birchtech.