UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BERKSHIRE HATHAWAY ENERGY COMPANY,
`INTERSTATE POWER & LIGHT COMPANY,
`MIDAMERICAN ENERGY COMPANY,
`PACIFICORP,
`
`WEC ENERGY GROUP, INC., AND
`WISCONSIN POWER & LIGHT COMPANY,
`
`Petitioners,
`V.
`BIRCHTECH CORP.,
`
`Patent Owner.
`
`Case No. [PR2025-00688
`U.S. Patent No. 10,933,370
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO
`INTERSTATE POWER & LIGHT COMPANY AND
`WISCONSIN POWER & LIGHT COMPANY
`
`
`
`
`
`
`
`
`Petitioners Interstate Power and Light Company (“IPL”) and Wisconsin
`Power and Light Company (“WPL”) and Patent Owner Birchtech Corp., formerly
`known as Midwest Energy Emissions Corp. (“Patent Owner” or “ME2C”)
`(collectively, the “Settling Parties”), have reached and executed respective
`settlements. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.5(a), and the Board’s
`authorization via email on August 14, 2025, the Settling Parties jointly move to
`terminate the present inter partes review proceeding with respect to IPL and WPL,
`and dismiss IPL and WPL therefrom, as a result of the executed settlements between
`Patent Owner, IPL, and WPL. The other parties to this inter partes review
`proceeding (“IPR”), Petitioner constituents Berkshire Hathaway Energy Company,
`MidAmerican Energy Company, PacifiCorp, and WEC Energy Group, Inc.
`(collectively “the other Petitioner constituents™), do not object to dismissing IPL and
`WPL from this IPR. Patent Owner, IPL, and WPL further move to reconstitute the
`Petitioners of this IPR as Berkshire Hathaway Energy Company, MidAmerican
`Energy Company, PacifiCorp, and WEC Energy Group, Inc. alone.
`
`IPL, WPL, and Patent Owner are filing concurrently herewith a request that
`the settlement agreements between IPL and Patent Owner (submitted as Ex. 1137)
`and between WPL and Patent Owner (submitted as Ex. 1138) be treated as business
`confidential information and be kept separate from the file of the involved patent,
`
`pursuant to 35 U.S.C. 317(b) and 37 C.F.R. § 42.74(c). The settlement agreements
`
`
`
`
`
`
`
`
`are being filed as “Available only to Board” to preserve the confidentiality of the
`agreements so that, infer alia, the other Petitioner constituents do not have access to
`those agreements.
`
`I. STATEMENT OF FACTS
`
`A joint motion to terminate generally “must (1) include a brief explanation as
`to why termination is appropriate; (2) identify all parties in any related litigation
`involving the patents at issue; (3) identify any related proceedings currently before
`the Office; and (4) discuss specifically the current status of each such related
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26, at *2 (July 28,
`2014).
`
`Patent Owner filed multiple lawsuits alleging infringement of U.S. Patent No.
`10,933,370 (“’370 patent” or ‘“challenged patent”) that have, ultimately,
`consolidated into multi-district litigation (“MDL”) in the United States District
`Court for the Southern District of lowa (In Re: Midwest Energy Emissions Corp.
`Patent Litigation, No. SDIA-4-24-md-03132). This case is still pending before the
`MDL Court. Parties to the MDL include MidAmerican Energy Corporation, Union
`Electric Co. d/b/a Ameren Missouri, PacifiCorp, Evergy Metro, Inc., Evergy
`Missouri West, Inc. and Evergy Kansas Central, Inc. Pursuant to the settlement
`
`agreements, IPL and WPL were recently dismissed as parties to the MDL. IPL and
`
`
`
`
`
`
`
`
`WPL, along with the Petitioner constituents listed in the caption and referenced
`above, also challenged the *370 patent in related IPR proceeding IPR2025-00687.
`Additionally, separate petitioners have challenged the ’430 patent in another IPR
`proceeding, IPR 2025-01118 (Union Electric Co. v. Birchtech Corp. f/k/a Midwest
`Energy Emissions Corp.), filed June 6, 2025. There is no future litigation currently
`contemplated regarding the challenged patent other than the identified ongoing
`matters.
`
`The Settling Parties have reached and executed respective final written
`
`9999
`
`agreements (the “IPL Agreement” and the “WPL Agreement””) to resolve their
`disputes.
`
`Pursuant to 37 C.F.R. § 42.74(b), the IPL Agreement and WPL Agreement
`are in writing, and true and correct copies are being filed as Exhibits 1137-38. The
`IPL and WPL Agreements are being filed electronically with access to “Board only.”
`A “Joint Request to File IPL and WPL Agreements as Business Confidential
`Information Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74” is being filed
`concurrently with this Joint Motion to Terminate Proceeding to treat the IPL and
`WPL Agreements as business confidential information and keep them separate from
`the files of the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`The IPL and WPL Agreements contain confidential information of the Settling
`
`Parties.
`
`
`
`
`
`
`
`
`II. TERMINATION IS APPROPRIATE
`
`The Settling Parties request termination of this inter partes review and
`respectfully submit that such termination is justified. “There are strong public policy
`reasons to favor settlement between the parties to a proceeding.” Consolidated Trial
`Practice Guide 86 (Nov. 2019). “The Board expects that a proceeding will terminate
`after the filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding.” Id. (citing 35 U.S.C. § 317(a)). There are no other
`preconditions of 35 U.S.C. § 317(a). Under § 317(a), a decision on the merits is
`something beyond a decision instituting trial or a decision offering preliminary
`guidance.
`
`The Board should terminate this proceeding in view of the Settling Parties’
`joint request for the following reasons.
`
`First, Acting Director Stewart referred this IPR to the Board for consideration
`of its merits on July 2, 2025. Petitioners also filed an authorized Reply to Patent
`Owner’s Preliminary Response on July 9, 2025. Patent Owner filed its Sur-Reply on
`July 23,2025. Therefore, in this proceeding, no decision on the merits has been made
`to date; the present motion is being submitted prior to oral argument and a decision.
`Accordingly, the Settling Parties have met the statutory requirement that they file a
`“joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a).
`
`
`
`
`
`
`
`
`Second, the Settling Parties have reached a settlement as to all disputes in this
`proceeding and as to the *370 patent. A true copy of IPL and WPL Agreements are
`being filed concurrently herewith. See Confidential Exhibits 1137-38. No other such
`agreements, written or oral, exist between or among the Settling Parties relating to
`this proceeding. The Settling Parties thus satisfy the requirements of 35 U.S.C. §
`317(b).
`
`Third, “[t]here are strong public policy reasons to favor settlement between
`the parties to a proceeding.” Patent Trial and Appeal Board Consolidated Trial
`Practice Guide, November 2019, 86. “The Board expects that a proceeding will
`terminate after the filing of a settlement agreement, unless the Board has already
`decided the merits of the proceeding.” Id. (citing 35 U.S.C. §§317(a)). Termination
`would save further significant expenditure of resources by the Settling Parties and
`the Board. Termination upon settlement would also further the purpose of inter
`partes review proceedings, which seek to provide an efficient and less costly
`alternative forum for patent disputes. Further, maintaining the proceeding would
`discourage further settlements, as patent owners in similar situations would have a
`strong disincentive to settle if they perceived that an infer partes review would
`
`continue regardless of settlement.
`
`
`
`
`
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, the Settling Parties respectfully request termination
`
`of this inter partes review with respect to IPL and WPL.
`
`Respectfully submitted,
`
`Dated: August 20, 2025 [/ Michelle M. Kemp /
`Michelle M. Kemp
`Reg. No. 48,438
`MKemp@perkinscoie.com
`PERKINS COIE LLP
`33 East Main Street, Suite 201
`Madison, WI 53703-3095
`Tel: (608) 663-7460
`Counsel for Petitioners Interstate
`
`Power and Light and Wisconsin Power
`and Light
`
`/[ Hamad M. Hamad /
`
`Hamad M. Hamad
`
`Reg. No. 64,641
`hhamad@caldwellcc.com
`Caldwell, Cassady & Curry P.C.
`2121 N. Pearl St., Ste 1200
`Dallas, TX 75201
`
`Tel: (214) 888-4848
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 20,
`2025 atrue copy of the JOINT MOTION TO TERMINATE PROCEEDING and
`EXHIBITS 1137-38 was served upon the below listed counsel by electronic mail:
`
`Hamad M. Hamad - hhamad@caldwellcc.com
`Justin T. Nemunaitis - jnemunaitis@caldwellcc.com
`Richard Cochrane - rcochrane@caldwellcc.com
`midwest@caldwellcc.com
`
`Dated: August 20, 2025 By: [ Michelle M. Kemp /
`Michelle M. Kemp
`Reg. No. 48,438
`Lead Counsel for Petitioners Interstate
`
`Power and Light and Wisconsin Power and
`Light
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BERKSHIRE HATHAWAY ENERGY COMPANY,
`INTERSTATE POWER & LIGHT COMPANY,
`MIDAMERICAN ENERGY COMPANY,
`PACIFICORP,
`
`WEC ENERGY GROUP, INC., AND
`WISCONSIN POWER & LIGHT COMPANY,
`
`Petitioners,
`V.
`BIRCHTECH CORP.,
`
`Patent Owner.
`
`Case No. [PR2025-00688
`U.S. Patent No. 10,933,370
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO
`INTERSTATE POWER & LIGHT COMPANY AND
`WISCONSIN POWER & LIGHT COMPANY
`
`
`
`
`
`
`
`
`Petitioners Interstate Power and Light Company (“IPL”) and Wisconsin
`Power and Light Company (“WPL”) and Patent Owner Birchtech Corp., formerly
`known as Midwest Energy Emissions Corp. (“Patent Owner” or “ME2C”)
`(collectively, the “Settling Parties”), have reached and executed respective
`settlements. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.5(a), and the Board’s
`authorization via email on August 14, 2025, the Settling Parties jointly move to
`terminate the present inter partes review proceeding with respect to IPL and WPL,
`and dismiss IPL and WPL therefrom, as a result of the executed settlements between
`Patent Owner, IPL, and WPL. The other parties to this inter partes review
`proceeding (“IPR”), Petitioner constituents Berkshire Hathaway Energy Company,
`MidAmerican Energy Company, PacifiCorp, and WEC Energy Group, Inc.
`(collectively “the other Petitioner constituents™), do not object to dismissing IPL and
`WPL from this IPR. Patent Owner, IPL, and WPL further move to reconstitute the
`Petitioners of this IPR as Berkshire Hathaway Energy Company, MidAmerican
`Energy Company, PacifiCorp, and WEC Energy Group, Inc. alone.
`
`IPL, WPL, and Patent Owner are filing concurrently herewith a request that
`the settlement agreements between IPL and Patent Owner (submitted as Ex. 1137)
`and between WPL and Patent Owner (submitted as Ex. 1138) be treated as business
`confidential information and be kept separate from the file of the involved patent,
`
`pursuant to 35 U.S.C. 317(b) and 37 C.F.R. § 42.74(c). The settlement agreements
`
`
`
`
`
`
`
`
`are being filed as “Available only to Board” to preserve the confidentiality of the
`agreements so that, infer alia, the other Petitioner constituents do not have access to
`those agreements.
`
`I. STATEMENT OF FACTS
`
`A joint motion to terminate generally “must (1) include a brief explanation as
`to why termination is appropriate; (2) identify all parties in any related litigation
`involving the patents at issue; (3) identify any related proceedings currently before
`the Office; and (4) discuss specifically the current status of each such related
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26, at *2 (July 28,
`2014).
`
`Patent Owner filed multiple lawsuits alleging infringement of U.S. Patent No.
`10,933,370 (“’370 patent” or ‘“challenged patent”) that have, ultimately,
`consolidated into multi-district litigation (“MDL”) in the United States District
`Court for the Southern District of lowa (In Re: Midwest Energy Emissions Corp.
`Patent Litigation, No. SDIA-4-24-md-03132). This case is still pending before the
`MDL Court. Parties to the MDL include MidAmerican Energy Corporation, Union
`Electric Co. d/b/a Ameren Missouri, PacifiCorp, Evergy Metro, Inc., Evergy
`Missouri West, Inc. and Evergy Kansas Central, Inc. Pursuant to the settlement
`
`agreements, IPL and WPL were recently dismissed as parties to the MDL. IPL and
`
`
`
`
`
`
`
`
`WPL, along with the Petitioner constituents listed in the caption and referenced
`above, also challenged the *370 patent in related IPR proceeding IPR2025-00687.
`Additionally, separate petitioners have challenged the ’430 patent in another IPR
`proceeding, IPR 2025-01118 (Union Electric Co. v. Birchtech Corp. f/k/a Midwest
`Energy Emissions Corp.), filed June 6, 2025. There is no future litigation currently
`contemplated regarding the challenged patent other than the identified ongoing
`matters.
`
`The Settling Parties have reached and executed respective final written
`
`9999
`
`agreements (the “IPL Agreement” and the “WPL Agreement””) to resolve their
`disputes.
`
`Pursuant to 37 C.F.R. § 42.74(b), the IPL Agreement and WPL Agreement
`are in writing, and true and correct copies are being filed as Exhibits 1137-38. The
`IPL and WPL Agreements are being filed electronically with access to “Board only.”
`A “Joint Request to File IPL and WPL Agreements as Business Confidential
`Information Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74” is being filed
`concurrently with this Joint Motion to Terminate Proceeding to treat the IPL and
`WPL Agreements as business confidential information and keep them separate from
`the files of the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`The IPL and WPL Agreements contain confidential information of the Settling
`
`Parties.
`
`
`
`
`
`
`
`
`II. TERMINATION IS APPROPRIATE
`
`The Settling Parties request termination of this inter partes review and
`respectfully submit that such termination is justified. “There are strong public policy
`reasons to favor settlement between the parties to a proceeding.” Consolidated Trial
`Practice Guide 86 (Nov. 2019). “The Board expects that a proceeding will terminate
`after the filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding.” Id. (citing 35 U.S.C. § 317(a)). There are no other
`preconditions of 35 U.S.C. § 317(a). Under § 317(a), a decision on the merits is
`something beyond a decision instituting trial or a decision offering preliminary
`guidance.
`
`The Board should terminate this proceeding in view of the Settling Parties’
`joint request for the following reasons.
`
`First, Acting Director Stewart referred this IPR to the Board for consideration
`of its merits on July 2, 2025. Petitioners also filed an authorized Reply to Patent
`Owner’s Preliminary Response on July 9, 2025. Patent Owner filed its Sur-Reply on
`July 23,2025. Therefore, in this proceeding, no decision on the merits has been made
`to date; the present motion is being submitted prior to oral argument and a decision.
`Accordingly, the Settling Parties have met the statutory requirement that they file a
`“joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a).
`
`
`
`
`
`
`
`
`Second, the Settling Parties have reached a settlement as to all disputes in this
`proceeding and as to the *370 patent. A true copy of IPL and WPL Agreements are
`being filed concurrently herewith. See Confidential Exhibits 1137-38. No other such
`agreements, written or oral, exist between or among the Settling Parties relating to
`this proceeding. The Settling Parties thus satisfy the requirements of 35 U.S.C. §
`317(b).
`
`Third, “[t]here are strong public policy reasons to favor settlement between
`the parties to a proceeding.” Patent Trial and Appeal Board Consolidated Trial
`Practice Guide, November 2019, 86. “The Board expects that a proceeding will
`terminate after the filing of a settlement agreement, unless the Board has already
`decided the merits of the proceeding.” Id. (citing 35 U.S.C. §§317(a)). Termination
`would save further significant expenditure of resources by the Settling Parties and
`the Board. Termination upon settlement would also further the purpose of inter
`partes review proceedings, which seek to provide an efficient and less costly
`alternative forum for patent disputes. Further, maintaining the proceeding would
`discourage further settlements, as patent owners in similar situations would have a
`strong disincentive to settle if they perceived that an infer partes review would
`
`continue regardless of settlement.
`
`
`
`
`
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, the Settling Parties respectfully request termination
`
`of this inter partes review with respect to IPL and WPL.
`
`Respectfully submitted,
`
`Dated: August 20, 2025 [/ Michelle M. Kemp /
`Michelle M. Kemp
`Reg. No. 48,438
`MKemp@perkinscoie.com
`PERKINS COIE LLP
`33 East Main Street, Suite 201
`Madison, WI 53703-3095
`Tel: (608) 663-7460
`Counsel for Petitioners Interstate
`
`Power and Light and Wisconsin Power
`and Light
`
`/[ Hamad M. Hamad /
`
`Hamad M. Hamad
`
`Reg. No. 64,641
`hhamad@caldwellcc.com
`Caldwell, Cassady & Curry P.C.
`2121 N. Pearl St., Ste 1200
`Dallas, TX 75201
`
`Tel: (214) 888-4848
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 20,
`2025 atrue copy of the JOINT MOTION TO TERMINATE PROCEEDING and
`EXHIBITS 1137-38 was served upon the below listed counsel by electronic mail:
`
`Hamad M. Hamad - hhamad@caldwellcc.com
`Justin T. Nemunaitis - jnemunaitis@caldwellcc.com
`Richard Cochrane - rcochrane@caldwellcc.com
`midwest@caldwellcc.com
`
`Dated: August 20, 2025 By: [ Michelle M. Kemp /
`Michelle M. Kemp
`Reg. No. 48,438
`Lead Counsel for Petitioners Interstate
`
`Power and Light and Wisconsin Power and
`Light
`
`
`
`
`
`
`
`
`
`
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