Midwest Energy Emissions Corp.

Patent Trials and Appeals Board

Jan 21, 2021

IPR2020-00834 (P.T.A.B. Jan. 21, 2021)

Trials@uspto.gov Paper 24
571-272-7822 Entered: January 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NRG ENERGY, INC. and
TALEN ENERGY CORPORATION
Petitioner,

v.

MIDWEST ENERGY EMISSIONS CORP.,
Patent Owner.
____________

IPR2020-00832
IPR2020-00834
Patent 10,343,114 B21
____________

Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
AVELYN M. ROSS, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial and
Granting Joint Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Order applies to both proceedings. We exercise our discretion to
issue one Order to be filed in each case. The parties are not authorized to use
this style heading for any subsequent papers.
IPR2020-00832
IPR2020-00834
Patent 10,343,114 B2

2

I. INTRODUCTION
Petitioner and Patent Owner (collectively “the Parties”) have
requested that the above-identified inter partes review proceeding be
terminated pursuant to a settlement. On January 14, 2021, the Parties filed a
Joint Motion to Terminate in each of the above-identified proceedings
(“Joint Motion”). Paper 20.2 We had authorized the Parties to file a joint
motion to terminate the above-identified proceedings in a January 4, 2021
email. See Joint Motion 2.
The Parties also filed a Fleetwide License and Supply Agreement
(Exhibit 1071, “License and Supply Agreement”), a Term Sheet (Exhibit
1072, “Term Sheet”), and a Joint Request That Agreements Be Treated As
Business Confidential Information (Paper 19, “Joint Request”) in each of the
above-identified proceedings.
II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” It is
also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement to jointly seek termination of these inter partes review
proceedings, that the filed copies of the License and Supply Agreement and

2 For expediency, we cite to the Papers and Exhibits filed in IPR2020-00832,
unless otherwise indicated. Similar Papers and Exhibits were filed in
IPR2020-00834.
IPR2020-00832
IPR2020-00834
Patent 10,343,114 B2

3

Term Sheet are true and correct copies, and there are no collateral
agreements or understandings made in connection with, or in contemplation
of, the termination of these proceedings. Joint Motion 2–3. The Joint
Motion indicates that the settlement resolves all currently pending Patent
Office and District Court proceedings between the Parties involving Patent
10,343,114. Id. at 2.
We instituted a trial on the above-identified proceedings on
October 26, 2020. Paper 17. We have not yet decided the merits of the
proceeding, and a final written decision has not been entered.
Notwithstanding that the proceeding has moved beyond the preliminary
stage, the Parties have shown adequately that the termination of the
proceeding is appropriate. Under these circumstances, we determine that
good cause exists to terminate the proceeding with respect to the Parties.
The Parties also requested that the License and Supply Agreement and
Term Sheet be treated as business confidential information and be kept
separate from the file of Patent 10,343,114. Joint Request 2. After
reviewing the License and Supply Agreement and Term Sheet, we find that
these documents contain confidential business information regarding the
terms of settlement. We determine that good cause exists to treat the
License and Supply Agreement and Term Sheet as business confidential
information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).

IPR2020-00832
IPR2020-00834
Patent 10,343,114 B2

4

III. ORDER
Accordingly, for the reasons discussed above, it is:
ORDERED that the Joint Motions are granted, and IPR2020-00832
and IPR2020-00834 are each terminated with respect to Petitioner and
Patent Owner, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Requests are granted, and the
License and Supply Agreement and Term Sheet shall be kept separate from
the file of Patent 10,343,114, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-00832
IPR2020-00834
Patent 10,343,114 B2

5

FOR PETITIONER:
Brian W. Oaks
David J. Tobin
Elizabeth D. Flannery
Thomas B. Carter, Jr.
BAKER BOTTS L.L.P.
brian.oaks@bakerbotts.com
david.tobin@bakerbotts.com
liz.flannery@bakerbotts.com
thomas.carter@bakerbotts.com

FOR PATENT OWNER:
Hamad M. Hamad
Caldwell, Cassady & Curry P.C.
hhamad@caldwellcc.com