Midwest Energy Emissions Corp.

Patent Trials and Appeals Board

Jan 22, 2021

IPR2020-00928 (P.T.A.B. Jan. 22, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Entered January 22, 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.

IPR2020-00926 (8,168,147 B2)
IPR2020-00928 (8,168,147 B2)1

Before ZHENYU YANG, CHRISTOPHER M. KAISER, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

TERMINATION

Due to Settlement After Institution of Trial
Granting Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. §§ 42.72

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.
IPR2020-00926 (8,168,147 B2)
IPR2020-00928 (8,168,147 B2)

2
On January 14, 2021, with Board authorization, NRG Energy, Inc.
and Talen Energy Corporation (collectively “Petitioner”) and Midwest
Energy Emissions Corp. (“Patent Owner”) filed a Joint Motion to Terminate
inter partes review. See IPR2020-00926, Paper 22; IPR2020-00928, Paper
20 (collectively, “Motions to Withdraw”). Together with the Motions to
Withdraw, the parties filed a copy of their written Agreement (Ex. 1093,
“Agreement”), and Joint Requests that the Agreement be Treated as
Business Confidential Information Pursuant to 35 U.S.C. § 317(b).
IPR2020-00926, Paper 21; IPR2020-00928, Paper 19 (“Joint Requests”).
The Motions to Withdraw and Joint Requests filed in each inter partes
review are substantively identical. See id.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)2;
see 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Petitioner filed two petitions
requesting an inter partes review of certain claims of U.S. Patent No.
8,168,147 on July 15, 2020 (“the ’147 patent”). See IPR2020-00926, Paper
2; IPR2020-00928, Paper 3).3 We instituted inter partes review on July 26,
2020. IPR2020-00926, Paper 19; IPR2020-00928, Paper 17. The oral
hearing is scheduled for September 2, 2021. IPR2020-00926, Paper 20;
IPR2020-00928, Paper 18.

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
3 Vistra Corporation joined in the requests for inter partes review but was
terminated on August 9, 2020. See IPR2020-00926, Paper 11; IPR2020-
00928, Paper 2
IPR2020-00926 (8,168,147 B2)
IPR2020-00928 (8,168,147 B2)

3
In the Motions to Withdraw, the parties represented that they have
“settled their dispute, and have reached agreement to terminate NRG’s and
Talen’s participation in this inter partes review” and that “Patent Owner has
dismissed with prejudice its claims against Petitioners” in the copending
district court litigation. Motions 2. The parties explain that the ’147 patent
is not involved in any other pending litigation. Id. Accordingly, the parties
“respectfully jointly request termination of this inter partes review.” Id.
at 3. Under these circumstances, we determine that it is appropriate to
terminate these proceedings without rendering a final written decision.
See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.5(a), 42.72. After reviewing the
Agreement, we further find that it contains confidential business information
regarding the terms of the settlement and that good cause exists to treat the
Agreement as business confidential information to be kept separate from the
patent file. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). This Order does
not constitute a Final Written Decision under 35 U.S.C. § 318(a).

Accordingly, it is,
ORDERED that the Joint Requests to File Settlement as Business
Confidential Information (IPR2020-00926, Paper 21; IPR2020-00928,
Paper 19) are granted; and
FURTHER ORDERED that the Agreement (Ex. 1093) shall be treated
as business confidential information and shall be kept separate from the
patent file; and
FURTHER ORDERED that the parties’ Joint Motions to Terminate
the inter partes reviews (IPR2020-00926, Paper 22; IPR2020-00928, Paper
19) are granted and these proceedings are hereby terminated.
IPR2020-00926 (8,168,147 B2)
IPR2020-00928 (8,168,147 B2)

4
FOR PETITIONER”
Brian Oaks
David Tobin
Elizabeth Flannery
Thomas Carter Jr.

brian.oaks@bakerbotts.com
david.tobin@bakerbotts.com
liz.flannery@bakerbotts.com
thomas.carter@bakerbotts.com

FOR PATENT OWNER:
Hamad Hamad
Justin T. Nemunaitis
CALDWELL, CASSADY & CURRY P.C

hhamad@caldwellcc.com
jnemunaitis@caldwellcc.com
midwest@caldwellcc.com