Anyone who's been a lawyer long enough to read blogs about will have purchased some custom-made legal accessories. A monogrammed briefcase is a classic, as are cuff links and (for the daring) a bolo tie. The especially theatrical amongst you might get a cape, walking stick or dark altar. The important thing is that it fits, and is monogrammed.
This of course, naturally leads me to contributory infringement and especially whether a product is "especially made or adapted for use" in an infringing process and not "suitable for substantial non-infringing use."
This analysis is often factually intense, but it doesn't usually pose a particularly interesting legal question. But last week we got lucky with the post-trial JMOL opinion in Midwest Energy Emissions Corp. v. Arthur J. Gallagher & Co., C.A. No. 19-1334-CJB (D. Del. Sep. 25, 2025).
The patent there was for a process for reducing emissions from coal plants by using a chemically enriched charcoal along with several other steps, including activated carbon.
The defendants added the relevant chemicals to enrich the coal and sold it to the ultimate infringers. It was undisputed that the enriched coal could, theoretically, be used in a non-infringing manner. Indeed, there was evidence that other coal plants did so.
The issue here was the defendant's unique business model. They were actually set up on the site of the coal plant. They bought the coal that was currently on the conveyor belt to the boiler where the other steps of the process would take place. They enriched it while it was on the belt and then sold it back to the coal plant (actually at a loss, so as to profit from emissions tax credits (don't ask)).
The jury found that this constituted contributory infringement, and defendants moved for JMOL. Defendants argued that, because enriched coal generally could be put to other uses, it was not especially adapted for infringement. The Court disagreed and denied the JMOL motion:
[T]he contributory infringement inquiry does not look at refined coal in a vacuum. Rather, the statute “deals with the material actually sold by the accused and the uses made of it by its purchasers[;]” it requires “examination of the patented method only in determining whether the material the accused actually sells constitutes a material part of the invention and is known by the accused to be especially made or adapted for use in infringing the patent.”
And so here, we have to consider the refined coal that CERT made at the directly infringing power plants and then paid those plants to accept—that is, we must assess accused refined coal that was sold and delivered to those power plants. As just explained, there is substantial evidence that this accused refined coal was especially made or adapted for use in an infringement. Indeed, pursuant to the facts presented at trial, once CERT’s refined coal was made, there is no other use that it could possibly have been put to.
Id. at 30-31 (internal citations omitted).
Its a neat enough fact pattern, that I think its worth any of you meaner professors putting it on an exam.
Unsurprisingly, the defendants made essentially the same argument regarding substantial non-infringing use, which the Court also rejected. The whole opinion is a fun read, especially for those coal heads amongst you.
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