Borehead, LLC v. Ellingson Drainage, Inc. et al
Filing
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ORDER denying 10 Motion to Dismiss. (Written Opinion) Signed by Judge Patrick J. Schiltz on 5/23/2018. (CLG)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
BOREHEAD, LLC,
Case No. 17‐CV‐5269 (PJS/LIB)
Plaintiff,
v.
ORDER
ELLINGSON DRAINAGE, INC., d/b/a
Ellingson Companies; QUICKCONNECT
LLC,
Defendants.
Jonathan D. Carpenter, J. Derek Vandenburgh, and Timothy A. Lindquist,
CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A., for
plaintiff.
Shawn M. Perry, PERRY & PERRY, PLLP, for defendants.
Plaintiff Borehead, LLC (“Borehead”) is the owner of U.S. Patent No. 9,719,611
entitled “Underground Pipe Pulling Process and Pipe Pull Head.” Borehead brings this
patent‐infringement action against defendants Ellingson Drainage, Inc., and
QuickConnect LLC (collectively “Ellingson”). This matter is before the Court on
Ellingson’s motion to dismiss Borehead’s complaint. The Court conducted a hearing on
the motion on May 23, 2018. For the reasons stated on the record at the hearing and
briefly summarized below, the motion is denied.
Claim 1 of the ‘611 patent is a method claim directed toward the process of
pulling a pipe underground beneath an obstacle (such as a river or a road). The claimed
method calls for attaching an adaptor to the end of the pipe before the pipe is placed
underground. This is in contrast to the conventional method, under which the adaptor
is not attached until after the pipe has been pulled into place underneath the obstacle.
Attaching the adaptor after the pipe is already in place can be a lengthy and dangerous
process, as it is typically done within a trench or bell hole.
Ellingson moves to dismiss the complaint, arguing that Claim 1 is drawn to an
abstract idea that is not patent eligible under 35 U.S.C. § 101. See Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347 (2014). To determine whether a claim is drawn to an
unpatentable abstract idea, a court engages in a two‐part inquiry. First, the court must
determine whether the claim is directed to an abstract concept. Id. at 2355. If it is, then
the court looks carefully at the claim to determine “whether the additional elements
‘transform the nature of the claim’ into a patent‐eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). This second step
involves “a search for an ‘“inventive concept”’—i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S.
at 72‐73).
As the Court explained at oral argument, neither of these inquiries indicate that
Claim 1 of the ‘611 patent is drawn to an unpatentable abstract concept. First, the
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patent is not drawn to an abstraction, but to a concrete task—specifically, the task of
pulling a pipe underground beneath an obstacle. The claim requires specific physical
tasks to be performed using specific tangible items in a specific order. This is nothing
like the claims in Alice, which were directed at the abstract idea of using a third party
intermediary to mitigate settlement risk. Id. at 2356. Not surprisingly, Ellingson had
difficulty articulating the abstract concept to which Claim 1 is supposedly drawn.
Even if Claim 1 could be considered to be directed at an abstract concept, it
nevertheless incorporates the inventive idea of rearranging the conventional steps of
moving pipe underground beneath an obstacle in a non‐conventional way in order to
make the process easier and safer. See Diamond v. Diehr, 450 U.S. 175, 188 (1981) (“[A]
new combination of steps in a process may be patentable even though all the
constituents of the combination were well known and in common use before the
combination was made.”). Although the idea of attaching the adaptor before placing
the pipe underground may seem obvious to a layperson, the allegations in the
complaint suggest that Ellingson never used this method until it learned of it from
Borehead. It may well be that, at a later stage in the proceedings, Ellingson will succeed
in showing that Claim 1 is invalid under 35 U.S.C. §§ 102 or 103. But at this stage of the
proceedings, the Court finds that Claim 1 meets the criteria for patent eligibility under
35 U.S.C. § 101.
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ORDER
Based on the foregoing, and on all of the files, records, and proceedings herein,
IT IS HEREBY ORDERED THAT defendants’ motion to dismiss [ECF No. 10] is
DENIED.
Dated: May 23, 2018
s/Patrick J. Schiltz
Patrick J. Schiltz
United States District Judge
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