DCT
0:17-cv-05269
Borehead LLC v. Ellingson Drainage Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Borehead, LLC (Minnesota)
- Defendant: Ellingson Drainage, Inc., d/b/a Ellingson Companies, and QuickConnect LLC (Minnesota)
- Plaintiff’s Counsel: Carlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A.
- Case Identification: 0:17-cv-05269, D. Minn., 06/06/2018
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota as both defendants are Minnesota entities with principal places of business in the state.
- Core Dispute: Plaintiff alleges that Defendants’ QuickConnect line of pull heads, and the method of using them, infringes two patents related to a process for installing underground pipes.
- Technical Context: The technology concerns trenchless pipe installation, a field focused on laying pipelines under obstacles such as rivers and roads with minimal surface excavation.
- Key Procedural History: The complaint alleges a detailed pre-suit history, including that Plaintiff disclosed its invention to Defendant Ellingson in February 2016 under a testing offer. It further alleges that after Plaintiff’s first patent issued, Ellingson formed Defendant QuickConnect LLC to market the accused products. During the prosecution of the application leading to the first patent, Plaintiff submitted a prior art reference identified by Ellingson's counsel, which the USPTO examiner considered before allowing the claims. The second patent-in-suit is a continuation of the first and includes a terminal disclaimer.
Case Timeline
| Date | Event |
|---|---|
| 2016-01-29 | Priority Date ('611 & '885 Patents) |
| ~2016-02 | Plaintiff allegedly discloses method to Defendant Ellingson |
| ~2017-04 | Plaintiff learns of Defendants' accused "QuickConnect" product |
| 2017-04-21 | Plaintiff sends letter to Ellingson identifying pending patent application |
| 2017-08-01 | '611 Patent Issue Date |
| ~2017-08-10 | Defendant QuickConnect LLC is allegedly formed |
| 2017-09-16 | Plaintiff sends notice letter to Ellingson regarding issued '611 Patent |
| 2017-11-29 | Original Complaint Filing Date |
| 2018-04-24 | '885 Patent Issue Date |
| 2018-06-06 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,719,611 - “Underground Pipe Pulling Process and Pipe Pull Head” (Issued Aug. 1, 2017)
The Invention Explained
- Problem Addressed: The patent describes the conventional method of trenchless pipe pulling, where an adaptor is fused to the pipe after it has been pulled underground. This process typically occurs within a deep and potentially dangerous "bell hole" or trench, which accommodates workers and equipment but poses safety risks from mud or collapse (ʼ611 Patent, col. 1:24-40).
- The Patented Solution: The invention proposes a safer and more efficient method where the adaptor is attached to the pipe end before the pipe is pulled underground (ʼ611 Patent, col. 2:41-47). By performing the attachment step above ground, the invention seeks to eliminate the need for hazardous in-trench labor (ʼ611 Patent, col. 2:47-52).
- Technical Importance: This "attach-first" approach represents a workflow change in trenchless pipe installation, aimed at increasing worker safety and operational efficiency by moving a critical connection step out of the subterranean environment.
Key Claims at a Glance
- The complaint asserts infringement of claims 1-3 (Compl. ¶32). Independent claim 1 is a method claim with the following key steps:
- At a first side, attaching an adaptor to a pipe end, where the adaptor is configured to connect to a pipeline component at a second side.
- At the first side, attaching a pull head to the adaptor.
- Pulling the pipe underground from the first side to the second side using the pull head.
- At the second side, removing the pull head.
- At the second side, connecting the pipeline component to the adaptor.
- The adaptor is a pipe adaptor and the pipeline component is a second pipe.
U.S. Patent No. 9,951,885 - “Underground Pipe Pulling Process and Pipe Pull Head” (Issued Apr. 24, 2018)
The Invention Explained
- Problem Addressed: The ’885 Patent, a continuation of the '611 Patent, addresses the same problem of dangerous and inefficient in-trench fusing operations in conventional pipe pulling (ʼ885 Patent, col. 1:24-40).
- The Patented Solution: The solution is also to attach the adaptor above ground before pulling. However, the claims of the ’885 Patent are more structurally specific, describing the mechanical interface between the adaptor and the pull head. The method involves an adaptor with a "flange" that is engaged by a "shoulder" on the pull head, creating a robust connection to transfer the pulling force (ʼ885 Patent, col. 9:60-65).
- Technical Importance: This patent provides a more detailed mechanical implementation of the attach-first concept, focusing on a specific flange-and-shoulder engagement mechanism designed to reliably transfer high pulling forces.
Key Claims at a Glance
- The complaint asserts infringement of "at least one of the claims" of the patent (Compl. ¶44). Independent claim 1 is a method claim with the following key steps:
- At a first location and above ground, attaching an adaptor to a pipe end, where the adaptor includes a "circumferentially continuous flange".
- At the first location, attaching a pull head to the adaptor so a "shoulder" of the pull head is positioned behind the "flange" to be engageable with it.
- Pulling the pipe underground.
- At a second location, removing the pull head and "keeping the adaptor attached" to the pipe.
III. The Accused Instrumentality
Product Identification
The "QuickConnect line of pull heads" and the methods for using them (Compl. ¶21).
Functionality and Market Context
The complaint alleges that Defendants market the QuickConnect product as a way to "take fusing out of the trench" and eliminate the costs of "in-ditch" fusing (Compl. ¶¶22, 24). The accused method, as described in the complaint, involves fusing a plastic pipe to an adaptor above ground, attaching the QuickConnect pull head to the adaptor, pulling the assembly underground, removing the pull head, and then connecting the adaptor to other pipeline components (Compl. ¶¶26-29). A promotional video screenshot included in the complaint shows the process of "Fusing pipe to MJ adapter and assembling pull head above ground" (Compl. ¶26).
IV. Analysis of Infringement Allegations
'611 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at the first side, attaching an adaptor to an end of the pipe... | At the first side, fusing a first end of a plastic pipe adaptor to an end of the plastic pipe. | ¶26 | col. 2:10-12 |
| at the first side, attaching a pull head to the adaptor | Attaching the QuickConnect pull head to the plastic pipe adaptor after the adaptor is fused to the pipe. A screenshot from a promotional video shows the pull head being assembled onto the pipe and adaptor (Compl. ¶27). | ¶27 | col. 2:12-13 |
| pulling the pipe underground from the first side to the second side... | Pulling the pipe underground by applying a pulling force to the pull head. | ¶28 | col. 2:13-15 |
| at the second side, removing the pull head | At the second side, removing the pull head from the adaptor. The complaint includes a video screenshot with text stating "Removing pull head in the hole after pipe has been pulled in" (Compl. ¶28). | ¶28 | col. 2:15-16 |
| at the second side, connecting the pipeline component to the adaptor | At the second side, connecting the end of a second pipe or other fitting to the second end of the adaptor. A video screenshot shows the connection of a gate valve after the pull head is removed (Compl. ¶29). | ¶29 | col. 2:16-17 |
'885 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at the first location and above ground, attaching an adaptor to an end of the pipe where the adaptor includes...a circumferentially continuous flange... | Fusing the adaptor to the pipe above ground. The complaint alleges the adaptor includes a "circumferentially continuous flange" and provides a screenshot illustrating this feature (Compl. ¶26). | ¶26 | col. 9:58-62 |
| at the first location, attaching a pull head to the adaptor so that a shoulder of the pull head is positioned behind the flange... | Attaching the pull head to the adaptor. The complaint alleges the pull head includes a "shoulder that is positioned behind the flange on the adaptor so as to be engageable with the flange" (Compl. ¶27). | ¶27 | col. 9:62-65 |
| pulling the pipe underground from the first location to the second location... | Pulling the pipe assembly underground from the first side to the second side. | ¶28 | col. 10:1-3 |
| at the second location, removing the pull head and thereafter keeping the adaptor attached to the end of the pipe | Removing the pull head at the second location while the adaptor remains fused to the pipe, ready for connection to another pipeline component. | ¶¶28, 29 | col. 10:5-7 |
Identified Points of Contention
- Scope Questions: The complaint presents a direct, step-for-step mapping of the accused process to the patent claims. A potential defense could center on the specific structural limitations added in the '885 Patent, such as "circumferentially continuous flange" and "shoulder". The dispute may turn on whether the accused QuickConnect device possesses structures that meet these specific definitions, or if a meaningful structural difference exists.
- Technical Questions: A primary technical question is whether the accused QuickConnect system, when used as instructed, necessarily performs every step of the claimed methods. The complaint relies on Defendants' own marketing materials to allege that it does. The court may need to resolve whether the functions described in Defendants' promotional videos are technically identical to the functions required by the claims.
V. Key Claim Terms for Construction
The Term: "attaching" (in Claim 1 of the '611 Patent and Claim 1 of the '885 Patent)
- Context and Importance: This term defines the fundamental first step of the inventive method. Its scope—whether it is limited to permanent bonding like fusion or includes any form of connection—is central to defining the boundary of the invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests breadth, stating the adaptor and pipe "can be attached to one another in any manner" to form a permanent and liquid-tight joint (ʼ611 Patent, col. 4:1-4).
- Evidence for a Narrower Interpretation: The primary embodiment described is fusing plastic components ("fused, i.e. 'welded'", '611 Patent, col. 4:5-6), and the background problem is centered on the dangers of in-trench fusing. A defendant may argue that "attaching" should be construed in this specific context of permanent, fused bonds.
The Term: "shoulder" (in Claim 1 of the '885 Patent)
- Context and Importance: This term is a key structural limitation in the '885 Patent's independent claim, defining the specific mechanical means by which the pull head engages the adaptor. Infringement of this claim depends on the accused product having this feature. Practitioners may focus on this term because the patentability of the more detailed '885 claims over the '611 claims could be tied to such structural specifics.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a standalone definition of "shoulder". Plaintiff may argue for a functional definition, where any internal surface of the pull head that abuts the adaptor's flange to transfer pulling force constitutes a "shoulder".
- Evidence for a Narrower Interpretation: The specification describes the pull head as having a "channel 70" that receives the "flange 50" on the adaptor (ʼ885 Patent, col. 6:18-24). A defendant could argue that the term "shoulder" must be interpreted as the specific rear wall of this channel as depicted in figures like Fig. 3, and that any deviation from this structure in the accused device is non-infringing.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants induced infringement by providing promotional materials, including a website (www.pullhead.com) and instructional videos, that allegedly encourage and instruct customers to use the QuickConnect product in a manner that performs the steps of the patented methods (Compl. ¶¶35, 38, 49).
- Willful Infringement: Willfulness is alleged based on Defendants' continued infringement after receiving notice of the patents. For the '611 Patent, knowledge is alleged since at least a September 16, 2017 notice letter (Compl. ¶33). For the '885 Patent, knowledge is alleged since its issuance date (Compl. ¶45). The complaint's detailed narrative of pre-suit discussions, including Plaintiff's alleged disclosure of the invention to Ellingson in 2016, may be used to support a claim of pre-suit knowledge and deliberate copying (Compl. ¶¶13-15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue appears to be a factual dispute over inventorship and copying. The case may turn on evidence related to the pre-suit communications alleged in the complaint. Whether Plaintiff can substantiate its claim that it disclosed the invention to Defendants before Defendants launched their product will likely be a critical factor in the willfulness and damages aspects of the case.
- The infringement analysis may focus on a question of structural correspondence, particularly for the '885 Patent. A key question will be whether the accused QuickConnect device's mechanical features meet the specific definitions of a "flange" on the adaptor engaged by a "shoulder" on the pull head, as required by the claims, or if Defendants can establish a legally significant technical distinction.
- A third question will be the strength of any invalidity defense. The complaint notes that an earlier prior art challenge from Defendants was overcome during prosecution (Compl. ¶17). The viability of an invalidity defense in this litigation will depend on whether Defendants can introduce new prior art or arguments sufficient to overcome the patents' presumption of validity and the prosecution history.