Vapor Point LLC v. Moorhead

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Vapor Point, L.L.C. (Louisiana/Texas); Keith Nathan (Texas); Kenneth Matheson (Jordan)
  • Defendant: Elliott Moorhead (California); NanoVapor Fuels Group, Inc. (Delaware/Texas)
  • Plaintiff’s Counsel: Bracewell & Giuliani, LLP
• Case Identification: 4:11-cv-04639, S.D. Tex., 12/30/2011
• Venue Allegations: Venue is alleged as proper under 28 U.S.C. § 1391(b) and (c), which generally relates to the location where a substantial part of the events giving rise to the claim occurred or where a defendant is subject to personal jurisdiction.
• Core Dispute: Plaintiffs allege they are the true inventors of the technology claimed in U.S. Patent No. 7,727,310 and that Defendant Moorhead wrongfully filed the patent application naming himself as the sole inventor, seeking correction of inventorship and assignment of the patent.
• Technical Context: The technology relates to systems and methods for removing volatile organic compounds (VOCs) from containers like fuel tanks by absorbing them into a liquid medium, a process critical for safety, environmental compliance, and economic efficiency in industries that handle fuels and chemicals.
• Key Procedural History: The complaint alleges a history of collaboration between the individual plaintiffs and defendants to develop a VOC removal technology. Plaintiffs allege that after they developed and disclosed their "Confidential Information" to Defendant Moorhead, he filed a provisional and then a non-provisional patent application claiming their invention as his own, leading to the patent-in-suit. Plaintiffs allege they sent demand letters after learning of the application but prior to the patent's issuance.

Case Timeline

Date	Event
2006-12-22	Provisional patent application 60/871,766 filed
2007-12-18	Non-provisional patent application 11/959,416 filed
2010-06-01	U.S. Patent No. 7,727,310 issues
2011-12-30	Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,727,310, System and Method for Removing Volatile Vapors from Containers, issued June 1, 2010

The Invention Explained

• Problem Addressed: The patent addresses the problem of removing volatile vapors, such as fuel vapors, from emptied tanks and containers. Conventional techniques often involve burning or flaring these vapors, which has negative environmental consequences, presents safety hazards, and results in the loss of valuable fuel. (’310 Patent, col. 1:15-31).
• The Patented Solution: The invention is a system that captures these vapors in a non-destructive way. It uses a "particulatizer," such as a micro-porous layer, to introduce the VOC vapor into a liquid "vapor capture medium" (VCM) in the form of micro-sized particles. This process enhances the absorption of the vapor into the liquid medium, which is specifically chosen for its inherent chemical attraction to the VOCs. The system allows for the vapors to be captured and potentially recovered for re-use. ('310 Patent, Abstract; col. 2:1-16).
• Technical Importance: The described technology offers a method to cleanse containers of hazardous vapors that is both conservative and cost-effective, avoiding the need to burn or flare the vapors and enabling their recapture. ('310 Patent, col. 1:56-62).

Key Claims at a Glance

• The complaint alleges inventorship of the invention(s) claimed in the patent generally, without specifying claims. (Compl. ¶¶ 29-30). Independent claim 1 is representative of the core invention.
• Independent Claim 1, Essential Elements:
  • A containment that includes a vapor capture medium.
  • A particulatizer positioned to receive a vapor flow of volatile organic compounds (VOCs) and introduce them into the vapor capture medium as micro-sized particles.
  • The particulatizer includes a layer of micro-porous material.
  • The vapor capture medium is in liquid form and has a composition that is inherently attracted to bond with the VOCs.
  • The vapor capture medium captures at least some of the introduced micro-sized particles.
• The complaint does not explicitly reserve the right to assert dependent claims, as its focus is on inventorship of the overall patented concepts rather than infringement of specific claims.

III. The Accused Instrumentality

The complaint does not identify a specific accused product or service in the manner of a typical infringement suit. The central allegation is not infringement by a product, but the improper procurement and ownership of the ’310 Patent itself. (Compl. ¶¶ 58-59). The harm alleged stems from the Defendants having "placed a cloud on the title to Nathan and Matheson's invention" and their property rights. (Compl. ¶59). The complaint further alleges a "reasonable probability that Plaintiffs' would have produced a system and implemented a method in accordance with the ‘310 Patent" and that Defendants have "retained... Plaintiffs' rights in and to the ‘310 Patent, the Invention, and any proceeds therefrom." (Compl. ¶¶ 54, 60). Therefore, the "accused instrumentality" is the patent itself and the associated rights to practice the invention, which Plaintiffs claim as their own.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

This section is not applicable as the complaint does not allege patent infringement but rather seeks correction of inventorship under 35 U.S.C. § 256 and asserts related common law claims.

V. Key Claim Terms for Construction

While this case is not an infringement action, the definition of certain claim terms will be central to determining what constitutes the "Invention" for the purposes of establishing conception and, therefore, inventorship.

• The Term: "particulatizer"

• Context and Importance: The "particulatizer" is a central physical component of the claimed system. To establish inventorship, Plaintiffs will need to provide evidence that they conceived of this specific element for introducing vapor into a medium. Practitioners may focus on this term because its definition distinguishes the invention from mere absorption of vapor by a liquid. The dispute will likely involve evidence showing who first conceived of using a structure, specifically a "layer of micro-porous material," to create "micro-sized particles" of vapor to enhance capture. (Compl. ¶19; ’310 Patent, col. 10:57-63).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent defines the term broadly as "something that performs the act of making particulate, including micro-size particles." (’310 Patent, col. 2:46-49). This could potentially encompass a wide range of structures.
  • Evidence for a Narrower Interpretation: Claim 1 requires the particulatizer to include a "layer of micro-porous material." (’310 Patent, col. 10:63). Specific embodiments describe this layer as being formed from "ultra high molecular weight polyethylene (UHMW PE)" or a "stainless steel plate that is laser drilled with micro-sized pores." (’310 Patent, col. 7:17-34). A court may look to these specific examples to define the scope of the conceived invention.

• The Term: "vapor capture medium"

• Context and Importance: The chemical composition of the "vapor capture medium" (VCM) is a critical feature of the invention. The inventorship analysis will require determining who conceived of not just using a liquid, but using a liquid with the claimed chemical properties. Proving conception of this element is necessary for Plaintiffs to be named as inventors.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim requires a liquid with a composition that is "inherently attracted to bond with at least some of the volatile organic compounds." (’310 Patent, col. 10:65-67). This is a functional definition that could cover many different liquids.
  • Evidence for a Narrower Interpretation: The specification provides very specific examples, stating the VCM may be "formulated or otherwise derived from tall fatty acids, such as botanically derived oils and/or animal fats," and lists "soybean oil, palm oil, cotton seed oil, lemon oil, and/or lavender." (’310 Patent, col. 4:36-42). Evidence of who conceived of this particular class of materials will be a key issue.

VI. Other Allegations

The complaint's primary focus is on claims related to the alleged wrongful procurement of the patent, rather than infringement.

• Correction of Inventorship (Count I): The complaint alleges that Plaintiffs Nathan and Matheson are the "true inventors" who made the "individual, conceptual contributions" to the invention, that Defendant Moorhead made no such contribution, and that Moorhead acted with "deceptive intent" in naming himself the sole inventor. (Compl. ¶¶ 29-32).
• Fraud and Misappropriation (Counts II, III, VI): Plaintiffs allege that they disclosed the invention, which they considered "Confidential Information" and a trade secret, to Defendants based on representations that they would be compensated. (Compl. ¶¶ 13, 38, 64). The complaint further alleges that Defendants concealed the filing of the patent application and used the trade secrets in the procurement of the ’310 Patent. (Compl. ¶¶ 45, 66).
• Tortious Interference (Count V): The complaint alleges that the act of filing the patent application and obtaining the ’310 Patent "placed a cloud on the title to Nathan and Matheson's invention and their property rights," thereby interfering with Plaintiffs' ability to exploit their invention. (Compl. ¶59).

VII. Analyst’s Conclusion: Key Questions for the Case

This case centers on inventorship and ownership, not infringement. The resolution will likely depend on the court’s findings regarding the following questions:

1. A core issue will be one of conception and corroboration: What evidence can Plaintiffs produce to demonstrate that they, and not the named inventor Moorhead, were the first to conceive of the complete and operative invention as defined by the claims of the ’310 Patent? The focus will be on who conceived the specific combination of a micro-porous particulatizer and a botanically-derived vapor capture medium.

2. A second key question will be one of intent: Can Plaintiffs establish that Defendant Moorhead acted with "deceptive intent" when he filed the patent application without naming them as inventors? This factual finding is a statutory requirement for correction of inventorship and is central to the fraud-based claims.

3. Finally, the case raises a legal question regarding the interplay of patent and trade secret law: How will the court reconcile the allegation that the invention was a trade secret with the fact that it was disclosed in a public patent document? The analysis may turn on whether the misappropriation occurred prior to the publication of the patent application, when the information was still confidential.