VPR Brands, LP v. PHD Marketing, Inc.

This lawsuit was a component of a broader patent enforcement campaign by VPR Brands, LP, an operating company that designs, markets, and distributes electronic cigarettes, vaporizers, and related accessories under brands like HoneyStick, Goldline, and KRAVE. VPR Brands' business model explicitly includes the monetization and enforcement of its intellectual property portfolio. The defendant, PHD Marketing, Inc., appears to operate in the cannabis vaporizer space, marketing products under the "Pharmicated" and "PhD" brand names, including disposable vape cartridges. The accused products in this case were PHD Marketing's buttonless vaporizer devices that allegedly used "auto-draw" technology, which activates the device's heater upon a user's inhalation.

The case was filed on May 4, 2021, in the U.S. District Court for the Central District of California, a popular venue for patent litigation. VPR Brands asserted a single patent, U.S. Patent No. 8,205,622, titled "Electronic cigarette." The patent, with a priority date of 2009, covers the core technology for most modern "auto-draw" or buttonless vaping devices, which use an electric airflow sensor to detect a user's puff and activate the heating element. This litigation is notable as it represents one of many similar lawsuits filed by VPR Brands against dozens of companies in the crowded and highly competitive vaping industry.

The VPR Brands litigation campaign is particularly significant because the '622 patent's validity was upheld by the Patent Trial and Appeal Board (PTAB). In a separate proceeding, the PTAB denied institution of an inter partes review (IPR) petition filed by another company, Jupiter Research, a decision that strengthened VPR's enforcement position against other alleged infringers like PHD Marketing. This specific case terminated quickly with a settlement on December 30, 2021, where PHD Marketing agreed to pay $85,000 for a non-exclusive license, a pattern consistent with VPR Brands' strategy of securing settlements and licensing deals with numerous players in the nicotine, CBD, and cannabis vaping markets.

Of course. Here are the key legal developments and the ultimate outcome for the patent infringement litigation in VPR Brands, LP v. PHD Marketing, Inc.

Key Legal Developments & Outcome

This case moved quickly from filing to settlement in under eight months, a trajectory characteristic of VPR Brands' broader enforcement strategy of leveraging its patent portfolio to secure licensing revenue without proceeding deep into litigation.

• 2021-05-04: Complaint Filed
  VPR Brands, LP filed its complaint against PHD Marketing, Inc. in the Central District of California, alleging direct infringement of U.S. Patent No. 8,205,622. The complaint identified PHD Marketing's "auto-draw" or "buttonless" vaporizer devices, sold under the "Pharmicated" brand, as the accused products. VPR sought damages, including lost profits, a reasonable royalty, and an injunction. (Case No. 2:21-cv-03797, Dkt. 1).

• 2021-08-03: PHD Marketing's Answer
  After receiving an extension, PHD Marketing filed its answer to the complaint. It denied the essential allegations of infringement and asserted several affirmative defenses. These included non-infringement, invalidity of the '622 patent for failure to meet the requirements of patentability under 35 U.S.C. §§ 101, 102, 103, and 112, and patent misuse. PHD Marketing did not file any counterclaims. (Dkt. 20).

• 2021-12-22: Notice of Settlement
  The parties filed a joint Notice of Settlement, informing the court that they had reached an agreement in principle to resolve the entire action. They requested 30 days to finalize the settlement agreement and file a dismissal. (Dkt. 27). This filing preempted any significant pre-trial motions, claim construction proceedings, or substantive discovery disputes.

• 2021-12-30: Settlement and Dismissal
  The case terminated with a settlement agreement. Under the terms of the agreement, PHD Marketing agreed to pay $85,000 to VPR Brands. In exchange, PHD Marketing received a non-exclusive license to the '622 patent, allowing it to continue selling its auto-draw vaporizer products. On the same day, the parties filed a joint stipulation to dismiss all claims and counterclaims with prejudice, with each party bearing its own attorneys' fees and costs. (Dkt. 28). The court officially closed the case shortly thereafter.

Parallel PTAB Proceedings

A critical factor influencing the swift settlement in this and other related cases was the prior failure of a challenge to the '622 patent at the Patent Trial and Appeal Board (PTAB).

• 2020-08-11: PTAB Decision in a Related Matter
  In a separate but highly relevant proceeding, the PTAB denied institution of an inter partes review (IPR) petition filed by Jupiter Research, LLC, another company in the vaporizer industry sued by VPR Brands. Jupiter had challenged the validity of claims 1–6 and 14–19 of the '622 patent. The PTAB concluded that Jupiter had not established a reasonable likelihood that it would prevail in showing the challenged claims were unpatentable as obvious. This decision, Jupiter Research, LLC v. VPR Brands, LP, IPR2020-00502, Paper 9, significantly strengthened VPR Brands' litigation position by validating the patent against a significant challenge. This PTAB outcome likely discouraged PHD Marketing and other defendants from pursuing a costly invalidity defense in district court, making a quick settlement and license a more attractive business resolution.

Plaintiff's Counsel of Record

VPR Brands, LP was represented by the intellectual property boutique law firm SRIPLAW, which led a broad enforcement campaign for the '622 patent. The legal team was headed by the firm's managing partner, with at least one California-based attorney from the firm also on record.

Joel B. Rothman

• Role: Lead Counsel
• Firm: SRIPLAW (Boca Raton, FL)
• Note: Rothman is the managing partner of SRIPLAW and has been repeatedly named in VPR Brands' press releases as heading the company's litigation and enforcement efforts for its vaporizer patents.

Matthew L. Rollin

• Role: Local Counsel
• Firm: SRIPLAW (Los Angeles, CA)
• Note: As a California-licensed attorney in SRIPLAW's Los Angeles office, Rollin served as local counsel for the firm in this Central District of California case.

In a press release announcing the settlement with PHD Marketing, VPR Brands' CEO Kevin Frija explicitly thanked "our legal team at SRIPLAW for their hard work and diligence in settling this matter." This statement, consistent with others from VPR, points to SRIPLAW as the primary and sole firm representing the plaintiff in this litigation campaign. The firm has offices in Florida, where VPR Brands is based, as well as a location in Beverly Hills, California, to handle litigation in that state. Joel B. Rothman is consistently identified as the lead attorney for VPR's patent cases across the country. Matthew L. Rollin is listed on the State Bar of California's website as working for SRIPLAW at their Beverly Hills address, indicating his role as local counsel for the firm in California-based litigation such as this case.

Defendant PHD Marketing Represented by Greenspoon Marder LLP

Defendant PHD Marketing, Inc. was represented by counsel from the law firm Greenspoon Marder LLP in the patent infringement lawsuit filed by VPR Brands, LP. Due to the case's rapid settlement in just under eight months, few public documents were filed, and specific attorneys of record for the defendant are not prominently mentioned in available dockets or news reports.

However, counsel for PHD Marketing, Inc. in a separate, contemporaneous trademark lawsuit in the same district (Vital Pharmaceuticals, Inc. v. PhD Marketing, Inc., Case No. 2:20-cv-06745, C.D. Cal.) was Ryan T. Santurri of Greenspoon Marder. Given the overlap in timing, venue, and the defendant's identity, it is highly probable that Greenspoon Marder also handled this patent matter. The firm has a substantial intellectual property litigation practice.

Because no answer was filed and no attorneys made a formal appearance on the public docket before the case was settled and dismissed on December 30, 2021, the specific roles of the attorneys handling the matter cannot be detailed. The settlement agreement, filed with the SEC, also does not name the defendant's counsel.

Firm of Record:

• Firm: Greenspoon Marder LLP
  • Office Location: While the specific office is not confirmed in case filings, the firm has a significant presence in Los Angeles.
  • Note on Firm's Experience: Greenspoon Marder is an Am Law 200 firm with a dedicated intellectual property practice group that handles patent, trademark, and copyright litigation. The firm's IP group, led by partner Sharon Urias, has experience in a wide range of industries, including technology and consumer products.