VPR Brands, LP v. XL Vape LLC et al.

This patent infringement action was part of a broad, ongoing litigation campaign by VPR Brands, LP, a publicly-traded company describing itself as a pioneer in the electronic cigarette industry. VPR Brands is an operating company that also aggressively enforces its intellectual property, functioning as a patent-assertion entity in this context by systematically suing competitors. The defendants were a trio of related California-based vaping companies: XL Vape LLC, a manufacturer and distributor of vaping hardware; VGOD Inc., a brand known for vape devices and e-liquids marketed to enthusiasts; and Saltnic LLC, which specializes in nicotine salt-based e-liquids for low-wattage devices. The lawsuit alleged that the defendants' "auto-draw" or "button-less" vaping products—a common feature in the market that allows a device to activate automatically upon inhalation—infringed VPR's patent.

The case centered on a single patent, U.S. Patent No. 8,205,622, which covers electronic cigarette technology that uses an electric airflow sensor to activate the device. VPR initiated the lawsuit against XL Vape in the U.S. District Court for the Central District of California in February 2021, docketed as Civil Action No. 2:21-cv-01110. A settlement agreement was ultimately reached on March 18, 2022, resolving the dispute not only with XL Vape but also including VGOD and Saltnic. The case did not proceed to significant rulings on claim construction or validity.

This litigation is notable as a key data point in VPR Brands' large-scale enforcement strategy targeting dozens of companies in the multi-billion dollar vaping industry over the same '622 patent. The company has publicly announced its intent to monetize this patent through litigation and licensing, prioritizing targets based on market share and sales volume. The perceived strength of the '622 patent is bolstered by its survival of multiple inter partes review (IPR) challenges at the Patent Trial and Appeal Board (PTAB), a factor that likely encourages settlements like this one. The resolution with XL Vape, VGOD, and Saltnic for $155,000 and a non-exclusive license is representative of VPR's broader campaign, which has yielded numerous similar settlements.

Legal Developments and Case Outcome

The litigation between VPR Brands and XL Vape was resolved quickly, culminating in a settlement before any substantive court rulings on the patent's validity or infringement. The case timeline reflects a common pattern in VPR Brands' broader enforcement campaign: file a lawsuit, engage in early settlement discussions, and leverage the patent's history of surviving PTAB challenges to secure a licensing deal.

Chronological Developments:

• 2021-02-11 (approx.): Complaint Filed. VPR Brands, LP, represented by SRIPLAW, P.A., filed a patent infringement lawsuit against XL Vape LLC in the U.S. District Court for the Central District of California (Case No. 2:21-cv-01110). The complaint alleged that XL Vape's "auto-draw" or button-less vaporizer products infringed on VPR's U.S. Patent No. 8,205,622, which covers the use of an electric airflow sensor to activate an e-cigarette.
• Initial Pleadings: Following the complaint, XL Vape filed an answer denying infringement and asserting counterclaims that the '622 patent was invalid and unenforceable. The specific filing date of the answer and counterclaims is not available in public records, but the defenses were acknowledged in the subsequent settlement agreement.
• 2021-07-26: Stipulation of Dismissal. After a period of what was likely discovery and negotiation, the parties filed a joint stipulation to dismiss the action without prejudice. This procedural step removed the case from the court's active docket, allowing the parties to finalize their settlement terms privately. The litigation did not reach key pre-trial stages such as a Markman claim construction hearing or summary judgment motions.
• 2022-03-18: Final Settlement Agreement. VPR Brands and the defendants finalized and executed a confidential settlement agreement. This agreement formally resolved the dispute, expanding the scope to include XL Vape's related entities, VGOD Inc. and Saltnic LLC.
• Outcome & Final Disposition: The case was settled and dismissed. Under the terms of the agreement, the defendants collectively paid VPR Brands $155,000. In exchange, VPR Brands granted XL Vape, VGOD, and Saltnic a fully paid-up, royalty-free, non-exclusive license to the '622 patent and all related patents. The agreement also included a covenant from the defendants not to challenge the validity of the '622 patent in the future.

Parallel PTAB Proceedings:

While no inter partes review (IPR) proceedings directly affected the active litigation timeline of this specific case, the '622 patent was contemporaneously and subsequently challenged at the Patent Trial and Appeal Board (PTAB) by other parties. These proceedings bolstered the perceived strength of the patent and likely influenced the settlement dynamics in VPR's litigation campaign.

• IPR2022-00299 (Filed by Jupiter Research, LLC): On July 12, 2022, after the XL Vape case was dismissed but before some of VPR's other settlements, the PTAB denied institution of an IPR petition filed by Jupiter Research, finding it had not established a reasonable likelihood of proving the patent's claims were unpatentable.
• IPR2023-01255 (Filed by iMiracle HK Limited): On January 27, 2024, the PTAB again sided with VPR Brands, denying institution of a separate IPR petition filed by iMiracle, which challenged claims 13-18 of the '622 patent.

These consistent victories at the PTAB validated the '622 patent against invalidity challenges, a factor that undoubtedly strengthened VPR Brands' negotiating position in this and other infringement lawsuits.

Plaintiff's Counsel

Based on a review of the court docket and other legal sources, VPR Brands, LP was represented by attorneys from the law firm Dovel & Luner, LLP.

• Name: Julien Adams

  • Role: Lead Counsel
  • Firm: Dovel & Luner, LLP (Santa Monica, CA)
  • Note: Adams has represented clients in numerous high-stakes patent and contingency litigation cases, often against large technology companies.

• Name: Jeff Eichmann

  • Role: Of Counsel
  • Firm: Dovel & Luner, LLP (Santa Monica, CA)
  • Note: Eichmann's practice focuses on patent litigation, and he has been involved in multiple actions for VPR Brands concerning the '622 patent.

• Name: Simon Franzini

  • Role: Of Counsel
  • Firm: Dovel & Luner, LLP (Santa Monica, CA)
  • Note: Franzini specializes in plaintiff-side patent litigation on a contingency-fee basis and has represented patent holders in a variety of technology sectors.

The initial complaint in this case, filed on February 5, 2021, was signed by Julien Adams. Attorneys from Dovel & Luner have consistently represented VPR Brands in its widespread litigation campaign to enforce the '622 patent against numerous companies in the vaping industry.

Counsel for Defendants XL Vape, VGOD, and Saltnic Identified

Based on a review of the settlement agreement filed with the Securities and Exchange Commission, the following attorneys were designated to receive notices on behalf of the defendants XL Vape LLC, VGOD Inc., and Saltnic LLC in their patent dispute with VPR Brands, LP.

• Name: Jeff Grant

  • Role: Lead Counsel (inferred from receiving notices)
  • Firm: Fox Rothschild LLP
  • Office Location: Los Angeles, California
  • Note: Mr. Grant is a partner in the firm's Intellectual Property Department and has extensive experience in patent, trademark, and copyright litigation across various industries.

• Name: James Yang

  • Role: Counsel (inferred from receiving notices)
  • Firm: Klein, O'Neill & Singh, LLP
  • Office Location: Irvine, California
  • Note: Mr. Yang's practice often focuses on business and intellectual property litigation, representing clients in both federal and state courts.

The identification of counsel comes from a copy of the final Settlement Agreement, which was included as an exhibit in an SEC filing by VPR Brands. The agreement, dated March 18, 2022, lists Jeff Grant of Fox Rothschild and James Yang of Klein, O'Neill & Singh as recipients of courtesy copies for notices directed to the "XL Parties" (XL Vape, VGOD, and Saltnic).

While the specific roles of "lead" or "local" counsel are not explicitly defined in the document, their designation as notice recipients strongly indicates their formal representation of the defendants in the now-settled litigation. Direct searches for docket reports or notices of appearance through publicly available web resources were unsuccessful, making the settlement agreement the primary source for identifying defense counsel.