VPR Brands LP v. Yocan USA LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: VPR Brands, LP (Delaware)
  • Defendant: Yocan USA LLC (California)
  • Plaintiff’s Counsel: Sriplaw, PLLC.
• Case Identification: 2:25-at-00130, E.D. Cal., 01/23/2025
• Venue Allegations: Venue is alleged to be proper in the Eastern District of California because Defendant maintains its principal place of business in Stockton, California, and has allegedly committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s electronic cigarette and vaporizer products infringe a patent related to the construction and operation of such devices, specifically concerning the airflow sensor and control circuitry.
• Technical Context: The technology relates to electronic cigarettes, or "vaping" devices, which electronically heat and atomize a liquid solution to create a vapor for inhalation as an alternative to traditional smoking.
• Key Procedural History: The complaint asserts infringement of U.S. Patent No. 8,205,622. According to public records attached to the patent, the patent owner filed a statutory disclaimer on October 27, 2023, disclaiming all of claims 12, 16, 17, and 18. The complaint asserts claim 13, which is dependent on the now-disclaimed claim 12, raising a threshold question about the viability of the infringement claim.

Case Timeline

Date	Event
2009-03-24	U.S. Patent No. 8,205,622 Priority Date
2012-06-26	U.S. Patent No. 8,205,622 Issued
2023-10-27	Statutory Disclaimer of Claims 12, 16-18 filed
2025-01-23	Complaint Filed

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

U.S. Patent No. 8,205,622 - "Electronic Cigarette"

• Patent Identification: U.S. Patent No. 8,205,622, "Electronic Cigarette," issued June 26, 2012.

The Invention Explained

• Problem Addressed: The patent asserts that prior art electronic cigarettes were often complex, costly, and suffered from technical problems like fluid leakage and discontinuous vaporizing. It specifically identifies a reliance on "mechanical devices as an airflow detector," which it describes as having a short life and being overly sensitive to environmental changes. (’622 Patent, col. 2:5-11).
• The Patented Solution: The invention proposes an electronic cigarette composed of two main, detachable parts: a "tubular electronic inhaler" (containing the power source and control electronics) and a "tubular electronic atomizer" (containing the liquid and heating element) (’622 Patent, col. 2:27-31). The key innovation is the use of an electronic airflow sensor that, upon detecting a user's puff, sends a signal to a microcontroller ("Single Chip Micyoco"). This microcontroller then directs the power source to energize a heating element in the atomizer, creating vapor. (’622 Patent, col. 2:50-58; Fig. 1). This electronic control system is described as more reliable and providing a smoother user experience than prior mechanical systems (’622 Patent, col. 3:32-44).
• Technical Importance: The claimed invention represents a shift from mechanical to microelectronic control in e-cigarette design, aiming to improve the reliability, responsiveness, and longevity of the device. (’622 Patent, col. 3:40-44).

Key Claims at a Glance

• The complaint asserts infringement of dependent Claim 13 (Compl. ¶35). Claim 13 depends from Claim 12, which in turn depends from independent Claim 1.
• The essential elements of independent Claim 1, upon which the asserted claim is ultimately based, include:
  • A tubular electronic inhaler detachably attached to a tubular electronic atomizer.
  • An electric power source in the inhaler to provide current to the atomizer.
  • The atomizer including a container with a media soaked in a solution.
  • A "side-space for airflow" located between the container and the media.
  • An "electric airflow sensor" in the inhaler that is a "diaphragm microphone."
• Claim 12 adds the limitation of an "integrated circuit board that has a Single Chip Micyoco that controls atomization."
• Claim 13 further adds limitations specifying that the airflow sensor sends a signal to the "Single Chip Micyoco," which then instructs the power source to send current of a specific "time period and a magnitude."

III. The Accused Instrumentality

Product Identification

The complaint names the "Yocan Ziva Pro Smart Vaporizer Mod ('Ziva Pro')" as an infringing product (Compl. ¶15). It also accuses "Yocan's Batteries" (including the "Yocan Keen Vaporizor" and "Yocan Stix 2.0") when used in combination with a "510 Thread Atomizer" (Compl. ¶21, ¶23-¶24).

Functionality and Market Context

The complaint alleges the accused products are electronic cigarettes or their core components (Compl. ¶14). The Ziva Pro is described as an electronic cigarette with a rechargeable battery, an electric airflow sensor, and an electronic atomizer with a heating wire and a container for liquid or wax (Compl. ¶16-¶17). The user inhales, which triggers an airflow sensor, causing the device to atomize the contents for inhalation (Compl. ¶18). The "Yocan's Batteries" are alleged to be power sources that contain an airflow sensor and are designed exclusively for use with a compatible atomizer, having "no end-user function without an atomizer" (Compl. ¶22-¶23). The complaint does not provide detail regarding the accused products' specific market position.

IV. Analysis of Infringement Allegations

The complaint states that a claim chart is attached as Exhibit 2, but this exhibit was not included with the filing (Compl. ¶15). No probative visual evidence provided in complaint. The infringement theory must therefore be reconstructed from the complaint's narrative allegations.

Plaintiff alleges that the accused products, including the Ziva Pro and the combination of Yocan's Batteries with a 510 Thread Atomizer, practice all the elements of at least Claim 13 of the '622 Patent (Compl. ¶14, ¶26). The allegations map the products' features to the claim elements, asserting the products include: a rechargeable battery (power source), an electronic inhaler body, an electronic atomizer, an electric airflow sensor that detects a user's puff, and a process where the sensor's signal triggers atomization (Compl. ¶16-18, ¶22-25).

• Identified Points of Contention:
  • Legal Question: A threshold issue is the enforceability of Claim 13. Claim 13 depends from Claim 12, which Plaintiff statutorily disclaimed. Case law generally holds that a dependent claim cannot be infringed if the claim from which it depends is invalid or disclaimed, raising a significant question as to whether the complaint states a viable claim for relief.
  • Scope Question: Does the accused products' "electric airflow sensor" meet the specific limitation of a "diaphragm microphone" as required by independent Claim 1? The complaint does not allege the specific type of sensor used by Defendant, creating a potential mismatch in claim scope.
  • Technical Question: What evidence supports the allegation that the accused products' control circuitry functions as the claimed "Single Chip Micyoco" that controls the "time period and a magnitude" of the electric current? The complaint does not provide technical details on the accused microcontroller or its specific control logic.
  • Structural Question: Does the accused atomizer possess the claimed "side-space for airflow" between the liquid container and the wicking media, as required by Claim 1? The complaint describes a functional "air inflow" but does not map it to this specific internal structure of the atomizer (Compl. ¶18).

V. Key Claim Terms for Construction

• The Term: "diaphragm microphone"

  • Context and Importance: This term appears in independent Claim 1 and defines the specific type of "electric airflow sensor" required. Infringement will hinge on whether Defendant's sensor technology falls within the scope of this term. Practitioners may focus on this term because the complaint generically alleges an "electric airflow sensor" (Compl. ¶16), and the patentee's choice to use a more specific term in the claim may create a significant point of non-infringement for the Defendant.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of this element.
    • Evidence for a Narrower Interpretation: The patent repeatedly distinguishes the invention's "electric airflow sensor" from prior art "mechanical" sensors, suggesting the term was chosen to claim a specific electronic, non-mechanical component (’622 Patent, col. 2:9-11; col. 3:24-32). The term "diaphragm microphone" itself has a specific technical meaning that may be construed narrowly.

• The Term: "Single Chip Micyoco"

  • Context and Importance: This term, recited in Claim 12 and incorporated into asserted Claim 13, identifies the microcontroller that is central to the invention's control logic. The unusual nature of the term "Micyoco" suggests its construction will be a key issue in determining whether Defendant's processor infringes.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification also refers to this component as a "CPU processor" and part of an "integrated circuit board," which could support an argument that the term should be construed more broadly to cover any single-chip microcontroller performing the claimed functions (’622 Patent, col. 5:13-14).
    • Evidence for a Narrower Interpretation: The consistent capitalization of "Single Chip Micyoco" throughout the patent suggests it may be a proper name for a specific component (’622 Patent, Abstract; col. 2:55). A defendant could argue that the term is not generic and does not read on its own standard microcontroller.

VI. Other Allegations

• Indirect Infringement: The complaint does not include a formal count for indirect infringement. However, it pleads facts often used to support such a claim, alleging that Defendant sells batteries and atomizers separately that are "designed to be mechanically and electrically compatible with each other" (Compl. ¶19). The complaint further alleges that the batteries have "no stand-alone use" and are "exclusively intended to be used with a compatible atomizer," which may suggest a basis for a future claim of inducement or contributory infringement (Compl. ¶20, ¶23).
• Willful Infringement: The complaint makes a request for a finding of willful infringement in its prayer for relief (Compl. p. 5, ¶A). However, the body of the complaint does not allege specific facts, such as pre-suit knowledge of the patent or objectively reckless conduct, that would typically be required to substantiate such a claim.

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

This case presents several fundamental questions for the court, moving from legal viability to technical specifics.

• A central issue will be one of legal standing: can Plaintiff enforce Claim 13, a dependent claim, when it has statutorily disclaimed Claim 12, the claim from which it directly depends? The resolution of this threshold question could be dispositive.
• A key question of claim scope will be: can the specific term "diaphragm microphone," as required by the patent's independent claim, be construed to cover the accused product's unspecified "electric airflow sensor"?
• An underlying evidentiary question will be one of structural and functional correspondence: does the accused system, particularly when assembled from separately sold components, contain the specific internal structures (e.g., the "side-space for airflow") and perform the specific control logic (e.g., controlling current "time period and a magnitude") required by the asserted claim?