DCT
1:24-cv-03348
VPR Brands LP v. Open VAPE LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VPR Brands, LP (Delaware / Florida)
- Defendant: Open VAPE LLC (Colorado)
- Plaintiff’s Counsel: Sriplaw PLLC
- Case Identification: 1:24-cv-03348, D. Colo., 12/03/2024
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant, a Colorado LLC, has allegedly committed acts of infringement there and is subject to personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s electronic cigarette products, which consist of a battery unit and a separate atomizer cartridge, infringe a patent related to the electronic control of vaporizers.
- Technical Context: The technology concerns electronic cigarettes that use an electronic airflow sensor to automatically activate a heating element, a design intended to improve upon earlier mechanical activation systems.
- Key Procedural History: The asserted patent, U.S. 8,205,622, was the subject of a disclaimer filed on October 27, 2023, which disclaimed claims 12, 16, 17, and 18. The complaint asserts the remaining claim 13. The prayer for relief contains an apparent scrivener's error, referencing a '794 patent not mentioned elsewhere in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2009-03-24 | ’622 Patent Priority Date |
| 2012-06-26 | ’622 Patent Issue Date |
| 2023-10-27 | Disclaimer of claims 12, 16, 17, and 18 of ’622 Patent |
| 2024-12-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,205,622 - “Electronic Cigarette” (issued Jun. 26, 2012)
The Invention Explained
- Problem Addressed: The patent describes prior art electronic cigarettes as suffering from major drawbacks, including being too complex and costly for mass production, prone to liquid leaks, and reliant on mechanical airflow detectors that have a short lifespan and are sensitive to environmental changes (’622 Patent, col. 2:5-12).
- The Patented Solution: The invention proposes a two-part electronic cigarette—a "tubular electronic inhaler" and a "tubular electronic atomizer"—that are detachably connected (’622 Patent, col. 2:25-30). The core innovation is the use of an electronic airflow sensor that, upon detecting a user's puff, sends a signal to a "Single Chip Micyoco" (a microprocessor). This controller then activates the power source to heat the atomizer and generate vapor, aiming for a more reliable and responsive system than its mechanical predecessors (’622 Patent, col. 2:48-64).
- Technical Importance: The shift from a mechanical airflow switch to an electronic sensor controlled by a microprocessor was intended to increase the device's operational life, improve its sensitivity and responsiveness, and make the user experience "much easier and smoother" (’622 Patent, col. 3:37-43).
Key Claims at a Glance
- The complaint asserts independent claim 13 (’622 Patent, col. 8:37-46; Compl. ¶34).
- The essential elements of independent claim 13 are:
- An electronic cigarette comprising a tubular electronic inhaler and a tubular electronic atomizer.
- The electronic inhaler includes an electric power source that provides an electric current to the electronic atomizer.
- The cigarette further comprises an electric airflow sensor used to turn the power source on and off by detecting airflow and sending a signal to a "Single Chip Micyoco."
- The "Single Chip Micyoco" receives the signal, instructs the power source to send an electric current to the atomizer, and controls "a time period and a magnitude of the electric current."
- The complaint generally alleges infringement of "one or more claims" but specifically identifies only claim 13 for infringement (Compl. ¶¶ 25, 34).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the "O.pen 3.0 conceal" ("Conceal"), the "O.pen Mushroom Garden" and "1.0 Auto-Draw 510-Thread Battery" (collectively, "O.Pen's Batteries"), and associated "Cartridges" (Compl. ¶¶ 15, 19).
- Functionality and Market Context: The complaint alleges that O.Pen's Batteries function as the "electronic inhaler" portion of the claimed invention, containing a rechargeable power source and an electric airflow sensor (Compl. ¶¶ 16, 20). The Cartridges are alleged to be the "electronic atomizer," containing a liquid container, heating wire, and connector (Compl. ¶22). The complaint asserts that the Batteries and Cartridges are designed to be used exclusively together and that the Batteries have no end-user function without a Cartridge (Compl. ¶¶ 21, 23). When combined and used, a user's inhalation allegedly triggers the airflow sensor, which in turn causes the battery to power the atomizer and create vapor (Compl. ¶¶ 18, 24). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’622 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An electronic cigarette comprising a tubular electronic inhaler and a tubular electronic atomizer... | The combination of O.Pen's Batteries (the alleged inhaler) and O.Pen's Cartridges (the alleged atomizer) forms an electronic cigarette. | ¶¶19, 24 | col. 2:25-30 |
| ...wherein the electronic inhaler includes an electric power source that provides an electric current to the electronic atomizer... | O.Pen's Batteries are alleged to be electronic inhalers that contain a rechargeable battery functioning as a power source to supply electric power. | ¶¶16, 20 | col. 2:31-33 |
| ...the electronic cigarette further comprising an electric airflow sensor that is used to turn on and off the electric power source by way of detecting an airflow and sending a signal to a Single Chip Micyoco... | The alleged inhaler (the Battery) includes an electric airflow sensor to detect air movement from a user's puffing act, which triggers the atomization process. | ¶¶16, 20 | col. 2:48-54 |
| ...wherein the Single Chip Micyoco receives the signal from the electric airflow sensor, instructs the electric power source to send an electric current to the electronic atomizer, and a time period and a magnitude of the electric current. | The complaint alleges that the airflow sensor's detection of air inflow "triggers the atomization process that converts a solution to a gas." The complaint does not contain specific allegations regarding a "Single Chip Micyoco" or how the accused devices control the time period and magnitude of the current. | ¶¶18, 24 | col. 2:54-58 |
- Identified Points of Contention:
- Scope Questions: A primary issue may be whether the term "Single Chip Micyoco," a unique term used in the patent, can be construed to read on the generic microcontroller likely used in the accused O.Pen products. The complaint does not allege facts about the specific controller used in the accused devices.
- Technical Questions: The complaint makes conclusory allegations that the accused devices meet the final limitation of claim 13. A key question for the court will be whether Plaintiff can produce evidence that the accused device's controller performs the specific claimed functions of receiving a signal and controlling both the "time period and a magnitude of the electric current," as the complaint currently lacks factual detail on this operational aspect.
V. Key Claim Terms for Construction
- The Term: "Single Chip Micyoco"
- Context and Importance: This term appears in the asserted independent claim 13 and is central to the control mechanism of the patented invention. The outcome of the case may depend on whether this term is construed narrowly as a specific type of processor or broadly as a generic microcontroller. Practitioners may focus on this term because its unique, non-standard nature invites disputes over its proper scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification refers to the component as an "integrated circuit board with a CPU processor" and a "CPU processor 14," suggesting "Single Chip Micyoco" may be used interchangeably with general-purpose processing units (’622 Patent, Fig. 1; col. 5:14-15).
- Evidence for a Narrower Interpretation: The consistent and repeated use of the specific phrase "Single Chip Micyoco" throughout the patent, including the Abstract, Summary of the Invention, and claims, could support an argument that the patentee intended to claim something more specific than a generic processor to distinguish the invention from the prior art (’622 Patent, Abstract; col. 2:32; col. 8:43-46).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a formal count for indirect infringement. However, it alleges facts that could potentially support such a claim, stating that Defendant's Batteries and Cartridges are designed for exclusive use with each other and that the Batteries have "no end-user function" on their own (Compl. ¶¶ 21, 23).
- Willful Infringement: The complaint does not contain factual allegations to support willfulness, such as pre-suit knowledge of the patent. The request for a finding of willful infringement is made only in the prayer for relief (Compl., Prayer for Relief ¶C).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on two central questions:
A core issue will be one of definitional scope: can the unique term "Single Chip Micyoco," as used in claim 13, be construed to encompass the likely generic microcontroller within Defendant's accused vape batteries, or is its meaning limited by the patent's specific language to a particular type of processor?
A key evidentiary question will be one of technical proof: what evidence will Plaintiff offer to demonstrate that the accused products’ control system performs the specific functions of controlling both the "time period and a magnitude of the electric current" as required by the claim, an operational detail for which the complaint currently lacks specific factual support?