DCT
0:24-cv-61150
Rose v. VPR Brands LP
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sai Rose (individual)
- Defendant: VPR Brands, LP, dba Honey Stick (Florida Limited Partnership)
- Plaintiff’s Counsel: Plaintiff is proceeding pro se.
- Case Identification: 0:24-cv-61150, S.D. Fla., 07/02/2024
- Venue Allegations: Venue is based on Defendant maintaining a regular and established place of business in the Southern District of Florida, where acts of infringement are alleged to have occurred.
- Core Dispute: Plaintiff alleges that Defendant’s vaporizer atomizers infringe a patent related to conjunctive airflow systems, reclaim caps, and ceramic heating chambers for vaporizing concentrates.
- Technical Context: The technology relates to electronic vaporizers, specifically the atomizer component used for heating cannabis concentrates and other similar substances, a significant segment of the consumer electronics and cannabis accessory markets.
- Key Procedural History: The complaint alleges a substantial history of pre-suit interactions, including a 2016 meeting where Defendant’s COO was allegedly made aware of the then-patent-pending technology. It also details extensive email communications in 2023 and 2024 regarding alleged infringement and settlement discussions.
Case Timeline
| Date | Event |
|---|---|
| 2016-05-25 | Earliest Priority Date for U.S. Patent No. 10,779,573 |
| 2018-01-01 | Defendant allegedly began manufacturing the infringing products |
| 2019-01-01 | Defendant allegedly began selling the infringing products |
| 2020-09-22 | U.S. Patent No. 10,779,573 Issued |
| 2023-03-03 | Plaintiff successfully restored the 2016 provisional priority date |
| 2023-06-01 | Plaintiff allegedly sent formal notification of infringement to Defendant |
| 2024-07-02 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,779,573 - "Conjunctive Airflow Atomizer for Concentrates"
- Patent Identification: U.S. Patent No. 10,779,573, “Conjunctive Airflow Atomizer for Concentrates,” issued September 22, 2020.
The Invention Explained
- Problem Addressed: The patent describes a need for improved vaporization devices that can increase the amount of vapor produced, enhance safety, efficiently manage temperature, and capture unused substances for re-use, all within a portable device (’573 Patent, col. 1:59-2:7).
- The Patented Solution: The invention is an atomizer featuring a multi-part system to control the vaping experience. A core element is the "conjunctive airflow base," which uses two distinct chambers to condition and warm ambient air before it reaches the heating coil, avoiding a "dynamic of a temperature change" that could be inefficient (’573 Patent, col. 2:60-67). The solution also includes a "reclaim safety cap" with an internal recessed cup to capture and allow for the re-use of heated substance splatter, and a ceramic heating chamber that is narrowed to concentrate the substance on the heating coil (’573 Patent, col. 2:24-30, col. 2:50-54).
- Technical Importance: This approach aims to provide greater user control over vapor temperature and density while reducing waste and improving the efficiency of vaporizing concentrated substances (’573 Patent, col. 3:9-16).
Key Claims at a Glance
- The complaint asserts the ’573 Patent generally, with allegations mapping to the elements of independent claim 1.
- Essential elements of Independent Claim 1 include:
- A mouthpiece drip tip.
- A reclaim safety cap comprising a plurality of interior vent holes adjoining a recessed cup-like structure.
- A replacement atomizer module comprising a ceramic heating chamber, a heating coil, and a universal 510 male threaded connector.
- A conjunctive airflow base comprising two chambers with a plurality of exterior and interior holes.
- An adjustable air ring seated on the conjunctive airflow base.
- A universal 510 threaded deck to which the airflow base is disposed.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: The HoneyStick Extreme 2.0 Defender, Extreme 2.0 DUO, and Extreme Defender vaporizer products (Compl. ¶45).
- Functionality and Market Context: The accused products are atomizers for vaporizing concentrates (Compl. ¶58). The complaint alleges that these products incorporate the patented invention by using an "airflow base, narrowed ceramic cup and reclaim cap" (Compl. ¶14). A visual in the complaint depicts the "VPRB HoneyStick" product, highlighting its components. Exhibit B to the complaint provides annotated photographs showing the accused product's "Reclaim Cap," "Conjunctive Airflow Base," and "Replacement Coil" with a narrowed ceramic chamber (Compl., p. 15). The complaint does not detail the products’ market positioning beyond noting they are sold worldwide through Defendant's website (Compl. ¶10.A).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,779,573 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a reclaim safety cap comprises a plurality of interior concentric vent holes adjoining a recessed cup-like structure... | The accused "VPRB HoneyStick" products include a "Reclaim Cap" that allegedly "collects the splatter" from the coil for re-use, preventing it from contacting the user's mouth. An annotated photograph shows an interior view of this component (Compl., p. 15). | ¶14; p. 15 | col. 10:3-10 |
| a replacement atomizer module comprises: a ceramic heating chamber... narrowed on two interior opposing sides... | The accused products allegedly use a replacement coil with a "narrowed ceramic cup." A provided image shows a "Top View Replacement Coil" and explicitly annotates the "Ceramic heating chamber narrowed on both sides" (Compl., p. 15). | ¶14; p. 15 | col. 2:50-54 |
| a conjunctive airflow base comprises two chambers with a plurality of exterior and interior holes... | The accused products allegedly incorporate a "conjunctive airflow base." An annotated image describes the airflow path as coming "from the first chamber to the 2nd chamber," and another image shows a "plurality of holes (4) that goes into the first chamber" (Compl., p. 15). | ¶14; p. 15 | col. 2:58-67 |
| an adjustable air ring is seated by said one lower O-ring; wherein said adjustable air ring is disposed on an end of the conjunctive airflow base... | An image of the accused product's airflow base shows an "ajustable air ring to control the flow of air to the chambers" (Compl., p. 15). | p. 15 | col. 6:15-18 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern whether the accused product's airflow system meets the specific "two chambers" limitation of a "conjunctive airflow base" as defined in the patent. The defense may argue its product uses a different airflow mechanism that does not create two distinct chambers for pre-conditioning air.
- Technical Questions: What evidence does the complaint provide that the accused "Reclaim Cap" contains the specific structure of "a plurality of interior concentric vent holes adjoining a recessed cup-like structure" as required by Claim 1? The annotated photographs in the complaint (Compl., p. 15) assert the existence of these features, but the level of detail may become a point of contention requiring further evidence.
V. Key Claim Terms for Construction
The Term: "conjunctive airflow base"
Context and Importance: This term appears to be coined by the inventor and is central to the patent's novelty. Its construction will be critical, as infringement hinges on whether the accused device's base performs the specific function described in the patent. Practitioners may focus on this term because the patent attributes a specific air-conditioning function to its "two chambers" structure (’573 Patent, col. 2:60-64), which may not be present in all multi-hole airflow systems.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires "two chambers with a plurality of exterior and interior holes," which could be argued to cover any base with at least two distinct air plenums or cavities, regardless of their specific thermal conditioning effect.
- Evidence for a Narrower Interpretation: The specification defines "Conjunctive air flow" as an "improved method to slowly step up the moving air to a warmer temperature before it reaches the heating coil so that cold air is not introduced directly onto a hot coil" (’573 Patent, col. 2:60-64). This functional description may be used to argue that the term requires a structure that demonstrably performs this two-stage thermal conditioning, limiting the claim's scope.
The Term: "recessed cup-like structure"
Context and Importance: This feature of the "reclaim safety cap" is key to the patent's waste-reduction and safety claims. The dispute may turn on what degree of indentation or structural complexity qualifies as a "recessed cup-like structure" under the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself does not impose stringent limitations on the structure's shape or depth, requiring only that it be "recessed" and "cup-like." This could be read to cover a wide range of concave features designed to catch splatter.
- Evidence for a Narrower Interpretation: The detailed description explains that this structure is "suspended by three arms" and positioned to "disrupt the air flow so that the vapor remains in the cap for a longer time" (’573 Patent, col. 3:51-55; col. 10:58-60). A defendant may argue that these functional and structural details from the preferred embodiment should inform the meaning of the term, narrowing it to structures that are more complex than a simple indentation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges contributory infringement under 35 U.S.C. § 271(c) (Compl. ¶49). It asserts that Defendant sells components that are a material part of the patented invention, are known to be "especially made or especially adapted for use in infringement," and are not staple articles of commerce (Compl. ¶50-51).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the patent-pending invention since 2016 (Compl. ¶1, ¶13, ¶19). The allegations state that Defendant's COO met the inventor at a trade show, was shown the product marked "patent pending," and later allegedly admitted to using Plaintiff's technology to develop Defendant's products (Compl. ¶2, ¶19). The complaint further alleges that infringement continued after Defendant received formal notice in June 2023 (Compl. ¶53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and definitional scope: can the term "conjunctive airflow base," defined in the specification by its two-stage thermal conditioning function, be construed to cover the accused product’s airflow system? The case may depend on whether this claim term is limited to the specific functional purpose described in the patent or read more broadly to cover structure alone.
- A second central question will be one of evidentiary proof: beyond the annotated photographs provided in the complaint, what technical evidence will be presented to prove that the internal, microscopic structures of the accused products—such as the "plurality of interior concentric vent holes" in the reclaim cap—literally meet the limitations of the asserted claim?
- Finally, the extensive factual allegations regarding willfulness will be a critical battleground. The outcome will likely depend on the court's assessment of the credibility and context of the alleged pre-suit interactions and admissions between the parties.