VPR Brands Announces Favorable Settlement of Third Patent Infringement Case; Settlements Now Total Over $500,000

Rhea-AI Summary

VPR Brands has reached a settlement agreement with XL Vape, VGOD, and Saltnic, resolving a patent infringement lawsuit regarding the auto-draw technology. The settlement includes a payment of $155,000 from the XL Parties to VPR Brands. The company is actively enforcing its patented electronic cigarette technology, which has been vital in the growing $6 billion e-cigarette market. VPR Brands plans to pursue additional legal actions against other potential infringers and may consider selling its patent in the future.

Positive

• Settlement agreement resulted in a payment of $155,000.
• Legal actions to enforce patent rights may provide additional revenue.
• The e-cigarette market's growth presents significant opportunities.

Negative

• None.

FORT LAUDERDALE, Fla., March 25, 2022 (GLOBE NEWSWIRE) -- via InvestorWire -- VPR Brands, LP (OTC: VPRB): VPR Brands is a market leader and pioneer in electronic cigarettes and vaporizers for nicotine, cannabis and cannabidiol (CBD).

On March 18, 2022, the Company entered into a Settlement Agreement (the "XL Settlement Agreement") by and between the Company on the one hand, and XL Vape, LLC ("XL"), VGOD LLC ("VGOD"), and Saltnic LLC ("Saltnic" and collectively with XL and VGOD, the "XL Parties"), on the other hand. The Company previously filed a lawsuit in the United States District Court for the Central District of California (Civil Action No. 2:21-cv-01110(MCS)) alleging patent infringement of the Patent by XL (the "XL Action"). Pursuant to the terms of the XL Settlement Agreement, the Company and the XL Parties agreed to settle the XL Action. In addition, the XL Parties agreed to pay the Company $155,000. The Company also granted each of the XL Parties a fully paid-up, royalty-free, non-exclusive license to practice the invention set forth in the Patent and all related patents and applications, domestic and foreign.

The company owns Intellectual Property which is one of  the original Patents filed for electronic cigarette technology. This Patent dates to 2009 and includes independent claims covering electronic cigarette products containing an electric airflow sensor, including a sensor comprised of a diaphragm microphone. The sensor turns the battery on and off, and covers most auto-draw, button less e-cigarettes, cig-a-likes, pod devices and vaporizers using an airflow sensor rather than a button. The technology is covered under electronic cigarette utility patent US 8,205,622.

VPR Brands along with SRIPLAW has started to identify and notify over 50 of the leading companies using the Auto Draw Technology and VPR Brands intends to vigorously enforce its Patent. These companies were prioritized, based on sales volume and popularity. Most recently VPR Brands LP and its legal team, headed by Joel B Rothman of SRIPLAW, have filed litigation against 9 of the companies. Additional lawsuits will continue to be filed as necessary to protect the company's Intellectual Property rights.

The vaping industry has matured in size and continues to grow. The company believes that its patent puts them in a unique position to capitalize on the recent surge in e-cigarette/vape usage that resulted in what some analysts estimate to be a $6 billion e-cigarette market, not including devices sold for cannabis and CBD.

 A majority of the nicotine vaping devices sold in the U.S. now utilize an auto-draw/button-less technology. The company is investigating all button-less vape devices within the nicotine, CBD, and cannabis space that initiate vaporization from the user's airflow inhalation as they would be suspect of infringement.

The company may also seek a buyer for this patent in the future. As an example of past patent sales for electronic cigarettes, another company, Ruyan, gained a U.S. patent for its electronic cigarette product. In August 2013, Imperial Tobacco Group purchased the intellectual property behind the Ruyan e-cigarette for $75 million. The market was barely what it is today and has grown tremendously since 2013.

Previous Settlements Announced:

Effective December 1, 2021, VPR Brands, LP (the "Company") and NEPA 2 Wholesale, LLC ("NEPA") entered into that certain Settlement Agreement (the "Settlement Agreement"). Pursuant to the terms of the Settlement Agreement, the Company and NEPA agreed to settle a lawsuit filed by the Company against NEPA that alleged patent infringement relating to U.S. Patent No. 8205,622 (the "Patent"), and NEPA agreed to pay to the Company $275,000. In addition, pursuant to the terms of the Settlement Agreement, the Company agreed to license the Patent and related patents and applications to NEPA and certain of its affiliates.

On December 30, 2021, VPR Brands, LP (the "Company") entered into a Settlement Agreement (the "Settlement Agreement") by and between the Company and PHD Marketing, Inc. ("PHD"). VPR previously filed a lawsuit in the United States District Court for the Central District of California (Civil Action No. 21-cv-03797) alleging patent infringement of U.S. Patent No. 8,205,622 (the "Patent") by PHD (the "Action"). Pursuant to the terms of the Settlement Agreement, the Company and PHD agreed to settle the Action. In addition, PHD agreed to pay the Company $85,000.00. The Company also granted PHD a nonexclusive, non-assignable license to practice the invention set forth in the Patent.

On March 18, 2022, the Company entered into a Settlement Agreement (the "XL Settlement Agreement") by and between the Company on the one hand, and XL Vape, LLC ("XL"), VGOD LLC ("VGOD"), and Saltnic LLC ("Saltnic" and collectively with XL and VGOD, the "XL Parties"), on the other hand. The Company previously filed a lawsuit in the United States District Court for the Central District of California (Civil Action No. 2:21-cv-01110(MCS)) alleging patent infringement of the Patent by XL (the "XL Action"). Pursuant to the terms of the XL Settlement Agreement, the Company and the XL Parties agreed to settle the XL Action. In addition, the XL Parties agreed to pay the Company $155,000. The Company also granted each of the XL Parties a fully paid-up, royalty-free, non-exclusive license to practice the invention set forth in the Patent and all related patents and applications, domestic and foreign.

About VPR Brands, LP:

VPR Brands is a technology company, which develops consumer and business products based on the newest cutting-edge technologies and whose assets include issued a U.S. patent for atomization-related products including technology for medical marijuana vaporizers and electronic cigarette products and components. The company is also engaged in product development for the vapor or vaping market, including e-liquids, vaporizers, and electronic cigarettes (also known as e-cigarettes) which are devices that deliver nicotine and or cannabis through atomization or vaping, and without smoke and other chemical constituents typically found in traditional products. For more information about VPR Brands, please visit the company on the web at www.vprbrands.com

Forward-looking statements:

This news release contains statements that involve expectations, plans or intentions, and other factors discussed from time to time in the company's Securities and Exchange Commission filings. These statements are forward-looking and are subject to risks and uncertainties, so actual results may vary materially. The company cautions readers not to place undue reliance on any forward-looking statements, which speak only as of the date made. The company disclaims any obligation subsequently to revise any forward-looking statements to reflect events or circumstances after the date of such statements or to reflect the occurrence of anticipated or unanticipated events.

Wire Service Contact:

InvestorWire (IW)
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Editor@InvestorWire.com

A photo accompanying this announcement is available at https://www.globenewswire.com/NewsRoom/AttachmentNg/524d9719-f989-4db6-b59d-abc0f34d57e9

FAQ

What is the settlement amount VPR Brands received from XL Vape and others on March 18, 2022?

VPR Brands received $155,000 as part of the settlement agreement with XL Vape, VGOD, and Saltnic.

What patent technology is VPR Brands protecting through litigation?

VPR Brands is protecting its auto-draw technology patent for electronic cigarettes, patented under US 8,205,622.

What market size does VPR Brands aim to capitalize on with its patented technology?

VPR Brands aims to capitalize on the estimated $6 billion e-cigarette market.

What previous settlements has VPR Brands announced before March 18, 2022?

VPR Brands previously settled with NEPA for $275,000 and with PHD Marketing for $85,000 due to patent infringement.

What future plans does VPR Brands have regarding its patent?

VPR Brands may seek a buyer for its patent in the future.