Announcement • Jul 17
VPR Brands, LP Enters Settlement and Patent License Agreement with R.J. Reynolds Vapor Company
VPR Brands, LP entered into a Settlement and Patent License Agreement with R.J. Reynolds Vapor Company relating to that certain action captioned R.J. Reynolds Vapor Company v. VPR Brands, LP, United States District Court for the District of Delaware, Case No. 1:26-cv-00459. VPR Brands, LP is the owner of all right, title and interest in and to U.S. Patent No. 8,205,622 B2. Pursuant to the terms of the Settlement Agreement, in exchange for the payment by R.J. Reynolds Vapor Company of USD 14,900,000 and the mutual releases set forth in the Settlement Agreement: (i) VPR Brands, LP and R.J. Reynolds Vapor Company agreed to resolve the Litigation and all disputes between them related to the Patent on the terms set forth in the Settlement Agreement, without admission of liability, validity, enforceability or infringement by either party to the Settlement Agreement; and (ii) VPR Brands, LP granted to R.J. Reynolds Vapor Company and its affiliates a non-exclusive, worldwide, fully paid-up, perpetual, irrevocable license, with no right to sublicense, under the Patent, solely with respect to Licensed Products, to make, have made, import, export, use, sell, develop, offer to sell, advertise, update, support, maintain, obtain, exploit and otherwise distribute and dispose of Licensed Products, including in each case the right to have any of the foregoing done directly or indirectly for or on behalf of R.J. Reynolds Vapor Company or any of its affiliates by vendors, suppliers, manufacturers, developers, distributors, resellers, OEMs, dealers, contractors, subcontractors, consultants, partners, retailers, hosts, service providers, customers (direct and indirect) and users of Licensed Products. The Settlement Agreement contains customary representations, warranties and covenants for an agreement of this type. The Settlement Payment shall be a single, one-time, fully paid-up, non-refundable payment. The Settlement Payment is inclusive of any VAT or other indirect tax and shall be made free and clear of, and without any setoff, counterclaim, deduction, withholding, or other reduction of any kind, including without limitation any wire transfer fees, intermediary bank fees, or other transaction charges, all of which shall be borne solely by R.J. Reynolds Vapor Company. All taxes shall be the financial responsibility of the Party obligated to pay such taxes as determined by the applicable law and no Party is or shall be liable at any time for any of the other Party's taxes incurred in connection with or related to amounts paid under this Agreement. The Settlement Payment shall not be refundable, in whole or in part, for any reason, including without limitation any subsequent determination that the Licensed '622 Patent is invalid, unenforceable, or not infringed by any tribunal. R.J. Reynolds Vapor Company expressly waives any right to seek rescission, restitution, reformation, or any similar remedy in the event of any later challenge to the Licensed '622 Patent.