Jonathan K. Waldrop

Before Waldrop went to law school, he studied mechanical engineering and material science at Harvard. That background helped to understand his clients’ technologies, but also as a point of distinction for the managing partner.

“In the late ‘90s and early 2000s, there weren’t a lot of engineers who went to law school,” he said. “It allowed me to get work and opportunities because I had a set of skills that not a lot of people had.”

Waldrop now represents prominent companies such as Fintiv, Google, LG, ASUS, WSOU, Uber and Adobe in patent and trademark litigation, and handles commercial and antitrust litigation matters.

He was named California IP Practitioner of the Year by Managing IP Americas and won an Impact Case of the Year Award for his precedent-setting victory at the Patent Trial and Appeal Board (PTAB) for Fintiv in its patent infringement litigation against tech giant Apple. Apple Inc. v. Fintiv, Inc., PTAB IPR2020- 00019. Waldrop defeated Apple’s petition for inter partes review of the patent at issue and was the first time the PTAB had issued a discretionary denial of such a petition based on the pendency of a parallel patent action. The so-called NHK-Fintiv rule allows the PTAB to refuse patent challenges when there has been a parallel infringement case in another federal agency or court.

“The Fintiv rule has been invoked many times in PTAB proceedings, in which you have patent litigation involving claims that may get to trial before PTAB has its final written decision,” Waldrop said. “It has had a fairly large impact on IPRs, and there’s been a lot of litigation around trying to get the rule reversed or overturned, unsuccessfully.

“That was great work by the team, and something I’m proud of.”

In the parallel action, Fintiv alleges that Apple’s iPhone, Apple Watch and Wallet app infringe Fintiv’s patent relating to the management of virtual cards stored on mobile devices. Fintiv, Inc. v. Apple Inc., 1:19-cv- 01238-ADA (W.D. Tex., filed Dec. 21, 2018). The trial is set for June 21 before U.S. District Judge Alan Albright.

Waldrop’s rise from humble beginnings in Birmingham, Ala.—as the son of divorced parents and great-grandson of a slave—drives him to lift up other underrepresented minorities. A staunch advocate of diversity, Waldrop leads one of the most diverse IP trial teams in the nation.

“I’m big on promotion, big on internal CLEs, getting outside your comfort zone, and looking for talent wherever it comes from, not just from the same watering holes,” he said. “I’m also very involved in organizations that promote diversity, such as the California Minority Counsel Program and the Minority Corporate Counsel Association, and I’m always living and breathing it, being very mindful that I do a great job of making sure opportunities are distributed fairly, and that people have a fair chance to really develop themselves.”

– Jennifer Chung Klam