Jonathan K. Waldrop

Intellectual Property Litigation

Two developments shook up patent litigation in the last couple of years and Waldrop played a part in both of them.

One is the booming patent docket of Judge Alan D. Albright at the Western District of Texas courthouse in Waco. Albright took the bench in 2018 and now handles close to a quarter of all new U.S. patent litigation. Waldrop was plaintiff’s counsel in the judge’s very first jury trial back in October 2020. MV3 Partners v. Roku, 6:18-cv- 00308 (W.D. Tex., filed Oct. 16, 2018).

He said it drew a great deal of attention from the patent bar as a sort of model for how Albright would handle trials. “We got to trial very quickly,” he said. Even though his client lost at trial, “it was just a wonderful experience,” Waldrop said.

The other major event was the Patent Trial and Appeal Board’s precedent-setting decision that it has discretion to decline to review a patent because a court was also reviewing the same patent. Waldrop represented the winner, Fintiv Inc. Apple Inc. v. Fintiv, Inc., IPR2020-00019 (PTAB, decided March 20, 2020).

“Our team was responsible for that PTAB ruling,” he said. He also represents the company in the parallel District Court case, which is set for trial before Albright in June. Fintiv Inc. v. Apple Inc., 1:19-cv-01238 (W.D. Tex., filed Dec. 21, 2018).

Waldrop said the PTAB’s decision sets out “a wise and reasonable framework” for when the board may choose not to rule on a patent’s validity as a way to avoid inconsistent results if a district court is close to deciding validity as well.

Waldrop has represented defendants in patent litigation but now mostly represents plaintiffs, such as WSOU Investments, one of the largest patent assertion companies.

He won an important ruling for WSOU in September when the Federal Circuit held his client had properly served its infringement action on a Chinese company using the federal rules rather than the burdensome Hague Convention process. WSOU Investments LLC v. OnePlus Technology, 2021-165 Fed. Cir., decis. Sept.10, 2021).

“That’s been a big development,” he said.

– Don DeBenedictis