Richard G. Frenkel

Frenkel secured a major victory for messaging service WhatsApp Inc. in the run-up to the company's acquisition by Facebook Inc.

He convinced a Virginia judge that any lawsuits brought against his client needed to be filed in California, where the company is based, rebuffing opposing counsel's stance that an app maker could be sued in any state in which its services were used. Intercarrier Communications LLC v. WhatsApp Inc., 12-776 (E.D. Va., filed Oct. 26, 2012).

The case is now pending in the Northern District of California.

Frenkel also secured the invalidation of a patent and dodged a series of claims related to a second patent at issue in an infringement lawsuit against Western Digital.

The case eventually settled. Guzik Technical Enterprises, Inc. v. Western Digital Corp., 11-03786 (N.D. Cal., filed Aug. 1, 2011).

Frenkel persuaded U.S. District Judge John A. Gibney that the patent's description of a storage device that writes data "over a relatively short time" was vague to the point of being indefinite, thus invalidating the patent.

"The plaintiffs tried to argue the judge could correct what they called a 'typographical error' in the claim," he said.

Frenkel also successfully argued before proceeding to trial that Western Digital had not willfully infringed the patent. A finding of willfulness could have tripled any damages.

"Most courts have done it where the jury decides first. We were able to convince this judge to actually decide the [willfullness] prong first, which is unusual."

After whittling down the claims until only about a quarter of the original 62 remained, Western Digital reached a settlement on the eve of trial.

- Joshua Sebold