Jim is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine in its annual IAM 300 publication. In addition to being a seasoned trial lawyer who skillfully represents clients in federal and state courts nationwide, the U.S. International Trade Commission, and U.S. Circuit Courts of Appeal, including the Federal Circuit. Jim leverages this intersection between his sophisticated commercial litigation background and intellectual property experience to advise clients on global licensing and enforcement strategies. Jim is a well-respected voice in the worldwide dialogue concerning standard essential patents (SEPs) and the rapidly evolving landscape of global competition and patent law that impacts SEP value and licensing opportunities.
Jim’s experience includes litigating patent, trade secrets, and trademark cases through trial and appeal. This experience spans a wide range of diverse technologies, from semiconductors, graphics processors, core processors, telecommunications infrastructure, advanced memory modules, quantum dots, LED lighting systems, and medical devices.
A versatile trial lawyer, Jim has more than 25 years of complex civil litigation experience, and has represented clients in a broad spectrum of disputes, including complex business litigation, white collar crime, insurance coverage, federal securities actions, trademark ownership of mass media and literary titles, complex insurance coverage, and First Amendment issues. Before entering private practice, he also served as an assistant district attorney in Hampden Country, Massachusetts.
- Vanderbilt University (JD)
- George Washington University (BA)
Federal Circuit Appeals
- Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC, et al, 2016-2193, 2016-2194, 2016-2195 (Fed. Cir.) - Successfully argued at the Court of Appeals for the Federal Circuit to affirm an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against long-time client NextGen Healthcare. Mintz also argued on behalf of co-appellees Allscripts Healthcare Solutions Inc. and Epic Systems Corp. NextGen Healthcare provides electronic health record, financial, and health information exchange solutions for myriad healthcare organizations and the infringement allegations threatened “Patient Portal,” a key component of the company’s service.
- Straight Path IP Group, Inc. v. Sipnet EU S.R.O, 2015-1212, (Fed. Cir.) - Represented Straight Path IP in successfully appealing to the Court of Appeals of the Federal Circuit (CAFC) the adverse result of an inter partes review handled by another firm. The IPR decision canceled all challenged claims of Straight Path’s US Patent No. 6,108,704. In the Straight Path IP Group, Inc. v. Sipnet EU SRO appeal, the CAFC for the first time completely reversed an adverse IPR decision, remanding the matter for further proceedings under the correct construction advocated by Mintz and Straight Path.
International Trade Commission
- Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052) – Currently representing complainant in this ITC investigation, and in parallel Federal District Court cases.
- Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) – Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
- Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) – Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
- Certain Communications or Computing Devices and Components Thereof (337-TA-925) – Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company, Enterprise System Technologies, S.A.R.L. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
- Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.
- Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Apple, LG, Research in Motion, Samsung, and Sony.
- Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) – Represented the complainant (plaintiff) that makes LED lighting systems for use in film and TV production, at the International Trade Commission. The ITC handed down its Final Initial Determination of infringement on September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO) against respondents based in both China and the United States. The result in this case is particularly notable because it is rare for the ITC to issue a GEO due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.
- Certain Electronic Imaging Devices (337-TA-726) - Represented complainant in this three-patent ITC case. Filed in June 2010 against converged device manufacturers and focused on digital camera technology found in cell phones, laptop computers, and personal digital assistants, the matter was fully settled in April 2011. The result was successful licensing programs with three out of four respondents, among which are recognized leaders in the electronics device manufacturing space – HTC, LG, Research in Motion, and more.
Federal District Court
- Copan Italia SpA et al v. Puritan Medical Products Company LLC et al, 1:18-cv-00218 (D. Me) - Representing Copan Italia in asserting patent infringement and unfair competition claims against our client’s largest competitor, in a case involving the use of flocking technology (common in the textile industry) in the production of swabs to be used for the collection of biological specimen.
- Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., et al., (E.D. Tex, 2:20-cv-00038-JRG) - Representing Nanoco Technologies, Ltd. v. Samsung Electronics Co., Ltd. et al in a patent infringement case involving the synthesis of quantum dots, and use of quantum dot film resins in electronic display devices. Jury selection is scheduled for October 4, 2021.
- CellInfo, LLC v. American Tower Corporation, et al., (D. Mass., 1:18-cv-11250) – Successfully defended American Tower Corporation in a trade secrets action in arbitration and federal district court.
- New England Biolabs, et al. v. Enzymatics, Inc. (D. Mass, 1:12-cv-12125) – Defended Enzymatics against claims of trade secrets theft and patent infringement brought by three plaintiffs in a case involving nucleic acid ligands. Resulted in favorable settlement for our client.
- The Coca-Cola Company v. Johanna Foods, Inc. (N.D. Ga. 1:10-cv-03081) - Represented a major regional chilled-beverage supplier in defending design patent and trade dress infringement allegations by an international beverage supplier regarding clear plastic PET product packaging in the Northern District of Georgia. Case settled favorably.
- MEI, Inc. v. JCM American Corp., et al (DNJ 1:09-cv-00351) – Represented a bill validator supplier adverse to its principal competitor in the Federal District of New Jersey and in the Court of Appeals for the Federal Circuit regarding patents directed to antifraud technology.
- Netlist Inc. v. SK hynix Inc., et al., (W.D. Tex, 6:20-cv-194-ADA, 6:20-cv-525-ADA) - Represent plaintiff Netlist, Inc. in asserting three patents essential to JEDEC DDR4 RDIMM and LRDIMM standards against the Korean-based memory company, SK hynix in the Western District of Texas. Trial is scheduled for October of 2021.
Recognition & Awards
- Included on the Massachusetts Super Lawyers: Intellectual Property Litigation list (2014 – 2020)
- Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2017-2018, 2021)
- Identified in the IAM Patent 1000, a listing of the “World’s Leading Patent Practitioners” (2020)
- Selected for the 2020 edition of IAM Strategy 300 – The World's Leading IP Strategists
December 7, 2020 |Blog
News & Press
December 7, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
The Art of An SEP War: A Chinese IP Court’s Recent Use of Anti-Suit Injunction Invites A Battle that It Likely Won’t Win
October 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger
September 14, 2020 | Blog | By Michael Renaud, James Wodarski, Joseph Miller, Daniel Weinger, Kara E. Grogan
August 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Matthew Galica
The Standard Does Rule Them All: Federal Circuit Panel Finds Standard Sufficient to Prove Infringement for SEP Compliant Products
August 5, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Kara E. Grogan
IT TAKES TWO TO TANGO: The German Federal Supreme Court Acknowledges That Infringer Hold-Out is a Real Problem
July 16, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
The Standard May Rule Them All: Federal Circuit Panel Appears Prepared to Find Standard Is Sufficient to Prove Infringement for SEP Compliant Products
July 9, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Kara E. Grogan
Actions Speak Louder Than Words: Germany’s Highest Court tells SEP implementers that simply saying that you are willing to license is not enough, and hold-out will not be tolerated
May 12, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
January 6, 2020 | Blog
Out with the old, and in with the new: joint policy statement and recent cases confirm that injunctive relief on standard-essential patents is available at the ITC
December 23, 2019 | Blog | By Michael Renaud, James Wodarski, Andrew DeVoogd, Matthew Galica
News & Press
December 22, 2020
November 9, 2020
A Critique of Glory Days and How Reports of Anticompetitive Risks of Pools Have Been Greatly Exaggerated
November 4, 2020
November 2, 2020
September 24, 2020
Joint Policy Statement and Recent Cases Confirm That Injunctive Relief on SEPs is Available at the ITC
March 19, 2020
December 16, 2019
October 30, 2019
October 22, 2019
The article noted that the Mintz team representing Netlist includes Member and Chair of the Intellectual Property Division Michael Renaud, along with Members James Wodarski, Drew DeVoogd, Steve Akerley, Aarti Shah, and Associates Kristina Cary, Matthew Galica, and Tiffany Knapp.
September 18, 2019
The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
In a precedential opinion, the Federal Circuit affirmed decisions upholding the validity of nearly a dozen Elm patents on semiconductor technologies that accused infringers challenged at the Patent Trial and Appeal Board.
The Mintz team representing Elm includes Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members William Meunier, James Wodarski and Michael Newman, Special Counsel Sandra Badin, and Associates Kevin Amendt and Matthew Galica.