Jim is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine in its annual IAM 300 publication. He skillfully represents clients in complex IP cases in federal district courts, the International Trade Commission, appellate courts, including the US Court of Appeals for the Federal Circuit, and in arbitrations. Jim is also experienced with sophisticated commercial litigation, and leverages that background along with his 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.
Recent litigation highlights include a full defense jury verdict on behalf of Princeton CarbonWorks, an emerging company defending itself against the second largest player in the space, where Jim served as lead trial counsel, as well as a $150 million settlement for client Nanoco Technologies adverse to Samsung Electronics.
According to the editors of IAM Magazine in its "Patent 1000" publication, James Wodarski is “a leading light on SEPs” and “also brings the heat in ITC matters”.
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.
Jim is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine in its annual IAM 300 publication. He skillfully represents clients in complex IP cases in federal district courts, the International Trade Commission, appellate courts, including the US Court of Appeals for the Federal Circuit, and in arbitrations. Jim is also experienced with sophisticated commercial litigation, and leverages that background along with his 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.
Experience
Federal District Court
- SRAM, LLC v. Princeton Carbon Works Inc., 9:21-cv-80581 (S.D. Fla) – Represented defendant Princeton CarbonWorks (PCW) in bet-the-company litigation, achieving a complete jury trial victory in the Southern District of Florida. SRAM, the second largest bicycle component manufacturer in the world, sued on two patents relating to high-end carbon fiber bike wheels and sought to put PCW out of business. After a two-week trial in February 2023, Mintz persuaded a nine-person jury to reach a defense verdict of no infringement on either patent, and no damages.
- Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd. et al, E.D. Tex, (2:20-cv-00038) - Successfully secured a $150 million settlement for Nanoco Technologies, Ltd., a British nanotechnology company and world leader in the development and manufacture of cadmium-free quantum dots and other nanomaterials. This settlement put an end to all global litigation between Nanoco and Samsung.
- 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.
- 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.
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 Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same (337-TA-1279) - Representing Copan Italia and Copan Industries as complainants in the International Trade Commission, asserting patent infringement claims against global competitors in a case involving the use of flocking technology (common in the textile industry) in the production of biological specimen collection swabs.
- Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (337-TA-1052) – Represented complainant, owner of an innovative electric motor patents with wide applications in the automotive industry, in this ITC investigation and in related 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.
- Certain Portable Communication Devices (337-TA-827) - Represented complainant in the ITC and as plaintiff in multiple parallel District of Delaware cases. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and more. Cases were filed in December 2011 and settled in May 2012.
Trade Secrets Litigation
- CellInfo, LLC v. American Tower Corporation, et al., (D. Mass., 18-cv-11250) & (AAA Case 01-21-0002-2206): After a weeklong arbitration hearing before the American Arbitration Association, achieved victory in favor of client American Tower “on every cause asserted against it” by the claimant, CellInfo LLC, after nearly five years of litigation that also included the District of Massachusetts and the First Circuit Court of Appeals. CellInfo alleged, among other things, trade secret misappropriation of software, which the Arbitrator ultimately rejected and ordered CellInfo to pay nearly $6 million in attorneys’ fees and costs to American Tower, the prevailing party under the operative contract.
- Railrunner N.A., Inc. v. Virgil E. Duncan and Duncan Family, LLC, et al., 00-3003 (Middlesex Superior Court) – Represented the plaintiff against its original founder and ousted-CEO in bringing a trade secret complaint related to the founder’s attempted use of trade secrets concerning to the company’s intermodal rail technology. It involved federal court/state court, and arbitration proceedings.
viewpoints
Apple Backs Down: Commits to Take Global FRAND License to Avoid Exile from UK Market
November 5, 2021| Blog|
Is This Seat Taken? A Chinese IP Court Proclaims Its Authority to Declare Global FRAND Terms
December 7, 2020| Blog|
DOJ to IEEE: Yes, Injunctive Relief Should Be Available for SEPs, and Stop Saying Otherwise
September 14, 2020| Blog|
THE SEP WORLD IN BALANCE: UK Harmonizes with Germany’s Rejection of Implementer Hold Out
August 26, 2020| Blog|
Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020| Blog|
News & Press
Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, and James Wodarski have been named to the 2024 IAM Strategy 300: The World’s Leading IP Strategists list.
Mintz IP Practice Recognized in 2024 IAM Patent 1000
June 18, 2024
Our Intellectual Property Practice earned national recognition in the 2024 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with four firm-wide rankings and 14 individual attorney recommendations, including a gold ranking for Intellectual Property Chair Michael Renaud.
BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report.
BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, Adam Samansky, Daniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.
How IP Lawyers Make Law Firm Referrals A Win Win
September 8, 2023
Managing IP interviewed Member James Wodarski about the criteria that is used when referring US work to foreign counsel.
BOSTON– Mintz’s award-winning Intellectual Property (IP) Practice again earned national recognition in the 2023 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with three firm-wide rankings and 10 attorneys received a total of 11 individual recommendations.
BOSTON – Mintz has been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2023 ITC Intelligence Report.
Mintz has secured a significant and complete defense verdict for client Princeton CarbonWorks, Inc. in the U.S. District Court for the Southern District of Florida. The Connecticut-based bicycle wheel maker was accused of infringing two patents by competitor and industry giant SRAM, LLC.
Mintz Guides Nanoco Group in $150M Patent Litigation Settlement
February 03, 2023
Mintz secured a $150 million settlement for Nanoco Group plc in the company’s patent infringement litigation against Samsung Electronics Co. Ltd. and Samsung Electronics America Inc. Mintz Member Michael Newman led a team that represented the maker of cadmium-free quantum dots and other nanomaterials in a federal district court in Texas and before the US Patent and Trademark Office.
BOSTON- Six attorneys from Mintz have been recognized in the 2023 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
Six Mintz Attorneys Named To IAM Strategy 300 List Of Leading IP Strategists
September 09, 2022
Best Lawyers® recognized 108 firm attorneys in the 2023 edition of The Best Lawyers in America©. Notably, two Mintz attorneys – Poonam Patidar and Scott M. Stanton – received 2023 “Lawyer of the Year” awards, and 28 firm attorneys were included in the inaugural edition of Best Lawyers: Ones to Watch.
Fed. Circ. Upholds ITC Infringement Finding On Milk Patent
September 20, 2021
Federal Circuit Affirms ITC Victory for Glycosyn
September 17, 2021
The Big SEP Victories Of Patent Owners In 2020
December 22, 2020
What You Need To Know About Biden And IP
November 9, 2020
A Critique of Glory Days and How Reports of Anticompetitive Risks of Pools Have Been Greatly Exaggerated
November 4, 2020
Counsel Must Educate Juries on US FRAND Rates
November 2, 2020
DOJ Support Of SEP Injunctions Should Stabilize Licensing
September 24, 2020
Joint Policy Statement and Recent Cases Confirm That Injunctive Relief on SEPs is Available at the ITC
March 19, 2020
Fed. Circ.'s FRAND Decision Will Put Spotlight On Juries
December 16, 2019
The PTAB Has Another Appointment With the Federal Circuit + SEPs Have a Little More Bite at the ITC
October 30, 2019
SK Hynix Memory Products Infringe Netlist IP, ITC Judge Finds
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.
PTAB Says Mass. Biotech's Milk Patent Ineligible For Review
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.
Qualcomm and Apple Playing With Fire in Lawsuits
November 19, 2018
Patent monetization during World War FRAND
October 1, 2018
Is SEP Licensing Up To Standard?
June 4, 2018
Upcoming decisions will reveal whether the ITC still welcomes standard essential patents
September 1, 2017
Mintz Scores Decisive Win for Straight Path Before U.S. Court of Appeals for the Federal Circuit
June 29, 2017
Fed. Circ. Affirms Nix Of Medical Records IP Under Alice
April 13, 2017
Novel Outcome at the ITC: Patent Claims Invalidated under Alice in the 100-Day Pilot Program
January 3, 2017
Eighty-Four Mintz Attorneys Named 2016 Massachusetts Super Lawyers and Rising Stars
October 18, 2016
SEPs At The ITC: Guidance From Recent Decision
October 6, 2016
A Powerful ITC Tool For Fighting Counterfeits, Knockoffs
September 22, 2016
Patent Co. Says Deal With Honda Ends Infotainment Probe
August 22, 2016
Comments Review PTO Defenses in Cuozzo in Supreme Court Case
January 25, 2016
Mintz Helps Client Achieve Significant ITC Patent Victory
September 04, 2014
Events & Speaking
Patent Licensing 2019
IAM
Mission Bay Conference Center at UCSF, 1675 Owens Street, Suite 251, San Francisco
The 2nd Annual LF Dealmakers Forum
The Apella, 450 East 29th Street, 2nd Floor, New York
Jim is recognized as one of the World’s Leading IP Strategists by Intellectual Asset Magazine in its annual IAM 300 publication. He skillfully represents clients in complex IP cases in federal district courts, the International Trade Commission, appellate courts, including the US Court of Appeals for the Federal Circuit, and in arbitrations. Jim is also experienced with sophisticated commercial litigation, and leverages that background along with his 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.
Recognition & Awards
IAM Strategy 300: The World's Leading IP Strategists (2020 – 2024)
Ranked by Patexia among the Most Active ITC Attorneys Representing Complainants (2024)
Ranked by Patexia among the Best Performing ITC Attorneys Representing Complainants (2024)
IAM Strategy 300: Global Leaders (2022 - 2024)
IAM Patent 1000 “World’s Leading Patent Practitioners” (2020 - 2024)
Recognized by The Legal 500 United States for Intellectual Property: Patent Litigation - International Trade Commission (2017 - 2018, 2021)
Included on the Massachusetts Super Lawyers: Intellectual Property Litigation list (2014 – 2020)