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.
Education
- Vanderbilt University (JD)
- George Washington University (BA)
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)
- 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
Recent Insights
Viewpoints
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
News & Press
In this Law360 expert analysis article, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Daniel Weinger reflected on the biggest standard essential patent (SEP) victories of patent owners in 2020.
Events
Mintz Member, Jim Wodarski will be moderating a panel entitled, "Industry Spotlight: IOT, 5G, and Connected Cars."
Jim Wodarski moderated a panel entitled, "International licensing: how to avoid expensive mistakes." at IAM's 5th Annual Patent Licensing conference. The panel covered the significant expansion of multi-jurisdictional licensing deals in both European and Chinese markets.
The 5th Annual IP Dealmakers Forum will bring together a select group of 200 decision-makers at the forefront of the global IP market, including investors, top IP executives, industry experts and thought leaders.
Viewpoints
Key Considerations for Global SEP Litigation - Part 2
November 5, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
The adoption of multiple, standardized technologies looms on the horizon. This presents the challenge of balancing innovator’s intellectual property rights with implementer’s desire for fair access to technology. As more implementers adopt efficient infringement to circumvent this equilibrium altogether, standard-essential patent (“SEP”) licensing disputes have increased.
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Key Considerations for Global SEP Litigation - Part 1
October 30, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Litigation involving standard-essential patents (“SEPs”) is on the rise. The now longstanding and disturbing impact of efficient infringement by recalcitrant implementers is the predominant cause of the increase.
Read more
One Size Does Not Fit All When It Comes to Economic Theories Used to Determine Royalty Rates
July 1, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another. As a litigant, care must be taken when deciding which economic theory to advance—and what facts to rely on—in support of a particular royalty rate. Given the varying and unique nature of disputes, a singular economic approach to determining a royalty rate is impractical and, oftentimes, inappropriate.
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Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier
June 5, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses. Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith.
Read more
ITC ALJ McNamara in Apple-Qualcomm Investigation: Exclusion Orders Are Incentives to Design- Around
May 21, 2019 | Blog | By Michael Renaud, James Wodarski, Kara E. Grogan
In her April 16, 2019 Public Interest Findings, Administrative Law Judge (“ALJ”) McNamara decisively stated that antitrust issues disguised as competitive conditions arguments are not a factor in the International Trade Commission (“ITC”) proceeding between Apple and Qualcomm. See Mobile Electronic Devices II, Inv. No. 337-TA-1093, Analysis and Findings with Respect to the Public Interest, and Recommendation on Remedy and Bond, at 4 (April 16, 2019).
Read more
Commission Reverses Apple Infringement Finding, Thereby Mooting the Public Interest Inquiry...For Now
March 27, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Rithika Kulathila
Yesterday afternoon, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of several actions Qualcomm has brought against Apple both here and abroad.
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FRAND Licensing of Global Portfolios – Who Gets to Set Worldwide Rates?
March 26, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin
A key issue in the licensing of standard essential patents (SEPs) is whether national courts have jurisdiction to determine what constitutes a global fair, reasonable, and non-discriminatory (FRAND) license rate. The Court of Appeal in England recently held that its patent courts have such jurisdiction. In Huawei Technologies Co. Ltd. v Conversant Wireless Licensing SARL, the Court of Appeal affirmed the jurisdiction of the High Court of Justice to try a claim for the infringement of UK-designated European SEPs against Chinese as well as English defendants and to issue an injunction for the unauthorized use of the SEPs at issue. In the process, it also affirmed the High Court’s jurisdiction to determine a worldwide FRAND rate.
Read more
PanOptis’ Recent Victory against Huawei Demonstrates Why an International Enforcement Approach Is Advisable for Standard-Essential Patents
March 21, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
PanOptis Patent Management, LLC (“PanOptis”) was recently awarded enhanced damages and ongoing royalties as a result of Huawei Technology Co. Ltd. (“Huawei”) infringing five of its patents, four of which were alleged to be essential to the 4G LTE technology standard. Despite the successful legal outcome, the size of PanOptis’ cumulative damages award for its standard-essential patents was less than some observers anticipated. This result emphasizes the importance of taking a global enforcement approach—leveraging international fora—to recoup meaningful compensation for standard-essential patents.
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Designing Around a Monopoly: the Public Interest Dispute between Qualcomm and Apple Takes a New Turn
March 12, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Matthew Galica
As we mentioned in December, the International Trade Commission issued a notice to review the Final Initial Determination and Recommended Determination issued by Administrative Law Judge Pender in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), in which, despite finding that a valid patent was infringed and all jurisdictional requirements met, ALJ Pender had recommended that no exclusion order be issued against Apple because such an order would be contrary to the public interest.
Read more
The Tall Tale of the Domestic Industry
March 4, 2019 | Blog | By Michael Renaud, James Wodarski, Marguerite McConihe, Courtney Herndon
There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”), especially for foreign-based companies or non-practicing entities (“NPEs”). This could not be further from the truth. Those in the trenches at the ITC have seen recent trends that show with effective and strategic pre-suit diligence, creative thinking, and experienced counsel, the domestic industry requirement is no bar to a successful investigation.
Read more
News & Press
The Big SEP Victories Of Patent Owners In 2020
December 22, 2020
In this Law360 expert analysis article, Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Daniel Weinger reflected on the biggest standard essential patent (SEP) victories of patent owners in 2020.
What You Need To Know About Biden And IP
November 9, 2020
Mintz Member James Wodarski was quoted in an article published by Law360 on President-elect Joe Biden and his views on intellectual property.
A Critique of Glory Days and How Reports of Anticompetitive Risks of Pools Have Been Greatly Exaggerated
November 4, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog that critiques an article recently published in the University of San Diego Law titled “Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits?,” which criticized patent pools, alleging inefficiencies and anticompetitive risks of pools for standard essential patents.
Counsel Must Educate Juries on US FRAND Rates
November 2, 2020
In Managing IP, Mintz Member James Wodarski was quoted on the U.S. Supreme Court's decision to deny certiorari in TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson and its potential impact on companies’ standard essential patent licensing and litigation strategies.
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Members James Wodarski and Daniel Weinger, and Associate Kara Grogan co-authored an article published by IPWatchdog examining patent pools, an elective market mechanism designed to provide benefits to both innovators and implementers.
DOJ Support Of SEP Injunctions Should Stabilize Licensing
September 24, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud, Member and Co-chair of the firm’s Antitrust Practice Joseph Miller, and Member Daniel Weinger co-authored a Law360 expert analysis article that examined an updated business review letter issued by the U.S. Department of Justice (DOJ)'s Antitrust Division to the Institute of Electrical and Electronics Engineers Inc., which clarified the DOJ's views on licensing and enforcement practices related to standard essential patent (SEP)s.
Michael Renaud, James Wodarski, and Mark Pino have been recognized in the 2020 edition of IAM Strategy 300: The World’s Leading IP Strategists.
Joint Policy Statement and Recent Cases Confirm That Injunctive Relief on SEPs is Available at the ITC
March 19, 2020
Mintz Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members James Wodarski and Andrew DeVoogd co-authored an article published in the February 2020 issue of The Licensing Journal that examined opportunities for remedies including injunctive relief as redress against infringement for standard essential patent (SEP) owners at the U.S. International Trade Commission.
Mintz Member and Chair of the firm's Intellectual Property Division Michael Renaud, Member James Wodarski, and Associate Matthew Galica co-authored an article published by IAM on how policy and case law might affect standard-essential patent (SEP) rights and enforcement in the 2020s.
Fed. Circ.'s FRAND Decision Will Put Spotlight On Juries
December 16, 2019
In a recent Law360 article, Mintz Member Jim Wodarski provided commentary on a decision from the U.S. Court of Appeals for the Federal Circuit in TCL v. Ericsson and addressed how it will affect future standard-essential patent cases.
The PTAB Has Another Appointment With the Federal Circuit + SEPs Have a Little More Bite at the ITC
October 30, 2019
The October 29 edition of the Skilled in the Art newsletter published by Law.com reported that Mintz achieved a favorable Notice of Initial Determination at the U.S. International Trade Commission on behalf of the firm’s client Netlist, Inc., a California-based technology company focused on developing innovative server memory module products, including technology that is essential to certain JEDEC memory standards. Significantly, this is the first time since 2013 that a Section 337 violation has been found based on a standard-essential patent.
SK Hynix Memory Products Infringe Netlist IP, ITC Judge Finds
October 22, 2019
Law360 reported that a U.S. International Trade Commission judge ruled that Korean manufacturer SK Hynix infringed on California-based technology company, and Mintz client, Netlist, Inc.’s standard essential patent related to server memory modules.
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.
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
An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.
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.
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.
Law360 featured a Mintz patent litigation team as “Legal Lions” in its weekly list of the top verdicts for its representation of Elm 3DS Innovations, a patent licensing entity.
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.
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
This in-depth article looks at the hotly-contested and closely-watched patent battle between Qualcomm and Apple. The piece further discusses what potential legal decisions in 2019 could mean for the tech industry moving forward. Mintz Member Jim Wodarski is among the third-party sources quoted providing commentary throughout the piece.
Patent monetization during World War FRAND
October 1, 2018
This column notes that with the legal landscape surrounding SEPs shifting in many countries, it has never been more important to take a global view of patent assertion – but any cross-border litigation strategy needs careful consideration. A team of Mintz intellectual property attorneys including Members Mike Renaud and Jim Wodarski and Associate Rob Moore authored this column.
Is SEP Licensing Up To Standard?
June 4, 2018
This feature article includes commentary from leading intellectual property industry sources to discuss how the standard-essential patents (SEPs) landscape has changed throughout recent years. Members Mike Renaud and Jim Wodarski are quoted among the IP insiders providing insight.
Upcoming decisions will reveal whether the ITC still welcomes standard essential patents
September 1, 2017
Mintz Members and intellectual property attorneys Mike Renaud, Aarti Shah and Jim Wodarski collaborated on an article published by Financier Worldwide Magazine discussing standard-essential patents.
Mintz Scores Decisive Win for Straight Path Before U.S. Court of Appeals for the Federal Circuit
June 29, 2017
The U.S. Court of Appeals for the Federal Circuit found decisively in favor of Mint and client Straight Path IP Group, Inc. in a long-fought battle over three of the licensing firm’s patents. The court upheld a prior 2016 decision by the Patent Trial and Appeal Board.
Jim Wodarski, a Mintz Member, was quoted in a Law360 articleon the Federal Circuit’s affirmation of the Patent Trial and Appeal Board’s (PTAB) decisions upholding three Straight Path IP Group patents – handing the company a win against “attackers,” including Samsung and Cisco.
This feature story notes wireless communications company ParkerVision’s request to lift a pause in its lawsuit with Apple, LG, and Qualcomm over several smartphone patents. James Wodarski, Michael McNamara, Kristina Cary, and Daniel Weinger are representing ParkerVision in the case.
The U.S. International Trade Commission (ITC) has announced it's launching an investigation into whether thermoplastic parts used in certain BMW, Honda, and Toyota vehicle models have infringed five patents owned by Intellectual Ventures LLC.
Fed. Circ. Affirms Nix Of Medical Records IP Under Alice
April 13, 2017
Mintz IP attorneys Michael Renaud, Michael Newman, James Wodarski, and Sandra Badin are among industry sources in this article assessing a Texas ruling that "asserted claims of patent covering medical technology are invalid as abstract and not inventive" under Alice Corp v. CLS Bank International.
Mintz announced a victory before the U.S. Court of Appeals for the Federal Circuit. The court affirmed an Eastern District of Texas ruling from May 2016 that held unpatentable a medical records patent asserted by Preservation Wellness against NextGen Healthcare.
Novel Outcome at the ITC: Patent Claims Invalidated under Alice in the 100-Day Pilot Program
January 3, 2017
In this column, Mintz attorneys James Wodarski, Andrew DeVoogd, Daniel Weinger, and Matthew Karambelas analyze the decision made by the ITC about patent claims that have been negated by Alice Corp v. CLS Bank International in the 100-Day Pilot Program.
Eighty-Four Mintz Attorneys Named 2016 Massachusetts Super Lawyers and Rising Stars
October 18, 2016
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers.
SEPs At The ITC: Guidance From Recent Decision
October 6, 2016
Mintz Boston Members Michael Renaud and James Wodarski, Washington, D.C. Member Aarti Shah, and Boston Associate Adam Rizk authored this Law360 article on the newly-issued ITC statement discounting the idea that an SEP patent owner cannot bring infringement cases before the commission.
A team of intellectual property attorneys – Members James Wodarski and Aarti Shah – authored this Financier Worldwide article discussing the rapid increase seen in general exclusion orders from the U.S. International Trade Commission over the past few years.
A Powerful ITC Tool For Fighting Counterfeits, Knockoffs
September 22, 2016
Mintz Members James Wodarski and Aarti Shah authored this Law360 article highlighting the option that brand, trademark, and design patent owners have when fighting counterfeits and knockoffs of obtaining general exclusion orders from the U.S. International Trade Commission.
Mintz Members Michael Renaud and James Wodarski and Sandra Badin, Special Counsel and Appellate attorney, authored an Intellectual Asset Magazine column on how U.S. owners of standard-essential patents must be creative in their strategizing to protect the value of their rights.
Patent Co. Says Deal With Honda Ends Infotainment Probe
August 22, 2016
This Law360 feature article notes Honda’s removal from the U.S. International Trade Commission’s investigation into several foreign automakers’ “importation of vehicles with infotainment systems that allegedly infringed several patents.”
This article notes that the Patent Trial and Appeal Board (PTAB) upheld claims in a Straight Path IP Group patent matter. The coverage notes that the decision follows a rare reversal by the Federal Circuit that found the PTAB used an incorrect claim construction previously.
This article notes that the Patent Trial and Appeal Board has upheld the validity of two Straight Path patents in Samsung Electronics Co. Ltd.’s review.
Comments Review PTO Defenses in Cuozzo in Supreme Court Case
January 25, 2016
This article notes the opinions of stakeholders commenting on the U.S. Supreme Court’s decision to the handling and review of post-grant proceedings under the America Invests Act.
Mintz Helps Client Achieve Significant ITC Patent Victory
September 04, 2014
Events
Moderator
Moderator
Oct
3
2019
Patent Licensing 2019
IAM
Mission Bay Conference Center at UCSF, 1675 Owens Street, Suite 251, San Francisco
Speaker
Sep
18
2019
The 2nd Annual LF Dealmakers Forum
The Apella, 450 East 29th Street, 2nd Floor, New York
Moderator
Moderator
Speaker
Mar
22
2016
Panelist