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James Wodarski

Member

[email protected]

+1.617.348.1855

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Jim is a seasoned trial lawyer who concentrates his practice on intellectual property litigation. He skillfully represents clients in federal district and appellate courts, including the US Court of Appeals for the Federal Circuit, as well as the International Trade Commission. He handles disputes involving smartphones, core processor circuits, digital imaging software, telecommunications devices, and LED lighting systems, and many other technologies. And he has more than two decades of experience with complex civil litigation, including insurance, securities, and First Amendment matters. He previously served as an assistant district attorney in Massachusetts.

James focuses his practice on patent disputes in the International Trade Commission (ITC), the US Court of Appeals for the Federal Circuit, and Federal District Courts. He has also appeared before the First and Second Circuit courts as part of his appellate work at the state and federal levels. A patent litigator with extensive experience, James has handled disputes involving a variety of technologies, including smartphones, core processor circuits, digital imaging software, telecommunications devices, and LED lighting systems.

A trial lawyer with 20 years of complex civil litigation experience, James has also represented clients in complex business litigation, white collar crime, insurance coverage, federal securities actions, trademark ownership of mass media and literary titles, complex insurance coverage, and the First Amendment.

James returned to Mintz after working as a partner with Pepper Hamilton LLP. He has also served as an assistant district attorney in Hampden County, Massachusetts.

Education

  • Vanderbilt University (JD)
  • George Washington University (BA)

Recognition & Awards

  • Included on the Massachusetts Super Lawyers: Intellectual Property Litigation list (2014 – 2019)
  • 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)

Recent Insights

News & Press

Events

Viewpoints

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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.
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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.
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ITC to Review Controversial Apple-Qualcomm Decision

December 13, 2018 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Marguerite McConihe

As anticipated https://www.mintz.com/insights-center/viewpoints/2231/2018-10-alj-pender-apple-infringes-no-exclusion-order-qualcomm, on December 12, 2018, the International Trade Commission (“ITC”) issued a notice to review the Final Initial Determination and Recommended Determination (“FID”) issued by Administrative Law Judge (“ALJ”) Pender in In the Matter of Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), where ALJ Pender, despite finding that a valid patent was infringed and all jurisdictional requirements met, recommended that no Limited Exclusion Order be issued against Apple because it would be contrary to the public interest.
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Developing Methodologies for Resolving FRAND Disputes

December 6, 2018 | Video | By James Wodarski

Jim Wodarski discusses the global reach of SEP portfolios and the developing worldwide consensus among sophisticated intellectual property courts on methodologies for resolving FRAND disputes, specifically citing the decision in TCL v. Ericsson by a United States District Court.
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ITC Provides Clarity on the Meaning of a Section 337(a)(2) “Article”

October 31, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Marguerite McConihe, Serge Subach

This article examines a recent International Trade Commission decision that opens up the ITC to complainants in an earlier phase of product development.
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ALJ Pender: Apple Infringes, but No Exclusion Order for Qualcomm

October 4, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Robert Moore, Marguerite McConihe

Read about an International Trade Commission in which a judge ruled that Apple infringed a valid Qualcomm patent, but recommended against an exclusion order for Qualcomm.
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International Trade Commission Clarifies Domestic Industry Requirements in Favor of Patent

August 6, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Andrew DeVoogd, Matthew Galica

A recent International Trade Commission decision, Vacuum Cleaning Devices, improves a patent owner’s ability to demonstrate that it possesses a statutorily required “domestic industry” and can therefore obtain relief from the Commission when others infringe its intellectual property. This alert reviews the Vacuum Cleaning Devices ruling, which serves to better align the statutory purpose of the ITC’s domestic industry requirement with contemporary business practices.
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The Patent Act Allows for Full Compensation for All Forms of Infringement

June 22, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.
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Two Supreme Court Patent Opinions and a Memo from the PTO

April 27, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Anthony Faillaci

On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, which upholds the constitutionality of inter partes review, and SAS Institute, Inc. v. Iancu, which requires the Patent Trial and Appeal Board to adjudicate the validity all patent claims challenged in a petition for inter partes review if the Board decides to adjudicate the validity of any claim challenged in that petition.
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ALJ Shaw: ITC is a Viable Forum for Enforcement of SEPs

October 6, 2017 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Robert Moore

The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012 Investigation), provides important guidance on enforcement of standard-essential patents (SEPs) in the ITC. 
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News & Press

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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.
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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. 
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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.
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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.
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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.
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.
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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.
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.
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.
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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.
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.
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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.
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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.
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.
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. 
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.
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.
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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.
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.

Events

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
Nov
7
2018

5th Annual IP Dealmakers Forum

The IP Investment Institute, LLC

New York, NY

Moderator
Sep
20
2017

Patent Licensing 2017

Intellectual Asset Management (IAM)

San Francisco, CA

Speaker
Mar
22
2016

NPE 2016: The Business of Responsible Licensing

Intellectual Asset Management (IAM)

New York City

Panelist
Nov
16
2015

PLI's Patent Litigation 2015

Practising Law Institute

New York City