professionalIMG

James Wodarski

Member vCard


Education

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

Bar Admissions

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

Representative Matters

  • Victory at CAFC: PTAB Decision Reversed and Remanded — Presented the successful oral argument at the Court of Appeals for the Federal Circuit (CAFC) on behalf of appellant in Straight Path IP Group, Inc. v. Sipnet EU SRO.  The matter resulted in the CAFC for the first time completely reversing and remanding an adverse inter partes review decision. The IPR decision, resulting from a hearing handled by another firm, had cancelled all challenged claims of Straight Path’s US Patent No. 6,108,704.

Trade Secrets Litigation

  • New England Biolabs et al v. Enzymatics, 1:12-cv-12125 (D. Mass) – 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.
  • Siemens Information And Communication Network, Inc., v. Qtera Corporation, et al., CL-99-12321 (Palm Beach County, Florida) – Represented defendant, an optical networks equipment manufacturer started by ex-Siemens Information & Communications Networks (SICN) employees.  After Nortel announced its agreement to purchase Qtera, SICN sued Qtera and its founders for trade secret theft.
  • 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.

International Trade Commission

  • Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) Represented owner of portfolio of graphics processing and microprocessor patents 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. 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 Levin 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 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.
  • Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) Represented California-based complainant (plaintiff) and its UK parent, companies that make 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 (defendants) 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. It is much more common for complainants to seek and receive a Limited Exclusion Order from the court 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 Electronic Devices, including Handheld, Wireless Communications Devices (337-TA-667) Represented complainant in three-patent ITC case and in parallel Federal District Court cases. Filed in December 2008, the cases were settled as to all respondents by May 2010 and resulted in successful licensing agreements with each, including some of the largest and most recognized names in the converged device space – HTC, Panasonic, Research in Motion, and more.
  • Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) Represented owners of the patent portfolio of the former Silicon Graphics 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.

Federal District Courts

  • New England Biolabs Inc. et al, v. Enzymatics, Inc. (D. Mass. – 1:12cv12125) Represented a defendant in patent litigation related to nucleic acid ligand inhibitors to DNA polymerase. Case pending.
  • The Coca-Cola Company v. Johanna Foods, Inc. (N.D. Ga. – 1:10cv3081) 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.
  • Japan Cash Machine Co. Ltd. et al v. MEI, Inc. (D. N.J. - 1:09cv351)  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.

Recognitions & Awards

  • Massachusetts Super Lawyers: Intellectual Property Litigation (2014 – 
    2016)