Joshua W. Budwin is a principal in the Austin office of McKool Smith.
Joshua’s practice involves the areas of patent, copyright, and trademark infringement as well as misappropriation of trade secrets and complex commercial litigation. His practice has included actions in Federal District Court as well as in the United States International Trade Commission (ITC).
Prior to joining McKool Smith, Joshua clerked at Volpe and Koenig, PC (Philadelphia) and Stief, Waite, Gross, Sagoskin, and Gilman (Newtown, Pennsylvania).
While in college at Rensselaer Polytechnic Institute, Joshua completed the full four-year (eight semester) engineering curriculum in three years (six semesters).
- In the Matter of Certain Digital Video Receivers, Broadband Gateways, and Related Hardware and Software Components (No. 337-TA-1158). Representing TiVo subsidiary Rovi adverse to Comcast in an International Trade Commission investigation involving numerous patents related to interactive television program guides, DVR technology, and related technologies.
- Certain Digital Video Receivers and Related Hardware and Software Components, Inv. (No. 337-TA-1103). Representing TiVo subsidiaries Rovi and Veveo adverse to Comcast in an International Trade Commission investigation involving numerous patents related to interactive search, interactive television program guides, DVR technology, and related technologies. Following a multi-day hearing, the ALJ issued an Initial Determination finding a violation of Section 337. After further briefing, the Commission affirmed the ALJ’s finding of a violation of Section 337 and also issued a Limited Exclusion Order and Cease & Desist Order against Comcast and its set-top box suppliers. Representation also includes companion cases styled as Rovi Guides, Inc., et al v. Comcast Corporation, et al, Case No. 2:18-cv-00253 (CDCA) and Veveo, Incorporated v. Comcast Corporation et al, Case No. 1:18-cv-10056 (D.Mass.).
- Zenimax Media Inc. and ID Software LLC v. Samsung et al. (NDTX). Represented Zenimax and ID software in a trade secret misappropriation and copyright infringement case related to Samsung’s “Gear VR” Virtual Reality headset and related technologies.
- Certain Digital Video Receivers and Hardware and Software Components Thereof (337-TA-1001) – Successfully represented TiVo subsidiary Rovi adverse to Comcast in an International Trade Commission investigation involving numerous patents related to interactive television program guides, DVR technology, and related technologies. Following a multi-day hearing, the ALJ issued an Initial Determination finding a violation of Section 337. After further briefing, the Commission affirmed the ALJ’s finding of a violation of Section 337 and also issued a Limited Exclusion Order and Cease & Desist Order against Comcast and its set-top box suppliers. This representation also included appearing before the IP Branch of Customs and Border Protection in a Part 177 proceeding related to enforcement of the exclusion order issued by the International Trade Commission. The Federal Circuit then issued a precedential decision affirming Rovi’s ITC win (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1450.Opinion.3-2-2020_1543049.pdf). The Supreme Court denied Comcast’s petition for cert (https://www.supremecourt.gov/orders/courtorders/062220zor_mjn0.pdf
- Rovi Guides, Inc. et al v. Comcast Corporation et al, No. 1: 16-cv-09278-JPO (SDNY) and Rovi Guides, Inc. v. Comcast Corporation, et al, No. 1: 16-cv-09826-JPO (SDNY). Representing Tivo subsidiary Rovi adverse to Comcast in a patent infringement action, and its related declaratory judgment action, involving claims of breach of contract, license, implied license as well as infringement of numerous patents related to interactive television program guides, DVR technology, and related technologies.
- Droplets Inc. v. Sears Holding Corp. and Overstock.com Inc. Successfully represented Droplets in obtaining a substantial jury verdict in a patent infringement lawsuit alleging that Sears and Overstock directly and indirectly infringed three Droplets’ patents which cover technology that allows access to graphic user interfaces over both the Internet and private client/server networks. The case settled following the jury verdict.
- Ericsson v. Samsung. Successfully represented Ericsson in multiple patent infringement disputes against Samsung in both the International Trade Commission and in various district court cases related to LTE, WCDMA, GSM/GPRS/EDGE, and 802.11 wireless technology and FRAND/RAND standard issues.
- Versata Software, Inc. et al. v. SAP AG and SAP America Inc. Successfully represented Versata in obtaining a substantial jury verdict in a patent infringement lawsuit alleging infringement by SAP of Versata patents related to pricing software. That verdict (along with pre- and post-judgment interest) was affirmed by the Federal Circuit on appeal. The U.S. Supreme Court denied cert.
- Medtronic Vascular Inc. Medtronic Vascular Inc. v. Boston Scientific et al. Joshua and others from McKool Smith won a substantial jury verdict on behalf of Medtronic in a patent infringement lawsuit alleging infringement of Medtronic patents covering the design of balloon angioplasty catheters and polymers used to build those catheters. This lawsuit settled after judgment was entered by the district court.
- Medtronic Vascular Inc. Board of Regents, University of Texas System v. Setagon, Inc. et al. Part of the team that represented Medtronic in a dispute involving patent applications for stent devices with porous layers for eluting therapeutic agents. The University of Texas alleged breach of contract, fraud, conversion, misappropriation of trade secrets, misjoinder of inventors, and correction of inventors. The case settled favorably for Medtronic, including the dismissal of all of the University of Texas's claims.
- Ericsson Inc., Telefonaktiebolaget LM Ericsson, Sony Ericsson Mobile Communications AB, and Sony Ericsson Mobile Communications (USA): In the Matter of: Certain Wireless Communication Equipment, Articles Therein, and Products Containing the Same (Inv. No. 337-TA-577) before the International Trade Commission (ITC). Involving numerous patents related to hardware and software for UMTS (i.e. 3G or WCDMA) wireless telecommunication devices, including wireless infrastructure equipment, cellular telephones, and error-control coding used therein.
- Ericsson Inc., Telefonaktiebolaget LM Ericsson, Sony Ericsson Mobile Communications AB, and Sony Ericsson Mobile Communications (USA): (E.D. Texas). Involving numerous patents related to hardware and software for UMTS (i.e. 3G or WCDMA) wireless telecommunication devices including wireless infrastructure equipment and cellular telephones.
- Nortel Networks Inc.: Ciena Corp. v. Nortel Networks, et. al. (E.D. Texas). Represented Nortel in a matter involving multiple patents related to hardware and software for long-haul and metro WDM (wavelength division multiplexed) fiber optic networks and associated network equipment including multiplexers, demultiplexers, service channels, and error-control coding used therein.
Rankings & Honors
- Recognized by Benchmark Litigation as a "Future Star" (2022)
- McKool Smith was named the 2020 " Litigation Department of the Year-Intellectual Property" by Texas Lawyer. The recognition was based in part on Mr. Budwin's work on behalf of Tivo subsidiary Rovi. Three separate ITC victories were secured in its long-running dispute with Comcast, including a Federal Circuit win affirming the ITC’s decision that Comcast violated Section 337 of the Tariff Act by importing set-top boxes that infringe two Rovi patents. The Federal Circuit’s ruling left intact the ban on Comcast’s importation of infringing set-top boxes. The Supreme Court later denied Comcast’s cert petition. On April 23, 2020, in a second Investigation, the ITC upheld an Initial Determination (ID) by the Administrative Law Judge (ALJ) holding Comcast set-top boxes also infringe an additional Rovi patent. Finally, in an ID issued on July 28, in a third Investigation, the ALJ found that Comcast infringed two more Rovi patents and again recommended that Comcast be barred from importing set-top boxes that infringe these patents.
- Recognized as a "Rising Star" by Texas Lawyer, 2018-2020
- Recognized as a leading lawyer in Patent Litigation by The Legal 500, 2021
- McKool Smith was recognized as a Law360 “Trial Group of the Year” for 2017, based in part on Mr. Budwin’s work on behalf of Tivo subsidiary Rovi. As noted in the feature “McKool Smith also helped TiVo subsidiary Rovi Corp. score a big win as an administrative law judge with the U.S. International Trade Commission agreed in May that Comcast Corp. had infringed two of its patents for remote video recording and interactive television guide technologies. The magnitude of the win was underscored by the fact that it sent TiVo shares spiking nearly 18 percent on the day the ITC announced its initial ruling in the case.”
- Named a Law360 "Rising Star" for outstanding achievements in intellectual property litigation, 2015
- Named a Texas "Rising Star" by Super Lawyers, 2009-2020
Media & Events
J.D., Temple University Beasley School of Law, 2005
- Managing Editor, Temple University Environmental Law & Technology Journal
- Albert M. Cohen Memorial Award Recipient
- Faculty Law Scholarship Recipient
- President of the Student Bar Association (SBA)
B.S., cum Laude, Rensselaer Polytechnic Institute, 1999-2002
- State of Texas
- The U.S. District Courts for the Northern, Southern, Eastern, and Western Districts of Texas
- The U.S. Court of Appeals for the Federal Circuit
- Texas Bar Association
- Travis County Bar Association
- Texas Young Lawyers Association
- Austin Intellectual Property Law Association
- American Bar Association