Craig Countryman is a Principal in the Southern California office of Fish & Richardson and was named a 2016 Rising Star by Law360, was named to the “Top 40 Under 40” lists in both the Daily Journal and the San Diego Daily Transcript, and was distinguished as a Law360 2016 MVP for Appellate. His practice centers on complex legal analysis and writing, particularly case-dispositive summary judgment, JMOL, and Federal Circuit briefs. He also has extensive case-management experience in patent cases involving a range of technologies, including glaucoma drugs, polymer processing additives, spinal implants, coronary guidewires, power supply controller chips, network security, and computer backup software. Craig has led the briefing in over 25 Federal Circuit and Supreme Court appeals, including the recent Halo Electronics case, where Craig and his colleagues convinced the Supreme Court to revise the standard for enhanced damages in patent cases. He has extensive experience in taking over cases after trial, selecting the best legal issues for appeal, and framing them in a persuasive manner. Craig writes frequently on a variety of patent law topics and has published over 25 articles and dozens of posts of Fish’s litigation blog. Before joining Fish, Craig was a chemist and developed a novel synthesis of the anti-inflammatory drug ketorolac using a stereoselective, organocatalytic cycloaddition reaction as the main step.
Halo Electronics Inc. v. Pulse Electronics, Inc.. – Counsel for Halo Electronics, a family-run business, in a long-running patent case related to packaging for surface mount magnetic components used in electronics products. In November 2012, a jury found defendant Pulse Electronics liable for willful infringement on three Halo patents, confirmed the patents’ validity, and awarded past damages. At that time, five other competitors had licensed the Halo patent portfolio. The Federal Circuit since affirmed the jury verdict of liability but set aside the willful finding, reported at 769 F.3d 1371 (Fed. Cir. 2014). Halo subsequently convinced the Supreme Court to vacate the Federal Circuit’s treatment of willfulness and set a new standard for enhanced damages in patent cases, reported at 136 S. Ct. 1923 (2016).
Power Integrations, Inc. v. Lee — Obtained vacatur of the Patent Office’s rejection in an ex parte reexamination of Power Integrations’ patent to a novel circuit used to reduce electromagnetic interference generated by controller chips that are incorporated into power supplies. Reported at 797 F.3d 1318 (Fed. Cir. 2015).
Storer v. Clark – Counsel for Gilead Sciences, Inc. in a Federal Circuit appeal from an interference that awarded priority to Gilead for patents and applications claiming use of 2’-methyl, 2’-fluro nucleosides to treat Hepatitis C virus. Obtained an affirmance of the PTO’s judgment in a precedential opinion.
Home Semiconductor Corp. v. Samsung Electronics Co. – Counsel for Samsung in a Federal Circuit appeal from a favorable inter partes review decision in which the PTO invalidated a patent related to a manufacturing technique for semiconductor chips. Obtained summary affirmance of the PTO’s decision under Federal Circuit Rule 36.
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc. – Appellate counsel for Power Integrations in a case involving patents of both parties to various circuitry used in controller chips for electrical chargers. Obtained reversal of a jury’s infringement finding against Power Integrations and secured a JMOL of non-infringement. Also obtained a decision sustaining the validity of two key Power Integrations patents and a determination that PI’s evidence was sufficient to sustain a jury verdict of inducement against Fairchild. Opinion reported at 843 F.3d 1315 (Fed. Cir. 2016).
Williamson v. Citrix Online, LLC – Appellate counsel for Citrix and Microsoft. Obtained summary affirmance of a district court’s decision invalidating a patent to a distributed system for online education under 35 U.S.C. § 101, as it preempted long-standing abstract principles for teaching.
Allergan v. Sandoz et al. – Counsel for Allergan in a Hatch-Waxman case involving the sight-saving glaucoma drug LUMIGAN® .01%. Obtained a favorable claim construction, and, after a five-day bench trial, obtained a finding that the patents were infringed and valid. Led the Federal Circuit briefing and obtained an affirmance on all issues, reported at 796 F.3d 1293 (Fed. Cir. 2015).
Medtronic, Inv. v. NuVasive, Inc. (Fed. Cir.) — Counsel for NuVasve in a Federal Circuit appeal from an inter partes review in which the PTO confirmed the patentability of NuVasive’s claims to a method of lateral, trans-psoas spinal surgery using a variety of surgical tools. Obtained summary affirmance of the PTO’s decision under Federal Circuit Rule 36.
Warsaw Orthopedic, Inc. v. NuVasive, Inc. (Fed. Cir.) — Counsel for NuVasive in a Federal Circuit appeal in a patent infringement case involving spinal implant, retractors, and nerve-monitoring systems. Obtained vacatur of a $101 million judgment and ongoing royalty against NuVasive, because the Federal Circuit determined that Warsaw was not entitled to lost profits, which were the bulk of the damages award. Also obtained affirmance of an infringement judgment against Medtronic (Warsaw’s sister company) on a NuVasive patent. Reported at 778 F.3d 1365 (Fed. Cir. 2015).
St. Jude Medical v. Volcano Corp. (Fed. Cir.) – Counsel for Volcano in a Federal Circuit appeal from the Patent Office’s denial of St. Jude’s petition for inter partes review. The Federal Circuit granted Volcano’s motion to dismiss for lack of jurisdiction, reported at 749 F.3d 1373 (Fed. Cir. 2014).
Prometheus Laboratories v. Mayo Collaborative Services, et al (S.D.Cal.) – District court and appellate counsel for defendants in patent infringement action over metabolite assays for thiopurine drugs. Obtained summary judgment of invalidity under 35 U.S.C. § 101. After reversal at Federal Circuit Court of Appeals, Supreme Court of the United States reversed appellate court at 56 U.S. 101 (2012).
IPLearn-Focus LLC v. Microsoft Corp. (Fed. Cir.) – Obtained summary affirmance of a district court’s decision invalidating under 35 U.S.C. § 101 three patents that were directed to the abstract idea of using computers to observe, analyze, and react to human behavior.
The Medicines Co. v. Hospira, Inc. (Fed. Cir.) – Submitted amicus curiae brief for Gilead Sciences, Inc. related to the Federal Circuit’s en banc consideration of several issues related to the on-sale bar. The Federal Circuit unanimously agreed with the result urged by Gilead, finding that the transactions at issue were not subject to the on-sale bar, and it twice cited Gilead’s brief in the opinion.
SRI International, Inc. v. Symantec, Inc. (Fed. Cir.) – Obtained summary affirmance of a district court’s judgment finding that SRI’s network security patents were infringed by Symantec and not invalid under §§ 102 and 103. See 401 F. App’x 530 (Fed. Cir. 2010).
3M/Dyneon v. DuPont Performance Elastomers (D. Minn.) — Represented 3M and Dyneon in patent litigation asserting their patents covering use of multimodal fluoropolymers as polymer processing additives. Case favorably settled shortly before trial.
Netcraft v. AT&T Mobility et al. (D. Del.) – Represented Netcraft in a patent infringement suit against several mobile device carriers in a case involving billing methods for ringtones and other “off portal” content. Obtained favorable rulings on claim construction and motions in limine. Case settled favorably shortly before trial.
Lucent Technologies v. Microsoft Corp. – Obtained judgment as a matter of law for Microsoft reducing its damages liability by a factor of 10 from what was originally awarded by the jury. Opinion published at 837 F. Supp. 2d 1107 (S.D. Cal. 2011).
Callaway Golf v. TaylorMade (S.D. Cal.; E.D. Tex.) – Represented Callaway Golf in litigation against TaylorMade involving a number of patents related to irons, high moment of inertia drivers, and golf balls. Cases settled favorably shortly after filing.
SkyHawke Technologies LLC v. Callaway Golf (S.D. Fla.) – Defended Callaway Golf in litigation involving a patent to mobile GPS devices for displaying course information to a golfer based on his location. Case settled favorably shortly before trial.
In re Maithya (Board of Immigration Appeals) – Obtained affirmance of a decision granting withholding of removal based on evidence that Mr. Maithya would face a substantial risk of persecution on account of his sexual orientation if he were returned to Kenya.
Wright v. Director of Corrections (S.D. Cal.) – Obtained denial of summary judgment of Mr. Wright’s First Amendment claim against prison officials for transferring him into administrative segregation in retaliation for reporting an assault by prison guards. Case settled favorably shortly before trial.
Alford, et. al. vs. County of San Diego (CA state court)– Representied a plaintiff class of indigent residents of San Diego being denied subsistence health care in violation of Welfare and Institutions Code Section 17000. The class was victorious in the California Court of Appeal, see 151 Cal. App. 4th 16 (2007). The class also prevailed in several challenges on remand to the County’s incoming eligibility limits for the program and its procedures for reviewing applications.
Schmidt vs. Executive Office of Immigration Review — Successfully convinced EOIR to rescind its termination of an immigration court translator where the agency had terminated him based solely on his membership in a political organization and speech regarding political issues, averting the need to seek injunctive relief in Federal Court.
June 14, 2017
Craig Countryman Quoted in Law360 Article, “AIA Constitutionality Case Could Create Patent Law Chaos”
Fish Litigation Blog
May 5, 2017
Oral Argument Key Points: Impression Products, Inc. v Lexmark Int’l, Inc.
Authors: Craig Countryman, Cong Yao, Ph.D.
March 29, 2017
Fish & Richardson Wins “Case of the Year” Award and “U.S. Specialty IP Firm of the Year” Award by Managing Intellectual Property
March 16th, 2017
NJIPLA Patent Litigation Seminar – Countryman to Speak
January 25, 2017
Law360 Names Fish & Richardson Principal Craig Countryman an Appellate MVP
January 24, 2017
Craig Countryman quoted in Law 360 article "Bill To End Chevron Deference May Put Target On USPTO Rules"
February 27th, 2017 | 12:00 pm EST
Trade Secrets and Appellate Litigation
December 15th, 2016 | 4:30 pm PST
ACC Annual Holiday Mixer & CLE Program
October 19th, 2016 | 8:00 am PDT
2016 Southern California Patent Disputes Forum
June 23rd, 2016 | 1:00 pm EDT
Webinar: Enhanced Damages in Patent Cases After Halo v. Pulse Electronics
February 10th, 2016 | 1:00 pm EST
Post-Grant for Practitioners: Lessons from the First Wave of Post-Grant Appeals
September 13th, 2012
San Diego Volunteer Lawyer Program