Craig E. Countryman

It was Feb. 23, during the first session of the U.S. Supreme Court after Justice Antonin Scalia had died. Countryman was at the counsel table with a case he'd had since 2007, one whose outcome will determine how punitive damages could be awarded in patent cases. "It was awesome," he said. "The black-draped chair, the somber mood, and the kind of case you dream of in law school."

Countryman had persuaded a federal jury that defendant Pulse Electronics Corp. had infringed his client's surface mount electronic packages in computers and Internet routers. The jurors found the infringement willful and awarded plaintiff Halo Electronics Inc. $1.5 million. But the trial judge set aside the willfulness element, meaning there could be no trebling of damages as Halo had hoped to $4.5 million. Countryman took the case up to the Federal Circuit, where he again prevailed on liability but could not overcome a rigid two-part test on the willfulness issue. In February, his successful cert petition was on the docket at the high court. "Pulse copied our invention," he said. Speaking of the justices, he added, "We feel pretty good, based on their questions. It seems they want to loosen the standards favorable to us." A ruling could come at any time.

He was encouraged that the case has attracted much attention. "We had a huge number of amici," he said. "The big patent holders want the standard looser. The big patent defendants want to keep it as it is. Because of that we tried to sell the case as a narrow issue - because the defendant flat-out copied us, trebling the damages won't open any floodgates." Halo Electronics Inc. v. Pulse Electronics Inc., 14-1513 (U.S. Sup. Ct., filed June 22, 2015)

Countryman was co-lead counsel in another patent case, one that clarified new rules for so-called inter partes review by the U.S. Patent and Trademark Office.

"It's an esoteric legal issue that is really important to patent lawyers," he said. "The new rules contained a potential ambiguity over whether when the Patent Office denies review, that is final or maybe appealable. We represented a patent holder, and we obtained the Federal Circuit's decision that it had no jurisdiction to hear the opposition's appeal because the Patent Office denied review, so our win remained intact. The upshot was that there was no ambiguity. No means no." St. Jude Medical, Cardiology Div. Inc. v. Volcano Corp., 749 F.3rd 1373 (Fed. Cir. 2014)

"That opinion is only a couple of years old, but it's been cited dozens of times," Countryman said. "Fish is such a great firm to work for because the mentors give a lot of opportunity to younger lawyers. For me, it is a great combination: I get a chance to work on big cases, and I have been lucky to get big cases with really good issues."

- John Roemer