Craig R. Smith

Software:

Arendi U.S.A., Inc. and Arendi Holding Limited v. Microsoft Corp. – (D. R.I.) Successfully defended Microsoft in patent litigation involving Microsoft Office “smart tags” technology. Won jury verdict of non-infringement — the first ever for Microsoft — after a two week trial. Verdict selected by The National Law Journal as one of the top ten defense verdicts. Won summary affirmance of jury verdict by the Court of Appeals for the Federal Circuit.

HyperPhrase Technologies, LLC and HyperPhrase, Inc. v. Microsoft Corp. – (W.D. Wis.) Successfully defended Microsoft in patent litigation involving Microsoft Office XP. Plaintiffs alleged damages of over $2,000,000,000. Won case by obtaining summary judgment of non-infringement on the eve of trial.

Mobile Commerce Framework, Inc. v. Foursquare Labs, Inc. – (S.D. CA) Lead counsel for Foursquare in patent litigation involving a subscription-based system for presenting merchant information to a mobile device. Case settled.

Silver State Intellectual Technologies, Inc. v. Foursquare Labs, Inc. – (D. NV) Lead counsel for Foursquare in patent litigation involving a method of providing contact information. Case settled.

Blue Calypso, Inc. v. Foursquare Labs, Inc. – (E.D. TX) Lead counsel for Foursquare in patent litigation involving peer-to-peer advertising.

Evolutionary Intelligence v. Foursquare Labs, Inc. – (E.D. TX) Lead counsel for Foursquare in patent litigation involving an apparatus for manipulating information on a computer system using containers. Won motion to dismiss because the patents-in-suit claimed unpatentable subject matter under 35 U.S.C. § 101.

Michael Sandborn & Mark Sandborn Partnership et al v. Avid Technology, Inc. – (D. Mass.) Lead counsel for Avid in patent litigation involving musical notation software. Case settled.

DataTern, Inc. v. Teradata Corporation – (D. Mass.) Lead counsel for Teradata in patent litigation involving object model mapping and runtime engine for employing relational database with object-oriented software.

Abridge Technology v. Cashstar, Inc. et al. – (E.D. TX) Lead counsel for Cashstar in patent litigation relating to methods for conducting electronic commerce transactions using electronic tokens. Case settled.

Classco Inc. v. Personal Communication Devices, LLC et al. – (D. Mass.) Represented PCD in patent litigation relating to a calling party announcement apparatus. Case settled.

Hank Spacone v. Microsoft Corp. – (N.D. Cal.) Successfully defended Microsoft in patent litigation involving Microsoft Office XP and Office 2003. Won case by obtaining summary judgment of non-infringement and invalidity.

AllVoice Computing v. L&H Holdings USA – (D. Mass.) Defended L&H in patent litigation involving speech recognition software. Successfully defeated plaintiff’s motion for preliminary injunction, and obtained summary affirmance of decision by the Federal Circuit.

NetRatings, Inc. v. Unica Corporation and Sane Solutions, Inc. – (S.D. N.Y.) Defended Unica and Sane Solutions in patent litigation involving methods for tracking the use of network resources. Case settled.

Mallory Ventures v. Microsoft Corporation – (D. Mass.) Defended Microsoft in patent litigation involving accessing Internet websites. Case dismissed after limited discovery relating to prior art.

Ingenio, Inc. v. Acacia Patent Acquisition Corporation, Acacia Research Corporation and Credit Card Control Fraud Corporation; Card Control Fraud Corporation v. Pilgrim Telephone, Inc. – (N.D. Cal.) Lead counsel for Pilgrim Telephone in patent litigation involving methods for providing credit authorizations. Case settled.

NetRatings, Inc. v. WebTrends, Inc. – (D. Ore.) Defended WebTrends in patent litigation involving methods for tracking the use of network resources. Case settled.

Arendi Holding Limited v. Microsoft Corporation and Dell, Inc. – (D. Del.) Represented Microsoft and Dell in patent litigation involving “smart tags” technology.  Won summary judgment of no provisional damages.

Netcraft Corporation v. AT&T Mobility LLC, Cellco Partnership and T-Mobile USA, Inc. – (D. Del.) Represented plaintiff Netcraft in patent litigation involving Internet billing methods. Case settled favorably.

Mechanical:

Millipore Corporation et al. v. AllPure Technologies, Inc. – (D. Mass.) Lead counsel for AllPure in patent litigation involving device for introduction and withdrawal of a medium into and from a container. Won summary judgment of no infringement. Won affirmance of decision by the Court of Appeals for the Federal Circuit.

Animal Care Systems, Inc. v. Hydropac/Lab Products, Inc. – (D. Co.) Lead counsel for Animal Care Systems in patent litigation involving fluid delivery system for animal cages. Case settled.

Streamlight, Inc. v. Longhorn Tactical, LLC – (E.D. PA) Lead Counsel for Longhorn Tactical in patent litigation involving firearm mountable lights. Case settled.

Blastrac, N.A., Inc. v. Cooper Floor Services and Lisa Cooper – (Oklahoma) Lead counsel for Blastrac in contract dispute involving surface preparation equipment. Case settled.

Cricket Productions and DTR Far East Associates v. RSGA International – (D. Mass.) Lead counsel for RSGA in patent jury trial involving renewable energy flashlights. Case settled during trial, after evidence of patent invalidity was presented to the jury.

Velcro Industries B.V. and Velcro USA, Inc. v. Taiwan Paiho Limited – (D. N.H.) Represented Velcro in patent litigation involving hook and loop fasteners. Won key claim construction on all disputed claim terms. Case settled on the eve of trial.

Cricket Productions and DTR Far East Associates v. Viatek Consumer Products Group, Inc. – (D. Mass.) Lead counsel for Viatek in patent litigation involving renewable energy flashlights. Case settled.

ICC Innovative Concepts Corp. and Leh Chu Enterprise Co., Ltd., v. Viatek Consumer Products Group, Inc. and Lou Lentine – (D. CT) Lead counsel for defendants in patent and copyright litigation concerning flashlights. Case settled.

Insight Technology Inc. v. SureFire, LLC – (D. N.H.) Represented Insight in patent litigation involving slide-on lights for handguns. Case settled.

Insight Technology Inc. v. Glock Inc. and Glock Ges.m.b.H. – (D. N.H.) Represented Insight in patent litigation involving slide-on lights for handguns. Case settled.

Velcro Industries B.V. and Velcro USA, Inc. v. Taiwan Paiho Limited and Radio Shack Corporation – (D. Del.) Represented Velcro in patent litigation involving hook and loop fasteners. Case settled.

Baum Research and Development Company, Inc. v. University of Massachusetts at Lowell – (W.D. Mich.) Represented the University of Massachusetts in breach of contract and patent litigation involving baseball bat testing equipment.

Chemistry:

3-D Matrix, Inc., 3-D Matrix, Ltd. and Massachusetts Institute of Technology v. Menicon Co., Ltd. and B-Bridge International, Inc. – (D. Mass.) Lead counsel for 3-D Matrix and MIT in patent litigation relating to self-assembling peptides.

OdorStar Technology, LLC and Star Brite Distributing, Inc. v. CLO2 Systems et al. – (S.D. FL) Lead counsel for CLO2 Systems in patent litigation involving a device for producing chlorine dioxide. Plaintiff dismissed all claims with prejudice.

In the Matter of Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof – (International Trade Commission) Lead counsel for JK Sucralose in ITC investigation concerning intermediate compounds related to the manufacture of sucralose. Won decision of non-infringement and patent invalidity after seven-day trial on the merits.

Tate & Lyle Sucralose Inc v. Hebei Sukerui Science and Technology Co., Ltd., Hebei Chemical Engineering and Industry Research Institute, Hebei Research Institute of Chemical Industry, Forbest International USA, LLC, Beijing Forbest Trade Co., Ltd., JSZ International, Inc., et al. – (C.D. Ill.) Successfully defended group of defendants in patent litigation involving a process for making sucralose. Plaintiff voluntarily dismissed its complaint after defendants filed motions to dismiss for lack of standing and lack of jurisdiction.

Tate & Lyle Technology Limited and Tate & Lyle Sucralose, Inc., v. Beijing Forbest Chemical Co., Ltd., Beijing Forbest Trade Co., Ltd., Forbest International USA, LLC, Hebei Research Institute of Chemical Industry, Hebei Sukerui Science and Technology, Co., Ltd., JSZ International, Inc., et al. – (C.D. Ill.) Lead counsel for group of defendants in patent litigation involving several patents relating to sucralose. Case dismissed.

Consumer Products and Hardware:

Bose Corporation v. Able Planet, Inc. – (D. Mass.) Lead counsel to Bose in patent litigation involving headphones. Case settled.

Brica, Inc., et al. v. Monahan Products, LLC – (W.D.N.C) Lead counsel to Monahan Products in patent litigation involving covers for infant seats. Case dismissed with prejudice.

Control Resources v. Delta Electronics and LSI Logic Storage Systems – (D. Mass.) Defended Delta Electronics and LSI in patent litigation involving cooling fans for computers. Case dismissed with prejudice.

Harris Corp. v. Siemens AG – (E.D. Vir.) Defended Siemens in patent litigation involving 26 patents related to semiconductor memory technologies. Successfully obtained invalidity and non-infringement summary judgment rulings. Case settled.

ACT Manufacturing v. Alcatel – (D. Mass.) Defended Alcatel in adversary proceeding in bankruptcy court involving ADSL line card agreement. Case settled.

Represented Siemens in action to stop DRAM counterfeiters. Successfully obtained ex parte seizure order, temporary restraining order, and preliminary injunction.

Medical Devices:

Exergen Corporation v. Kidz-Med, Inc., American Scientific Resources, Inc. and Tecnimed, SRL – (D. Mass.) Represented Exergen in patent litigation involving thermometers.

The Gillette Company, Braun GmbH and Gillette Commercial Operations North America v. Skyvision Inc., Dane Robinson and Water Pik, Inc. – (D. Colo.) Represented Gillette and Braun in patent litigation involving oral care products. Case settled.

Sakharam Mahurkar and Tyco Healthcare Group L.P. v. Arrow International – (N. D. Ill.) Represented Tyco in patent litigation involving hemodialysis catheters. Case settled on the eve of trial.

Optics:

ADE v. KLA-Tencor – (D. Del.) Represented ADE in patent litigation involving optical inspection systems for silicon wafers and software for displaying measurement data. Succeeded in having claims to two patents dismissed on summary judgment; at trial, jury held that remaining patent claims were invalid.

Trade Secrets:

Evoqua Water Technologies LLC v. M.W. Watermark LLC, et at. (W.D. Michigan) Lead counsel for Evoqua Water Technologies in trademark infringement litigation. Won jury verdict of trademark infringement.

Edgetech Instruments, Inc. v. Roscid Technologies, Inc., et al. (Mass. Superior Court) Lead counsel for Roscid and defendants in trade secret litigation. Successfully defeated motion for preliminary injunction. Plaintiff dismissed its complaint.

Velcro Industries B.V., Velcro Group Corporation and Velcro USA, Inc. v. Gerald Rocha, Creative Machine Designs and Taiwan Paiho Limited – (N. H. Superior Court) Represented Velcro in litigation involving claims of trade secrets misappropriation, unfair competition, breach of contract, breach of confidential relationship, breach of fiduciary duties, and tortious interference with contractual relations. Requested preliminary injunction to prevent shipment of equipment out of the country. Case settled.

GE Homeland Protection Inc. v. DSA Detection LLC et al. – (D. Mass.) Represented defendants in trade secrets and patent litigation relating to consumables for trace detection instruments, such as ion mobility spectrometers. Case settled.

False Marking:

Zachary Hallstrom v. Life Smart Labs Inc., etc., et al. – (E.D.CA) Lead counsel for Life Smart Labs in false patent marking qui tam action.  Case settled.

Copyright:

Photographic Illustrators Corporation v. Orgill, Inc. and Farm & City Supply LLC – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products.

Photographic Illustrators Corporation v.  ExpressLightbulbs.com LLC – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products.

Photographic Illustrators Corporation v. BulbAmerica.com – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products. Case settled.

Photographic Illustrators Corporation v. Superior Lighting Group, Inc. – (D. Mass.) Represented Photographic Illustrators Corporation in litigation involving copyrighted images of consumer products. Case settled.

Breach of Contract and Other Litigations:

Diet Coffee, Inc. v. Viatek Consumer Products Group et al. – (S.D.N.Y.) Lead counsel for Viatek in breach of contract litigation involving Ionic light bulbs. Case settled.

Michael P. Strachan v. KONE Inc. et al. – (Mass.) Lead counsel for KONE in breach of contract dispute. Case settled.

Cricket Productions v. RSGA International et. al. – (D. Mass.) Lead counsel for RSGA in breach of contract dispute. Case settled.

R.T. v. Confab Holding Corp. – (N. D. Ill.) Defended Confab in patent litigation involving diapers. Case settled after limited discovery.

Talaria Co. and King Marine Imaging v. Larry Belkov and Belkov Yacht Carpentry Company, Inc. – (D. Md.) Represented Talaria in trade dress action related to yacht design. Case settled.

Appellate Examples:

Millipore Corporation et al. v. AllPure Technologies, Inc. – (Federal Circuit) Lead counsel for AllPure in appeal of summary judgment of no infringement. Won affirmance of summary judgment of no literal infringement and no infringement under the doctrine of equivalents.

AllVoice Computing Plc v. Dragon Systems, Inc. – (Federal Circuit) Represented Dragon Systems in appeal of district court’s denial of AllVoice’s motion for preliminary injunction. Obtained summary affirmance of district court’s decision.

Arendi U.S.A., Inc. and Arendi Holding Limited v. Microsoft Corp. – (Federal Circuit) Represented Microsoft in appeal of jury verdict of no infringement and validity. Successfully obtained summary affirmance of district court’s decision.

Monitor Clipper Partners v. Larry Belkov and Belkov Yacht Carpentry Company, Inc. – (First Circuit) Represented Monitor Clipper Partners in appeal of district court’s denial of Belkov’s motion to compel compliance with a third-party subpoena. Case settled.

Hank Spacone v. Microsoft Corp. – (Federal Circuit) Represented Microsoft in appeal of district court’s decision that Microsoft did not infringe and that certain patent claims were invalid, and that Mr. Spacone had standing.  Obtained Federal Circuit decision of no standing.

Pro bono

Represented Immersive Education on trademark matters.

Represented triplegic prison inmate to obtain access to a motorized wheelchair.

Represented sex workers organization in trademark issue.

• New York University School of Law, J.D., The Order of the Barristers
• University of Illinois, M.S., Environmental Engineering (Microbiology)
• Manhattan College, B.S., Civil Engineering, magna cum laude, Tau Beta Pi 

• Attorney Mentor, Discovering Justice
• Secretary, University of Illinois Alumni Association – Boston Chapter
• Board Member, Greater Boston Legal Services, 2003–2012
• Board Member, Boys Town New England, 2015–2019
• Member, Boston Intellectual Property Law Association (BIPLA)

• IAM Patent 1000: The World’s Leading Patent Practitioners (2012–2023)
• Patent Star, Managing Intellectual Property Magazine “IP Stars” (2017–2023)
• The Best Lawyers in America®, Trademark Law (2018–2021), Patent Litigation (2022–2024)
• Top Lawyers of 2022, Boston magazine
• Massachusetts Super Lawyers: Intellectual Property, Intellectual Property Litigation (2010–2023)
• Massachusetts Super Lawyers: Rising Star – Intellectual Property, Intellectual Property Litigation (2005–2007, 2009)

Moderator and Presenter for several Immersive Education Initiative: Blockchain in Education Summit panels, “IP Protection of Blockchain Technology”, “Privacy Concerns Relating to Blockchain Technology”, and “Approaching the Intersection of Immersion and Blockchain”, and “Colliding Worlds: Artificial Intelligence and Intellectual Property.”

Frequent guest lecturer, Patent Law Overview, Boston University

Speaker, “Artificial Intelligence and the Practice of Law,” Global AI Ethics Conference pre-conference podcast (February 2024)

Presenter, “Understanding the Impact of A.I. on the Legal Profession”, Boston Municipal Court Fall 2023 Conference (November 2023)

Panelist, “Issues and Practice Tips Relating to Third Party Discovery and Subpoenas, Both Foreign and Domestic,” Federal Bar Association of Massachusetts IP Section (October 2023)

Panelist for Association of Corporate Counsel Event, “Are Your Opinions Protecting Your Company, Your Products and Your In-House Counsel?” (May 2019)

Panelist for Association of Corporate Counsel Event, “Global Patent Protection” (May 2018)

“A Biotechnology Dilemma: Patent Your Inventions (if you can) or Keep Them Secret,” Journal of Commercial Biotechnology, Vol 23, No. 2/August 2017

Panelist for Association of Corporate Counsel Event, “Cybersecurity Strategic Planning” (May 2017)

Presented at Suffolk University, “Patent Subject Matter Eligibility: The Road So Far” (April 2017)

“Trump’s hiring freeze could hurt tech sector,” Boston Business Journal (April 2017)

“Software Patents in an Abstract World” presented at the Boston Bar Association. (April 2017)

Panelist for a Boston Bar Association panel discussion on “Different Strokes: Alternative Fees and Alternative Relationships Between In-House and Outside Counsel.” (February 2017)

“IP Due Diligence: Efficient and Cost-Effective Approaches to Your Life Sciences Deal” presented at the Association of Corporate Counsel Northeast Chapter’s Intellectual Property Master Class, Needham, MA. (March 2016)

“Copyrights, Patents and Intellectual Property Rights in the Age of Immersion” Immersive Education – Immersion 2015 Conference, Sorbonne, Paris. (September 2015)

“The Right Tools for the Job: Recommendations on managing electronic discovery in a world awash in data,” Corporate Counsel (May 2012)

“A World of Copyright Confusion” The National Law Journal. (October 2011)

“What Litigators Look for in Prosecution History” Boston Bar Association Event. (May 2011)

“Critical Patent Decisions for Medical Device Companies” Hot Topics and Emerging Trends in the Medical Device Industry Conference, Boston, MA. (May 2011)

“Jurisdiction Based on Internet Activity: An Update” Technology Law Alert, Vol. 27, No. 9/May 2001.