Current Employment Position(s)

Partner

Lawyer Overview

Greg Castanias is a Partner in the Firm's issues & appeals and intellectual property practices. He is an experienced advocate in courts at all levels of the federal judiciary, including the U.S. Supreme Court, where he has represented numerous clients and argued three cases over the last four years. His practice has a particular focus on appeals and technology cases, and Greg is a nationally recognized authority in these areas. Greg is the lead author of Federal Appellate Practice and Procedure in a Nutshell (with Dean Robert Klonoff of the Lewis & Clark Law School), published by Thomson West in March 2008, and he has authored or coauthored several other books and articles on appellate practice, intellectual property law, and constitutional limitations on state taxing authority.

Greg coordinates the Firm's Federal Circuit and IP appeals service. His patent litigation experience is significant, having represented a number of clients — Abbott Laboratories, Aradigm Corporation, Boston Scientific, DePuy Spine, DIRECTV, Foxconn, IBM, King Pharmaceuticals, LabCorp, Lamson & Sessions, The Limited Stores, Lubrizol, Martek Biosciences, The MathWorks, Micro Chemical, Pfizer, Procter & Gamble, SanDisk, Symbol Technologies, and Texas Instruments, to name just a few — before the district courts and in the Federal Circuit, where he has argued more than a dozen cases and been counsel in more than 85 appeals. The Legal 500, an independent publication that evaluates lawyers based on interviews with clients and practitioners from around the globe, named Greg as a 2008 leading lawyer, calling him "A sharp and effective advocate who picks up the details of the matter quickly."

In addition to his focus in these areas, Greg has considerable experience in issues of constitutional law, class actions, international law, and international arbitration, including significant and leading roles in two of the first NAFTA investor-state arbitrations (The Loewen Group v. U.S.A. and Methanex Corporation v. U.S.A.) brought against the United States government. Representative clients in other recent matters have included Chevron, Dell, IBM, ICANN, the National Foreign Trade Council (NFTC), R.J. Reynolds Tobacco, Saudi Basic Industries Corporation (SABIC), Simon Properties Group, Sinochem, the state of Georgia, the state of Indiana, TAP Pharmaceuticals, and Williams Advanced Materials.

He also has devoted considerable amounts of his practice to pro bono representations. Recently, he filed amicus curiae briefs in the U.S. Supreme Court as counsel for a consortium of autism organizations in Schaffer v. Weast; for a group of 52 religious and religious freedom groups, organizations, and scholars in Gonzales v. Oregon; and for the American Heart Association in a case involving the patentability of natural phenomena.

Greg is a member of the American Bar Association, the Federal Circuit Bar Association, and the International Trade Commission Trial Lawyers Association (the last of which he served as an Executive Committee member and as membership director from 1997 to 2003). He was also selected as a barrister of the Edward Coke Appellate Inn of Court, the first American Inn of Court dedicated exclusively to appellate practice. In 2004, Greg joined the board of the Council for Court Excellence in Washington, D.C. He also serves in leadership positions in the national alumni associations of Wabash College and the Indiana University-Bloomington School of Law, and he holds the rank of adjunct professor of law at the latter.

Greg regularly writes and speaks on legal subjects, including intellectual property, constitutional law, and appellate practice. He has appeared on national radio and television broadcasts and has been quoted by leading national and international publications on these and other subjects. He is admitted to practice before the United States Supreme Court, the United States Courts of Appeals for each of the 13 circuits, and eight United States District Courts. He was first admitted to practice law in 1990 in Indiana but is now inactive in that state.

Areas of practice

• Issues & Appeals
• Appellate Advocacy in the U.S. Supreme Court
• Appellate Litigation in Other Federal & State Courts
• Trial Litigation in Federal & State Courts
• Tax
• State and Local Tax Counseling
• Government Regulation
• Statutory & Regulatory Litigation
• Trial Practice
• Alternative Dispute Resolution & Mediation
• International Litigation & Arbitration
• Intellectual Property
• Patent Litigation
• Federal Circuit and IP Appeals
• ITC Section 337

Representative Cases

• Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004)
• Eric P. Mantz, et al. v. St. Paul Fire and Marine Insurance Co., et al., CIV. A. No. 02-C-770 (W. Va. Cir. Ct. Kanawha Cty.)
• Micro Chemical, Inc. v. Lextron, Inc., (D. Col.) 317 F.3d 1387 (Fed. Cir. 2003)
• Abbott Laboratories v. TorPharm, Inc., 156 F. Supp. 2d 738 (N.D. Ill. 2001), subst. aff’d, 300 F.3d 1367 (Fed. Cir. 2002); 309 F. Supp. 2d 1043 (N.D. Ill. 2004) (Posner. J., by designation), aff'd, 122 Fed. Appx. 511 (Fed. Cir. 2005)
• Alexander v. Security Indus. Ins. (WD La); Beverly v. Security Indus. Ins. (WD La); Cothran v. Security Indus. Ins. (WD La); Smith v. Security Indus. Ins. (ED La), Sutherland v. Security Indus. Ins. (ED La)
• Blinson, et al. v. North Carolina, et al., No. 05-CVS-8378 (Wake Co., N.C., Sup. Ct.)
• Boston Scientific Scimed, Inc. v. Medtronic, No. 2006-1434 (Fed. Cir.)
• Carlson v. State of Alaska, No. 3AN-84-5790 Civ. (Alaska Superior Ct.).
• ChevronTexaco Corp. v. Petroecuador, No. 50 T 198 00297 04 (American Arbitration Association); Republic of Ecuador v. ChevronTexaco Corp., No. 04 Civ. 8378 (SHS) (S.D.N.Y.)
• Crosby v. National Foreign Trade Council, 530 U.S. 363 (2000), aff’g 181 F.3d 38 (1st Cir. 1999), aff’g 26 F. Supp. 2d 287 (D. Mass. 1998).
• DePuy Spine, Inc. et al. v. Medtronic Sofamor Danek, et al., Case No. 01-CV-10165 EFH; Nos. 05-1311, 05-1335 (Fed. Cir.)
• Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC. No. 04-642 (U.S.)
• Eldred v. Reno sub nom. Ashcroft,239 F.3d 372, 255 F.3d 849 (D.C. Cir. 2001), aff'd, 537 U.S. 186 (2003)
• ExxonMobil Corp. v. Saudi Basic Indus. Corp., 364 F.3d 102 (3d Cir. 2004); 544 U.S. 280 (2005)
• Feldheim v. SI-SIFH,(503-428), aff’d in part, 715 So. 2d 168; Duffy v. SI-SIFH Corp., (97-12045), rev’d, 726 So. 2d 438, writ den'd, 741 So. 2d 14; Luening v. SI-SIFH Corp., (85-231), rev’d, No. 99-C-0491, writ den'd, 743 So. 2d 210, (La. 1999)
• Finisar Corp. v. The DIRECTV Group et al., Nos. 2007-1023, -1024 (Fed. Cir.)
• Finisar Corp. v. The DIRECTV Group, Inc., et al., No. 1:05-cv-264 (E.D. Tex., decided June 26, 2006)
• Gebreeyesus v. Gonzales, 482 F.3d 952 (7th Cir. 2007)
• Gonzales v. Oregon, 126 S. Ct. 904 (2006)
• Goodman v. Georgia and United States v. Georgia, 126 S. Ct. 877 (2006)
• Grisham v. Philip Morris USA Inc., et al. and Cannata v. Philip Morris USA Inc., et al., No. S132772 (Cal.)
• In re Lupron® Marketing and Sales Practices Litigation, MDL No. 1430, Various State Docket Numbers
• Intermatic Inc. v. The Lamson & Sessions Co., 273 F.3d 1355 (Fed. Cir.), vacated and remanded, 535 U.S. 722 (2002), remanded, 60 Fed. Appx. 805 (2003)
• Jensen v. International Business Machines Corporation, 454 F. 3d 382 (4th Cir. 2006)
• Johnson v. J.C. Penney National Bank, 531 U.S. 927 (2000) (order denying certiorari)
• Karaha Bodas Co., L.L.C. v. Perusahaan Pertambangan Minyak Dan Gas Bumi Negara (Pertamina), 313 F.3d 70 (2d Cir. 2002)
• KSR Int'l Co. v. Teleflex, Inc., No. 04-1350 (S. Ct.)
• Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc., 126 S. Ct. 2921 (2006)
• Mathews v. Kilpatrick Life Insurance Co.
• McGuire v. International Paper Co., 1994 WL 261360 (S.D. Miss. 1994)
• Methanex v. U.S., ICSID Case No. ARB (AF)/98/3
• Micro Chemical, Inc. v. Great Plains Chemical Co., Inc., 103 F.3d 1538 (Fed. Cir. 1997), cert. denied, 521 U.S. 1122 (1997); 194 F.3d 1250 (Fed. Cir. 1999); 318 F.3d 1119 (Fed. Cir. 2003)
• MOSAID Technologies Inc. v. Samsung Electronics Co., Ltd., No. 01-4340 (D.N.J.); Infineon Technologies N. Am. Corp. v. MOSAID Technologies Inc., No. 03-4698 (D.N.J.) (transferred for pretrial purposes from N.D. Cal. in No. 02-5722)
• Muscarello v. United States, 524 U.S. 125 (1998)
• National Instruments Corp. v. MathWorks, Inc., No. 2:01-CV-00011 (E.D. Tex. 2005); National Instruments Corp. v. MathWorks, No. 05-1301 (Fed. Cir.)
• National Instruments Inc. v. The MathWorks, Inc., No. 2:01-cv-11 (E.D. Tex.), aff'd, 164 Fed. Appx. 997 (Fed. Cir. 2006)
• Peden v. Kansas Department of Revenue, 261 Kan. 239, 930 P.2d 1 (1996), cert. denied, 520 U.S. 1229 (1997)
• Pfizer Inc. v. Dr. Reddy's Labs., 359 F.3d 1361 (Fed. Cir. 2004)
• Reilly v. Alcan Aluminum Corp.
• Rogers v. DESA Int’l Inc., et al., No. 02-1247 (Fed.Cir.)
• Saudi Basic Indus. Corp. v. Exxon Corp., 364 F.3d 106 (3d Cir. 2004)
• Saudi Basic Indus. Corp. v. Mobil Yanbu Petrochemical Co., Inc., 2005 WL 120789 (Del. Jan. 14, 2005); No. 00C-07-161 (Del. Super. Ct. 2003)
• Schaffer v. Weast, 126 S. Ct. 528 (2005)
• Shannon L. Haslund v. Simon Property Group, Inc., 378 F.3d 653 (7th Cir. 2004)
• Sinochem Int'l Co., Ltd. v. Malaysia Int'l Shipping Corp., No. 06-102 (S. Ct.)
• Solomon v. United States of America
• Technology Licensing Corp. v. U.S. Dist. Ct. for the Northern Dist. of Cal., No. 05-1248 (U.S.)
• Teleflex, Inc. v. Ficosa Int’l, Inc., Civil Action No. 98-73335 (E.D. Mich 2000)
• Texas Instruments Inc. v. Tessera, Inc., 231 F.3d 1325 (Fed. Cir. 2000)
• Texas Instruments Incorporated v. Hyundai Electronics Industries Co., Ltd., 49 F. Supp. 2d 893, 50 F. Supp. 2d 619, 191 F.R.D. 119 (E.D. Tex. 1999)
• The Loewen Group, Inc. v. United States of America, ICSID Case No. ARB(AF)/98/3
• The Southland Corp. v. Comptroller, State of Maryland, No. 1402 (Md. Ct. Spec. App. 1997) & No. 1661 (Md. Ct. Spec. App. 2001), cert. denied, 366 Md. 247, 783 A.2d 221 (Md. 2001); also proceedings in Md. Tax Ct. and in Md. Circuit Ct.
• Civil Rights Representation

West Practice Categories

Bankruptcy Litigation, Class Actions, Complex Litigation, Copyrights, Corporate Taxation, Estate & Gift Taxation, Excise Taxes, Federal Appellate Practice, Federal Claims Court, Federal Trial Practice, Food & Drug Administration, Government Agencies & Programs, Housing & Urban Development, Income Taxation, Intellectual Property Law, International Intellectual Property, International Taxation, International Trade Litigation, Law Enforcement Agencies, Litigation & Appeals, Medicare & Medicaid, Military & Veterans Appeals, Multidistrict Litigation, Patent Litigation, Patents, Payroll Taxes, Property (Ad Valorem) Taxes, Sales & Use Taxes, Social Security -- Disability, Social Security -- Retirement & Survivors Benefits, State & Local Agencies, State Appellate Practice, State Trial Practice, State, Local & Municipal Law, Tax Litigation, Taxation Law, Technology Licensing, Trade Dress, Trade Secrets, Trademarks, US Court of Appeals for the Federal Circuit, US Supreme Court, Veterans' Affairs, Welfare

Bar Admissions

District of Columbia
Virginia

Education

Indiana U - Bloomington (Main)

Published Works

• Quanta Computer v. LG Electronics: The U.S. Supreme Court Breathes New Life Into the Patent Exhaustion Defense, 2008
• Supreme Court Breathes New Life Into Patent Exhaustion Defense, The Metropolitan Corporate Counsel, 2008
• Microsoft Corp. v. AT&T Corp.: The US Supreme Court Reins in the Extraterritorial Effects of US Patent Law, reprinted in IP Litigator, 2008
• KSR v. Teleflex: Moving Toward a More Flexible Definition of Obviousness - IP Perspectives, 2008
• Castanias and Klonoff's Federal Appellate Practice in a Nutshell (Thomson West 2008)Visit the Thompson West website for more information., 2007
• Decisional Sequencing: The Supreme Court Clarifies When Jurisdiction Must Be Established Prior To Dismissal on a Non-Merits Threshold Ground, ABA Appellate Practice Journal, Vol. 26, Issue 3, 2007
• Survey of the Federal Circuit's Patent Law Decisions in 2006: A New Chapter in the Ongoing Dialogue With the Supreme Court, 56 American University Law Review 101, 2007
• Microsoft Corp. v. AT&T Corp.: The United States Supreme Court Reins in the Extraterritorial Effects of United States Patent Law, 2007
• KSR v. Teleflex: The Supreme Court Rules that a Broader, More Flexible Standard for Obviousness is Consistent with Section 103 and Supreme Court Precedent, reprinted in Global Intellectual Property Asset Management Report, 2007
• Preliminary Reflections on Sinochem, Opinio Juris Webloghttp://www.opiniojuris.org/posts/1174064390.shtml, 2007
• Another Change in U.S. Patent Law: U.S. Supreme Court Rules That Patent Licensees May Seek Declaratory Judgments in Patent-License Cases Without First Breaching the License, 2007
• The Supreme Court's Decision in eBay: What Does It Mean for Injunctions in Patent Cases?, 2006
• Arkansas' Jones v. Flowers: The Supreme Court Rules On The Meaning Of "Notice" For Tax Sales, Jones Day State Tax Return, 2006
• Dispatch From The Front: A Report On The Supreme Court Arguments In DaimlerChrysler v. Cuno, Jones Day State Tax Return, 2006
• Ohio Franchise Tax Annual Accounting Period: What A Difference Three Days Make (A Little More Than $2.4 Million), 2006
• Supreme Court Justices Uphold Kansas Motor-Fuel Tax As Applied To Tribal Gas Station, Jones Day State Tax Return, 2006
• Intellectual Property: Petition for Certiorari Filed in AWH Corp. v. Phillips, 2005
• Supreme Court To Take Another Look at “Automatic” Injunctions for Prevailing Patent Owners in Infringement Cases, 2005
• News Flash! Supreme Court Decides To Hear Case Involving State Tax Incentives And The Commerce Clause, 2005
• Supreme Court Upholds Michigan Flat Fee On Intrastate Trucking; Republic Does Not Crumble, Jones Day State Tax Return, 2005
• Grokster: The Supreme Court Finally Speaks on Indirect Copyright Infringement, 2005
• Federal Circuit Brings More Clarity to Rules for Interpreting Patents, 2005
• Intellectual Property: The Supreme Court Widens the Range of Permissible Preclinical Studies Under the § 271(e)(1) Safe Harbor For Patent Infringement —But How Much?, 2005
• The Supreme Court's Granholm v. Heald Decision: What it Means for Interstate Wine Shipping, 2005
• The Supreme Court's Decision in Arthur Andersen LLP v. United States: An Important Development Regarding the Legal Consequences of Document Retention Policies, 2005
• Intellectual Property Commentaries: A Report on the Federal Circuit’s En Banc Oral Argument on The Rules of Patent Claim Construction, 2005
• National Movement Against Economic-Development Incentives Makes Inroads in the Sixth Circuit and Raises Questions About Similar Incentives Elsewhere, 2005
• Commentary: State Tax Incentives and the Commerce Clause, Jones Day State Tax Return, 2004
• Intellectual Property Commentaries: New Decision Changes Law on Attorney-Client Privilege in Patent Cases, 2004
• Preserving Errors for Appeal in the U.S., 156 Patent World (U.K.) 22, 2003
• The Supreme Court's Decision in Festo Corp.: An Important New Development Regarding the Scope of Patent Protection, 2002
• Survey of the Federal Circuit’s Patent Law Decisions in 2000: Y2K in Review, 50 American University Law Review 1435, 2001
• The Supreme Court and State Taxation: 1996-97, and a Glimpse of the Future to Come, 3 State & Local Tax Lawyer 119 (1998), 1998
• Tangled Web: Personal Jurisdiction and the Internet, Litigation, Vol. 24, No. 2, p. 27, 1998
• Certiorari in Business Cases: Improving Your Chances, The Practical Litigator, Vol. 7, No. 6, p. 27, 1996
• Leading U.S. Supreme Court State Tax Cases: Official Syllabi, Notes, and Indices, 1995
• Daubert Doesn’t End Debate on Experts, National L.J., 1993

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