Castanias, Gregory A.

Current Employment Position(s)

Partner

Lawyer Overview

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Greg Castanias represents clients in courts across the United States — the United States Supreme Court, courts of appeals, and elsewhere. He heads Jones Day's Federal Circuit practice.

Some of Greg's recent victories as an appellate advocate include Sinochem v. Malaysia Int'l Shipping (2007), a 9-0 Supreme Court win involving international companies haled into U.S. courts; Finisar v. DIRECTV (2008), reversing a $129 million patent-infringement judgment; Kyocera Wireless v. ITC (2008), a pathbreaking decision limiting the ITC's exclusionary authority; Ball Aerosol v. Limited Brands (2009), reversing a multimillion dollar patent-infringement judgment, as a matter of law; Martek Biosciences v. Nutrinova (2009), an across-the-board win in a four-patent biotechnology case before a rare five-judge Federal Circuit panel; Vizio v. ITC (2010), reversing an exclusion order barring importation of flat-screen TVs; Haemonetics v. Baxter Healthcare and Fenwal (2010), reversing a $15.7 million patent-infringement verdict involving blood-separation technology; and Transocean Offshore Deepwater Drilling v. Maersk Contractors USA (2010), reversing a summary-judgment ruling and making important new law on the meaning of "sale" and "offer for sale" under the patent laws.

Other recent clients have included Abbott Laboratories, Boston Scientific, Chevron, DePuy Spine, Eastman Chemical, the Estate of James Joyce, Fenwal, Hoffmann-LaRoche, IBM, LabCorp, Martek, The MathWorks, Myriad Genetics, Pfizer, Procter & Gamble, SanDisk, SAP, SiRF, and VIZIO.

The Legal 500 singled out Greg as one of the leading U.S. IP lawyers, calling him "A sharp and effective advocate who picks up the details of the matter quickly" and "a great issue-spotter and skilled advocate."

Areas of Practice

• Issues & Appeals
• Intellectual Property
• Trial Practice
• Tax
• Government Regulation
• Administrative & Agency Litigation
• Appellate Advocacy in the U.S. Supreme Court
• Appellate Litigation in Other Federal & State Courts
• Federal Circuit & IP Appeals
• International Litigation & Arbitration
• International Trade Disputes & Proceedings
• ITC Section 337
• Patent Litigation
• State & Local Taxation
• Trial Litigation in Federal & State Courts
• U.S. Court of Federal Claims Litigation

Representative Cases

• Abbott wins and sustains favorable judgment in patent infringement case involving drugs for epilepsy and bipolar disorder , (2009)
• Alcan Aluminum defends against wrongful discharge claim of at-will employee in Georgia Supreme Court and in 11th Circuit , (2009)
• American Heart Association files amicus curiae brief arguing the patentability of natural phenomena
• Aradigm successfully defends against claim by Eli Lilly to inventorship of patents involving inhaled insulin technology , (2009)
• Autism organizations file amici curiae briefs in Supreme Court case involving burden of proof in due process hearings under IDEA
• Boston Scientific pursues claim against Medtronic involving inventorship dispute , (2009)
• Brown & Williamson obtains dismissal with prejudice following grant of bifurcated trial on limitations defense , (2009)
• Chevron pursues arbitration to enforce contractual right to indemnification against Petroecuador , (2009)
• Class of out-of-state fishermen mount constitutional challenge to Alaska’s discriminatory fee structure for fishing licenses
• Client's conviction under federal drug laws reversed on equitable tolling grounds by Sixth Circuit , (2006)
• Dell obtains dismissal of case challenging constitutionality of financial incentives provided by North Carolina
• DePuy Spine wins Federal Circuit affirmance of $149.1 million award, one of ten largest patent jury verdicts affirmed on appeal , (2009)
• DESA, Home Depot, Lowe's, and Northern Tool prevail in patent infringement action involving tree trimming chain saw
• Dippin' Dots seeks U.S. Supreme Court review of Lanham Trademark Act issues , (2009)
• DIRECTV wins full victory in Federal Circuit patent appeal , (2009)
• DIRECTV wins patent appeal affirming its invalidity victory on summary judgment , (2009)
• Doctors pursue nationwide class action to recover excessive insurance charges , (2009)
• EMCORE victorious in Federal Circuit appeal of fiber optics patent dispute , (2010)
• Ethiopian's application for U.S. political asylum reopened
• Fenwal and Baxter prevail in Federal Circuit ruling in blood centrifuge patent dispute , (2010)
• Fenwal defends against patent infringement charges by Haemonetics involving compact centrifuge device
• Ficosa defends against patent infringement charges over three automatic cable components
• Foxconn and other cell phone makers gain major Federal Circuit victory in appeal of ITC exclusion order , (2009)
• Gay man wins civil rights suit after beating in St. Maarten , (2009)
• Gennum prevails after long dispute over infringement claims concerning two patents related to video synchronization separators , (2009)
• IBM files U.S. Supreme Court amicus brief in case involving scope of patent-law doctrine of obviousness , (2009)
• IBM summary judgment win in commission dispute is affirmed by 4th Circuit
• International Paper persuades Mississippi federal court to deny class certification in dioxin litigation , (2009)
• J.C. Penney National Bank successfully opposes U.S. Supreme Court review of attempt to impose Tennessee taxes on corporations without nexus in the state
• Kansas Department of Revenue successfully defends constitutionality of married and single tax brackets , (2009)
• Karaha Bodas enforces arbitral award in U.S. , (2009)
• Kilpatrick Life defends against class action alleging breach of burial insurance policies
• LabCorp wins nod from Federal Circuit regarding jurisdiction dispute , (2010)
• Lamson & Sessions succeeds in appeal of electrical outlet cover patent infringement jury verdict , (2009)
• Limited Brands wins Federal Circuit reversal in patent infringement appeal relating to candle tins , (2009)
• Loewen brings first-ever investor-state arbitration against U.S. under NAFTA chapter 11 , (2009)
• Loewen Group prevails against Louisiana class actions alleging breach of funeral services contracts
• Martek Biosciences wins across-the-board victory in biotech dispute before five-judge Federal Circuit panel , (2009)
• MathWorks prevails in patent infringement litigation , (2009)
• Methanex challenges MTBE ban under NAFTA , (2009)
• Micro Chemical prevails in 16-year patent infringement dispute with chief competitor , (2009)
• Micro Chemical successfully appeals patent infringement verdict concerning computerized technology , (2009)
• MOSAID Technologies pursues claims against Samsung and Infineon for infringement of semiconductor chip patents , (2009)
• National Foreign Trade Council prevails in constitutional challenge to Massachusetts' "Burma Law"
• Petitioner in U.S. Supreme Court case seeks interpretation of what it means to "carry" a firearm
• Pfizer wins on appeal Hatch-Waxman patent infringement action against generic drugmaker , (2009)
• Religious organizers and leaders file amicus brief in Supreme Court in Ashcroft Directive case
• Saudi Basic Industries defends breach of contract and tort action governed by Saudi Arabian law in Delaware courts and Supreme Court , (2009)
• Saudi Basic Industries successfully appeals case involving federal court jurisdiction over dispute resolved in state court
• Saudi Basic Industries successfully appeals claim that nuclear reactor technology was misappropriated , (2009)
• Security Industrial Insurance successfully defends against race discrimination class action
• Sheet music publishers challenge copyright act's constitutionality
• Simon Property Group prevails in appeal from award for alleged breach of an employment agreement , (2009)
• Sinochem prevails in U.S. Supreme Court in dispute involving jurisdictional rules that apply in U.S. federal courts
• SiRF Technology continues GPS patent dispute in post-hearing ITC proceedings , (2009)
• Southland Corporation prevails in constitutional challenge to Maryland tax assessment on sale of Citgo stock
• State of Georgia defends challenge to prison conditions under ADA
• TAP Pharmaceutical successfully defends 19 Lupron® pricing actions in state and federal courts , (2009)
• Texas Instruments prevails in patent infringement dispute with Tessera relating to certain packages for semiconductor devices , (2009)
• Texas Instruments resolves series of disputes with Hyundai Electronics over semiconductor patents , (2009)
• Transocean prevails in Federal Circuit patent dispute over offshore drilling technology , (2010)
• Vizio prevails before Federal Circuit in international trade patent dispute involving digital televisions , (2010)

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)
• Wabash College

Published Works

• Alert: Supreme Court to Hear Case on Intent Standard for Induced Patent Infringement, 2010
• MedImmune v. Genentech, in The New Private Ordering of Intellectual Property: The Emergence of Contracts as the Drivers of Intellectual Property Rights, 4 J. of Bus. & Tech. L. 59, 2009
• Quanta Computer: The U.S. Supreme Court Breathes New Life into the Patent Exhaustion Defense, IP Perspectives, 2009
• 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 Weblog, 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
• Tangled Web: Personal Jurisdiction and the Internet, Litigation, Vol. 24, No. 2, p. 27, 1998
• The Supreme Court and State Taxation: 1996-97, and a Glimpse of the Future to Come, 3 State & Local Tax Lawyer 119 (1998), 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

Address

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Washington, DC 20001-2113

Phones

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Faxes

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