Gregory A.Castanias (Greg)

Partner

(T) 1.202.879.3639

Greg Castanias, head of Jones Day's Federal Circuit team, has almost 30 years' experience as a leading appellate and intellectual property litigator. His experience includes five Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. He is a Fellow of the American Academy of Appellate Lawyers.

His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. Greg also has significant experience in state tax disputes before the U.S. Supreme Court and state appellate courts.

A "Trailblazer and Pioneer" in intellectual property law (The National Law Journal), and an IP and Life Sciences "Star," Greg has been "instrumental in driving the firm's standout appellate practice" (IAM Patent 1000). He is "a sharp and effective advocate who picks up the details of the matter quickly" and "a great issue-spotter and skilled advocate" (Legal 500), with "an instinctual feel for the art of persuasion before the Federal Circuit, where he is highly respected" (IAM Patent 1000).

Greg is the lead author of Federal Appellate Practice and Procedure (West Publishing 2d ed. 2017) and is an adjunct professor of law at Indiana University's Maurer School of Law, where he teaches Appellate Practice and Procedure and Federal Circuit Advocacy.

Greg has represented clients such as Abbott, Celgene, DePuy Spine, Dexcom, DIRECTV, Google, Histogen, Huawei, IBM, Intersil, LabCorp, Limited Brands, MathWorks, Merck, Merial, Myriad Genetics, Pfizer, Procter & Gamble, Purdue Pharma, SanDisk, SAS Institute, Sinochem, and Transocean.

Experience

  • U.S. Bank wins appeal, invalidates patent relating to check processing methodsJones Day successfully represented U.S. Bancorp and Elavon, Inc. on an appeal from a judgment that they had infringed Solutran, Inc.'s patent relating to check processing methods.
  • Google obtains victory at Federal Circuit by invalidating all asserted claims from traffic map patentJones Day obtained a victory for Google LLC at the Federal Circuit in an appeal from a decision of the Patent Trial and Appeal Board ("PTAB") concerning patent claims directed to processing geographical information relating to traffic.
  • Google secures remand from Federal Circuit directing PTAB to consider whether claims related to online traffic maps are unpatentableJones Day successfully represented Google LLC at the Federal Circuit in an appeal from a decision of the Patent Trial and Appeal Board ("PTAB") concerning patent claims directed to on-line traffic maps.
  • Google secures award of attorneys' fees at the Federal CircuitJones Day successfully represented Google LLC at the Federal Circuit, obtaining an affirmance of an attorneys' fees award of $820,000 after plaintiff, Max Sound Corporation's, case was dismissed for lack of standing.
  • The Cato Institute and Professor Gregory Dolin submit brief supporting patentees in interpretation of America Invents ActOn behalf of the Cato Institute and Professor Gregory Dolin, Jones Day submitted an amici curiae brief arguing that executive agencies may not initiate post-grant, inter partes, and covered-business-method review proceedings before the Patent and Trademark Office.
  • Wonderland Nurserygoods defends patents claims in remanded IPRsJones Day is defending Wonderland Nurserygoods Co. Ltd. before the PTAB in a SAS remand for consideration of previously non-instituted grounds of unpatentability of challenged claims.
  • Purdue Pharma successfully resolves Hatch-Waxman patent infringement claims against Amneal and Kashiv related to OxyContin®Jones Day successfully represented Purdue Pharma L.P. in related Hatch-Waxman patent infringement actions against defendants Amneal Pharmaceuticals, LLC and Kashiv Pharma, LLC, pertaining to the submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Huawei wins patent appeal and receives its attorneys' fees and experts' costsA cross-practice team from Jones Day successfully represented Huawei Technology Co., Ltd. before the Federal Circuit and obtained a complete affirmance of the district court's grant of summary judgment of noninfringement, and the district court's award of attorneys' fees and expert-witness costs.
  • ION Geophysical wins appeal holding 30 of competitor's patent claims unpatentableION Geophysical, represented by a cross-office, cross-practice team of Jones Day lawyers, obtained a complete victory on appeal against one of its competitors when the Federal Circuit affirmed six final written decisions of the U.S. Patent Office's Patent Trial and Appeal Board (PTAB) holding unpatentable a total of 30 claims across three WesternGeco patents in inter partes review proceedings.
  • Intersil obtains reversal of $77 million judgment in trade-secret and patent disputeIntersil Corporation (now known as Renesas Electronics America Inc.), represented by a cross-office, cross-practice team of Jones Day lawyers, obtained a Federal Circuit reversal of a $77 million judgment previously entered in favor of plaintiff Texas Advanced Optoelectronic Solutions, Inc. (TAOS) after a 2015 jury trial in the U.S. District Court for the Eastern District of Texas.
  • SAS Institute win in Supreme Court is a game-changer for PTAB casesJones Day represented SAS Institute Inc. in its recent 5-4 win before the U.S. Supreme Court, which will fundamentally transform the way that patents are litigated before the Patent Trial and Appeal Board of the U.S. Patent Office.
  • Wonderland Nurserygoods restores patent claims with Federal Circuit reversalWonderland Nurserygoods Co. Ltd., represented by a cross-office, cross-practice team of Jones Day lawyers, obtained a reversal of a decision from the Patent Trial and Appeal Board (PTAB) which restored Wonderland's challenged claims from its U.S. Reissue Patent No. RE43,919, for an easy-to-assemble baby crib.
  • Everytown for Gun Safety defends Washington State ballot measure requiring background checks for firearm salesJones Day successfully represented Everytown for Gun Safety Action Fund in intervening at trial and on appeal to defend a successful Washington state ballot measure requiring background checks for all firearm sales and transfers.
  • Avid settles revived data storage patent infringement suit against Harmonic shortly before trialAfter a Jones Day team obtained a reversal of an adverse jury verdict from the United States Court of Appeals for the Federal Circuit on behalf of Avid Technology, Inc. ("Avid"), the case settled shortly before trial.
  • Purdue Pharma asserts patent infringement claims under Hatch-Waxman Act related to OxyContin® against MylanJones Day successfully represented Purdue Pharma L.P. in a Hatch-Waxman patent infringement action against defendants, relating to the defendants' submission of an Abbreviated New Drug Application to the FDA seeking approval of generic versions of OxyContin®, a widely prescribed treatment for pain relief.
  • Xilinx proves unpatentability of third party patent claims in USPTO IPR and at Federal CircuitJones Day successfully represented Xilinx, Inc. in defending patent claims asserted by PLL Technologies, Inc. in the District of Delaware as well as before the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge to the patent and on the subsequent appeal to the Federal Circuit.
  • Google prevails at Federal Circuit in IPR challengeJones Day successfully represented Google, Inc. before the Federal Circuit by obtaining an affirmance of the PTAB's decision in an IPR proceeding.
  • Everytown and Moms Demand Action intervene and participate as amicus in support of public safety measures related to gun violenceJones Day is representing Everytown for Gun Safety and its affiliate Moms Demand Action as party or amicus in multiple lawsuits, arguing in support of public safety measures that respect the Second Amendment and protect people from gun violence.
  • Merial successfully defends patent-ineligibility ruling before Federal CircuitJones Day, on behalf of Merial L.L.C., successfully obtained a precedential opinion from an unanimous panel of the U.S. Court of Appeals for the Federal Circuit on April 8, 2016, affirming a district court judgment that a patent asserted against Merial, as well as numerous other biotechnology and pharmaceuticals companies, is invalid under 35 U.S.C. § 101.
  • DIRECTV and component manufacturers prevail on summary judgment in patent infringement caseJones Day representing The DIRECTV Group, Inc., as well as numerous manufacturers of components used in DIRECTV's systems, prevailed by obtaining summary judgment rulings holding: (1) that a covenant not to sue between DIRECTV and Global was breached by Global's filing of this lawsuit; and (2) that the component manufacturers did not infringe Global's patents.
  • Additional Publications

    • May 2017Castanias and Klonoff's Appellate Practice and Procedure in a Nutshell, Second Edition, Thomson Reuters
    • December 2014Recent Developments in Patent Law—A View From An Appellate Perspective, in Inside the Minds: The Impact of Recent Patent Law Cases and Developments, Thomson Reuters
    • 20112010 Patent Law Decisions of the Federal Circuit: The Advent of "The Rader Court," 60 Am. U. L. Rev. 845
    • Fall 2007Decisional 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
    • March 2007Preliminary Reflections on Sinochem, Opinio Juris Weblog
    • November 2004Commentary: State Tax Incentives and the Commerce Clause, Jones Day State Tax Return
    • October 2003Preserving Errors for Appeal in the U.S., 156 Patent World (U.K.) 22
    • Summer 1998Tangled Web: Personal Jurisdiction and the Internet, Litigation, Vol. 24, No. 2, p. 27
    • 1998The Supreme Court and State Taxation: 1996-97, and a Glimpse of the Future to Come, 3 State & Local Tax Lawyer 119 (1998)
    • November 1996Certiorari in Business Cases: Improving Your Chances, The Practical Litigator, Vol. 7, No. 6, p. 27
    • 1995, with Supplement 1997Leading U.S. Supreme Court State Tax Cases: Official Syllabi, Notes, and Indices
    • August 2, 1993Daubert Doesn’t End Debate on Experts, National L.J.

    Speaking Engagements

    • September 27-28, 2018Minnesota CLE’s Midwest Intellectual Property Institute
    • September 20-21, 20189th Annual Supreme Court IP Review at Chicago-Kent
    • June 21, 2018Federal Circuit Bar Association's Bench & Bar® Conference: Panel on Excellence in Appellate Practice
    • May 31, 2018A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard
    • May 2, 2018The Supreme Court Decided Oil States & SAS Institute: Now What?
    • September 18-20, 2017Appellate Briefwriting in the Digital Age, Fifth Annual Joint Appellate Advocacy Training
    • March 17, 2017Intellectual Property in a Globalized World, American Intellectual Property Association Quarterly Journal's 2d Annual Symposium
    • November 3, 2016The U.S. Supreme Court in Transition: A Review and Preview of The Court's Constitutional Decisions from a Post-Scalia Perspective
    • June 13, 2016Patents In The Federal Circuit and the Supreme Court: A Look At How The Two National Appellate Courts Have Treated Patents Since The Federal Circuit’s Creation In 1982
    • June 13, 2016The Ethics Of Appellate Practice: How The Rules and Standards Of Professional Responsibility Apply In The Appellate Courts
    • January 27, 2016Hot topics in Intellectual Property Rights: The Supreme Court, the Federal Circuit, and Other Developments, Jones Day University
    • September 23, 2015Ethics--And Professionalism--In Appellate Practice (3d Annual Joint Appellate Advocacy Training)
    • November 10, 2014A Review of the 2013-2014 Decisions of the United States Supreme Court
    • May 16, 2014Patent Law 101: How the Supreme Court is Using Subject-Matter Eligibility to Reshape the Entire Patent Statute, AIPLA Spring 2014 Meeting
    • May 8, 2014Patents in the Supreme Court: A Tense, Ongoing Dialogue with a Federal Circuit in Flux, Defense Research Institute seminar: "The IP Litigator: Protect, Defend, Prevail"
    • April 2014Staying Current in the World of Patent Litigation: A Year (and more) in Review, ABA Intellectual Property Law Section Spring Meeting
    • November 11, 201351st Annual Conference on Intellectual Property Law, Center for American & International Law, Pioneering Women in the Law
    • Fall 2013Insights into the Myriad Genetics Decision, Business Development Academy Webinar
    • July 24, 2013Association for Molecular Pathology v. Myriad Genetics: Navigating the Isolated DNA Patent Eligibility Jungle, AIPLA Webinar
    • June 18, 2013Myriad: Implications of the U.S. Supreme Court Opinion, IPO Webinar
    • June 6, 2013The Myriad Case: The Supreme Court and Patent Eligibility
    • April 23, 2013Discussion of State Tax Cases, Issues and Policy Matters to Watch in 2013 & Beyond – Including Certain Federal Legislation, Council on State Taxation ("COST") North Atlantic Regional State Tax Meeting
    • November 15, 2012National Association of College and University Attorneys—Myriad Genetics, Inc. and Mayo v. Prometheus: Are Diagnostics Ever Patentable?
    • September 24, 2012The State of Patent Litigation: A Conversation with the Federal Circuit
    • July 21, 2012The Evolving Librarian, American Association of Law Libraries Annual Meeting
    • April 20, 2012The Federal Circuit: Guardian of Our Intellectual Property Crown Jewels, ABA CLE Conference
    • April 9, 2012Mayo v. Prometheus: Implications for Patent Litigation, Patent Procurement, Personalized Medicine, and the Biotechnology Industry
    • March 28, 2012Health Care 2012: Issues and Answers for a Complex Industry
    • March 27, 2012An Evening With Greg Castanias and Joan Jarosek: Adding Value to Your Law Firm, Law Library Association of Greater New York
    • December 8, 2011Corporate Counsel Magazine's 3rd Annual Controlling Legal Costs: Reducing Legal Costs With Cutting-Edge Technology
    • November 16, 2011Broadening the Reach of the ITC Big Time: The Federal Circuit Decision in TianRui v. ITC, IPO webinar
    • September 22, 2011The Myriad Genetics Case, AIPLA webinar
    • July 23, 2011Library Management: A Partner's Perspective, American Association of Law Librarians' 2011 Annual Meeting
    • July 14, 2011Nature v. Nurture – Lessons from the Federal Circuit About Section 101
    • June 22, 2011Patent Litigation after Microsoft v. i4i, IPO webinar
    • February 10, 2011A First Look at the 2010 Decisions of the United States Court of Appeals for the Federal Circuit
    • October 13, 2010The Extraterritorial Reach of the U.S. Patent Law after Transocean, IPO webinar
    • May 20, 2010Retroactivity & Retained Refunds: Can They Really Keep Your Money?, Georgetown 2010 Advanced State & Local Tax Institute
    • February 24, 2010Preparing for and Arguing Patent Appeals Before the Federal Circuit
    • October 19, 2009The Federal Circuit's Recent Decision in Martek v. Lonza: A Discussion About This Biotech Patent Appeal and the Rare Five-Judge Federal Circuit Panel That Decided It.
    • November 20, 2008High-Stakes Patent Litigation (or, How Lawyers Saved The Entire U.S. Cell-Phone Industry)
    • November 14, 2008Fourth Annual Advanced Patent Law Institute, University of Texas, moderator, Judicial Panel
    • June 17, 2008Review of the Supreme Court's 2007-2008 Term, moderator, Edward Coke Appellate Inn of Court:
    • June 5, 2008Everything You Wanted to Know About Making Partner, but Were Afraid to Ask, panelist, DC Lawyers' Forum
    • April 18, 2008The New Private Ordering of Intellectual Property: The Emergence of Contracts as the Drivers of Intellectual Property Rights, panelist, University of Maryland School of Law (Read the accompanying article here.)
    • December 11, 2007A Meeting with Leading Antitrust and Patent Experts on Key Mergers, Antitrust, and Patent Cases in Telecom, Media, and Tech
    • November 29, 2007An Introduction To Significant Issues In U.S. Law: A Presentation for a Delegation of Lawyers and Officials from Jiangsu Province, China
    • November 28, 2007High-Stakes Patent Litigation Practice: Patent Litigation in the International Trade Commission, the Federal Circuit, and the Supreme Court
    • October 12, 2007A Meeting with Leading Antitrust and Patent Experts on Key Mergers, Antitrust, and Patent Cases in Telecom, Media, and Tech
    • September 26-27, 2007ACI's 9th Advanced Forum on Biotech Patents
    • May 10, 2007Supreme Court’s Opinion in KSR Changes Patent Landscape, ALI-ABA Teleseminar
    • April 25, 2007The Supreme Court's New Interest in Patent Cases and the Federal Circuit
      http://www.ali-aba.org/aliaba/TWMV01.htm
    • April 3, 2007The Supreme Court and Patent Law, and What It Means for IP Appellate Advocacy
    • February 6, 2007Preserving Errors for Appeal in IP Cases
    • January 23, 2007Emerging Issues in International Trade and International Law and Litigation: A Presentation for Officials of the Chinese Ministry of Commerce
    • January 17, 2007The MedImmune decision and the KSR argument: The Supreme Court Continues its Dialogue With the Federal Circuit
    • September 22, 2006KSR v. Teleflex -- The Law of Obviousness: Is a Change Coming from the U.S. Supreme Court?
    • September 19, 2006The Implications of United States v. Georgia for States, National Association of Attorneys General, Civil Rights Conference
    • July 20, 2006The Implications of the U.S. Supreme Court's Ruling in the Patent Infringement case eBay Inc. v MercExchange LLC, ALI-ABA Telephone Seminar, IP Law Series
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