A Federal Circuit And Intellectual Property Appeals Service In Full Stride

Editor: Mr. Castanias, would you tell our readers something about your background?

Castanias: I came to Jones Day in 1992 following a clerkship with Judge George C. Pratt of the United States Court of Appeals for the Second Circuit in New York. Shortly after joining the firm's Issues & Appeals practice, I found myself engaged in IP cases, specifically patent cases on appeal. Our first matter of that kind was the Lubrizol v. Exxon case, where we succeeded in having a $150 million judgment against our client reversed as a matter of law. That first case taught me a lot about the role of the appellate lawyer in an intellectual property case.

Editor: Would you share with us the factors that went into your decision to join Jones Day?

Castanias: After law school, I practiced at a law firm in my home town of Indianapolis for about a year prior to my clerkship on the Second Circuit. So I had some points of comparison. In considering Jones Day, the things that attracted me were the challenging and interesting work - the quality of the firm's work product - and the collegiality and team mentality that permeated, and continues to permeate, its culture.

Editor: How has your practice evolved over the course of your career?

Castanias: Being a young associate in the firm's Issues and Appeals practice, as I was in 1992, the goal was to develop my skills as a litigator, in both trial-court cases and in appeals. As time went on, I found that my cases tended to fall into several broad categories - one prominent one being intellectual property cases. But that's not all I've done, and it's not all I do. I've also argued two cases in the U.S. Supreme Court in the last year, along with the Federal Circuit practice I've had - which has numbered over 60 cases so far - over the course of my career.

Editor: Please tell us about the origins of Jones Day's IP practice.

Castanias: Jones Day was really one of the big-firm pioneers in this area. In the 1970s, the leaders of the firm realized that a complete general practice law firm was going to have to provide IP services to its clients, as intellectual property was becoming more and more important to them. So Jones Day became one of the first, if not the first general practice firm to include an IP practice as part of its general practice and to focus on the litigation aspects of IP protection. Since that time, the practice has grown - both in size and in expertise - and the firm is consistently recognized as having a top-flight IP practice.

Editor: And today? Please give us an overview of the firm's IP practice.

Castanias: Jones Day's IP practice in 2006 is truly global. There are over 250 lawyers engaged in this practice on a full-time basis today. Among that group are 48 Ph.Ds, and there is a significant number of lawyers with advanced degrees in various relevant disciplines, like electrical engineering, chemical engineering, polymer science, applied physics, microbiology, synthetic and organic chemistry, molecular biology, immunology, biochemistry, virology, genetics, computer science, software design and aeronautics. The IP practice resides in all of our domestic offices and in most of our foreign offices. I should mention our China IP practice in particular, since we have a strong presence in each of Hong Kong, Shanghai and Beijing, protecting and defending IP rights in that country, as well as doing the same for foreign companies in the United States through the federal courts and the U.S. International Trade Commission.

Editor: How about skill sets? Are there, for example, patent attorneys and patent litigation attorneys?

Castanias: Yes. In fact, our IP practice is divided into several different services. Patent litigation is one. Patent prosecution is another. The practice service that I coordinate with respect to Federal Circuit and IP appeals is a third. There is a service dedicated to International Trade Commission section 337 cases. Another one focuses on copyrights and trademarks; yet another on the life sciences; and finally, there is one focused on technology transactions. These are not rigid categories, though. Many of us cross over and provide multiple services: we have lawyers who are extraordinary patent litigators who are engaged in extensive life sciences work. Many of our people contribute to multiple services across the entire IP practice.

Editor: How does the IP appellate practice fit into this structure?

Castanias: As I mentioned, the structure is very fluid, and that's on purpose. It enables the firm to draw upon the right disciplines and practice areas to meet the needs of clients. For example, I am not just an IP lawyer. I have argued cases in the U.S. Supreme Court and in a number of Circuit Courts of Appeals. And I have tried cases in district courts and in a variety of state tribunals, not all having to do with intellectual property. I like to think of myself as bringing the skill set of generalist appellate litigation, as well as IP expertise, to the table. But we're all about putting the right team to bear on the case, and so the other lawyers who concentrate on this service are a pretty diverse crowd. Some are renowned patent trial attorneys; others are prominent life science patent prosecutors with Federal Circuit experience. And so on. But the lawyers who are listed on the Jones Day website as contributing to the appellate service aren't the only ones who might get called on to help on an appeal. The ultimate goal is to call upon Jones Day's extraordinary resources to put together the right team for the particular client and case.

There can be an enormous advantage to having some more generalized background, because the Federal Circuit's judges are not patent "specialists" - they're generalists, too. A few years ago, I was involved in an oral argument before the Federal Circuit at which one of the judges asked for analogies to the doctrine of "induced infringement" from other areas of the law. Opposing counsel, a boutique IP lawyer, was unable to address anything beyond copyrights and patents. But this particular judge had spent years handling criminal cases when he was a Justice Department lawyer, and he seemed to be more interested in analogies to the criminal law, which I had at least a little background on in my career. I think that is the kind of presence that can add credibility to the client's position in an appellate proceeding.

One of the profound misconceptions about the U.S. Court of Appeals for the Federal Circuit is that it is a specialty court. It is a court with a specialized jurisdiction, but its judges have a breadth of experience across a wide range of disciplines, including patents to be sure, but also including procedural issues in litigation, claims against the federal government, Fifth Amendment takings cases, veterans' appeals, federal employment cases, international trade cases, and so on. They are also tax lawyers of formidable expertise.

Finally, I must stress that this practice is not built upon a single go-to lawyer. That is sometimes the model that you see with this type of practice, particularly with some of the boutiques, whose appellate practices are synonymous with a single lawyer. That's not how we do business, though. Look at our United States Supreme Court practice: last term, we had more arguments than any other law firm in the country - six. Those six cases were argued by five different lawyers, myself included. That's the same approach we have with respect to IP appeals - we won't have one superstar lawyer; we'll have several. That's how our lawyers have amassed a record of handling cases in the Federal Circuit that is larger than all but the most active boutique firm.

Editor: How does a matter get to the appellate team?

Castanias: A matter may come to us in a variety of ways. We may participate in the representation of a client at trial level, where our skills in brief writing and oral advocacy may be a useful addition to a trial team, on things like summary judgment motions, post-trial motions, and sometimes on motions involving injunctions and appeal bonds. Another avenue is the client desiring new or additional counsel on appeal. Many of our appellate cases are cases which we as a law firm have handled at trial, as part of our hugely successful patent litigation practice, but more and more are coming to us for the first time on appeal.

Editor: How do you interface with the trial lawyers who have represented the client prior to appeal? This is often a sensitive area.

Castanias: This is a sensitive area. When we are asked to help on appeal for the first time, we urge the client to support a teaming relationship between trial counsel and our group. The firm's culture and its longstanding commitment to internal teamwork is of great help in striking the right balance in the relationship with trial counsel. In the Lubrizol case, for instance, we were able to forge an excellent teaming relationship with the firm of Pennie & Edmonds, both at trial and on the appeal, and the results were of great benefit to the client. I should add that when Pennie & Edmonds decided not to continue as a boutique firm, about 90 of its lawyers joined Jones Day, and we are delighted to count them now as Jones Day lawyers.

Editor: Who are the clients who are hiring Jones Day as new appellate counsel? What type of organizations?

Castanias: Typically, they are companies that have suffered an adverse judgment at the trial level. But not always. I can think of numerous representations where a client has come to us after a trial court win and asked us to handle the appeal because they want to do what they can to ensure that the decision survives appeal. It's an understandable investment: most of these matters involve large corporations, large judgments, serious injunctions, or all of those.

Editor: What about the future? Where would you like this practice to be in, say, five years?

Castanias: Our Federal Circuit and IP Appeals service is in very good shape today. I would not be sad if, in five years' time, we are exactly where we are today. But I expect it to grow in both size and importance. We are beginning to see the United States Supreme Court take on an increasing number of patent cases, because of their importance. The Federal Circuit remains prominent in the patent area. New technologies like file-sharing and the Internet are presenting major challenges for the copyright and trademark regimes in this country. We are seeing companies all over the world redoubling their investments in intellectual property development and adopting sophisticated strategies to leverage their IP portfolios as a profit center. With all of that going on, and the enormous stakes in so many of these cases, appeals are often going to be worth the investment. So with our resources, our expertise, and our experience, I would expect Jones Day to be at the top of anyone's list for IP appeals.

Published February 1, 2006.