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Frank A. DeCosta III Ph.D.
+1 202 408 4012
frank.decosta@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

+1 202 408 4000
Fax +1 202 408 4400

Bar and Court Admissions

  • District of Columbia
  • Maryland
  • U.S. District Court, E.D. Wisconsin
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office

Education

  • Georgetown University Law Center
    J.D., cum laude, 1996
  • Howard University
    Ph.D., Electrical Engineering, 1992
  • Cornell University
    M.Eng., Electrical Engineering, 1986
  • Cornell University
    B.S., Electrical Engineering, 1985

Languages

  • French

Frank A. DeCosta III Ph.D.

Partner

Frank DeCosta has significant experience in patent litigation, client counseling, and providing opinions related to computers, consumer electronics, software, medical devices, and information systems. He is involved in all phases of patent litigation in more than 50 cases, including worldwide discovery efforts, claim construction, motion practice, conducting depositions, and examining witnesses before a jury. He is also lead counsel in inter partes review proceedings before the Patent Trial and Appeal Board (PTAB).

Dr. DeCosta has managed patent enforcement activities for clients in the United States, Europe, and Asia. As a first chair litigator, he directed litigation teams that obtained jury and bench judgments of more than $100 million. He frequently defends clients against patent infringement charges directed to complex technologies.

Most of Dr. DeCosta's cases have involved technology related to his previous research, academic training, and work experience, which includes hardware and software research and development of multimedia telecommunications systems, complex signal processing systems, image processing systems, medical systems, and pattern recognition systems. Prior to joining Finnegan, Dr. DeCosta had ten years of experience as a scientist with leading technology companies, including six years with AT&T Bell Labs. He frequently represents clients in patent matters related to de facto and de jure industry standards including: IEEE 802.X, ISDN, JPEG, MPEG, MP3, ATM, SONET, Blu-ray, DVD, CD, NFC, DICOM, and various cell phone and TV standards.

Dr. DeCosta often presents at CLE programs on U.S. patent litigation practice, patent standards, patent pooling, and due diligence for patent matters. He also speaks at programs for engineers and engineering students on intellectual property legal issues. He has served on the firm’s management and compensation committees and served as leader of the firm's electrical and computer technology practice group that consisted of more than 100 lawyers.

Highlights

    Multimedia Technology
  • Philips v. Norcent and Philips v. KXD (C.D. Cal.). Represented Philips as the first chair running litigation teams enforcing patents directed to DVD technology. These cases resulted in judgments from the bench and a jury verdict totaling more than $100 million.
  • One-Blue, Sony, Pioneer, Philips, and Panasonic v. Imation (D. Del.). Represented One-Blue, Sony, Pioneer, Philips, and Panasonic in a litigation asserting patents from the One-Blue pool.
  • Audio MPEG v. Creative Labs, and Audio MPEG v. Thomson (E.D. Va.). Represented Audio MPEG, Philips, France Telecom, Telediffusion De France S.A., Institut fur Rundfunktechnik GmbH, and Bayerische Rundfunkwerbung GmbH in a series of litigations forming part of a worldwide patent enforcement program to protect rights directed to MPEG audio technology. All litigations concluded with worldwide settlements. The program currently has more than 1,000 licensees.
  • Philips v. Kodak (D. Del.). Represented Philips in patent enforcement related to its JPEG licensing program.
  • Christie Digital Systems v. Philips (C.D. Cal.). Defended Philips from patent infringement claims directed to its optical products.

    Telecommunications
  • NFC Technology v. Samsung (E.D. Tex.). Represented NFC Technology in patent enforcement related to its near-field communication technology licensing program.
  • Bellcore v. FORE (D. Del.). Counsel for Bellcore in a patent infringement action involving patents directed to ATM, SONET, and IEEE 802 networking.
  • Philips and Sharp v. Motorola (S.D.N.Y.). Represented Philips and Sharp in a patent infringement action related to their UMTS licensing program.
  • REC Software USA v. LG Electronics (W.D. Wa.). Defended LG Electronics from patent infringement claims relating to mobile phones.
  • Affinity Labs of Texas v. LG Electronics (N.D. Cal.). Defended LG Electronics from patent infringement claims relating to mobile phones.

    Medical Devices/Health Care
  • Luv 'n Care v. Avent et al. (E.D. Tex., Fed. Cir.). Defended Avent against claims of patent infringement relating to non-spill valves in products sold by its mother and child care business.
  • Nova Design Technology v. Children's Medical Ventures et al. (E.D. Penn.). Defended Children's Medical Ventures and other Philips entities against claims including patent infringement and theft of trade secrets relating to infant heel warmers.
  • University of Florida Research Foundation v. Philips (N.D. Fla.). Defended Philips from patent infringement claims relating to radiation therapy systems.
  • Coronary Stent Visualization Corp. v. Philips (E.D. Tex.). Defended Philips from patent infringement claims relating to medical imaging systems.
  • Hospital Systems Corporation v. Philips (E.D. Tex.). Defended Philips from patent infringement claims relating to medical image compression and PACS/DICOM standards.
  • Dr. Systems v. Philips (S.D. Cal.). Defended Philips from patent infringement claims relating to medical image compression and PACS/DICOM standards.
  • Urologix v. Prostalund (E.D. Wis.). Defended co-defendant ACMI against a claim of patent infringement involving a transurethral microwave thermotherapy system for treating benign prostatic hyperplasia; obtained summary judgment of invalidity of one of Urologix's asserted patents.

    Electronics/Software
  • Positive Technology v. BenQ (E.D. Tex.). Defended Philips from patent infringement claims relating to plasma and LCD televisions.
  • Voice Domain Technologies v. Philips (W.D. Okla.). Defended Philips from patent infringement claims relating to speech recognition technology.
  • Koninklijke Philips NV et al v. Nintendo Co., Ltd. (D. Del.). Represented Philips in a patent infringement action relating to video gaming systems.
  • Integrated Circuit Systems v. Winbond (N.D. Cal.). Defended Winbond in a patent infringement action regarding VLSI digital clocking circuits.
  • U.S. Ethernet v. Sharp (E.D. Tex.). Defended Sharp from patent infringement claims related to ethernet features of business systems.

Professional Recognition

  • Ranked among top U.S. patent lawyers in Legal Media Group's Guide to the World's Leading Patent Law Practitioners since 2011.
  • Recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, 2014.
  • Selected by On Being a Black Lawyer to be featured in The Power 100 as one of the 100 most influential black attorneys in the United States, 2013.
  • Recognized by IP Law & Business as one of the "Top 50 IP People Under 45," 2008.

Professional Activities

  • American Intellectual Property Law Association
  • Cornell University Engineering College Council (Advisory Board member, Dean of the College of Engineering)

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