Frank A. DeCosta III Ph.D.

Partner

Frank DeCosta leads the firm's electrical and computer technology practice group. He has significant experience in patent litigation, client counseling, and providing opinions related to computers, electronics, software, medical devices, and information systems. He is involved in all phases of patent litigation, including, for example, worldwide discovery efforts, claim construction, motion practice, conducting depositions, and examining witnesses before a jury.

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. 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, DVD, CD, DICOM, and various cell phone and TV standards.

Recognized in 2008 by IP Law & Business magazine as one of the "Top 50 IP People Under 45," Dr. DeCosta often presents at CLE programs on topics related to U.S. patent litigation practice, issues related to patent litigation involving standards, patent pooling, and due diligence for patent matters. He also speaks at programs for engineers and engineering students regarding intellectual property legal issues.

Highlights

• 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.
• Positive Technology v. BenQ (E.D. Tex.). First chair defending Philips from a patent infringement claim directed to plasma and LCD televisions, which concluded in a favorable settlement.
• Bellcore v. FORE (D. Del.). Counsel for Bellcore in a patent infringement action involving patents directed to ATM, SONET, and IEEE 802 networking.
• Integrated Circuit Systems v. Winbond (N.D. Cal.). Defended Winbond in a patent infringement action directed to VLSI digital clocking circuits.
• Urologix v. Prostalund (E.D. Wis.). Defended co-defendant ACMI Corporation against a claim of patent infringement action involving a transurethral microwave thermorherapy system for treating benign prostatic hyperplasia and obtained summary judgment of invalidity of one of Urologix' asserted patents, which resulted in a favorable settlement of the litigation.
• 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 three litigations concluded with favorable worldwide settlements.
• Led the patent analysis and worldwide enforcement coordination effort of the MP3 licensing program, which has more than 800 licensees.
• Directed a due diligence program that required an analysis of more than 2,000 patents.
• Ten years of experience as a scientist with leading technology companies, including six years with AT&T Bell Labs.

Professional Recognition

• 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.

Professional Activities

• American Intellectual Property Law Association
• Institute of Electronic and Electrical Engineers

Select Publications

• Coauthor. "The Evolving Standard for Patent Misuse in Patent Pools," Maryland State Bar Association's Annual Intellectual Property Law Update, June 2010.
• Coauthor. "Litigating Intellectual Property Covering Industry Standards," Maryland State Bar Association's Annual Intellectual Property Law Update, June 2009.
• "Application of the Revised Fundamental Theorem of Moment Invariants to Computer-Aided Diagnosis of Medical Imanges," Proceedings 13th Southern Biomedical Engineering Conference, April 1994.
• "Comparison of Fractal and Moment Invariant Features for Medical Image Classification," Proceedings 13th Southern Biomedical Engineering Conference, April 1994.
• "Identification and Correction of Rejection and Substitution Errors in Optical Character Recognition Systems," Proceedings IS&T/SPIE Symposium of Electronic Imaging Science and Technology, Feb. 1993.
• "Neural Network Recognition of Textured Images Using Third Order Cumulants as Functional Links," Proceedings IEEE ICASSP, March 1992.