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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, electronics, software, medical devices, and information systems. He is involved in all phases of patent litigation, including, 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.

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.

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 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 regarding VLSI digital clocking circuits.
  • Urologix v. Prostalund (E.D. Wis.). Defended co-defendant ACMI against a claim of patent infringement involving a transurethral microwave thermorherapy system for treating benign prostatic hyperplasia; obtained summary judgment of invalidity of one of Urologix's 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.
  • Served on the firm's compensation committee, 2013-2016 and as leader of the firm's electrical and computer technology practice group, 2010-2013.
  • 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

  • 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
  • Institute of Electronic and Electrical Engineers

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