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Frank A. DeCosta, III, Ph.D.
Partner
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  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4012
frank.decosta@finnegan.com frank.decosta@finnegan.com

Frank A. DeCosta, III, Ph.D.

Partner

  • +1 202 408 4012 +1 202 408 4012
  • frank.decosta@finnegan.com frank.decosta@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard
Frank DeCosta, Ph.D., leader of the firm's litigation section, has significant experience in patent litigation, client counseling, and providing opinions related to computers, consumer electronics, software, medical devices, and information systems. 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.

Frank has managed patent enforcement activities for clients in the United States, Europe, and Asia. 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).

Most of Frank'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, Frank 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.

Frank 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.

Frank was recognized in Intellectual Asset Management's Strategy 300 as a top IP strategist, and by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work. Legal Media Group has ranked him among top U.S. patent lawyers since 2011. He was 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.

Experience

NFC Technology LLC v. Samsung Electronics, Co., Ltd.

Represented NFC Technology in patent enforcement related to its near-field communication technology licensing program.

2:15-cv-00283, E.D. Tex., Judges Gilstrap, Payne

Audio MPEG v. Creative Labs; Thomson S.A.

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.

2:05-cv-00185; 1:05-cv-00565, E.D. Va., Judges Friedman, Stillman, Hilton, Poretz

One-Blue v. Imation Corp.

Represented plaintiffs One-Blue, Sony, Pioneer, Philips, and Panasonic in a litigation asserting certain patents from the One-Blue pool covering essential elements of Blu-ray disc standards.

1:13-cv-00917, D. Del., Judge Stark

U.S. Philips Corporation v. KXD Technology Inc.; Norcent Technology Inc.

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.

2:05-cv-08953, C.D. Cal., Judges Abrams, Gee, Rafeedie, Real
2:06-cv-01366, C.D. Cal., Judges Abrams, Rafeedie, Real

Koninklijke Philips NV et al. v. Tongfang Global Inc. et al.

Represented Philips in patent dispute relating to LED televisions and content streaming.

2:19-cv-01366, C.D. Cal., Judges Kornstadt, Standish

Tamabo, Inc. v. Koninklijke Philips NV

Represented defendant in patent dispute relating to picture archiving and communication systems (PACS).

2:17-cv-00750, E.D. Tex., Judges Bryson, Payne

20 more

Insights

Articles

Is AI Pushing the Envelope of IP Protection?

Is AI Pushing the Envelope of IP Protection? Is AI Pushing the Envelope of IP Protection?

November 17, 2020

World Intellectual Property Review

Conference

IPBC Connect IPBC Connect

September 1-29, 2020

Virtual

Seminar

Scientific Shark Tank: Improving Our World Through University Research Scientific Shark Tank: Improving Our World Through University Research

July 17, 2019

Ithaca

Conference

2019 China Corporate Legal Affairs Conference 2019 China Corporate Legal Affairs Conference

May 11, 2019

Beijing

Articles

Does U.S. Patent Law Account for AI-Assisted Biopharma Innovation?

Does U.S. Patent Law Account for AI-Assisted Biopharma Innovation? Does U.S. Patent Law Account for AI-Assisted Biopharma Innovation?

March 25, 2019

Bloomberg Law

Conference

2019 HNBA Corporate Counsel Conference & Moot Court Competition 2019 HNBA Corporate Counsel Conference & Moot Court Competition

March 20-23, 2019

Albuquerque

16 more

News

Commentary

Patent Litigation Trends to Watch in 2021 Patent Litigation Trends to Watch in 2021

January 3, 2021

Law360

Commentary

3 Ways the Pandemic Has Shaped Patent Litigation, So Far 3 Ways the Pandemic Has Shaped Patent Litigation, So Far

June 10, 2020

Law360

Press Release

National Law Journal Names Finnegan D.C. IP Litigation Department of the Year National Law Journal Names Finnegan D.C. IP Litigation Department of the Year

May 27, 2020

National Law Journal

Commentary

Intellectual Property Winner: Finnegan, Henderson, Farabow, Garrett & Dunner Intellectual Property Winner: Finnegan, Henderson, Farabow, Garrett & Dunner

May 26, 2020

National Law Journal

Media Mention

Strategies for Protecting Artificial Intelligence Intellectual Property in U.S. Strategies for Protecting Artificial Intelligence Intellectual Property in U.S.

June 2019

Faren Magazine

Commentary

Being Nimble Wins the Game Being Nimble Wins the Game

May 2019

fivehundred Magazine
5 more

Professional Activities

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

Admissions

  • District of Columbia
  • Maryland
  • U.S. District Court, E.D. Wisconsin
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. Court of Appeals, Second 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's Practices

Patent Litigation
Appeals
Patent Trial
Pre-Trial Strategy
Patent Portfolio Management, Monetization, and Transactions
Antitrust and Misuse
Due Diligence
Licensing, Pooling, and Other Transactions
Opinions and Counseling
Post-Grant Proceedings
IPR, PGR, and CBM

Frank's Industries

Electronics and Information Technology
Artificial Intelligence (AI) and Machine Learning (ML)
Electrical and Computer Technology
Life Sciences
Digital Health
Medical Device and Diagnostics

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