Partner
Frank DeCosta, Ph.D. 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, as the leader of the firm's litigation section, and 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.
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
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 and IP2IPO Innovations, Ltd. v. Boston Scientific Corp.
1:20-cv-01487, D. Del., Judge Noreika
Koninklijke Philips NV et al. v. Tongfang Global Inc. et al.
2:19-cv-01366, C.D. Cal., Judges Kornstadt, Standish
Tamabo, Inc. v. Koninklijke Philips NV
2:17-cv-00750, E.D. Tex., Judges Bryson, Payne
Event
Around the World with Finnegan - Key Developments and Trends in IP Law Around the World with Finnegan - Key Developments and Trends in IP Law
March 15, 2023
Taipei
Event
Technology Innovation Workshop: Intellectual Property Technology Innovation Workshop: Intellectual Property
March 3, 2023
Ithaca
Articles
AI Can't Hold Patents to U.S. Inventions (For Now) AI Can't Hold Patents to U.S. Inventions (For Now)
October 20, 2022
Westlaw TodayPodcasts
August 2022 - Last Month at the Federal Circuit Podcast Series August 2022 - Last Month at the Federal Circuit Podcast Series
August 26, 2022
Federal Circuit IP Blog
Podcast Series: Last Month at the Federal Circuit - August 2022 Podcast Series: Last Month at the Federal Circuit - August 2022
August 26, 2022
Commentary
What the Patent Bar Is Saying About the USPTO’s Call for Comments on AI Inventorship What the Patent Bar Is Saying About the USPTO’s Call for Comments on AI Inventorship
February 19, 2023
IPWatchdogCommentary
Top Takeaways from Docket Navigator’s 2021 Year in Review Top Takeaways from Docket Navigator’s 2021 Year in Review
February 2, 2022
Intellectual Asset ManagementCommentary
Leading Questions: Finnegan’s Frank DeCosta Leading Questions: Finnegan’s Frank DeCosta
March 5, 2021
Bloomberg LawCommentary
How Counsel Balance USPTO and Court Edicts on Section 101 How Counsel Balance USPTO and Court Edicts on Section 101
March 4, 2021
Managing Intellectual PropertyCommentary
Patent Litigation Trends to Watch in 2021 Patent Litigation Trends to Watch in 2021
January 3, 2021
Law360Commentary
3 Ways the Pandemic Has Shaped Patent Litigation, So Far 3 Ways the Pandemic Has Shaped Patent Litigation, So Far
June 10, 2020
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