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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. 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.

Experience

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 and IP2IPO Innovations, Ltd. v. Boston Scientific Corp.

Represented Plaintiffs Koninklijke Philips NV and IP2IPO Innovations, Ltd. against Boston Scientific in patent suit involving medical devices.

1:20-cv-01487, D. Del., Judge Noreika

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

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Insights

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

Event

AI IP Europe 2022 AI IP Europe 2022

November 3, 2022

Munich

Articles

AI Can't Hold Patents to U.S. Inventions (For Now)

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 Today

Podcasts

August 2022 - Last Month at the Federal Circuit Podcast Series

August 2022 - Last Month at the Federal Circuit Podcast Series August 2022 - Last Month at the Federal Circuit Podcast Series

August 26, 2022

Download

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

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Upcoming Events

Event

IPBC Global 2023 IPBC Global 2023

June 12-14, 2023

San Diego

News

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

IPWatchdog

Commentary

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 Management

Commentary

Leading Questions: Finnegan’s Frank DeCosta Leading Questions: Finnegan’s Frank DeCosta

March 5, 2021

Bloomberg Law

Commentary

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 Property

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
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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

Enforcement and Litigation
Antitrust and Misuse
Appeals
Patent Litigation
Pretrial Strategies
Trade Secrets
Patent Invalidation Proceedings
PTAB Post-Grant Review: IPR, PGR, and CBM
Portfolio and Market Strategy
Due Diligence
Licensing, Pooling, and Other Transactions
Trade Secrets

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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