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
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