Francis DiGiovanni

Partner Wilmington
francis.digiovanni dbr.com
Phone: (302) 467-4266

About

Frank DiGiovanni represents clients in a variety of areas, principally patent litigation, trademark and copyright litigation, and litigation of unfair competition and trade secret cases in the mechanical, chemical, and electrical arts as well as other diverse areas of technology. As a patent litigator, Frank has secured victories for his clients on both the plaintiff and defense side, including a victory in a patent infringement jury trial, coupled with successful post-trial proceedings, which resulted in an award of more than $10 million in favor of his client. Frank has substantial litigation experience in patent cases in district courts across the U.S. Frank has a mechanical engineering degree and worked for three years for a heavy gear and transmission manufacturer. Frank has significant experience litigating patent cases pertaining to automotive and other mechanically engineered technology.

Experience

  • Led a trial team to a victory for Parker against a competitor, Champion Laboratories, in a case pertaining to automotive filters. After a 7-day jury trial, the jury found in favor of Parker on all issues, finding that Champion infringed literally and under the doctrine of equivalents, and found the infringement to be willful. The jury awarded Parker its full lost-profits damages, which were in excess of $6.5 million. After trial, and upon Parker’s motions, the court enjoined Champion, awarded Parker an additional $3.3 million in enhanced damages, declared that the case was “exceptional,” and granted Parker its attorneys’ fees. Parker-Hannifin Corporation et al. v. Champion Laboratories, Inc., Civ. No. 07-1375-SJO (N.D. Ohio).
  • Led a litigation team on behalf of client Parker against Champion Laboratories, a competitor in the automotive parts market. After defendant conceded infringement, the parties agreed to litigate, as a bench trial, the damages. A key aspect of the litigation related to whether there were acceptable, available, non-infringing alternatives to Champion’s infringing products. Judge Gaughan ruled in Parker’s favor on this and every other issue in the case and returned a judgment in Parker’s favor for nearly $1 million, which included all of Parker’s lost profits as well as a reasonable royalty on Champion’s sales made during the Provisional Rights period. Parker v. Champion is one of the few reported cases in which a plaintiff successfully obtained a royalty for activity during the Provisional Rights period. Parker Hannifin Corporation et al. v. Champion Laboratories, Inc., Civ. No. 06-2616-PAG (N.D. Ohio).
  • Defense of Parker against allegations of infringement of two truck transmission patents. Frank, along with Curt Lambert, moved to dismiss this case based on standing. The judge granted the motion, dismissing the case. Brookins v. Parker-Hannifin Corporation, Civ. No. 15-0065 (D.N.D.).
  • Lead counsel for plaintiffs in a case wherein the chief issue was patent inventorship. Case resolved prior to trial. Tekni-Plex, Inc. et al. v. Cain et al., Civ. No. 13-4502 (E.D. Pa.).
  • Represented plaintiffs in a complex patent infringement litigation pertaining to asphalt compositions and methods. Resolved via stipulation. ALM Holding Co. et al v. Arr-Maz Custom Chemicals Inc., Civ. No. 11-1069-GMS (D. Del).
  • Represented a number of financial sector entities against a non-practicing licensing company. Resolution via stipulation prior to trial. Phoenix Licensing, L.L.C. et al. v. ING Bank FSB et al., Civ. No. 10-64-TJW (E.D. Tex).
  • Represented defendant Vital in a patent infringement litigation pertaining to nutritional supplements. Favorably concluded (dismissed in its entirety) after claim construction ruling. Natural Alternatives International Inc. v. Vital Pharmaceuticals Inc. et al., Civ. No. 09-626-GMS (D. Del).
  • Led the patent infringement action pertaining to processes for reducing microbial contamination on poultry and other meats all the way up to trial, and then tried the case with a senior partner. A successful jury trial, followed by a successful appeal, resulted in the invalidation of all 17 patent claims asserted against client FMC. Ecolab USA, Inc. v. FMC Corporation, Civ. No. 05-831-JMR (D. Minn.).

Recognitions

Chambers USA, Delaware, Intellectual Property (2016)
Named an "IP Star" by Managing Intellectual Property (2016)
IAM Patent 1000 (2015)

Awards Methodology (www.drinkerbiddle.com/content/awards)

Francis DiGiovanni is highlighted by sources for his broad experience in patent litigation, having handled both lead and local counsel mandates for a wide range of clients. He also undertakes other IP work, including unfair competition and trade secrets matters.

Chambers USA, 2013

Led a trial team to a victory in a case where the court declared the case “exceptional” and the jury awarded in excess of $9.8 million plus attorneys’ fees.

Credentials

Bar Admissions

  • Delaware
  • U.S. Patent and Trademark Office

Education

  • University of Pittsburgh School of Law, J.D., 1995, summa cum laude
  • Bucknell University, B.S., Mechanical Engineering

Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, District of Delaware
  • U.S. District Court, Eastern District of Texas

Organizations

  • American Bar Association
  • American Intellectual Property Law Association (AIPLA)
  • Delaware State Bar Association
  • Federal Bar Association
  • Federal Circuit Bar Association (FCBA)
  • Intellectual Property Owners Association