For 30 years, Frank Bernstein has delivered effective legal solutions which have enabled his clients to protect and grow their patent positions. He helps secure, assert, defend, and monetize the patent rights underlying the high-tech innovations of some of the world’s leading technology companies. He has handled litigation, counseling, and prosecution matters in technologies relating to computers, software, electronics, wireless technologies, semiconductors, and e-commerce. Mr. Bernstein’s commitment to understanding his clients’ long term business goals, combined with his expertise in patent law, enables him to approach each matter efficiently.

Adept at securing favorable verdicts in high stakes patent cases, Mr. Bernstein has handled numerous trials and Markman hearings in district courts throughout California and around the country. His effectiveness as a litigator informs his ability to render pre-litigation validity and infringement opinions, negotiate license agreements, handle patent post-grant and post-issuance proceedings, build and grow patent portfolios, and win favorable decisions in patent arbitrations. He also advises clients on the protection of software-related intellectual property in areas including patent, copyright and trade secrets, as well as on licensing issues related to open source software. Mr. Bernstein also prosecutes patents in a variety of electrical and mechanical engineering disciplines, as well as computer software and business method patents. He is co-chair of the firm’s Asia Practice Group, and a member of the firm’s Management Committee.

Mr. Bernstein regularly speaks at leading industry events covering topics including current Federal Circuit and Supreme Court patent cases, legislative changes affecting patent law, patent litigation procedure and tactics, open source software, and patent valuation, including patent portfolio development. He has been recognized in the 2014 edition of IAM 1000 – The World’s Leading Patent Practitioners for California in the areas of “Litigation” and “Prosecution,” and the publication’s client feedback states that, “Frank Bernstein is a great litigator, but his additional prosecution experience edges him ahead of the pack. Simply put, he gets patents granted and helps you grow your business.” He has also been named a California “IP Star" by Managing Intellectual Property (2014) and has the highest Martindale-Hubbell rating, AV, which indicates that he is rated at the top level of professional excellence by his peers.

Outside of his career, Mr. Bernstein is an active member of his Presbyterian congregation, through which he donates his time to various local and worldwide charitable efforts, including feeding the homeless and underprivileged in his community, and sponsoring and enabling educational mission work in Africa.

Representative Matters
  • Mr. Bernstein has handled numerous reexaminations and litigations for a client in the Internet messaging space. Over the past seven years, he has represented this client in over a dozen lawsuits; a half-dozen pre-litigation licensing negotiations; and several reexaminations not only of the client’s patents, but also of opponents’ patents. In many of the cases, he has achieved across-the-board favorable Markman rulings. Several of the cases have settled on terms very favorable to the client.
  • He handled a multi-patent arbitration involving technology for early detection of breast cancer, and won a non-infringement decision from the three-person panel.
  • Mr. Bernstein has helped several clients build patent portfolios in a variety of industries, including signal processing; Internet searching and associated Web interface technologies; electronic design automation and associated online licensing technologies; and wireless communications and Ethernet technologies.
  • He has handled numerous major (multi-patent) opinion matters for a range of clients, involving technologies which range from hard disk drive storage devices and systems, to wired and wireless network communications.
  • Additional technologies he has handled include bone disease detection; antennas, laser diode arrays; electronic classrooms, robotics; voicemail systems, disk drive testing, video and audio systems, high-quality, high-volume printers, stereotactic radiosurgery, radiation imaging recording and reproducing systems, and various aspects of semiconductor circuitry and fabrication.

Bar and Court Admissions
  • California
  • District of Columbia
  • Registered Patent Attorney: U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the Northern District of Texas
  • U.S. District Court for the Western District of Wisconsin
Professional Organizations
State Bar of California (IP Section, Patent Standing Committee)
Bar Association of the District of Columbia
Licensing Executives Society (Software Committee; Silicon Valley Chapter Advisory Board)
IP Inn of Court (Bay Area Chapter)