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Kenyon Successfully Represents Toyota in Years-Long Patent Litigation

Kenyon & Kenyon LLP successfully represented Toyota Motor Corp. in a long term patent litigation against American Vehicular Sciences (AVS). Originally brought by AVS in the Eastern District of Texas, the matter asserted 24 patents across seven separate cases – accusing essentially every major Toyota vehicular safety system. In the three years since the original filing, the Kenyon team filed 12 separate petitions for inter partes review (IPR) and won a stay in the E.D. Tex. pending resolution of the IPRs. The Patent Trial and Appeal Board granted each of the IPRs, and significant claims were cancelled or dropped. Additionally, the Kenyon team successfully petitioned the Federal Circuit for a writ of mandamus and the case was transferred from the E.D. Tex. to the Eastern District of Michigan, and filed various invalidity summary judgment papers, causing the plaintiff to drop a number of other asserted patents. In May of 2015, the E.D. Mich. granted the plaintiff’s unopposed motions to dismiss with prejudice all of the remaining cases against Toyota. (2015)

Frank L. Bernstein Partner
Palo Alto, CA 1.650.384.4688

Overview

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 Experience

  • Mr. Bernstein has handled numerous patent matters for j2 Cloud Services, Inc. and its subsidiaries in the Internet messaging space. Over the past nine years, he has represented j2 and its subsidiaries in over a dozen lawsuits, achieving across-the-board favorable Markman rulings in many of those lawsuits.  He also has been involved in a number of reexaminations of j2’s or a subsidiary’s patents, as well as 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 won a non-infringement decision from a three-person panel in a multi-patent arbitration involving technology for early detection of breast cancer.
  • He counsels Cadence Design Systems on patent matters relating to various technologies, including system design and verification, functional verification, and simulation, and has participated in invention mining in several different technical areas.
  • He counsels Neato Robotics on patent matters relating to various aspects of robotics, including robotic cleaning systems and mapping of robot paths in operational areas.
  • Mr. Bernstein has helped several clients build patent portfolios in a variety of industries, including signal processing; Internet searching and associated Web interface technologies; data analysis through interactive parameter modification; and wireless communications and Ethernet technologies.
  • He has handled numerous major (multi-patent) opinion matters for a range of clients, involving technologies ranging from hard disk drive storage devices and systems, to complex memory designs, to wired and wireless network communications.
  • Additional technologies he has handled include bone disease detection; antennas, laser diode arrays; electronic classrooms, 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.

Experience

  • Patent matters for j2 Cloud Services, Inc. and its subsidiaries in the Internet messaging space. Over the past nine years, he has represented j2 and its subsidiaries in over a dozen lawsuits, achieving across-the-board favorable Markman rulings in many of those lawsuits.  He also has been involved in a number of reexaminations of j2’s or a subsidiary’s patents, as well as 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 won a non-infringement decision from a three-person panel in a multi-patent arbitration involving technology for early detection of breast cancer.
  • Cadence Design Systems on patent matters relating to various technologies, including system design and verification, functional verification, and simulation, and has participated in invention mining in several different technical areas.
  • Neato Robotics on patent matters relating to various aspects of robotics, including robotic cleaning systems and mapping of robot paths in operational areas.
  • Helped several clients build patent portfolios in a variety of industries, including signal processing; Internet searching and associated Web interface technologies; data analysis through interactive parameter modification; and wireless communications and Ethernet technologies.
  • Numerous major (multi-patent) opinion matters for a range of clients, involving technologies ranging from hard disk drive storage devices and systems, to complex memory designs, to wired and wireless network communications.


Insights and News

Events

Credentials

Education

  • University of Wisconsin-Madison, J.D., 1984
  • University of Wisconsin-Madison, M.B.A., Beta Gamma Sigma, 1984
  • California Institute of Technology, Applied Mathematics, B.S., 1980

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)