Frank L. Bernstein

Partner

About Frank

Frank Bernstein uses his extensive patent litigation experience to think outside the box, helping clients obtain and defend challenging patents. He has extensive experience before the US Patent and Trademark Office (both pre-grant and post-grant patent matters), as well as in US district courts in all phases of patent infringement actions (pre-filing investigations to claim construction, Markman hearings to trials and appeals). His high technology expertise includes computer hardware and software, electronics, semiconductors, wireless, e-commerce and mechanical engineering. Apple, Sony, IBM, Yahoo!, Cadence Design Systems, Lam Research, Peloton Technology, j2 Cloud Services, Renesas, Xyratex, Marvell Semiconductor, Neato Robotics, NEC, Koito and CNH Global are among the clients that he has served.

Frank has been named a 2016-2019 Managing Intellectual Property IP Star has been recognized by Super Lawyers as a Top Rated Intellectual Property Attorney since 2017.

A frequent panelist and speaker, both locally and nationally, Frank has covered topics such as recent patent precedent and legislation, patent portfolio development and management, and intellectual property due diligence in mergers and acquisitions. He actively participates in a number of organizations, including PTAB Bar Association (Program Committee), IP Inn of Court (Master, Bay Area Chapter) and Silicon Valley Intellectual Property Law Association.

Experience

IP and Technology Litigation

  • Litigation counsel in defense of patent infringement action involving large information storage systems (N.D. Cal.).
  • Litigation counsel in numerous patent enforcement actions involving multiple Internet messaging patents for major industry player (C.D. Cal., E.D. Tex.).
  • Litigation counsel in patent enforcement action involving disk drive testing for major industry player (C.D. Cal.).
  • Litigation counsel in defense of patent infringement action involving wireless networking and Bluetooth™ technology (E.D. Tex.).
  • Litigation counsel in patent action following a patent interference involving SRAM technology (N.D. Cal.).
  • Damages trial counsel in defense of patent infringement action involving automobile taillight lenses (S.D. Cal.).
  • Damages trial counsel in defense of multiple patent infringement actions involving farm machinery (D. Kan., N.D. Ia.).
  • Litigation counsel in prosecution and defense of wide ranging multi-patent case involving all aspects of disk drive technology (N.D. Cal.).
  • Lead counsel in multi-patent arbitration involving technology for early detection of breast cancer.
  • Co-lead counsel in defense of trademark infringement action involving social media branding and travel branding (N.D. Cal.).

Patent Portfolio Strategy and Prosecution

  • Invention mining and portfolio development counsel in autonomous vehicles, blockchain-based systems, artificial intelligence/machine learning, robotics, wireless communications, e-commerce, integrated circuit chip design software, bone disease detection, medical devices, laser diode arrays and antenna technology.
  • Opinion counsel and patent counsel in many mechanical, electrical, semiconductor and software technologies, ranging from storage devices and systems, to complex memory designs, to digital radiography, to antenna design, to wired and wireless network communications, to semiconductor circuitry design and fabrication, to video and audio systems, to golf balls, to autonomous and semi-autonomous vehicle systems, to high-quality, high-capacity, high-speed printers.

Credentials

Education
  • University of Wisconsin – Madison, J.D., 1984
  • University of Wisconsin – Madison, MBA, 1984
  • California Institute of Technology, B.S., 1980
Admissions
  • California, 1997
  • District of Columbia, 1984
Courts
  • U.S. Ct. of App., Federal Circuit
  • U.S. Dist. Ct., N. Dist. of California
  • U.S. Dist. Ct., C. Dist. of California
  • U.S. Dist. Ct., S. Dist. of California
  • U.S. Dist. Ct., Dist. of Columbia
  • U.S. Dist. Ct., N. Dist. of Texas
  • U.S. Dist. Ct., W. Dist. of Wisconsin
  • U.S. Patent and Trademark Office
Memberships & Affiliations

  • PTAB Bar Association – Nominating Committee Member 2026

  • PTAB Bar Association – Program Committee Co-chair 2025

  • PTAB Bar Association – Program Committee Vice Chair 2021-2025

Recognitions

  • Recognized by The Best Lawyers in America 2026 for Intellectual Property Litigation

  • Managing Intellectual Property IP Star 2013-2026

Expertise

Services
Intellectual Property & Technology

Publications & Speaking Engagements

  • Co-author, “Who Invented This? The Continuing Importance of Human Ingenuity in Patenting AI-Related Inventions”, The Licensing Journal, Volume 44 Number 5, May 2024.

  • Speaker, “Continuing Evolution of Discretionary Denials at the PTAB,” PTAB Bar Association Program Committee Webinar, August 2025.

  • Speaker, “Notice of Proposed Rulemaking – Discretionary Denials, Rule 325(d), Parallel/Serial Petitions, Filing of Settlement Agreements,” PTAB Bar Association Program Committee Webinar, June 2024.

  • Speaker, “Impact on Procedures – PTAB Proposed Rule Changes,” PTAB Bar Association Program Committee Webinar, June 2023.

  • Speaker, “New USPTO Guidance on Discretionary Denials,” PTAB Bar Association Program Committee Webinar, June 2022.

  • Speaker, “After Arthrex: The Implications of Arthrex and Its Progeny Going Forward,” Squire Patton Boggs Legal Insights Webinar, July 2020.

Related insights

Global IP & Technology Law

The USPTO Director De-Delegates – But What About the Rules?

There have been hundreds of summary discretionary denial decisions from the Acting Director regarding inter partes review and post-grant review. We blogged on these decisions here, here, here, here, and here. On October 17, 2025, newly appointed Director Squires issued an open letter and memorandum to the public and to the Patent Trial and Appeal...... Continue Reading

October 2025 | Blog

Global IP & Technology Law

All Roads Lead to Rome at the USPTO

Since the iRhythm IPRs on which we blogged recently, there have been two more (actually, many more) decisions that are leaving petitioners scratching their heads. In Dabico, the Acting USPTO Director discretionarily denied an IPR petition because of “settled expectations,” the same rationale as in iRhythm. The Acting Director went further and criticized the petitioner...... Continue Reading

July 2025 | Blog

Global IP & Technology Law

The Court Can Wait; The Patent Office Cannot

In a set of astonishing identical Director Review decisions, the Acting USPTO Director discretionarily denied five IPR petitions whose proceedings would have concluded over seven months before the underlying patent infringement suit would have gone to trial. The Acting Director reasoned that the petitioner waited too long to file its IPR petitions because, even though...... Continue Reading

June 2025 | Blog

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