Frank L. Bernstein

Partner

About Frank

Frank Bernstein uses his extensive US Patent and Trademark Office (USPTO) and district court experience to think outside the box, helping clients obtain and defend challenging patents. He has litigated before the USPTO in Patent Trial and Appeal Board (PTAB) proceedings, as well as before US district courts in all phases of patent infringement actions (prefiling investigations to claim construction, Markman hearings to trials and appeals).

His high-tech expertise includes computer hardware and software; electronics; wired and wireless networks; e-commerce; and semiconductors, as well as various mechanical technologies. His client counseling experience includes validity and infringement advice, as well as freedom to operate (FTO) assessments.

Frank has been recognized as an IP Star by Managing Intellectual Property since 2016, and 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 PTAB developments, patent precedent and legislation, patent portfolio development and management, and intellectual property due diligence in mergers and acquisitions.

Experience

IP and Technology Litigation

  • Lead counsel in PTAB proceeding for patent owner in action involving motorcycle protective equipment (PTAB).

  • Lead litigation counsel in defense of patent infringement action involving golf clubs (S.D. Cal.).

  • Lead counsel in PTAB proceeding for patent owner in action involving radiation therapy (PTAB).

  • 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 multipatent case involving all aspects of disk drive technology (N.D. Cal.).

  • Lead counsel in multipatent 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 semiautonomous 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 – Board of Directors 2026-2029

  • PTAB Bar Association – Nominating Committee Member 2026

  • PTAB Bar Association – Program Committee Co-chair 2025-2026

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

Recognitions

  • U.S. Patent and Trademark Office Patent Pro Bono Achievement Certificate, 2025

  • 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

  • Speaker, “A Roadmap To Institution: A Review Of Recent Institution Decisions And Policy Based Discussion,” PTAB Bar Association Program Committee Webinar, January 2026.

  • 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.