Frank L. Bernstein

  • Experience
  • Representative Matters
  • Education
  • Admissions

Mr. Bernstein has a rare combination of extensive US Patent and Trademark Office experience, in both pre-grant and post-grant patent matters, and substantial US Federal district court experience in all phases of courtroom proceedings in patent infringement litigation, from pre-filing investigations, through claim construction (Markman) hearings, trial and appeal. He has represented Apple, Sony, IBM, Yahoo!, Cadence Design Systems, j2 Cloud Services, Renesas, Xyratex, Marvell Semiconductor, Neato Robotics, NEC, Koito, and CNH Global, among others. His experience spans a wide range of high technology areas, including computers, software, electronics, semiconductors, wireless, and e-commerce, as well as numerous areas of mechanical engineering.

Mr. Bernstein has served as the California managing partner of two national intellectual property firms: Sughrue Mion PLLC and Kenyon & Kenyon LLP. He opened Sughrue’s Silicon Valley office. Mr. Bernstein has been recognized in the 2014-2016 editions of the IAM 1000 – The World’s Leading Patent Practitioners for California. He also has been named a 2016 Managing Intellectual Property “IP Star”.

Mr. Bernstein is a frequent panelist and speaker, both locally and nationally, covering topics such as recent patent precedent and legislation, open source software, and patent portfolio development and management. He is a graduate of the California Institute of Technology (Caltech), and holds a JD and an MBA from the University of Wisconsin-Madison.

  • Litigation counsel in numerous patent enforcement actions involving multiple internet messaging patents for major industry player (CDCA, EDTX)
  • Litigation counsel in patent enforcement action involving disk drive testing for major industry player (CDCA)
  • Litigation counsel in defense of patent infringement action involving wireless networking and Bluetooth™ technology (EDTX)
  • Litigation counsel in patent action following a patent interference involving SRAM technology (NDCA)
  • Damages trial counsel in defense of patent infringement action involving automobile taillight lenses (SDCA)
  • Damages trial counsel in defense of multiple patent infringement actions involving farm machinery (DKS, NDIA)
  • Litigation counsel in prosecution and defense of wide ranging multi-patent case involving all aspects of disk drive technology (NDCA)
  • 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 (NDCA)
  • Invention mining and portfolio development counsel in robotics, wireless communications, e-commerce, integrated circuit chip design software, bone disease detection, laser diode arrays, and antenna technology
  • Opinion counsel and patent counsel in numerous different mechanical, electrical, semiconductor, and software technologies ranging from hard disk drive 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

University of Wisconsin-Madison

  • J.D., 1984
  • M.B.A., 1984 (Concentration in Finance; Beta Gamma Sigma honor fraternity)

California Institute of Technology

  • B.S. 1980 (Applied Mathematics)

Court Admissions

  • US Court of Appeals, Federal Circuit
  • US District Court, Northern District of California
  • US District Court, Central District of California
  • US District Court, Southern District of California
  • US District Court, District of Columbia
  • US District Court, Northern District of Texas
  • US District Court, Western District of Wisconsin

Bar Admissions

  • California
  • District of Columbia
  • US Patent and Trademark Office

Professional Organizations

  • PTAB Bar Association (Program Committee)
  • Licensing Executives Society (Software Committee; Immediate Past Chair, Silicon Valley Chapter)
  • IP Inn of Court (Bay Area Chapter)
  • Keiretsu Forum
  • VC Taskforce
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