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Bernard serves as Of Counsel to the firm, providing strategic intellectual property advice to established and early-stage companies. He is also on the faculty of the University of Denver, Sturm College of Law as an Assistant Professor teaching patent and intellectual property law.

Bernard has worked both as in-house counsel and at large law firms. As Vice President of Legal Strategy at Covad Communications (the first national DSL carrier), Bernard was responsible for a broad range of legal issues that arose as Covad grew from a small Silicon Valley startup to a public company with thousands of employees nationwide. Bernard's responsibilities included working with state public utilities commissions to develop new rules and regulations for competitive local exchange carriers. Bernard also managed a series of antitrust and commercial lawsuits against SBC that ended in a business agreement valued at over five hundred million dollars.

In private practice at the Silicon Valley offices of Wilson, Sonsini Goodrich & Rosati and Pennie & Edmonds, Bernard litigated patent cases and provided general intellectual property advice for clients involved with a wide range of technologies including flash memory, virtual machines, semiconductor manufacturing processes, modems, networking hardware, anti-virus software, printers, object oriented systems and software development tools.

Representative Experience

• Since 2007, Bernard has been serving as a court appointed Special Master in the largest group of patent cases in the United States, In Re Katz Interactive Call Processing Patent Litigation (07-ml-01816, C.D. CA). This multi-district litigation involves approximately fifty different lawsuits, thirty patents and several hundred defendants. Bernard has advised the court on all substantive pretrial issues including motions to dismiss, summary judgment motions and Markman motions.

• Bernard has advised clients regarding the scope and validity of patents in the semiconductor, microprocessor, medical image processing, DNA microarrays, optics, networking, communications, computer security and e-commerce fields. Bernard has considerable experience in the preparation of freedom to operate opinions.

• Bernard has been retained by established law firms to serve as patent co-counsel in both district and appellate courts. He has represented clients in patent infringement and patent malpractice actions involving a wide range of computer, electronic and medical device technology.

• Bernard has worked with corporate counsel to perform IP due diligence in connection with corporate mergers and acquisitions, and the buying and selling of patents.

• Bernard has represented several different clients in patent license negotiations.

Academic Publications

The Case for Contribution in Patent Law, (forthcoming 2011). This paper was selected as a winner of a Samsung/Stanford Patent Prize.

Breaking Aro’s Commandment: Recognizing that Inventions Have Heart, Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. XX, Book 4 (2010).

Rethinking Enablement in the Predictable Arts - Fully Scoping the New Rule, 2009 Stan. Tech. L. Rev. 3 (2009) (reprinted in the ICFAI Journal of IPR, Vol. VIII No.3&4 (August & November 2009) and reprinted in Intellectual Property Review, Thomson West 2010 ed.)

After eBay, Inc. v. MercExchange : The Changing Landscape for Patent Remedies, Minnesota Journal of Law, Science and Technology, Vol.9, Issue 2 (2008), reprinted in Patent Law Review, (2009 ed., Thomson West).

Professional Publications

Damages: The Courts Beat Congress to Patent Reform (Again), IP Law 360 (Aug. 31, 2009) reprinted in New York State Science and Technology Law Center’s, Innovation e-Review (Sept. 2009)

The Shifting Battleground: Focusing on Enablement, Vol. 34, No. 2 New Matter (2009).

Obtaining Advice of Counsel After Seagate, Vol. 32, No. 4 New Matter (2007).

Blending Law and Facts: A Recipe for Persuasive Briefs, Vol. 81 Illinois Bar Journal, p. 103 (Feb. 1993).

Presentations

Using Special Masters in Patent Litigation, BCLT/FJC Advanced Patent Program (for federal judges), Berkeley, CA. (Sept. 25, 2010)(panel).

Willfulness and Opinions, 5th Patent Strategies Conference, San Francisco, CA, March 26, 2008 (presented with Mikhail Lotvin).

Testimony on DSL Issues before the Kansas Corp. Comm., February 23, 2000.

Testimony on DSL Issues before the Missouri Public Service Comm., February 15, 2000.

The Evolution of the CLEC Industry, Texaltel's Annual Conference, Las Vegas, NV, April 6, 1999 (panel).

Collocation Upgrading for the New Millennium, ALTS Annual Conference, Austin, TX, December 4, 1998 (panel).

Education
J.D. Duke School of Law (1990)
B.S.E.E Purdue University (1987)

Bar Memberships
Bernard is admitted to practice in the state of California, the U.S. Patent Trademark Office, the Federal and Ninth Circuit Court of Appeals and United States Supreme Court as well as several U.S. district courts throughout the country.

Our offices in California and Massachusetts provide the following services:

Patent Litigation

Patent Reexamination

Appellate Litigation

Patent Portfolio Analysis

Intellectual Property Sales and
  Licensing

Validity and Infringement
  Investigations

Representation Before the
  Board of Patent Appeals and
  Interference

Corporate Contract Review
  and Negotiation

Corporate Support for
  International, M&A, and
  Human Resources Matters