Ian DiBernardo is a partner and chair of the Intellectual Property Litigation Practice Group. He is also co-practice group leader of the U.S. Technology group. His dual leadership roles reflect his decades of experience counseling clients throughout the entire lifecycle of IP, from creating worldwide patent portfolios, to bringing products to market, to licensing IP and technology, to litigating bet-the-company cases.
Ian counsels IP owners in creating, monetizing, asserting, and defending their IP assets, and investors in sourcing, evaluating, and executing on various IP-centric investments.
On behalf of IP owners and operating entities, he has litigated various types of intellectual property disputes, including patent, trade secret, trademark, unfair competition, and breach of contract claims. He has also been lead counsel in a number of post grant proceedings before the Patent Trial and Appeal Board. He frequently counsels clients on pre-litigation intellectual property matters, including issuing freedom-to-operate opinions, establishing “clean-room” and other procedures for on-boarding employees and managing forensic review of IT systems in connection with departing employees and addressing concerns of trade secret misappropriation.
Ian has structured and negotiated a range of intellectual property and technology transactions, including patent, know-how, copyright, and trademark licenses, and outsourcing, cloud computing, supply, distribution, and joint development agreements. He has represented clients in a broad range of corporate transactions, including mergers and acquisitions, strategic alliances, joint ventures, and corporate finance transactions.
On behalf of private funds and other clients, Ian frequently conducts due diligence on and negotiates IP related investments, including patent acquisitions, IP-back loans, royalty transactions, and litigation financing.
He has worked with a number of high-tech and life science technologies, including: AgriTech, food science, and nutraceuticals; AI/ML; AR, VR, image processing and computer vision; CleanTech, FinTech, including securities trading and back office systems and data; MedTech and digital health, including endoscopic, endoluminal, robotic and other surgical instruments, and bioinformatics; computer networking and software, and semiconductors.
Ian has a long history of pro bono service. He has been repeatedly recognized by Chambers USA and Super Lawyers, and he has been named an IP Star by Managing Intellectual Property and a leading individual for litigation and transactions by IAM Patent 1000. In the latest Chambers guide, clients have commented that Ian is “top notch in his analytical ability, client skills, and deep IP transactional and litigation experience” and “an outstanding patent litigation and licensing attorney. Ian’s advice cuts right to the heart of the issue at hand. He is very creative in his solutions and he identifies issues others miss.”
Representation
Portfolio Creation
Leading financial institutions in preparing and prosecuting worldwide patent portfolios relating to securities trading systems, commodity trading systems, and user interfaces for same.
Memorial Sloan Kettering Cancer Center in preparing and prosecuting U.S. and international patents directed to medical devices.
One of the largest kitchenware and flatware provider in preparing and prosecuting design patents.
Emerging producer of batteries for use in automotive, marine and data center applications in creating comprehensive IP strategy addressing patents, trade secrets and trademarks, as well as licensing and partnering transactions.
Transaction/Licensing
Guggenheim Global Trading in negotiating licenses to trading analytics and order management, risk management and portfolio management systems.
Evolution Markets in licensing its electronic OTC derivatives trading technologies.
Nomura Holding America, Inc. and Nomura Securities International Inc. in structuring and negotiating software development and license agreements relating to bespoke alternative trading systems, risk management software and back-office systems.
Instinet Holdings Incorporated and Nomura in connection with the sale of ATS operator Chi-X Canada Ltd. to Nasdaq, Inc. and Chi-X Asia-Pacific entities to private equity firm, J.C. Flowers.
AXPO US in licensing of cloud-based trading and risk management systems.
Various financial institutions in licensing market and other proprietary data.
Arch Insurance in negotiating outsourcing and cloud computing transactions relating to claims processing and back-office systems.
Carl Zeiss Meditec in licensing and joint venture matters.
FUJIFILM Medical Systems in its acquisitions of Problem Solving Concepts, Inc. and Empiric System LLC, providers of medical imaging and information systems.
Versamed Corporation, a provider of portable ventilators, in its acquisition by GE Healthcare.
Litigation
Obtained $30.2 million jury verdict in a patent infringement suit related to 3-D and AR display technology—identified as a top-ten annual largest IP verdict by the National Law Journal.
Defended international electronics manufacturer against 13 plaintiffs asserting infringement of 41 patents relating to digital encoding and digital television transmission standards, settling on favorable terms after filing affirmative summary judgment motions.
Defended international electronics manufacturer, obtaining grant of summary judgment of invalidity of a patent previously licensed by others for significant sums.
Represented six defendants/counterclaim plaintiffs involving breach of license, trade secret misappropriation, and tortious interference claims relating to specialty food ingredients.
Defended broker-dealer in trade secret misappropriation and tortious interference case brought against client and two software engineers hired from plaintiff.
Defended manufacturer of protein bars in a patent infringement case, securing a stay and ultimately dismissal of the litigation based on rejection of over 100 asserted claims in inter partes reexaminations.
Defended various patent owners against inter partes review petitions filed by Google, Microsoft, and Facebook.
*Some of the above matters were handled by Ian prior to joining Brown Rudnick.
Education
Bar Admissions
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