Biography

Ian DiBernardo is a Partner and Chair of the Intellectual Property Litigation Practice Group. He is also Practice Group Leader of the US Technology Group. Ian counsels emerging and established companies, focusing on complex intellectual property and technology transactions and intellectual property litigation.

Ian structures and negotiates agreements involving outsourcing, cloud computing, license, distribution, and joint venture agreements. He conducts due diligence on the intellectual property and information technology aspects of a broad range of corporate transactions, including mergers and acquisitions, joint ventures, and corporate finance transactions. He frequently counsels clients on cybersecurity, data protection, and privacy.

Ian works closely with banks, broker-dealers, funds, insurers, and emerging financial technology providers. For example, he frequently negotiates standalone IP and technology agreements, including cloud computing, electronic trading, and dark pool agreements, as well as licenses to financial indexes, market data, trading analytics, order management systems, risk management systems, and other trading technologies. Ian also represents FinTech clients in mergers and acquisitions, joint ventures, and other corporate transactions, including the sale of a data center, the acquisition of an alternative trading system, and the creation of a joint venture for the development of a power and energy trading platform.

Ian has first-chair trial and appellate litigation experience, successfully representing both plaintiffs and defendants in patent, trade secret, copyright, and breach of contract disputes. He has successfully argued before the US Court of Appeals for the Federal Circuit.

Ian has particular experience with financial products and systems, consumer electronics, Internet technologies, and medical devices and systems.

Ian has a long history of pro bono service. He has been recognized by Chambers USA and Super Lawyers multiple times and has been named an IP Star by Managing Intellectual Property.

Representation

Ian has worked on the following matters:

Guggenheim Global Trading in its negotiating licenses to trading analytics and order management, risk management and portfolio management systems.

Evolution Markets in its licensing of trading technology for use with its electronic OTC derivatives trading platform.

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.

Atlas Merchant Capital as co-lead investor in the $2 billion acquisition of Talcott Resolution, the run-off life insurance and annuity division of The Hartford.

Arch Insurance in negotiating outsourcing and cloud computing transactions relating to claims processing and back-office systems.

Carl Zeiss Meditec in connection with 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.

NRDC Equity Partners, LLC in its acquisition of the 48-store Lord & Taylor retail chain from Federated Department Stores (NYSE: FD) for $1.2 billion in cash.

The Children’s Place Retail Stores, Inc. in its acquisition of The Disney Store chain of retail stores in the US and Canada from The Walt Disney Company.

Obtained $30.2 million jury verdict in a patent infringement suit related to 3-D display technology.

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.

Successfully defended international electronics manufacturer, obtaining grant of summary judgment of invalidity of a patent directed to liquid crystal displays.

Successfully 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.

*Some of the above matters were handled by Ian prior to joining Brown Rudnick.

Education

Syracuse University College of Law – J.D., magna cum laude, Order of the Coif, 1995
Bucknell University – B.S.E.E., cum laude, 1992

Bar Admissions

New York
US Patent and Trademark Office
US District Court for the Southern District of New York
US District Court for the Eastern District of New York
US Court of Appeals for the Federal Circuit
US Supreme Court
Publications
Co-author, “SEC's Voya Order Underscores Importance of Cybersecurity Practices,” Bloomberg Law (October 23, 2018)
Author, “New York’s new regulatory cyber-security obligations: the details,” Compliance Matters (September 6, 2018)
Co-author, “Pen Testing: The Good, the Bad and the Agreement,” New York Law Journal (March 2, 2018)
Co-author, “Under close inspection,” Intellectual Property Magazine (February 28, 2018)
Co-author, “SEC Updates its Focus on Business Continuity and Transition Plans,” Wall Street Technology Association - Ticker e-Zine (August 25, 2016)
Co-author, “Trends and Observations in Software,” les Nouvelles (December 2013)
Speaking Engagements
Panelist, "Qualified Opportunity Funds, Opportunity Zones and ESG Investing Conference," NYSSCPA (September 17, 2020)
Moderator, “Cybersecurity, Data Privacy and Workplace Risks in the New Normal,” Stroock and CohnReznick Webinar (May 13, 2020)
Panelist, “Machine Learning, RPA & AI,” Wall Street Technology Association (September 11, 2019)
Moderator, “IP Protection in the Blockchain Industry,” Licensing Executives Society 2018 Annual Meeting (October 17, 2018)
Presenter, “Mitigating Vendor Risk,” Stroock Intellectual Property Group CLE (June 19, 2018)
Moderator, "Blockchain and Cryptocurrency: New Tools for the Digital Economy," Licensing Executives Society International 2018 Annual Conference (April 30, 2018)
Panelist, "High Tech Sector Presents Protecting Trade Secrets Today," Licensing Executives Society, Webinar (May 24, 2017)
Presenter, "IP & Tech Transactions for the In-House Practitioner: Key Considerations," Stroock Intellectual Property Group CLE (January 26, 2017)
Speaker, "Ensuring the Continuity of Business Operations to Raise Profits and Curtail Interruptions in Service," 18th Annual IT Service Agreements and Licensing – Cloud, Open Source & Software (November 17-18, 2014)
Professional Affiliations
Board Member, Licensing Executives Society
Chair, High Technology Sector, Licensing Executives Society (2017-2018)
Chair Elect, High Technology Sector, Licensing Executives Society (2016-2017)
Co-Chair, Cloud Services & Software Committee, Licensing Executives Society (2012-2015)
Member, Publication Review Committee, Wall Street Technology Association (2011-present)
Adjunct Professor, New York University, School of Continuing and Professional Studies (2010-2012)
Awards and Honors
Recognized by The Legal 500 US as a Recommended Attorney for Trade Secrets (Litigation and Non-Contentious Matters)
Ranked Band 4 in Chambers USA for Intellectual Property: Patent – New York
Recognized by Managing Intellectual Property IP Stars as a “Patent Star” in the US and New York
Recognized by Super Lawyers as a Top Rated Technology Transactions Attorney in New York, NY
Recognized in the New York Law Journal’s Verdicts Hall of Fame for Intellectual Property