Ian DiBernardo

Practice Areas

Ian DiBernardo is a partner and chair of the Intellectual Property Litigation Practice Group. He is also practice group leader of the U.S. Technology group and a member of the Firm’s Global Life Sciences group.

Ian counsels patent owners in creating, monetizing, asserting, and defending their intellectual property 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, and trademark licenses, and outsourcing, cloud computing, supply, distribution, and joint venture and joint development agreements. He has represented clients in a broad range of corporate transactions, including mergers and acquisitions, strategic alliances, and corporate finance transactions. Many of his transactions involve financial services, products and systems, and FinTech innovations.

On behalf of private funds and other clients, Ian frequently conducts due diligence on and negotiates intellectual property 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 consumer electronics, software, AI platforms, securities trading and back office systems, endoscopic, endoluminal, robotic and other surgical instruments, bioinformatics, nutraceuticals, and functional food ingredients.

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 transaction 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.”

Work Highlights

Portfolio Creation

Interactive Brokers Group, an award-winning publicly traded broker dealer providing stock-trading technology tools, in developing and implementing worldwide patent strategies.

Memorial Sloan Kettering Cancer Center, a leader in cancer treatment and research, in preparing and prosecuting U.S. and international patents directed to robotic surgical assistance devices, imaging, and endoscopic surgical instruments.

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.

Public telehealth company in preparing its foundational patent application relating to proprietary model for the analysis of electronic medical records and predictive care.

SaaS–based pharmacovigilance platform in preparing patent applications related to proprietary model for the identification of drug interaction signals.

European and US based company in preparing foundational patent applications direct to AI–powered robotics system.

Transaction/Licensing

OwlPoint Capital, a private fund focused on IP investment, in its acquisition of patent licensing and enforcement entity, WiLAN.

New York Presbyterian Hospital in preparing and prosecuting patents directed to bioinformatics and surgical devices and procedures.

Guggenheim Global Trading, a leading hedge fund, in negotiating licenses to trading analytics and order management, risk management and portfolio management systems.

Evolution Markets, a global financial services provider, in licensing its electronic OTC derivatives trading technologies.

Nomura Holding America and Nomura Securities International in structuring and negotiating software development and license agreements relating to bespoke alternative trading systems, risk management software and back-office systems.

Instinet Holdings and Nomura in the sale of ATS operator Chi-X Canada to Nasdaq and Chi-X Asia-Pacific entities to private equity firm, J.C. Flowers.

AXPO US, an energy risk management company, in licensing of cloud-based trading and risk management systems.

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

Carl Zeiss Meditec, a multinational medical technology company, in licensing and joint venture matters.

FUJIFILM Medical Systems, a leading provider of medical imaging equipment, in its acquisitions of Problem Solving Concepts and Empiric System, providers of medical imaging and information systems.

Versamed, a provider of portable ventilators, in its acquisition by GE Healthcare.

Publicly traded financial services company in licensing of proprietary data and model output.

SaaS–based pharmacovigilance provider in negotiating the in-licensing of structured and unstructured data sets for use in training proprietary model.

International asset manager in negotiating worldwide enterprise IaaS agreements with AWS and Microsoft Azure for the testing and deployment of AI/ML.

Financial consulting firm in negotiating joint development and co-marketing agreements for the development and deployment of AI-based finance/accounting analysis platform.

Litigation

Gamba Group in a patent infringement action against Samsung Electronics America in the U.S. District Court for the Eastern District of Texas.

PanOptis Patent Management and subsidiaries Optis Wireless, Optis Technologies and Unwired Planet, collectively one of the largest owners of cellular standard essential patents, in a breach of patent license litigation against Huawei pending in the U.S. District Court for the Southern District of New York.

Kewazinga v. Google. Trial counsel representing plaintiff Kewazinga, a developer of telepresence technology, in a patent infringement litigation against Google over Google’s Street View product. The case settled during trial.

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.

Fastly, a publicly traded edge computing company, in defense of patent infringement actions directed to networking technology.

Mobile Data Technologies in litigation against Samsung Electronics America in the US District Court for the Eastern District of Texas, alleging infringement of five patents. In parallel proceedings, the Brown Rudnick team secured victories at the PTAB: Samsung challenged the validity of all five asserted patents across 10 IPRs, and the USPTO denied institution of all ten IPRs. Case settled favorably for our client.

A publicly traded and worldwide leading provider of financial indexes, and its foreign subsidiary, in preparing a complaint and negotiating settlement of Defend Trade Secret Act claims.

International electronics manufacturer in defense 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.

International electronics manufacturer in defense of a patent infringement claim. Obtained grant of summary judgment of invalidity of a patent previously licensed by others for significant sums.

WTI v. Richard Hull, Isoage Technologies. Six defendants and counterclaim plaintiffs in complex bet-the-business competitor litigation, including dueling claims of misappropriation of trade secrets, breach of license agreement, breach of employment and restrictive covenants agreements, and other torts, relating to all-natural antimicrobials and other specialty food ingredients. Case settled shortly before trial, paving the way for a successful sale of the corporate defendant to international food and beverage group, Kerry.

Volant Trading, a technology-driven trading firm, in defense of trade secret misappropriation and tortious interference case brought against the client and two software engineers hired from the plaintiff, an electronic trading order-execution and clearing company, in relation to the plaintiff’s proprietary stock and options clearing technology. The case was voluntarily dismissed.

Feld Entertainment and Ringling Bros in enforcing their rights to the iconic “Greatest Show on Earth” trademark against Kid Rock and Live Nation relating to Kid Rock’s usage of the mark for the promotion of his concert tour. Case settled following preliminary injunction briefing.

Manufacturer of protein bars in defense of 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.

ADP v. Ultimate Software Group (now UKG) and related cases. UKG in defending against claims of misappropriation of trade secrets and corporate raiding. This highly complex case had more than 20 related suits brought by ADP against individual employees of UKG that ran in parallel before the trial and appellate level of both state and federal courts. After five years of contentious litigation, the dispute was resolved on confidential terms.

MasterTax v. Ultimate Software Group (now UKG). UKG in a trade secret litigation and software license dispute. Obtained reversal of district court’s preliminary injunction on interlocutory appeal before the Ninth Circuit. Case was later resolved on confidential terms.

Publicly traded financial services company in trade secret misappropriation of proprietary datasets, software, and models directed to real estate market pricing; matter settled with the transfer of competitor’s business and technology platform to our client.

International asset manager in coordinating computer/network forensic investigation of suspected trade secret misappropriation and subsequent enforcement and negotiations.

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

Education