PRACTICE AREAS


Ian G. DiBernardo is the Co-Practice Group Leader of Stroock’s Intellectual Property Department. He counsels both emerging and established companies, focusing on complex intellectual property and technology transactions and intellectual property litigation.

Mr. DiBernardo's transactional practice includes structuring and negotiating a variety of agreements, including outsourcing, cloud computing, license, distribution and joint venture agreements. In addition, he negotiates and 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 securities and corporate finance transactions. As part of his transactional practice, Mr. DiBernardo frequently counsels clients on cybersecurity, data protection and privacy issues.

Mr. DiBernardo also works closely with Stroock's financial services and capital markets clients, structuring and negotiating market access, electronic trading and dark pool agreements, as well as licenses to financial indexes, market data, back office systems and other trading technologies.

As a litigator, Mr. DiBernardo has first-chair trial and appellate litigation experience, successfully representing both plaintiffs and defendants in patent, trade secret, copyright and breach of contract matters. He has also successfully argued before the U.S. Court of Appeals for the Federal Circuit.

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


REPRESENTATIVE MATTERS

  • Tomita Technologies USA LLC, et al. v. Nintendo Co., Ltd., et al., Case No. 1:11-cv-04256 (S.D.N.Y. March 14, 2013) – Obtained $30.2 million jury verdict on behalf of Tomita Technologies in a patent infringement suit against Nintendo’s Japanese parent and American subsidiary for infringement of a patent related to 3-D display technology.  Nintendo appealed and, following remand, the case is again on appeal to the Federal Circuit.
  • British Telecommunications plc, et al. v. Haier America Trading LLC and Haier Group Corp., Case No. 09-CV-7114 (WGY) (S.D.N.Y. 2009) – Defended Haier against 13 plaintiffs asserting infringement of 41 patents relating to digital encoding and digital television transmission standards, settling on favorable terms.
  • Honeywell International Inc. et al. v. Nokia Corporation et al., Case No. 04-CV-01337-JJF (D. Del. 2009) – On behalf of defendant FUJIFILM, obtained grant of summary judgment of patent invalidity of a patent directed to liquid crystal displays.
  • Protein Bar Technologies, LLC v. Next Proteins, Inc., et al., Case No. 8:07CV464-T30-MSS (M.D. Fla. 2007) – On behalf of defendant, Forward Foods LLC, secured stay and ultimately dismissal of litigation based on rejection of over 100 asserted claims in inter partes reexaminations.
  • 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 U.S. and Canada from The Walt Disney Company.
  • 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.
  • Arch Insurance in negotiating outsourcing and cloud computing transactions relating to claims processing and back-office systems.
  • Nomura Holding America, Inc. and Nomura Securities International Inc. in structuring and negotiating software development and license agreements relating to bespoke alternative trading systems and 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.

HONORS & AWARDS

Mr. DiBernardo has been listed in Chambers USA: America’s Leading Lawyers for Business for his work in the practice area of Intellectual Property: Patent.  He has also been named to Super Lawyers in each of the specialties of Intellectual Property, Information Technology/Outsourcing and Intellectual Property Litigation.


MEMBERSHIPS

  • Member, Licensing Executives Society
    • Vice Chair Elect, High Technology Sector, 2016-2017
    • Secretary, High Technology Sector, 2015–present
    • Co-chair, Cloud Services & Software Committee, 2012–2015
  • Member, Publication Review Committee, Wall Street Technology Association, 2011–present

SELECTED ACTIVITIES

  • Adjunct Professor, New York University, School of Continuing and Professional Studies, 2010-2012

SPEECHES & EVENTS

  • 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
  • Speaker, "Special Techniques and Insights When Valuing Intellectual Property Transactions: From Early Stage to Maturity," Licensing Executives Society Annual Meeting, September 22-25, 2013
  • Faculty presenter, "Software: Licensing Without Patents," Licensing Executives Society Annual Meeting, September 22-25, 2013
  • Speaker, "Intellectual Property Protection and Licensing of Financial Indices," Continuing Legal Education Seminar, June 19, 2012
  • Speaker, "Investing in Intellectual Property: Evaluating Opportunities and Managing Investments," SkyBridge Alternatives (SALT) Conference, May 10, 2012

PUBLICATIONS

  • Co-author, "SEC Updates its Focus on Business Continuity and Transition Plans," Wall Street Technology Association - Ticker e-Zine, August 25, 2016
  • Co-author, "SEC Focuses on Business Continuity and Transition Plans: Implications for Registered Investment Advisers and Funds and Their Critical Service Providers," Stroock Special Bulletin, August 2, 2016
  • Co-author, "Federal Circuit Finds Software Invention Eligible for Patenting," Stroock Special Bulletin, May 23, 2016
  • Co-author, "Trends and Observations in Software," les Nouvelles, December 2013
  • Co-author, "Special Techniques and Considerations when Valuing Property Transactions," Licensing Executives Society, Insights, December 2013
  • "Using Data Maps as an Effective Tool for Data Security Collaboration," Wall St. Technology, Ticker Magazine, 2013, Issue 3
  • Co-author, "Patentability of Business Methods: Decoding the Federal Circuit's CLS and Bancorp Decisions," Intellectual Property and Technology Law Journal, February 2013, Vol.25, No. 2
  • Co-author, "Patentability of Business Methods: Decoding the Federal Circuit's CLS and Bancorp Decisions," Stroock Special Bulletin, August 23, 2012
  • Co-author, "Case Study: Ultramercial v. Hulu," IP Law360, November 14, 2011
  • Co-author, "Ultramercial v. Hulu: Is the Patentability Pendulum Swinging in Favor of Business Method Patents?" Stroock Special Bulletin, October 13, 2011
  • Co-author, "Business Method Patents: A Tale of Two Decisions," New York Law Journal, October 13, 2011
  • Co-author, "Cybersource Corporation v. Retail Decisions, Inc.Stroock Special Bulletin, August 23, 2011
  • Co-author, "Second Circuit: You Make It, They Can Break It: The Fly on the Wall Eludes the Ghost of INS v. AP," Stroock Special Bulletin, June 23, 2011
  • "Reviewing Joint Infringement," IP Law 360, May 9, 2011
Quoted in:
 
  • "Kodak v. Apple Squabble Could Spread; Patriot Coal Fraudco Theorists Howl – Distressed Briefing," Debtwire North America, June 22, 2012
  • "Where Now for Google v. Oracle?" Managing Intellectual Property, May 25, 2012
  • "High Court Tells Fed. Circ. To Rethink Software Patent Ruling," IP Law360, May 12, 2012
  • "Dish Stuck With $104M Tab in TiVo Patent Case," e-Commerce Times, October 7, 2008
  • "High Court May Not Hear Any IP Cases This Term," Law360, October 7, 2008

ADMITTED TO PRACTICE

New York, 1996

U.S. District Court, Eastern District of New York, 2009; U.S. District Court, Southern District of New York, 2001; U.S. Court of Appeals, Federal Circuit, 1996; U.S. Supreme Court, 2002


PATENT ADMISSIONS

U.S. Patent and Trademark Office, 1997

EDUCATION

J.D., magna cum laude, Syracuse University College of Law, 1995; Order of the Coif; Syracuse Law Review

B.S.E.E., cum laude, Bucknell University, 1992; Tau Beta Pi

PUBLICATIONS

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