Ian G. DiBernardoPartner

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Ian G. DiBernardo is Co-Practice Group Leader of Stroock’s Intellectual Property and Technology Department and Co-Head of Stroock’s FinTech practice. He counsels both 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.

As Co-Head of Stroock’s FinTech practice, 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 U.S. 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.

He has a long history of pro bono service and now serves on Stroock’s pro bono committee. He has been recognized by Chambers USA and Super Lawyers multiple times and has been named an IP Star by Managing Intellectual Property Magazine.


Representative 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 U.S. 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.

Honors & Awards

  • Chambers USA: America’s Leading Lawyers for Business
  • Managing Intellectual Property Magazine IP Stars: Patent Star–New York
  • Super Lawyers

Memberships

  • Member, Licensing Executives Society
    • Chair, High Technology Sector, 2017-2018
    • Chair Elect, High Technology Sector, 2016-2017
    • 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

  • 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
  • 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

  • Author, “New York’s new regulatory cyber-security obligations: the details,” Compliance Matters, September 6, 2018
  • Co-author, “NYDFS Cybersecurity Deadlines Approaching for Financial Services Companies and Credit Reporting Agencies,” Stroock Special Bulletin, August 28, 2018
  • Co-author, “California Enacts Broad-Reaching Consumer Privacy Legislation,” Stroock Special Bulletin, June 28, 2018
  • Co-author, “California Poised to Enact Broad-Reaching Consumer Privacy Legislation,” Stroock Special Bulletin, June 27, 2018
  • Co-author, “SIFMA’s New Data Aggregation Principles and What They Mean for the Financial Sector,” Stroock Special Bulletin, April 18, 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, "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

U.S. District Court, Eastern District of New York; U.S. District Court, Southern District of New York

U.S. Court of Appeals, Federal Circuit

U.S. Supreme Court


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


 
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Publications