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.”