Ian G DiBernardo

IAM Research

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Bronze - Individuals: litigation

Recommended - Individuals: transactions

Brown Rudnick earns expanded coverage in the IAM Patent 1000 for 2022 and makes its first appearance in the New York firm listings. It bolstered its local offering and significantly enhanced its US technology and global life sciences groups by hiring Ian DiBernardo and Jason Sobel, who joined in March 2021 having previously worked together for over two decades at Stroock & Stroock & Lavan. A seasoned advocate capable of taking on any type of IP case, DiBernardo serves as chair of the IP litigation group. It is his versatility that stands out though; he undertakes transactional work with aplomb and is especially sought after by private equity funds and hedge funds investing in patents; he also knows how to build valuable and resilient patent portfolios – something he is doing for the Memorial Sloan Kettering Cancer Center, a client which he originally came into contact with across the negotiation table on a licensing matter and which was working with another outfit on patent procurement but switched to him in search of greater success – which he has delivered. Another litigator with many transferable patent skills, Sobel is taking the lead on prosecution and counselling for certain divisions of Mitsubishi Chemical Holdings America. He and DiBernardo play well off each other; for example, after Sobel won a bet-the-company case for Richards Manufacturing, DiBernardo then took the baton to design a powerful patent portfolio for the company.

Ian G DiBernardo's Profile

Ian G DiBernardo is a partner and chair of the IP Litigation Practice Group. He is also practice group leader of the US Technology Group and a member of the firm’s Global Life Sciences Group.

Mr DiBernardo counsels patent owners on creating, monetising, asserting and defending their IP assets, and investors on sourcing, evaluating and executing various IP-centric investments.

On behalf of IP owners and operating entities, he has litigated various types of IP 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 IP 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.

Mr DiBernardo has structured and negotiated a range of IP and technology transactions, including patent, know-how and trademark licences, as well as 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, Mr DiBernardo frequently conducts due diligence on and negotiates IP-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.

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

Firm Profile

Brown Rudnick combines ingenuity with experience to achieve great outcomes for our clients. We deliver partner-driven services, with a focus on collaboration in the client’s best interest. Brown Rudnick is an international law firm, serving clients around the globe. With more than 250 lawyers and government relations professionals, the firm has offices in key financial centres across the United States and Europe. We are recognised for our market-leading practices covering several targeted industries, including bankruptcy and corporate restructuring, life sciences, technology, litigation and arbitration, white-collar defence and government investigations, civil fraud, special situations, corporate finance, strategic capital, distressed debt, intellectual property, real estate, M&A, and cross-border deals and disputes.

Brown Rudnick’s Intellectual Property, IP Litigation, and Trademark, Copyright, & Advertising Practice Groups offer a full range of services, from corporate, diligence, prosecution, and litigation across all types of IP-related disciplines, ranging from contentious and non-contentious trademarks, copyright and patents to trade secrets and counterfeiting actions. Our capabilities and experience are not limited to transactions or litigation. We often advise from inception through merger, developing IP portfolios, negotiating business transactions and shepherding through complex, multi-party, bet-the-company litigation.

Our diverse client base spans a variety of industries, from no-tech, to low-tech, to high-tech, and from life sciences to electronics, to consumer goods and services. Although we have the experience and technical/industry knowledge to handle virtually any matter, we have specific experience in augmented reality, 3-D imagery and image processing; computer networking; e-commerce; food technologies and ingredients; life sciences and medical devices; semiconductor devices and processing; software; trading technologies and financial products; LED panels and LED lights; automotive audio technology; sporting goods; agricultural products; retail and hospitality; mobile systems and applications; map-based communication technology; internet services and systems; and various business methods.

We have a highly commercial approach, which our clients tell us is unusual in this market. Our team is made up of business-minded counsel who work with our client base to assist with protecting, maintaining and licensing our clients’ IP assets as well as assisting in monetising and bringing new products to market. We go beyond simply resolving legal issues and become vital business advisers to our clients, as is evidenced by the numerous examples on this submission of incredibly long business relationships with our clients.

Our IP practice groups have extensive experience in a wide range of matters across industries. The additions of new partners with deep and broad experience has sparked active collaboration of/integration with the firm’s market-leading Global Life Sciences and Global Technology Groups. Together, the collective team has significantly expanded in the life sciences area, including defending post-grant patent challenges to life-changing patented technology that Brown Rudnick’s life sciences patent team acquired for its clients. Likewise, recently we have seen the strengthened service to the firm’s portfolio of cleantech clientele and become a destination practice for cutting-edge gene technology. The recent addition of partners has dramatically expanded the firms trademark capabilities, making Brown Rudnick a destination practice for bet-the-brand trademark litigation, and trademark portfolio requires the most strategic care. Further, the new partner additions have introduced industry-specific experience – for instance, in the food science and technology area – in order to provide more holistic full-serve offering to the firm’s corporate group.

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