Bio

Ian Dibernardo is a partner and chair of the Intellectual Property Litigation Practice Group. He is also co-practice group leader of the U.S. Technology group. His dual leadership roles reflect his decades of experience counseling clients throughout the entire lifecycle of IP, from creating worldwide patent portfolios, to bringing products to market, to licensing IP and technology, to litigating bet-the-company cases. Ian counsels IP owners in creating, monetizing, asserting, and defending their IP 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, copyright, and trademark licenses, and outsourcing, cloud computing, supply, distribution, and joint development agreements. He has represented clients in a broad range of corporate transactions, including mergers and acquisitions, strategic alliances, joint ventures, and corporate finance transactions. On behalf of private funds and other clients, Ian 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: AgriTech, food science, and nutraceuticals; AI/ML; AR, VR, image processing and computer vision; CleanTech, FinTech, including securities trading and back office systems and data; MedTech and digital health, including endoscopic, endoluminal, robotic and other surgical instruments, and bioinformatics; computer networking and software, and semiconductors. 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 transactions 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.”