Ian G. DiBernardo assists both emerging and established companies in generating revenue and gaining a competitive advantage from their technologies. He advises clients on all aspects of intellectual property and Internet law, including complex corporate transactions and protecting, licensing and enforcing intellectual property rights.

Mr. DiBernardo's transactional practice includes mergers and acquisitions, securities and corporate finance, joint ventures and general licensing and counseling. In this regard, he frequently collaborates with Stroock’s corporate, financial restructuring, insurance and tax attorneys.

Mr. DiBernardo also provides advice on a full range of business matters, including drafting and negotiating business and technology agreements. In this regard, he often assists clients in bringing products to market by negotiating development, professional services, outsourcing, licensing and distribution agreements. He also assists clients in generating revenue by creating and implementing licensing strategies.

Mr. DiBernardo assists clients in mitigating liability and business disruptions by providing advice on avoiding competitors’ patents and by preparing formal opinions as to the noninfringement and invalidity of competitors’ patents. He also prosecutes patents on behalf of domestic and foreign clients in the U.S. Patent and Trademark Office and abroad.

Mr. DiBernardo also has trial and appellate litigation experience in patent, trade dress, trade secret and copyright matters, successfully arguing before the U.S. Court of Appeals for the Federal Circuit.

Initially, Mr. DiBernardo counseled clients engaged in electrical, electro-mechanical and mechanical technologies. His practice has evolved to focus on counseling individuals and companies involved in pharmaceutical, biotech, medical diagnostics, computer software and architecture, Internet and multimedia technologies and financial products and systems.

SELECTED MATTERS AND CASES

Represented Arrowpoint Capital Corp. in its management buyout of Royal & Sun Alliance USA.

NRDC Equity Partners, LLC in its agreement to acquire the 48-store Lord & Taylor retail chain from Federated Department Stores (NYSE: FD) for $1.2 billion in cash.

On behalf of a number of funds, evaluated pharmaceutical, technology and life science target companies' intellectual property portfolios for validity and scope of protection and negotiated equity and debt investments.

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.

MHR Fund Management in connection with the drafting and negotiation of a $15 million senior secured term loan financing deal with Emisphere Technologies, Inc., a drug delivery company.

Representative litigations include: Protein Bar Technologies, LLC v. Next Proteins, Inc et al., Case No. 8:07CV464-T30-MSS (MD Fl, Tampa Div. 2007) (for defendant, convinced Patent and Trademark Office to reexamine the over 100 asserted claims and secured stay of litigation); Beery v. Thomson Consumer Electronics, Inc. v. Gemstar-TV Guide International, Inc., 03-1009 (Fed. Cir. May 14, 2003)(affirmance of order preventing discovery of client’s trade secret source code); Southco, Inc. v. Kanebridge Corp., 258 F.3d 148 (3d Cir. 2001) (reversal of injunction in copyright infringement action).

Memberships

Licensing Executives Society

Activities

Co-authored: TiVo v. EchoStar: Federal Circuit Does The Time Warp," The Intellectual Property Strategist, May 2008; "Technology Due Diligence," New York Law Journal, November 6, 2006; Protection for Financial Indexes, ETFs and Other Products, New York Law Journal: Sept. 29, 2006; Copyrights and Trademarks and Patents! Oh, My!, Best's Review, August 1, 2006; Intellectual Property Issues Surrounding Stem Cell Research, LabToWallStreet, Vol. 4, Issue 2, 2005; 4 Ways to Save on IP License, Best’s Review, August 2005; Choice of Law, Jurisdiction Receive Court Attention, New York Law Journal, Intellectual Property Supplement, November, 1998; Author, Updates in Patent Law: Software, Boston University Journal of Science and Technology Law, 1995

Quoted in: e-Commerce Times, Dish Stuck With $104M Tab in TiVo Patent Case, 10/7/08; Law360, High Court May Not Hear Any IP Cases This Term, 10/7/08; Bloomberg News TV, IBM sues Amazon for patent infringement, 10/23/2006; Washington Internet Daily, "High Court Rules Against File-Sharing Networks, 6/28/2005; New York Law Journal, "File-Sharing Software Makers Ruled Subject to Copyright Liability, 6/27/2005; IP Law Bulletin, "Supreme Court Rules For Entertainment Industry in Grokster Case, 6/20/2005; BioWorld, "High Court Offers Opinion, But Merck-Integra Fight Remanded, 5/30/2005; Financial Times, "News Digests: Jury Rules Cantor Bond Patent Invalid, 2/23/2005; Securities Industry News, "Infringement Benefits: Is TT-Patsystems Patent Settlement the Sign of a More Adversarial Future, 2/23/2005; Bloomberg News, "Cantors Bond-Trading Patent Ruled Invalid by Jury, 2/22/05; Bloomberg News, "Cantors Patent Lawsuit Against ICAP Units Goes to U.S. Jury, 2/17/2005; Securities Industry News, "News Analysis: What is Next for eSpeed?, 2/14/2005

Admitted to Practice

New York, 1996

U.S. Court of Appeals, Federal Circuit, 1996

U.S. Patent and Trademark Office, 1997

Southern District of New York, 2001

U.S. Supreme Court, 2002

Education

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

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