Morgan Lewis

Dion M. Bregman

Partner

With decades of global patent law experience, Dion M. Bregman focuses on patent litigation, prosecution, and counseling, and represents public and private companies in the software, hardware, media, Internet, telecommunications, medical device, aerospace, business methods, graphical user interfaces, fintech, and semiconductor fields. He oversees large US domestic and foreign patent portfolios, working with Fortune 500 companies as well as startups. Dion also serves as Managing Partner of the firm's Silicon Valley office, the technology practice leader for the firm’s intellectual property practice, a co-leader of the firm’s cross-practice technology initiative, and leads the firm’s post-grant proceedings working group.

report

2018 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

    Extended Profile

    Dion has prepared and prosecuted thousands of patent applications. He has or is currently handling scores of post-grant proceedings, including reexaminations, inter partes reviews, and covered business method reviews. He also regularly prepares noninfringement and invalidity opinions.

    Dion also has an active litigation practice. In 2012, he was named a “California Lawyer of the Year” for Intellectual Property by California Lawyer. The magazine cited his role as part of the Morgan Lewis team that carried “a small technology company to a $140 million victory” in ActiveVideo v. Verizon in the Eastern District of Virginia. The win was one of the five largest patent damage awards in the United States, with a total expected recovery in excess of $260 million. Dion has also been recognized as a “Super Lawyer” by Thomson Reuters in the area of Intellectual Property from 2013 onward.

    Dion joined Morgan Lewis in 2004 after practicing intellectual property law at high-profile firms based in New York and Johannesburg, South Africa. 

    Education

    • University of Johannesburg, South Africa, 1998, LL.B. (J.D.)
    • University of the Witwatersrand, South Africa, 1993, B.S.C. Aeronautical Engineering

    Admissions

    • California
    • U.S.District Court for the Eastern District of Virginia
    • U.S. District Courts for the Northern and Central Districts of California
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. Patent and Trademark Office

    Awards and Affiliations

    Ranked, Intellectual Property: Patent Prosecution, California, Chambers USA (2017, 2018)

    Recognized, IP Patent Star – California, Managing Intellectual Property (2018)

    Recognized, IAM Patent 1000—The World’s Leading Patent Professionals (2017, 2018)

    Recognized, Northern California Super Lawyers (2013–2016)

    Named a "California Lawyer of the Year" for Intellectual Property by California Lawyer (2012)

    Publications

    10/16/2018 - Standardized: USPTO Adopts Federal Court Phillips Claim Construction Standard at PTAB

    September 2018 - Problem Solving: A Rehearing Proposal, Intellectual Property Magazine

    8/22/2018 - Federal Circuit: Estoppel Applies Even If Infringement Complaint Is Dismissed Without Prejudice

    8/20/2018 - Mandamus Not Available to Secure Appellate Review of PTAB Institution Decisions

    8/17/2018 - PTAB’s Trial Practice Guide Update: Implications for Parties Moving Forward

    July/August 2018 - US Supreme Court Strikes Down Partial Institutions in Inter Partes Reviews, IP Litigator, Volume 24 Number 4

    June 2018 - 2018 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

    5/1/2018 - US Supreme Court Strikes Down Partial Institutions in IPRs

    4/18/2018 - PTAB Declines to Vacate Final Written Decision in Inter Partes Review Despite Settlement

    2/23/2018 - Aqua Products Sparks Drastic Uptick in Motion to Amend Filings, Bloomberg Law Patent, Trademark & Copyright Journal

    2/23/2018 - Federal Circuit Reverses Rule 12(b)(6) Dismissal on Section 101 Grounds Due to Factual Allegations

    1/11/2018 - Federal Circuit Lifts Bar on Judicial Review of PTAB Time-Bar Determinations

    12/20/2017 - Supreme Court Considers Constitutional Challenge to Inter Partes Review

    12/15/2017 - Supreme Court Hears Arguments in SAS Institute Inc. v. Matal

    10/6/2017 - In IPRs, Petitioner Must Show Claim Amendments Unpatentable

    9/28/2017 - PTAB Warns Petitioners That Follow-On Petitions Will Face Additional Scrutiny

    9/12/2017 - Transfer of Patents to Tribe May Preclude PTAB Scrutiny

    5/24/2017 - Federal Circuit Gives PTAB Free Hand on Claim Construction

    5/18/2017 - Federal Circuit Extends Prosecution Disclaimer to IPR Proceedings

    5/3/2017 - 2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

    2/28/2017 - Highest Patent Court Narrows Scope of Covered Business Review

    5/3/2016 - Dion Bregman: Patent Services

    4/11/2016 - USPTO Publishes New Rules for PTAB Trials

    3/31/2016 - Federal Circuit Carves Out Exception to IPR Estoppel Provisions

    3/23/2016 - Federal Circuit Tosses PTAB Decision

    8/25/2015 - Patent Board’s Proposed New Rules for PTAB Trials

    5/15/2014 - No Easy Solution for Patent Troll Issue, Daily Journal

    9/4/2013 - Panelist, Filing a Post-grant Proceeding with Concurrent Litigation: Strategic Considerations, present by the Intellectual Property Owners Association IP Chat Channel

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    News

    8/14/2018 - PTAB Practice Guide Changes Will Aid Patent Owners, Law360

    6/13/2018 - IAM 2018 Patent 1000 Guide Recognizes Morgan Lewis Partners, Practices

    5/24/2018 - Morgan Lewis Lawyers and Practices Ranked as Intellectual Property ‘Stars’

    4/25/2018 - Morgan Lewis’s Eighth Annual May-rathon Highlights Hottest Tech Trends in an Extensive Series of Programs

    March 2018 - Morgan Lewis Among Juristat Top 100 Patent Firms in 2018

    7/3/2017 - The Top Patent Cases Of 2017: Midyear Report, Law360

    4/28/2017 - Morgan Lewis Hosts Seventh Annual Technology May-Rathon

    April 2017 - Morgan Lewis Recognized as a Top Patent Firm by Juristat

    3/21/2017 - Morgan Lewis Partner Shortlisted as Outstanding Litigator in Managing IP North America Awards

    10/31/2016 - Morgan Lewis Represents More Clients in PTAB Trials than Ever Before

    7/1/2016 - Can the Patent System Keep Up with Digital Tech?, Inside Counsel

    4/26/2016 - Morgan Lewis Hosts Sixth Annual Technology May-Rathon

    March 2016 - Morgan Lewis Ranked as one of Juristat's Top 100 Patent Firms

    9/1/2015 - PTAB Misconduct Rule Won't Deter Hedge Fund Attacks, Law360

    4/28/2015 - Morgan Lewis Advises Infosys in $120 Million Acquisition of Kallidus

    9/24/2012 - ActiveVideo Reaches Settlement with Verizon

    8/28/2012 - Morgan Lewis Succeeds for ActiveVideo in Federal Circuit Ruling

    3/1/2012 - California Lawyer Attorneys of the Year: Intellectual Property, California Lawyer

    11/23/2011 - Morgan Lewis Scores Another Win for ActiveVideo on Motion for a Permanent Injunction Against Verizon

    9/19/2011 - How They Won It: Morgan Lewis Tags Verizon For $115M

    8/2/2011 - Morgan Lewis Helps ActiveVideo Networks Score Historic $115 Million Verdict in Patent Case Against Verizon

    1/26/2010 - Morgan Lewis Advises Better Place on $350 Million Financing

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    Events

    5/3/2017 - 2017 Technology May-rathon: PTAB Proceedings Year in Review

    4/20/2017 - A Practical Guide for US Patent Practice - 2017

    9/30/2015 - Intellectual Property Issues and Trends in the Energy Sector

    5/30/2012 - Post-Grant Review and Inter Partes Reexamination

    5/1/2012 - Post-Trial Patent Infringement Remedies: Now the Fun Begins