Stout

IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

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Stout’s integration of valuation, damages and compliance professionals with investment bankers and technical experts underpins its 360-degree proficiency in intellectual property, which is its defining edge. Central to its practice is the provision of testimony in IP litigation, with its multi-disciplinary setup enabling it to provide all-embracing support to trial teams as needed. The group has grown in significant ways in the past year, with the addition of Dana Trexler in June 2020 and of Mitch Rosenfeld one month later. Philadelphia-based Trexler emphasises disputes in his practice, and has engaged in complex patent and other IP infringement matters and provided testimony in court on many occasions. Rosenfeld has a more transactions and advisory-focused role and understands all aspects of patenting, which serves him well when he is called on for litigation. They are members of a collaborative, well-resourced team that includes David Haas, John Bone and Scott Weingust in Chicago; and Michele Riley and Stephen Holzen in DC. Haas captains the IP practice with aplomb and draws from a deep well of knowledge accumulated over the course of 30-plus years; he has the trial lawyer’s ability of being able to simplify the complex for the benefit of laypeople. At the same level in terms of experience, Bone is masterful in the context of conflicts involving SEPs. Weingust takes the reins of the valuation practice and, as a seasoned testifier, is also integral in the success of the disputes, compliance and investigations group. Riley is an innovator, educator and damages expert par excellence; while Holzen has brought his insight to bear in the ITC and PTAB, along with many federal and state courts, and is one of the few, if not the only individual recommended in this section with a patent examining background at the USPTO.

Firm Profile

Stout is a global investment bank and advisory firm specialising in corporate finance, valuation, financial disputes and investigations. We serve a range of clients, from public corporations to privately held companies, in numerous industries. For more than 30 years, our clients and their advisers have relied on our premier expertise, deep industry knowledge and unparalleled responsiveness on complex matters.

Stout’s IP practice has a fully integrated team of valuation professionals, damages experts, compliance professionals, investment bankers and technical experts with the ability to execute a broad spectrum of IP services. Stout’s experts have decades of experience assisting clients to fully create, acquire, protect, manage and extract value from IP assets, including patents, trademarks/brands, trade secrets, copyright, the right of publicity and other intangible assets such as software, license agreements and domain names.

Expert testimony and consulting – IP disputes

Stout’s IP disputes professionals have decades of experience in providing expert testimony in IP litigation across a broad spectrum of industries. They deliver a cross-disciplined approach that creates value by offering clients a team of testifiers and consultants, including certified public accountants, MBAs, actuaries, individuals with engineering backgrounds and individuals with other accreditations, such as staff accredited in business valuation, chartered financial analysts and certified fraud examiners.

Stout’s team provides the following services: early case assessment, preparation of discovery requests, review of produced documents to ensure compliance with associated requests, assessment of licensing agreements, preparation of key expert and fact witnesses, computation of damages, expert testimony, preparation of demonstrative exhibits and development of positions for mediation.

Valuation – IP/intangible asset valuation

Stout’s IP valuation professionals bring clarity to the most complex IP assets. Stout’s independent, third-party valuations use various approaches and methodologies relevant to the type of asset being valued and the underlying purpose of the valuation. Our valuations are performed for a variety of purposes including transactions (licensing, purchase/sale, joint ventures, mergers and acquisitions), tax strategy and compliance (related-party transactions, trust and estate issues), corporate strategic decision-making, use of intellectual property to attract capital (debt and equity financing), financial reporting, regulatory compliance (Stark Law, Anti-Kickback Statute) and bankruptcy.

Stout stands above the competition because our experts are thought leaders who frequently speak about and teach IP valuation at the most well-known and respected industry organisations, universities and law firms.

Transactions – IP advisory and transactions

Stout’s IP advisory and transactions professionals have deep patent expertise with an emphasis on litigation, portfolio evaluation, and complex licensing and sales transactions. The team brings expansive expertise in evaluating and monetising IP assets and has worked with numerous global technology leaders, from Fortune 500 corporations to emerging companies.

Leveraging Stout’s multi-disciplinary IP expertise, the IP advisory and transactions team at Stout helps both buyers and sellers capitalise on opportunities and control risk with deep IP licensing, financing and transaction expertise. Every engagement is founded upon thorough analytics and guided by decades of experience.

Compliance – royalty audit services

Stout’s dedicated team of royalty audit experts assists clients in realising the full value of IP assets by ensuring compliance with existing licence agreements. The team offers several services to meet the specific needs of clients, including desk audits, field audits, royalty compliance and monitoring programmes, and evaluation of licensing agreements.

Stout’s royalty audit team delivers value beyond identification of underpayments because they understand that the licensors and licensees have common interests in a collaborative resolution of differences that will keep their business relationships mutually profitable.

Why Stout?

Stout experts have been retained by over 75 of the AM LAW 100 law firms, premier litigation boutiques, Fortune 100 corporations and federal agencies. Stout experts have been retained in 47 US states, as well as by clients throughout Asia and Europe for a wide range of matters, including disputes where alleged damages were over $1 billion. Stout’s net promoter score – a measure of our clients’ willingness to recommend Stout’s services on a scale of -100 to +100 – is consistently in the +90s, which is indicative of our clients’ trust.

Stout’s professionals are fluent in many languages other than English, including Chinese-Mandarin, Chinese-Yue, French, German, Greek, Hindi, Italian, Korean, Latvian, Polish, Portuguese and Spanish.

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