Stout Director Steve Holzen discusses his experience working with IP professionals, his prior experience at the USPTO, his vision for IP in the future, and more.

Steve Holzen has more than two decades of consulting and intellectual property experience in both the public and private sector. He has been recognized as a top U.S. economic expert witness in the latest edition of Intellectual Asset Management’s (IAM) Patent 1000: The World’s Leading Patent Professionals and he has co-authored a book on patent damages titled “Winning The Patent Damages Case.”  We recently sat down with Steve to discuss his experience working with IP professionals, his prior experience as a patent examiner at the United States Patent and Trademark Office, his vision for the IP landscape in the future, his guitar playing styles, and much more. 

Steve Holzen Expert Profile

Role at Stout

Damages and Valuation Expert on Intellectual Property Matters

Education

 

M.B.A., Finance, American University
B.S., Mechanical Engineering, Pennsylvania State University

Years of Experience

 

7 years as an examiner with the USPTO
13 years in private practice supporting disputes and valuation engagements, Stark-law and anti-kickback compliance issues, and financial investigations.

Areas of Expertise

 

Intellectual Property Infringement Damages
IP Valuation
Commercial Damages
Fair Market Value (FMV) in Healthcare Transactions
Financial Diligence for Litigation Finance and Legal Funding

Focus Industries

 

Aerospace, Defense, & Transportation
Healthcare & Life Sciences
Technology, Media, & Telecommunications
Consumer, Retail, Food & Beverage
Diversified Industrials

Venues Testified In

 

Federal District Court
Delaware Court of Chancery
Numerous State Courts
U.S. Patent and Trademark Office (USPTO)
U.S. International Trade Commission (USITC)

Certifications / Designations

 

Certified Licensing Professional (CLP)
Certified Valuation Analyst (CVA)
Registered Patent Agent, #56,008

Notable Cases

 

Tele-Consultants, Inc. v. LinQuest Corp. (Trade Secret Misappropriation)[1]
Jack Henry Associates vs. Joao Bock Transaction Systems, LLC (Patent Valuation In Litigation)[2]
TRUSTID vs. Next Caller (Patent Infringement)[3, 4, 5]

 

 

1. What types of clients do you work with?

I work with litigators, primarily IP litigators, on issues related to patent, trademark, trade secret, and copyright disputes. I also advise healthcare compliance attorneys as to the fair market value (FMV) of IP assets in healthcare transactions.

2. What types of litigation matters do you spend most of your time with?

I’m retained most frequently to provide opinions on lost profits, reasonable royalties, unjust enrichment, corrective advertising, domestic industry, public interest factors, permanent injunction, exclusion remedies, and commercial success.

3. What makes you particularly qualified as an expert in IP dispute cases?

The experience I’ve gained during my career has been invaluable, as I am continually able to leverage my knowledge with the constantly evolving IP space. I have earned several IP and valuation designations—CLP, CVA, and am a Registered Patent Agent—and I also have been rated as a top economic expert witness by Intellectual Asset Management (IAM 1000).

4. What led you to focus your career in IP?

I’m in IP today because I've been interested in tinkering and inventing all my life. I studied engineering in college and then worked for Mitsubishi Electric as a mechanical engineer. My supervisor at the time had a number of patents to his name, and I was interested in learning more about intellectual property. At that time, I had friend working at the USPTO as a patent examiner. I asked him about his experiences, which I found fascinating. So, I applied and was hired by technology center 3644 to examine aerospace applications in Class 244. Over my seven years of public service, I reviewed thousands of patent applications and granted around 300 patents on a range of different technologies comprising controls, propulsion, landing equipment, stabilization, spacecraft, kites, and unnamed vehicles. I remained in public service for seven years while pursuing a master’s degree in business in the evenings and while studying for the Patent Bar.

5. What was one of your more notable cases and why?

My most notable case involved being retained by a plaintiff in a multi-jurisdictional dispute between direct competitors. As part of this dispute, we were asked to perform a series of different analyses in support of lost profits from lost sales and price erosion (through a Panduit factor analysis), reasonable royalties (through the framework of a Georgia-Pacific analysis), patent validity (commercial success as a secondary consideration of non-bovines), a request for permanent injunction (through the framework of the eBay factors), and unjust enrichment due to tortuous interference and breach of contract (through a disgorgement calculation). We were fortunate to have great financial and accounting data from both parties, which allowed us to demonstrate a casual nexus on a customer-by-customer basis. We had a number of analysts working on this project for more than a year and were fortunate that we were working with a skilled team of attorneys who knew the ins and outs of the IP damages case law.

6. How do you envision IP and/or more specifically patent litigation changing in the next 5-10 years?

There has been noticeable increase in demand for pre-case and early-case assessments of IP-related damages. This has become an increasingly important part of my practice where I assist counsel in preparing or responding to initial disclosure of damages theory and amounts, and where I provide an independent review of the economic merits of a potential litigation opportunity to third-party funders as part of their underwriting process. Our clients have found these types of analyses to be valuable because it helps them make more informed strategic decisions earlier in the litigation or funding process. I expect over the next 10 years this trend will continue as the market for litigation funding grows and as additional jurisdictions adopt the local disclosure rules already in place in the more patent-savvy jurisdictions in California, Delaware, and Texas.

7. Prior to joining Stout, you served as a Patent Examiner at the USPTO. What was that role like and how has it shaped your career as an IP damages expert?

As a former examiner, I have a certain level of comfort when it comes to reading and understanding how to break down a patent. I have developed a framework for summarizing the economic benefits associated with a claimed invention. Given my comfort with understanding claim elements, I am able to think creatively about the comparability of patent license agreements (Georgia-Pacific Factors 1, 2 and 12), the portion of the profits that should be attributable to the patented invention (Georgia-Pacific factor 8, 11 and 13), and the utility and advantages of a patented invention over the conventional solutions (Georgia-Pacific factors 9 and 10).

8. You co-authored the book “Winning the Patent Damages Case.” Can you tell us a little about the research and writing process there, and how the book has served as a guide for those involved in patent infringement matters?

There have been a remarkable number of changes in patent law over the past 20 years that have dramatically altered the way in which we look at patent damages. These changes occurred at all three levels of our government. I started to independently track these changes so to develop a desk-reference for myself when working on patent damages matters and to develop CLE presentations to law firms or other non-profit organizations. From 2010 to 2016, it seemed that there was a new case each day that impacted patent damages in one way or another, and eventually my desk reference turned into an outline of various patent damages issues that was organized by topic. So, when a client asked if I were interested in co-writing a book on patent damages, I jumped on it because I already had a good portion of the research complete. It was a great opportunity for me to explore other aspects of case law and to discuss those issues with clients and colleagues on the road to publication.

9. You have been heavily involved with the American Intellectual Property Law Association (AIPLA) and Licensing Executives Society (LES). How has your time with these organizations assisted and/or shaped your career?

As the chair for AIPLA’s sub-committee on patent damages, I had the wonderful opportunity to work with other damages experts and patent litigators to develop education programming so that others in our field can stay up to date on the changing landscape of patent damages. As a new member of LES, I was fortunate to have found a mentor within the organization who has provided me with opportunities to run chapter meetings and who has introduced me to a wider set of professionals than I could have met on my own.

10. What has been the most rewarding part of your career?

Both of my parents were high school teachers, so as a kid I grew up thinking I also would be a teacher. My work now involves accounting and financial analyses but based on my upbringing I’ve adopted a “teaching not telling” approach to working with clients. This approach has been well received by clients because I’m often asked to join brainstorming meetings with our clients to help them think through how they can navigate certain factual and methodology issues.

11. What interests do you have outside of work?

I have a number of hobbies including playing soccer, picking the guitar, and running. Recently I’ve been reading the Harry Potter series in parallel with my son and family friends. After we finish each book, we get everyone together to have a Harry Potter movie watch party. It’s been a real treat for me to see my son dig into these stories, and it’s a constant source of entertainment and conversation as we discuss the plot lines and the relationships between the characters.

12. What artist/genre of music/playlist is your favorite to listen to while working?

In my mid-20s, I asked my dad to teach me how to flatpack bluegrass tunes on the guitar as a way to decompress after working all day and then going to school at night. That’s when I started to listen to and imitate the bluegrass style of Doc Watson, Tony Rice, and Norman Blake. I’ve now convinced my son to pick up the fiddle which means when we get together with my family we can have a three-generation jam session. That adds an element of depth to the music because it’s something that my dad, my son, and I have in common.


  1. Expert Report in re: Tele-Consultants, Inc. v. LinQuest Corp., BTP Systems, LLC, Michael Girard and Patrick Kidwell, Virginia Circuit Court for the County of Fairfax. Subject matter: Breach of duty of loyalty, misappropriation of trade secrets, tortious interference with contracts, tortious interference with business relationships, defamation, violation of the Virginia Computer Crimes Act, unjust enrichment, and statutory and common law conspiracy (report issued in 2015).
  2. Expert Reports and Deposition in re: Joao Bock Transaction Systems, LLC, Delaware Bankruptcy Court. Subject matter: Patent valuation (reports in 2018, deposition in 2019).
  3. Next Caller Inc., vs. Trust ID. Inc., USPTO, Case IPR2019-00039. Subject matter: Secondary considerations of non-obviousness (commercial success) (declaration and deposition in 2019).
  4. Expert Reports and Deposition in re: TrustID Inc. v. Next Caller Inc., District Court, D. Delaware. Subject matter: Patent infringement (damages, commercial success, permanent injunction) (reports and deposition in 2019).
  5. Expert Reports and Deposition in re: TrustID Inc. v. Next Caller Inc., District Court, Colorado. Subject matter: Patent infringement (damages, commercial success, permanent injunction) (reports and deposition in 2020).

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