Stout Expert Profile Dana Trexler

Stout Expert Profile Dana Trexler

Stout Intellectual Property practice leader Dana Trexler discusses her 27 years of experience in the IP field, the future of IP Compliance and Royalty Audits, her biggest lessons learned, and more.

October 04, 2021

Dana Trexler Expert Profile Video

Dana Trexler is a Managing Director and Stout's Intellectual Property practice leader. With over 25 years of experience in the field, Dana has testified in 12 states and 60 cases. We spoke to Dana about what led her to a career in the IP field, the future of IP compliance and Royalty Audits, her biggest lesson in her career, and the details of her bucket list.

Dana Trexler 27 years of experience, 49 cases where testimony or opinions were proffered, 12 states in which testimony was proffered

Role at Stout

 

Managing Director
Intellectual Property Practice Leader

Education

 

M.B.A., The Wharton School, University of Pennsylvania
B.S., Accounting, Bucknell University

Areas of Expertise

 

Intellectual Property Disputes (Patent, Trademark, Copyright)
Licensing Compliance Examinations
Trade Secrets & Restrictive Covenants
Complex Business Litigation
Post-Acquisition Disputes
Forensic Investigations

Focus Industries

 

Technology, Media, & Telecommunications
Aerospace, Defense, & Transportation
Consumer, Retail, Food & Beverage
Healthcare & Life Sciences
Plastics & Packaging

Venues Testified In

 

Federal District Court (numerous)
American Arbitration Association
Supreme Court (New York)
Superior Court (Delaware, New Jersey)
Court of Chancery (Delaware, New Jersey)
Department of State (Pennsylvania)
Court of Common Pleas of Lebanon County, Pennsylvania
Court of Common Pleas of Montgomery County, Pennsylvania

Certifications / Designations

 

Certified Public Accountant (CPA)
Certified in Financial Forensics (CFF)

 

What types of clients do you work with?

I work with clients that range from those in the top 50 of the Fortune 500 to smaller clients with complex business disputes. I work across various industries and sectors which include, but are not limited to aerospace, biotechnology, consumer products, education, financial services, food and beverage, gaming, health care, high technology manufacturing, hospitality, media and entertainment, medical device, pharmaceutical, professional services, real estate, retail, software, and telecommunications.

In which areas of IP disputes do you have particular expertise?

I specialize in patent infringement dispute damages testimony, and I also have testimony experience on copyright, trademark, and trade secret disputes. Damages in patent infringement disputes are complex and require in-depth knowledge of the ever-evolving case law. The damages in my patent cases involve evaluating and preparing economic damages in the form of lost profits, reasonable royalties, and unjust enrichment (design patent). Within these available damages remedies, I analyze and consider issues such as the application of the Entire Market Value Rule (“EMVR”), smallest saleable unit, apportionment, and comparable license agreements.

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

As patent infringement damages are complex and require knowledge of case law and financial and accounting expertise, there is a balance between demonstrating to the jury or judge that the damages opinion is supported by the facts and evidence, utilizing accepted methodologies, and overwhelming the fact finder with a morass of detail and complexity. My approach to testifying simplifies the complex using relatable analogies, graphical exhibits, and diagrams to depict the damages so that the factfinder has a clear picture of the damages story and can recall simple visuals when deliberating. I also make eye contact with the fact finder when I am testifying to assess whether my damages opinions are being delivered clearly, to ensure that I do not need to alter my approach.

What led you to focus your career in IP?

I had the great fortune to work on my first patent infringement matter with a testifying expert who approached my involvement in the case with the statement, “This is going to be a crash course in patent damages. I am going to teach you the basics on this case so that you have the knowledge to build upon going forward.” He was a great mentor and teacher and walked me through the process step by step and issue by issue. I was hooked on IP matters from that moment forward, as I enjoy thinking through the complexities that impact each damages calculation including, but not limited to, the interplay between the technology at issue compared to the entirety of the product, the marketing of the product, the competitive environment, relevant transactions to consider, and the availability of non-infringing alternatives. I enjoy learning about the bigger picture of the client’s business and weaving the damages story together to incorporate the evidence in the record in concert with case law requirements.

You have a lot of experience in the areas of IP compliance and Royalty Audits. How did that focus come about? How do you see these areas changing in the next 5-10 years?

As a complement to the IP damages work that I perform, I also have the opportunity to assist my clients with their contract compliance programs by conducting what are commonly known as “royalty audits.” Over the years, royalty audits (contract compliance examinations) have become more prevalent as companies and IP owners are making these examinations a part of their overall compliance programs. These examinations have become more data-intensive, as technology capabilities have advanced and electronic data has become more accessible and granular. I expect over the next 5-10 years, we will see some more automation of the processes, which will still need to be combined with the knowledge of experienced practitioners to assess and evaluate a licensee’s compliance with the underlying agreement.

What has been the most rewarding part of your career?

The people with whom I have worked, and with whom I continue to work, are the most rewarding part of my career. I am fortunate to work with the best and the brightest across the board, including my clients, my immediate team, my colleagues across the firm, and the management team at Stout. I learn and grow every day by working with this diverse group of people as they challenge my ways of thinking, offer innovative ways of approaching challenges, and critically analyze the complex issues we face daily.

What are the biggest lessons you have learned in your career? What guidance would you give to people early in their career that are pursuing a similar career path?

One of my mentors once said, “If you aren’t running a little scared every day, you have stopped learning and it is time to find something else to do.” I took that to heart and have been fortunate to have found a career that is dynamic, challenging, and presents new learning opportunities every day.

The guidance I provide to people early in their career is to find ways to obtain a seat at the table.  I learned this lesson on my first large engagement, which required the review of hundreds of thousands of documents and the interview of dozens of witnesses. I was responsible for reviewing, organizing, and synthesizing the documents for the binders used for the witness interviews.  While tedious, this task put me in a position to master the case details, and I knew I could add value at the interviews themselves.  The key to my entrée into the interview was my typing skills.  I leveraged an innocuous comment that the partner on the job made regarding how quickly I type (I am almost word-for-word thanks to muscle memory developed from 13 years of piano lessons) and volunteered to take notes during the interviews. My offer was accepted, and I had a seat (albeit a silent one) at the table early in my career.  This allowed me to observe the carefully orchestrated interviews take place as we travelled the country together, and to further develop my relationships both inside and outside of my firm.

You joined Stout in June of 2020. How has your experience at Stout been so far? How has Stout’s professional environment and culture helped further your career?

I heard from many that changing firms in the middle of a pandemic was a risky proposition, but joining Stout was simply the right decision despite the timing. I was fortunate to join Stout with 6 of my team members and our transition was seamless, and we were very quickly welcomed by our new colleagues over Zoom and integrated into the collaborative culture. We are lucky to be at a firm that has a panoply of expertise for us to leverage, whether it is to brainstorm about complex issues on a matter or to have the good fortune to integrate colleagues from across the country onto our engagements to put together the most effective team to service the client.

What interests do you have outside of work?

Outside of work, I enjoy spending time with my family outdoors, whether that is at the beach playing frisbee with the dogs and riding the waves, in the mountains hiking and skiing, or traveling cross country on our biennial road trip in an RV to explore the national parks.

What have you completed on your bucket list?

So far, the check marks on my bucket list are living with a family in France while studying there, scuba diving, hang gliding, flying in an ultralight, driving a tractor, and traveling. A few items that remain on my bucket list are traveling to Provence and the Amalfi Coast, seeing the remaining national parks in the United States, and going on an African safari (the observation kind).